UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`MED-EL ELEKTROMEDIZINISCHE GERÄTE GES.M.B.H.
`Petitioner
`v.
`
`ADVANCED BIONICS AG
`Patent Owner
`_________________________________
`
`U.S. Patent No. 8,155,746
`“Cochlear Implant Sound Processor with
`Permanently Integrated Replenishable Power Source”
`
`
`
`IPR2021-00044
`__________________________________
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`LIST OF EXHIBITS ................................................................................................. ii
`TABLE OF AUTHORITIES ..................................................................................... v
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 2
`III. CLAIM CONSTRUCTION ............................................................................ 4
`A.
`Preamble ................................................................................................ 4
`B.
`“Closed Case” and “Rechargeable Power Source…” ........................... 4
`C.
`The “Power Coil…” Limitation. ........................................................... 7
`IV. GROUND 1: CLAIMS 1-4, 6-8, 10-15, 17-22, AND 24 ARE
`OBVIOUS OVER CROSBY AND PETERSEN. ......................................... 10
`A.
`Petersen Discloses the “Closed Case” Limitation. .............................. 10
`B.
`Petersen Discloses the “Permanently and Integrally
`Housed” Power Source. ....................................................................... 13
`Petersen Discloses the “Power Coil…” Limitation. ........................... 14
`C.
`D. Motivation to Combine. ...................................................................... 14
`V. GROUND 2: CLAIMS 5, 9, 16, AND 23 ARE OBVIOUS OVER
`CROSBY, PETERSEN, AND ZILBERMAN ’022. ..................................... 22
`A.
`Claims 5, 9, 16, and 23: Adding the Remote Control of
`Zilberman ’022 Would Have Been Obvious. ...................................... 22
`Claims 9, 16, and 23: Placing the Transmitter Coil in the
`Speech Processor Case Would Have Been Obvious ........................... 24
`VI. GROUNDS 3 AND 4: CLAIMS 10-15 AND 17 ARE OBVIOUS
`OVER CROSBY, PETERSEN, AND NAGAI; AND CLAIM 16 IS
`OBVIOUS OVER CROSBY, PETERSEN, ZILBERMAN ’022, AND
`NAGAI........................................................................................................... 25
`
`
`B.
`
`
`
`
`
`

`

`LIST OF EXHIBITS
`(UPDATED)
`
`Exhibit
`Number
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`
`1019
`
`1020
`1021
`1022
`1023
`1024
`
`1025
`1026
`1027
`
`1028
`1029
`
`Exhibit Name
`U.S. Patent No. 8,155,746 to Maltan et al. (“Maltan”)
`Expert Declaration of Khalil Najafi
`Provisional Application No. 60/417,973
`File History of Application No. 10/675,375 (“Parent Application”)
`U.S. Patent 7,349,741
`File History of Application No. 12/040,888
`U.S. Patent 5,603,726 to Schulman et al. (Schulman”)
`U.S. Patent 4,532,930 to Crosby et al. (“Crosby”)
`U.S. Patent 6,272,382 to Faltys et al. (“Faltys”)
`U.S. Patent 6,190,305 to Ball et al. (“Ball”)
`U.S. Patent 5,571,148 to Loeb et al. (“Loeb”)
`U.S. Patent 5,303,305 to Raimo (“Raimo”)
`PCT Application Publication WO 02/41666 A1 (“Gibson”)
`U.S. Patent 5,824,022 (“Zilberman ’022”)
`U.S. Patent 6,219,580
`U.S. Patent 6,289,247
`PCT Application Publication WO 97/04619 (“Petersen”)
`U.S. Patent Application Publication 2001/0056291 of Zilberman et al.
`(“Zilberman”)
`Provisional Application No. 60/212,517 of Zilberman et al.
`(“Zilberman Provisional”)
`Assignment of Zilberman et al.
`U.S. Patent No. 6,310,960 to Saaski et al. (“Saaski”)
`Assignment of U.S. Patent No. 6,310,960 to Saaski et al.
`U.S. Patent No. 6,636,768 to Harrison
`Excerpt from Niparko, “Cochlear Implants – Principles and Practices”
`(2000), pages 109-121 (highlighting and handwritten notations not
`part of the original text)
`U.S. Patent 6,358,281 to Berrang et al.
`U.S. Patent 5,814,095 to Müller et al.
`Stephenson et al., Energy Transport through Tissue by Inductive
`Coupling, American Journal of Surgery 114, 87 (1967)
`U.S. Patent 6,129,753
`U.S. Patent No. 5,610,494 to Grosfilley
`
`ii
`
`

`

`Exhibit
`Number
`1030
`1031
`
`1032
`1033
`
`1034
`1035
`1036
`1037
`
`1038
`
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`Exhibit Name
`U.S. Patent No. 6,265,100 (“Saaski Parent”)
`Delaware Case – Claim Construction Memorandum, September 9,
`2020
`Delaware Case – Claim Construction Order, September 9, 2020
`Delaware Case – Patent Owner’s Infringement Contentions
`(excluding claim charts) (redacted), October 8, 2019
`Delaware Case – Email Sernel to Sternberg, October 25, 2020
`Delaware Case – Parties’ Joint Status Report, October 28, 2020
`Delaware Case – Docket as of October 5, 2020
`Delaware Case – Stipulation and Order Modifying Scheduling Order,
`July 28, 2020
`Delaware Case – Petitioner’s Invalidity Contentions (excerpt),
`November 19, 2019
`U.S. Patent No. 5,991,170 to Nagai et al. (“Nagai”)
`Delaware Case – First Amended Counterclaims (excerpts)
`Delaware Case – November 12, 2020 Letter to Court
`Delaware Case – November 17, 2020 Order (Dkt. No. 131)
`Delaware Case – December 11, 2020 Letter to Court
`Delaware Case – January 8, 2021 Letter to Court
`Delaware Case – January 29, 2021 Letter to Court
`Associated Press News, February 2, 2021 (highlighted)
`Website www.austria.info, “Up-to-date Information on the
`Coronavirus Situation” (retrieved February 2, 2021) (highlighted)
`Pact XXP Schweiz AG v. Intel Corp., No. 1:19-cv-01006-JDW (D.
`Del.), Docket No. 20 (July 16, 2019 Scheduling Order)
`Pact XXP Schweiz AG v. Intel Corp., No. 1:19-cv-01006-JDW (D.
`Del.), Docket No. 227 (Nov. 5, 2020 Order)
`Delaware Case – Petitioner’s Motion to Stay and supporting
`Memorandum, January 29, 2021
`Delaware Case – Patent Owner’s Final Infringement Contentions
`(excluding claim charts) (redacted), October 9, 2020
`Declaration of Georg Reitboeck in support of petitioner’s motion for
`pro hac vice admission
`Appellant Qualcomm’s Brief in Qualcomm Inc. v. Apple Inc., Case
`No. 2020-1558, -1550 (Fed. Cir.)
`Appellee Apple's Corrected Responsive Brief in Qualcomm Inc. v.
`Apple Inc., Case No. 2020-1558, -1550 (Fed. Cir.)
`
`iii
`
`

`

`Exhibit
`Number
`1055
`
`1056
`
`1057
`1058
`1059
`1060
`
`
`
`Exhibit Name
`May 6, 2021 Deposition transcript of Patent Owner’s expert Dr.
`Darrin Young
`September 3, 2021 Deposition transcript of Patent Owner’s expert Dr.
`Darrin Young
`U.S. Patent 5,402,496 to Soli et al.
`U.S. Patent 3,989,904 to Rohrer et al.
`U.S. Patent 6,231,604 to von Ilberg
`Rebuttal Expert Declaration of Khalil Najafi
`
`
`iv
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC,
`825 F.3d 1373 (Fed. Cir. 2016) .............................................................. 17, 23
`Barnhart v. Thomas,
`540 U. S. 20 (2003).......................................................................................... 9
`Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ......................................................................... 4
`Cephalon, Inc. v. Abraxis Bioscience, LLC,
`618 F. App'x 663 (Fed. Cir. 2015) ................................................................... 6
`Daiichi Sankyo Co. v. Apotex, Inc.,
`501 F.3d 1254 (Fed. Cir. 2007) ....................................................................... 2
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .................................................. 17, 18, 23, 24
`Fox Factory, Inc. v. SRAM, LLC,
`944 F.3d 1366 (Fed. Cir. 2019) .....................................................................21
`Heidelberger Druckmaschinen AG v. Hantscho Com. Prod., Inc.,
`21 F.3d 1068 (Fed. Cir. 1994) ................................................................ 18, 26
`Howmedica Osteonics Corp. v. Zimmer, Inc.,
`640 F. App'x 951 (Fed. Cir. 2016) ................................................................... 4
`IGT v. Bally Gaming Int'l, Inc.,
`659 F.3d 1109 (Fed. Cir. 2011) ....................................................................... 7
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .....................................................................26
`In re Burckel,
`592 F.2d 1175 (CCPA 1979) .........................................................................11
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) .......................................................................26
`
`v
`
`

`

`In re ICON Health & Fitness, Inc.,
` 496 F.3d 1374 (Fed. Cir. 2007) ....................................................................18
`In re Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .....................................................................21
`In re Mouttet,
`686 F.3d 1322 (Fed. Cir. 2012) .............................................................. 17, 24
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)................................................................ 1, 14, 18, 19, 24
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`IPR2018-01129, Paper 33 (PTAB Jan. 24, 2020) .........................................21
`Liebel-Flarsheim Co. v. Medrad, Inc.,
`358 F.3d 898 (Fed. Cir. 2004) ...................................................................5, 10
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`812 F.3d 1284 (Fed. Cir. 2015) .............................................................. 17, 24
`MED-EL Elektromedizinische Geräte Ges.m.b.H v. Advanced Bionics AG,
`IPR2020-00190, Paper 45 (PTAB June 2, 2021) ..........................................22
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .................................................................2, 21
`
`
`
`
`
`
`vi
`
`

`

`I.
`
`INTRODUCTION
`In its Response, Patent Owner relies on four main arguments.
`
`First, Patent Owner asserts that Petersen does not disclose a “closed case.”
`
`But under either party’s claim construction, it does.
`
`Second, Patent Owner asserts that Petersen does not meet the “power coil…”
`
`limitation of claim 10. But under the correct construction, it does. Patent Owner
`
`improperly tries to link an unrelated embodiment to the claim language (and its
`
`construction is not even limited to that embodiment, but improperly generalized).
`
`Third, Patent Owner asserts that a POSA would not look to hearing aids when
`
`working on the power management of cochlear implant sound processors. But
`
`Maltan itself “relates to hearing aid prosthesis devices” (Ex. 1001, 1:14-15);
`
`Petersen is analogous prior art; and the evidence shows that a POSA would have had
`
`ample motivation and capability to combine Crosby’s cochlear implant system with
`
`Petersen’s power management features.
`
`Fourth, Patent Owner asserts that a POSA could not have successfully added
`
`the remote control feature of Zilberman ’022 to the Crosby/Petersen-combination.
`
`But the evidence contradicts this far-fetched assertion. Implementing a speech
`
`processor with a remote control would have been well within the skill set of a POSA.
`
`A person of ordinary skill is, after all, “also a person of ordinary creativity, not an
`
`automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
`
`
`
`

`

`II. PERSON OF ORDINARY SKILL IN THE ART
`Patent Owner asserts that including a “working knowledge of power
`
`management of biomedical devices” in the definition of a POSA “introduces
`
`improper hindsight.” Resp., 5.
`
`But the definition of the POSA is necessarily based on the patent and the field
`
`of the invention. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed.
`
`Cir. 2007) (considering “[t]he art involved in the [patent-in-suit]” and “the problem
`
`the invention of the [patent-in-suit] was trying to solve” in defining POSA). Maltan
`
`is concerned with the power management of hearing aid prosthesis devices, in
`
`particular cochlear implant systems. See Ex. 1002, ¶ 72. Petitioner’s definition of a
`
`POSA as having a working knowledge of power management simply accounts for
`
`that fact.
`
`Patent Owner repeatedly relies on Mintz v. Dietz & Watson, Inc., 679 F.3d
`
`1372, 1377 (Fed. Cir. 2012) as cautioning against hindsight. See Resp., 5, 25, 26.
`
`But the Mintz-court discussed the issue of hindsight in the context of the third
`
`Graham-factor, the differences between the claimed invention and the prior art.
`
`Mintz, 679 F.3d at 1377. In the context of the – here relevant – second Graham-
`
`factor, the level of ordinary skill in the art, the Mintz-court relied on the “the prior
`
`art, the problems giving rise to the invention, and the invention itself.” Id. at 1376.
`
`2
`
`

`

`The notion that a POSA has obtained an electrical/biomedical engineering
`
`degree and has spent three years developing biomedical devices, but is oblivious as
`
`to their power management, makes little sense.
`
`The POSA’s uncontested educational background already implies knowledge
`
`of power management, since “the types of problems encountered with cochlear
`
`implant system’s power management… generally relate to common issues of the
`
`electrical engineering and biomedical engineering fields.” Ex. 1002, ¶ 73.
`
`And the POSA’s uncontested work experience supports the same conclusion:
`
`Biomedical devices typically operate on electric power (see, e.g., Ex. 1002, ¶ 42), so
`
`developing such devices logically implies a knowledge of their power management.
`
`Unsurprisingly, Patent Owner’s expert Dr. Young’s testimony on the
`
`knowledge and skills of a POSA is riddled with inconsistencies. See Ex. 1056 at
`
`14:23-16:16 and Ex. 10551 at 32:24-38:2 (denying POSA’s knowledge of power
`
`management but testifying that a POSA could implement the system of Maltan); Ex.
`
`1056 at 17:3-18:12, 19:14-20:10 (testifying that working knowledge of power
`
`management comes from testing, which he earlier described as performed by entry-
`
`level engineers).
`
`
`1 Dr. Young incorporated by reference his testimony from related case IPR2020-
`
`01016. See Ex. 2014, ¶ 3.
`
`3
`
`

`

`Petitioner agrees with the Board’s approach that inclusion of “rechargeable
`
`batteries, charging through direct electrical contacts, and inductive charging” can be
`
`addressed “in the context of the scope and content of the prior art.” I.D., 34.
`
`III. CLAIM CONSTRUCTION
`
`Preamble
`A.
`Contrary to Patent Owner’s assertion, and as a matter of law, the body of each
`
`claim of Maltan describes a structurally complete invention, and deletion of the
`
`preamble language does not affect that structure; the preamble is therefore not
`
`limiting. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808-
`
`09 (Fed. Cir. 2002); Howmedica Osteonics Corp. v. Zimmer, Inc., 640 F. App'x 951,
`
`956 (Fed. Cir. 2016) (“medical implant” not limiting).
`
`“Closed Case” and “Rechargeable Power Source…”
`B.
`The Board should reject Patent Owner’s attempt to commingle the
`
`construction of two separate claim limitations – “an external sound processor
`
`including a closed case… [and] a rechargeable power source [or battery]
`
`permanently and integrally housed within the closed case.” Resp., 7-10.
`
`In fact, the only claim construction issue which impacts Patent Owner’s
`
`substantive arguments (see Resp., 13-17) is the temporal aspect of the “closed case”
`
`limitation – whether the “closed case” is permanently closed, as Patent Owner
`
`4
`
`

`

`asserts, see Resp., 8 (“a ‘closed case’ remains closed”), or currently closed. See
`
`discussion in 2020-01016, Paper 13 (I.D.), 12-15.
`
`The intrinsic evidence does not suggest permanent closure. The claim term
`
`itself, in combination with the dictionary definitions the applicants themselves
`
`submitted during prosecution (Ex. 1006, 298), does not imply permanent closure –
`
`the claim does not say “permanently closed case.” And the specification’s
`
`description that “mechanical latches or doors” “may be eliminated” does not imply
`
`or require a permanently closed case. Ex. 1001, 2:54-57 (emphasis added). E.g., a
`
`case that can be opened and closed by screws may not have a latch or door, yet still
`
`not be permanently closed.
`
`Furthermore, dependent claims 6 and 14 and independent claim 24 each
`
`expressly recite that the “closed case” “does not include a battery removal door,”
`
`which undermines Patent Owner’s construction. Under Patent Owner’s construction,
`
`a “closed case” alone would lack a battery removal door, and the additional language
`
`of claims 6, 14, and 24 would be superfluous. See Liebel-Flarsheim Co. v. Medrad,
`
`Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). The Board should not read that negative
`
`limitation into independent claims 1 and 10.
`
`The prosecution history also does not support Patent Owner’s position. Patent
`
`Owner points to the applicants’ statement that “the phrase ‘permanently and
`
`integrally housed within the closed case’ is a structural limitation which requires the
`
`5
`
`

`

`rechargeable power source to be necessary for completeness of the sound processor
`
`and located within a container, which does not permit passage or entry, in such a
`
`manner that one would not expect it to be removable from the container absent
`
`destruction of the container.” Resp., 8-9, citing Ex. 1006, 298-99. That statement is
`
`too ambiguous to serve as a definition for either the “closed case” or “rechargeable
`
`power source…” limitation. E.g., if at all read as suggesting permanent closure of
`
`the “case,” it conflicts with the structure of claims 1/6, 10/14, and 24 (discussed
`
`above), and with the dictionary definitions applicants provided in the very same
`
`paper (see Ex. 1006, 298), which do not suggest permanent closure. The clarity
`
`requirement of the “lexicography exception” is therefore not met, and the ordinary
`
`meaning of the claim terms governs. See Cephalon, Inc. v. Abraxis Bioscience, LLC,
`
`618 F. App'x 663, 667 (Fed. Cir. 2015).
`
`The Board should therefore construe the “closed case” limitation as “a case
`
`that does not currently permit passage or entry.” See 2020-01016, Paper 13 (I.D.),
`
`12-15.
`
`As for the term “rechargeable power source [or battery] permanently and
`
`integrally housed within the closed case,” no construction is necessary, since Patent
`
`Owner’s arguments focus on the “closed case” limitation (Resp., 13-17).
`
`Substantively, the ordinary meaning of “permanently and integrally housed
`
`within the closed case” does not suggest that destruction of the case itself should be
`
`6
`
`

`

`the touchstone. And as discussed, the prosecution history cannot change the ordinary
`
`meaning. If construed at all, the term should be construed as “a rechargeable power
`
`source [or battery] integrally housed within the case in such a manner that one would
`
`not expect it to be removed in the normal course of use.” See Ex. 1001, 2:8-11 (“the
`
`cochlear implant user never has to remove or handle the battery directly”).
`
`C. The “Power Coil…” Limitation.
`Patent Owner proposes to construe “a power coil… that selectively receives
`
`power from an external charging source,” artificially cutting off the full limitation
`
`recited in claim 10. But “claim language must be construed in the context of the
`
`claim in which it appears.” IGT v. Bally Gaming Int'l, Inc., 659 F.3d 1109, 1117
`
`(Fed. Cir. 2011). The Board should construe the entire claim limitation, “a power
`
`coil… that selectively receives power from an external charging source and
`
`recharges the rechargeable power source when the sound processor is in proximity
`
`to the external charging source.”
`
`The natural reading of the “selectively” language in its context refers to the
`
`characteristic of the power coil of receiving power and recharging the power source
`
`only when the sound processor is in proximity to the external charging source, but
`
`not to do so when it is not. In other words, the claim emphasizes that proximity is a
`
`condition, not just one circumstance, for power reception and recharging. That is
`
`7
`
`

`

`also how the Board understood the claim language in its Institution Decision in the
`
`related Maltan-IPR. IPR2016-01016, Paper 13 (I.D.), 55.
`
`That understanding is consistent with the specification. The only time the
`
`specification uses the recited term “selectively receives” is when it summarizes the
`
`sound processor as follows:
`
`It is further seen from FIG. 3 and its accompanying description
`that a sound processor 50 made in accordance with the present
`invention includes: … and (5) a coil 56 integrally included within
`the sound processor 50 and coupled to the sound processing
`circuit 52 and replenishable power source 60 through which
`power from an external charging source is selectively received to
`recharge the replenishable power source 60 when the sound
`processor 50 is in proximity to the external charging source.
`
`Ex. 1001, 5:62-6:14 (emphasis added). “Selectively” is used in the context of
`
`proximity to permit inductive charging. In contrast, the magnetic reed switch that
`
`Patent Owner points to is not mentioned at all.
`
`Consistent with the natural reading of the claim language and description in
`
`the specification, the term “a power coil… that selectively receives power from an
`
`external charging source and recharges the rechargeable power source when the
`
`sound processor is in proximity to the external charging source” should thus be
`
`construed as “a power coil… that receives power from an external charging source
`
`and recharges the rechargeable power source only when the sound processor is in
`
`8
`
`

`

`proximity to the external charging source, and not when the sound processor is not
`
`in proximity to the external charging source.”
`
`Contrary to Patent Owner’s assertion (Resp., 11), the “selectively” term is not
`
`superfluous, since it expresses that proximity is a condition, as discussed above.
`
`Furthermore, without the word “selectively,” the phrase “when the sound processor
`
`is in proximity to the external charging source” could be reasonably read, under the
`
`“last antecedent rule,” to only refer to the recharging function. See Barnhart v.
`
`Thomas, 540 U. S. 20, 26 (2003). Yet, proximity is a key technical condition for the
`
`coil to inductively receive power in the first place. See Ex. 1002, ¶¶ 33-42; Ex. 1056
`
`(Young Dep.), 32:10-34:11. The word “selectively” ties proximity to both power
`
`reception and recharging – consistent with the specification, see Ex. 1001, 6:11-14.
`
`Patent Owner proposes the construction “a power coil… that can be enabled
`
`or disabled to receive power from an external charging source.” Resp., 10. That
`
`construction finds no support in the intrinsic evidence. Nowhere is the “selectively”
`
`language tied to any “enablement” or “disablement” of the power coil.
`
`Nor is the magnetic reed switch, on which Patent Owner heavily relies (Resp.,
`
`12-13), tied to the “selectively” language, neither in substance nor context nor
`
`location. Compare Ex. 1001, 6:12 (“selectively” language) with 7:3-6 (first mention
`
`of reed switch). The reed switch is not even tied to the “enable” and “disable”
`
`language in Patent Owner’s proposed construction. See Ex. 1001, 7:3-6. Without
`
`9
`
`

`

`any support in the intrinsic evidence, Patent Owner simply tries to link an unrelated
`
`embodiment to the claim language (and moreover, its suggested construction is not
`
`even limited to that embodiment, but improperly generalized). That is improper. See,
`
`e.g., Liebel-Flarsheim, 358 F.3d at 913.
`
`IV. GROUND 1: CLAIMS 1-4, 6-8, 10-15, 17-22, AND 24 ARE OBVIOUS
`OVER CROSBY AND PETERSEN.
`
`Petersen Discloses the “Closed Case” Limitation.
`A.
`Patent Owner disputes that Petersen discloses a “closed case.” See Resp., 13-
`
`17. But the embodiments of Figures 5 and 7 of Petersen disclose a “closed case”
`
`under either Petitioner’s or Patent Owner’s proposed construction of that term. And
`
`the embodiment of Petersen’s Figure 1 at least meets Petitioner’s construction.
`
`
`
`With respect to its Figure 5, Petersen depicts a cross-section of a hearing aid
`
`and describes that “housing 1 in a manner known per se is shaped as a curved box
`
`with generally flat sides, the latter in Figure 5 facing towards and away from the
`
`viewer, respectively.” Ex. 1017, 6:7-10 (emphasis added). Petersen thereby
`
`10
`
`

`

`describes a housing consisting of one piece and enclosing the entire device. See Ex.
`
`1002, ¶ 86. Petersen’s description of a battery that is recharged in situ and connected
`
`to the amplifier by soldered leads supports that understanding. Id. Dr. Young’s only
`
`reason for denying that the Figure 5-device has a “closed case” is that there could be
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`a door in the flat side. Ex. 1055, 80:15-22. Such unfounded conjecture cannot change
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`the fair import of Petersen’s description. Prior art must be evaluated for what it
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`reasonably discloses and suggests to one of ordinary skill in the art. See, e.g., In re
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`Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
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`
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`The same is true for the embodiment of Figure 7, “in which the battery 7 is
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`plate-shaped and cut into shape so as to fit quite accurately the side wall in the
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`housing facing away from the viewer… In a similar manner, a further battery (not
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`shown) can be placed close to or constitute a greater or lesser part of the wall (not
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`shown) in the housing 1 facing towards the viewer.” Ex. 1017, 6:22-29 (emphasis
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`added). The depiction and description of that embodiment, too, indicates a closed
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`housing that does not allow access. See Ex. 1002, ¶ 86.
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`11
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`
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`With respect to Figure 1, Patent Owner asserts that cover 2 “is separate from
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`the housing and removable to access the interior of the housing” Resp., 14. But even
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`under that questionable assumption – Dr. Young’s explanation of how an opening
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`mechanism would work with the pressure equalization tube 9 sticking out made little
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`sense, see Ex. 1055, 65:10-69:19 – the Figure 1-embodiment would still meet the
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`correct construction of “closed case,” since it does not currently permit passage or
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`entry. Petersen says, after all, that the housing is “closed by a cover 2.” Ex. 1017,
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`4:1-2.
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`Even assuming Petersen does not disclose a “closed case,” it would have been
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`obvious to implement Petersen’s housing as a closed case. See in detail Pet., 26-27;
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`Ex. 1002, ¶ 87. Petersen’s battery is permanently integrated (and connected to the
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`amplifier by soldered leads) and recharged in situ. See Ex. 1002, ¶¶ 91-92, and infra.
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`When using such a battery, it would have been common sense for a POSA to omit
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`any opening mechanism and reduce the device in size. See id, ¶ 87. Patent Owner
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`12
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`asserts that “even with a permanently and integrally housed rechargeable battery,”
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`there are reasons to still permit entry into the interior of the housing, such as
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`“allowing the user to replace other components of the sound processor.” Resp., 15-
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`16. But the mere fact that other technical choices could be made does not change
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`that common sense and the prior art – specifically Grosfilley (Ex. 1029) and
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`Zilberman ’022 (Ex. 1014) – provided motivation to close the case. See Ex. 1002,
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`¶ 87.
`
`B.
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`Petersen Discloses the “Permanently and Integrally Housed”
`Power Source.
`Commingling the two separate claim limitations “closed case” and “a
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`rechargeable power source [or battery] permanently and integrally housed within the
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`closed case,” Patent Owner asserts that “Petersen also does not disclose a
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`rechargeable power source or battery that is ‘permanently and integrally housed
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`within [a] closed case.’” Resp., 15 (bracketed change from “the” to “a” in original).
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`However, Patent Owner’s arguments are all focused on whether Petersen’s case is
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`“closed” or whether it would have been obvious to do so. See id.
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`Nowhere does Patent Owner contest or address Petersen’s disclosure meeting
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`the “permanently and integrally housed” limitation – for good reason, since
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`Petersen’s disclosure could hardly be clearer: It describes that battery 7 “cannot
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`readily be exchanged,” “is intended to be placed more or less permanently in the
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`13
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`housing 1,” and “can be connected to the amplifier 4 through e.g. simple soldered
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`leads.” See Pet., 29; Ex. 1017, 4:26-31, 5:8-12; Ex. 1002, ¶¶ 91-92; Ex. 2016, 19:6-
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`16, 20:7-18, 23:8-21.
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`Petersen Discloses the “Power Coil…” Limitation.
`C.
`Patent Owner’s argument that Petersen fails to teach the “power coil…”
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`limitation is entirely premised upon its flawed claim construction. See Resp., 11-13.
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`Under the correct construction, it is uncontested that Petersen discloses the “power
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`coil…” limitation. See Pet. 31-32, Ex. 1002, ¶¶ 103-104, 182-183, 33-42.
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`Moreover, Petersen even meets Patent Owner’s construction. By bringing
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`Petersen’s hearing aid into proximity of its “charging device,” the power coil is
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`“enabled” to receive power. And by bringing it out of proximity, the power coil is
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`“disabled” to receive power. See Ex. 1055 (Young Dep. I), 132:13-133:13.
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`D. Motivation to Combine.
`As explained in the Petition, the prior art provided ample motivation for a
`
`a)
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`POSA to combine a typical cochlear implant system, as described in Crosby, with
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`the power management concepts described in Petersen, and thereby arrive at the
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`claimed invention of Maltan. See Pet., 44-47; Ex. 1002, ¶¶ 150-160; KSR, 550 U.S.
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`at 418.
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`14
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`

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`In particular, Petersen and Saaski both describe the same solutions (charging
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`through electrical contacts, inductive charging) to the same problems of replacing
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`batteries in external hearing aid components (dexterity problems, danger to children,
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`damaged components) as described in Maltan. Pet., 44-46; Ex. 1002, ¶¶ 150-156.
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`Patent Owner responds that “a POSA would not have applied hearing aid
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`features to a cochlear implant system.” Resp., 24.
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`First, Maltan itself shows the close relationship between cochlear implant
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`systems and hearing aids. It describes its invention as in the field of “hearing aid
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`prosthesis devices.” Ex. 1001, 1:14-15. Hearing aids are referred to as “prostheses”
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`in the art (see, e.g., Ex. 1029, Abstract; Ex. 1057, 1:17-20; Ex. 1058, Abstract; see
`
`also Ex. 2016, 38:23-39:6), and both Petersen and Saaski describe hearing aid
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`prosthesis devices (see Exs. 1017, 1021; Ex. 1002, ¶¶ 62, 154). Maltan further states
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`that “what is needed is a sound processor for use with a cochlear implant system, or
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`other hearing-aid system, that avoids or minimizes the above-problems.” Ex. 1001,
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`1:49-50.
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`Furthermore, Patent Owner does not contest that cochlear implant sound
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`processors are similar to hearing aids in purpose, size, usage frequency (daily), and
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`user demographics (many elederly users). See Ex. 1002, ¶ 155; Ex. 1001, 1:24-25
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`(“…resembles a hearing aid…”); Ex. 1055, 155:21-24, 156:23-157:1; see also Ex.
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`2016, 39:10-40:24.
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`15
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`

`Some devices even combine electrical stimulation through a cochlear implant
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`with acoustic stimulation using hearing aid concepts. Examples of such devices are
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`US Patent Application 2001/0056291 of Zilberman (see Ex. 1018, [0007], [0014];
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`Ex. 1055, 163:9-19, 165:21-166:7) and U.S. Patent 6,231,604 to von Ilberg (see Ex.
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`1059, e.g., 5:26-45).
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`All of these facts show that cochlear implant systems and hearing aids are
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`closely related technologies, and a POSA would have recognized that the battery
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`replacement problems described in Petersen and Saaksi equally apply to cochlear
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`implant sound processors, providing motivation to use Petersen and Saaski’s battery
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`charging concepts. See Ex. 1002, ¶¶ 151-156.
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`Patent Owner argues, however, that “cochlear implants and hearing aid
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`devices have much different power dissipation resulting in disparate battery charging
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`requirements,” which, in turn, “result in different design considerations for, inter
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`alia, supply voltage, component size, component compliance, component volume,
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`device breakdown tolerance, heat dissipation, and package size,” citing ¶ 96 of Dr.
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`Young’s declaration (Ex. 2014). See Resp., 24, see also at 27-30.
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`But when asked whether a POSA would have been capable of making the
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`design decisions to address the concerns expressed in ¶ 96 of his declaration, Dr.
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`Young acknowledged: “You know, I will say in the end a person of ordinary skill in
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`16
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`the art should be able to come up with a successful design.” Ex. 1056, 48:15-18; se