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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`v.
`ZOPHONOS INC.,
`Patent Owner
`
`___________________
`
`Case IPR2026-00083
`U.S. Patent No. 10,656,906
`___________________
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`
`PATENT OWNER’S BRIEF ON
`DISCRETIONARY DENIAL
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2026-00083
`U.S. Patent No. 10,656,906
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`TABLE OF CONTENTS
`I. INTRODUCTION .......................................................................................... 1
`II. BACKGROUND ............................................................................................ 2
`III. THE CHALLENGED PATENT .................................................................... 4
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 5
`V. REASONS THE BOARD SHOULD EXERCISE ITS DISCRETION
`TO DENY INSTITUTION ............................................................................. 5
`A. The Fintiv factors weigh against institution. ......................................... 6
`B. The settled expectations of the parties weigh against institution. ......... 9
`C. The Petition violates 37 C.F.R. § 42.104(b)(4). ..................................11
`D. Petitioner “reserve[s]” the “right” to take inconsistent positions
`in district court in contravention of Office policy. ..............................13
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`E. Compelling public interests weigh against institution. .......................15
`VI. CONCLUSION ............................................................................................. 17
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`U.S. Patent No. 10,656,906
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`TABLE OF AUTHORITIES
`Cases
`Am. Airlines, Inc. v. Intellectual Ventures I LLC, IPR2025-01055,
`Paper 11 (PTAB Nov. 21, 2025) ........................................................................ 15
`Amgen Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, -602, -603,
`Paper 9 (July 24, 2025) ....................................................................................... 11
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (Mar. 20, 2020) .................................................. 7, 8, 9
`Datadome v. Arkose Labs,
`IPR2025-00693 -00694 (PTAB Aug. 14, 2025) ................................................. 10
`Google LLC v. SoundClear Techs. LLC,
`IPR2025-00344 -00345 (PTAB Aug. 4, 2025) ................................................... 10
`Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324 (Fed. Cir.
`2019) ................................................................................................................... 11
`Murata Mfg. Co. v. Georgia Tech Research Corp.,
`IPR2025-00383 -384 (PTAB July 29, 2025) ...................................................... 10
`Nvidia Corp. v. Neural AI, LLC,
`IPR2025-00606 -608 (PTAB Jul 31, 2025) ........................................................ 10
`Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc.,
`IPR2025-00632, Paper 20 (PTAB Nov. 3, 2025) ................................................. 6
`Samsung Elecs. Co. v. GenghisComm Holdings,
`IPR2025-00899125 (PTAB Sept. 26, 2025) ......................................................... 7
`Samsung Elecs. Co. v. Telcom Ventures LLC,
`IPR2025-00957 -972 -973 -974 -975 -976 -977 -978 (PTAB Oct.
`10, 2025) ............................................................................................................... 8
`Samsung Elecs. Co. v. VB Assets, LLC,
`IPR2025-00870 -871 (PTAB Oct. 10, 2025) ........................................................ 8
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB. Dec. 1, 2020) ............................................ 8, 9
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`Sun Pharms. Indus., Inc. v. Nivagen Pharms., Inc., IPR2025-00893,
`Paper 18 (PTAB Sept. 19, 2025) ........................................................................ 14
`Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18
`(PTAB Nov. 5, 2025) .......................................................................................... 14
`Statutes
`35 U.S.C. § 311(b) ................................................................................................... 11
`35 U.S.C. § 314(a) ................................................................................................. 6, 7
`35 U.S.C. § 312(a)(3) ............................................................................................... 11
`35 U.S.C. § 325(d) ................................................................................................... 17
`Other Authorities
`37 C.F.R. § 42.104(b)(4) .............................................................................. 10, 11, 12
`https://www.uspto.gov/sites/default/files/documents/Memo_re_prior_f
`indings_of_fact_and_conclusions_of_law_9_16_25.pdf?utm_camp
`aign=subscriptioncenter&utm_content=&utm_medium=email&ut
`m_name=&utm_source=govdelivery&utm_term= .............................................. 2
`https://www.uspto.gov/sites/default/files/documents/InterimProcesses-
`PTABWorkloadMgmt-20250326.pdf ................................................................... 7
`https://www.uspto.gov/patents/ptab/interim-director-discretionary-
`process ................................................................................................................... 9
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`PATENT OWNER’S EXHIBIT LIST
`Exhibit No. Description
`2001 File History of U.S. Application No. 18/084,081
`2002 Invalidity Contentions, Zophonos Inc. v. Samsung Elecs. Co., Ltd.,
`Case No. 2:25-cv-00752 (E.D. Tex. Jan. 19, 2026)
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`I. INTRODUCTION
`The inter partes review Petition presents exactly the type of case the Office
`has repeatedly indicated is not an appropriate use of the Board’s limited resources.
`Petitioner seeks inter partes review of U.S. Patent No. 10,656,906 (“the ’906
`patent”) while the same claims are being litigated between the same parties in the
`Eastern District of Texas on a parallel timeline, with a jury trial scheduled to occur
`within weeks of the projected Final Written Decision. See Zophonos Inc. v.
`Samsung Elecs. Am., Inc., Case No. 2:25-cv-00752, Dkt. No. 30 (E.D. Tex. Dec.
`10, 2025) (“DCO”).
`The Petition asserts obviousness challenges that are redundant of those
`likely to be asserted in the district court, and expressly reserves the right to
`challenge the validity of the asserted patents on other statutory grounds, such as §§
`101 and 112. Pet. at 2 n.1. The Petition also reserves the right to raise alternative
`claim construction disputes in district court. Pet. at 10 n.3. The Petition thus
`presents the kind of duplicative challenge to a patent asserted in litigation that is
`routinely denied under the current discretionary denial framework.
`On the merits, the Petition presents strained multi-reference obviousness
`grounds that do not identify any particular error in the patent’s otherwise thorough
`examination. It does not present any unique reason to tax the Board’s limited
`resources, especially where the same claims and challenges are being litigated by
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`the same parties on a similar trajectory in district court and will be resolved around
`the same time. While Petitioner will likely argue that some of the Office’s
`discretionary denial considerations weigh in favor of institution, it is clear that—on
`balance—this Petition does not present one of the “best kinds of cases” for which
`inter partes review is currently reserved. See Acting Director’s Memo (September
`16, 2025).1 The Director should exercise discretion to deny institution of the
`Petition.
`II. BACKGROUND
`Inventor Levaughn Denton is an electrical engineer who hails from a family
`of musicians. Born and raised in New York, he was surrounded by artists, loud
`music, and noise pollution. He has drawn from this background throughout his
`decade-long career in media communications and entertainment technology. His
`passion for invention has been inspired not only by the auditory needs he saw
`among those around him, but also by a gap he saw in the market for audio
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`1 Available at
`https://www.uspto.gov/sites/default/files/documents/Memo_re_prior_findings_of_f
`act_and_conclusions_of_law_9_16_25.pdf?utm_campaign=subscriptioncenter&ut
`m_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_t
`erm=.
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`technology. He applied his education in computer and electrical design to develop
`a line of smart and comprehensive systems for sensing and adjusting audio signals
`in mobile devices. Mr. Denton started preparing and filing U.S. patent applications
`on his inventions in 2014, and established a company, Zophonos Inc., to
`commercialize this groundbreaking technology. See Zophonos Video.2
`The challenged patent addresses a pervasive modern problem: sound is
`everywhere, yet environments are dynamic and unpredictable, making it difficult
`to deliver intelligible, safe, and pleasing audio to each listener in real time. The
`specification explains that even with significant human and capital investment,
`conventional systems struggle with improper calibrations, unwanted reflections,
`and venue-driven variability, which can force one-size-fits-most tradeoffs and
`expose individuals to sound levels that contribute to stress and hearing loss.
`EX1001, 1:43-2:19, 9:7-18. The invention recognizes that audio should be filtered
`and personalized for the listener, and teaches that smart devices can sense audio
`and, in real time, analyze, report, and/or control outputs to meet safety thresholds
`and listening preferences. EX1001, Abstract.
`To solve these problems, the ’906 patent discloses a listener-centric, mobile-
`based platform that includes the ability to marshal the sensors (e.g., microphones)
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`2 Available at https://www.zophonos.com/.
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`of smart devices and enable them to sense, identify, isolate, and alter sounds,
`among other features. The ’906 patent specifically provides a novel preventive
`approach: real-time analysis of hazardous sound environments combined with
`alerts delivered through wearable and mobile devices. Understanding the high
`potential for his invention, Zophonos founder Mr. Denton has worked to apply his
`technologies to serve everyone from concertgoers to military servicemembers.
`III. THE CHALLENGED PATENT
`The ’906 patent describes and claims devices, systems, and methods of
`sensing noise, such as ambient noise or conversation, and altering the sensed noise
`prior to outputting sound. This technology has applications in sensing, isolating,
`manipulating, and presenting sounds to human ears. In particular, the patented
`technology overcomes challenges in delivering audio through speakers or
`headphones.
`It is difficult to manage user-friendly audio outputs in real time to account
`for fluctuations in surrounding noise. Calibrating sound levels and compensating
`for ambient soundwave reflections were unaddressed needs in the field of personal
`audio electronics. Prior to the patented technology, a user would need to manually
`adjust audio to selectively perceive and interpret specific sounds originating from
`the ambient environment. In one embodiment, loud and potentially harmful sounds
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`originating from the ambient environment, such as heavy traffic, are mitigated
`while preserving contextual and situational awareness of relevant ambient sounds.
`The systems and methods claimed in the ’906 patent solve those problems
`by sensing certain audible and non-audible waves, and providing an automated
`way of dynamically monitoring and presenting sound to a user. For instance, a
`computer system like a mobile phone or MP3 player can coordinate with wired or
`wireless earbuds to monitor ambient sounds and adjust the sound output to
`compensate for and balance environmental sounds. Nothing like this dynamic and
`autonomous system existed prior to the filing date of the ’906 patent and its family
`members. Nothing in the prior art discloses the relationships among the computing
`device and audio output devices, or the ambient sound monitoring.
`IV. PERSON OF ORDINARY SKILL IN THE ART
`Only for purposes of this Discretionary Denial Brief, Patent Owner does not
`dispute Petitioner’s defined person of ordinary skill in the art.
`V. REASONS THE BOARD SHOULD EXERCISE ITS DISCRETION
`TO DENY INSTITUTION
`The patent challenged in this Petition, and the patents challenged in related
`proceedings IPR2026-00084 and IPR2026-00085, are concurrently asserted against
`Petitioner in parallel litigation in the Eastern District of Texas. See Zophonos Inc.
`v. Samsung Elecs. Am., Inc., Case No. 2:25-cv-00752, Complaint (E.D. Tex. Jul.
`30, 2025). A jury trial is set for May 2027, within weeks of the projected date for a
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`Final Written Decision in this proceeding. See DCO at 3. The Petition expressly
`reserves the right to pursue various invalidity theories and inconsistent claim
`constructions in district court, Pet. at 10, and does not identify any particular error
`in the Office’s examination of the challenged patent. The Fintiv factors thus weigh
`in favor of discretionary denial, as do the weaknesses of the Petition’s arguments
`on the merits, the settled expectations of the parties, 37 C.F.R. § 42.104(b)(4), and
`the Office’s express policy prioritizing efficiency. Accordingly, the Director
`should use his discretion under 35 U.S.C. § 314(a) to deny institution.
`A. The
`Fintiv factors weigh against institution.
`Fintiv factors 1, 2, 5, and 6 weigh strongly in favor of discretionary denial
`and factor 3 also weighs in favor of denial. See Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 at 6 (PTAB Mar. 20, 2020). Factor 4 is neutral. Thus, on balance,
`Fintiv supports denying institution. See also Interim Process Memo (March 26,
`2025) (renewing the Office’s priority of discretionarily denying institution based
`on the Fintiv factors.)3
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`3 Available at
`https://www.uspto.gov/sites/default/files/documents/InterimProcesses-
`PTABWorkloadMgmt-20250326.pdf.
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`Fintiv factor 1 – There is no stay of proceedings in the district court and
`there is no evidence that a stay is likely. See DCO. This factor therefore weighs
`heavily in favor of discretionary denial. See, e.g., Samsung Elecs. Co v.
`GenghisComm Holdings, LLC, IPR2025-00899, Paper 10 (PTAB Sept. 26, 2025)
`(denying institution based on Fintiv where the time of trial was close to the
`projected issuance date of the FWD and the co-pending litigation had insufficient
`evidence of stay); Samsung Elecs. Co v. Telcom Ventures LLC, IPR2025-00957, -
`972, -973, -974, -975, -976, -977, -978, Discretionary Decision (PTAB Oct. 10,
`2025) (same).
`Fintiv factor 2 – The projected statutory deadline for issuing a FWD in this
`IPR is May 17, 2027. Trial in the co-pending litigation is also scheduled to be
`completed in May 2027, effectively the same time. The Board’s decision in this
`case will therefore not be received in time to create any efficiency in the co-
`pending litigation, as all discovery, motion practice, trial preparation, travel
`arrangements, and pretrial rulings will be complete before a decision is rendered.
`Indeed, the Office has previously found similar trial date proximities to be a basis
`to deny review. See Samsung Elecs. Co. v. VB Assets, LLC, IPR2025-00870, -871,
`Discretionary Decision (PTAB Oct. 10, 2025) (explaining that even where the
`FWD will issue slightly before trial, it does not outweigh the efficiencies gained by
`avoiding parallel proceedings).
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`Fintiv factor 3: “[T]he amount and type of work already completed in the
`parallel litigation by the court and the parties at the time of the institution decision”
`favors denial. Fintiv, 9. The institution decision is expected around May 17, 2026.
`By that time the parties will have completed significant fact discovery and
`exchanged final contentions.
`Fintiv factor 4: Petitioner has filed a Sotera stipulation in the parallel
`district court litigation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
`01019, Paper 12 at 18-19 (PTAB Dec. 1, 2020) (precedential as to § II.A). While
`the filing of a Sotera stipulation can weigh in favor of institution, the benefit of
`that stipulation is mitigated by the timing of the co-pending trial. On balance, this
`factor is therefore neutral.
`Fintiv factor 5: The parties are identical between the two parallel
`proceedings, which favors discretionary denial.
`Fintiv factor 6: Factor 6 weighs in favor of denying institution. There are
`numerous weaknesses in the merits of the Petition. As will be explained in the
`POPR, the Petition fails to establish a reasonable likelihood that the challenged
`claims are unpatentable. Patent Owner asks the Director to consider its briefing
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`presented in the POPR. See Interim Process, § II.C.i (patent owner may direct
`attention to an anticipated POPR and evidence for a discussion of the merits).4
`B. The settled expectations of the parties weigh against institution.
`Settled expectations weigh in favor of denying institution of the Petition for
`two reasons: (1) Petitioner’s awareness of the challenged patent and its relevance
`to Petitioner’s products and (2) the patent’s family’s age. First, at least as early as
`March 18, 2025, a patent examiner cited the related U.S. Patent No. 11,900,016
`(challenged in IPR2026-00085) as a reference during the examination of a patent
`assigned to Petitioner titled “Method and System for Mitigating Unwanted Audio
`Noise in a Voice Assistant-Based Communication Environment” (U.S. Application
`No. 18/084,081). EX2001, 231. Thus, Petitioner has had actual knowledge of
`Zophonos, its patents, and its relevance to Petitioner’s business, for nearly a year.
`The Office has previously found that Petitioner’s actual knowledge of the
`challenged patent for a significant period of time creates settled expectations that
`favor discretionary denial, even for a patent that has not been in force long. See
`Murata Mfg. Co. v. Georgia Tech. Research Corp., IPR2025-00383, -384,
`Discretionary Decision (PTAB July 29, 2025) (finding Petitioner’s knowledge of
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`4 Available at https://www.uspto.gov/patents/ptab/interim-director-
`discretionary-process.
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`challenged patent created settled expectations weighing in favor of denial); Google
`LLC v. SoundClear Techs., LLC, IPR2025-00344, -345, Discretionary Decision
`(PTAB Aug. 4, 2025) (same); see also RegenX Science, Inc. v. NextGen Biologics,
`IPR2025-00620, -621, Discretionary Decision (PTAB July 31, 2025) (finding
`settled expectations favoring denial where Petitioner monitored the challenged
`patents); Nvidia Corp. v. Neural AI, LLC, IPR2025-00606, -608, Discretionary
`Decision (PTAB Jul 31, 2025).
`Second, the challenged patent here is a continuation of various parent
`applications in which issued family members have been in force for a significant
`amount of time—since at least 2018. Even where the challenged patent itself has
`not been in force for many years, its membership in a portfolio that has been in
`force or was known to Petitioner can nonetheless create settled expectations that
`favor Patent Owner. See, e.g., NKT Photonics Inc. v. Omin Continuum LLC,
`IPR2025-00839, Paper 10 (PTAB Sept. 4, 2025) (finding settled expectations
`favoring denial based on awareness of challenged patent’s portfolio); Datadome
`S.A. v. Arkose Labs Holdings, Inc., IPR2025-00693, -694, Discretionary Decision
`(PTAB Aug. 14, 2025) (denying institution based, in part, on Patent Owner’s
`portfolio in general); Amgen Inc. v. Bristol-Myers Squibb Co., IPR2025-00601, -
`602, -603, Paper 9 (July 24, 2025) (identifying reasons a patent owner can
`nonetheless have settled expectations in a patent that has been in force for only
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`three years). The challenged subject matter is fully supported by the specification
`of the parent application that has been in force since 2018, and settled expectations
`regarding that portfolio favor denial here.
`C. The Petition violates 37 C.F.R. § 42.104(b)(4).
` The Petition independently warrants discretionary denial because it fails to
`satisfy the threshold requirement of 37 C.F.R. § 42.104(b)(4) that a petition
`“specify where each element of the claim is found in the prior art patents or printed
`publications relied upon.” Rather than identifying disclosures in the asserted
`references, the Petition repeatedly relies on improper claim redefinition, internally
`inconsistent mappings, and generalized assertions regarding the knowledge of a
`person of ordinary skill in the art to supply missing limitations, an approach
`foreclosed by 35 U.S.C. § 311(b) and precedent. See Henny Penny Corp. v.
`Frymaster LLC, 938 F.3d 1324, 1331–32 (Fed. Cir. 2019).
`For instance, claim 1 of the ’906 patent recites “at least one cluster of at least
`one computing device,” where each computing device includes processing
`capability, communication capability, and stored instructions. The Petition does
`not identify any disclosure in DiCenso or Smith of such a cluster of computing
`devices. Pet. at 13-14. Instead, it simply labels DiCenso’s earbuds, which are audio
`input/output transducers lacking disclosed general-purpose processing or
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`executable instructions, as a “cluster,” thereby rewriting the claim to fit the
`reference. Pet. at 13-14.
`Similarly, the Petition asserts that DiCenso’s smartphone satisfies the
`claimed “audio control source,” even though DiCenso expressly assigns the
`claimed signal-processing functions to a DSP within the wearable device and
`describes the smartphone as providing only a user interface and preferred
`communication. Compare Pet. at 13, with EX1005, Abstract. Rather than
`identifying where the claimed functions are disclosed in the prior art, the Petition
`shifts those functions between different components to make the reference fit the
`claims.
`These deficiencies are compounded by internal contradictions and omissions
`that underscore the absence of a coherent mapping of the claims to the prior art. In
`some mappings, the Petition treats both earbuds together as a “cluster,” while
`elsewhere it assigns one earbud as the “cluster” and the other as an “output
`device,” despite the absence of any supporting disclosure in the asserted
`references. See Pet. at 13-14, 24-25. Across multiple limitations, the Petition
`attempts to patch missing disclosures by invoking generalized POSA knowledge or
`audibility concepts to satisfy requirements tied to hearing-risk determination—
`limitations that none of the asserted references disclose. See Pet. at 42-43.
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`Taken together, these are not mere merits disputes; they are threshold
`failures to identify where the claimed elements are disclosed in the prior art.
`Because the Petition relies on claim redefinition, internal inconsistency, and POSA
`conjecture rather than the disclosures of the cited patents and printed publications
`themselves, it violates § 42.104(b)(4) and should be denied on that basis alone.
`D. Petitioner “reserve[s]” the “right” to take inconsistent positions in
`district court in contravention of Office policy.
`Petitioner clearly expresses its intent to raise inconsistent claim construction
`positions in the parallel district court litigation. Doing so is strongly disfavored by
`Office policy and undermines the efficiency of inter partes review. This is reason
`alone for the Director to discretionarily deny this IPR.
`The Office has made clear that allowing petitioners to propose different
`constructions at the Board and the district court, such as seeking narrower
`constructions in litigation to avoid infringement liability, is contrary to the goal of
`“providing greater predictability and certainty in the patent system.” Revvo Techs.,
`Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 4 (PTAB Nov.
`3, 2025) (Squires, Director) (precedential) (internal citations omitted). “The
`Board’s claim construction rules are designed to ensure that the Board correctly
`construes claim terms and to minimize inconsistency in claim construction
`between forums.” Id.
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`Notwithstanding the clear guidance from the Office on inconsistent claim
`construction positions, Petitioner has “reserve[d] all rights” to advance alternative
`(and, thus, inconsistent) claim construction positions in the parallel district court
`litigation for exactly the reasons that are contrary to the Board’s rules and
`precedent. Compare Pet. at 10 n.3 (reserving the right to raise inconsistent
`constructions to compare claims to accused products, i.e., for non-infringement
`position), with Revvo, IPR2025-00632, Paper 20 at 4; see also Sun Pharms. Indus.,
`Inc. v. Nivagen Pharms., Inc., IPR2025-00893, Paper 18 (PTAB Sept. 19, 2025)
`(denying institution where Petitioner takes a narrower claim construction position
`in district court).
`Petitioner also expressly indicates it does not concede the claims “satisfy
`requirements for patentability that cannot be raised in IPR.” Pet. at 2 n.1. Indeed,
`Petitioner has submitted extensive invalidity contentions in district court that
`include § 101 theories and multiple § 112 theories. See generally EX2002. Yet
`again, this demonstrates lack of respect for the Office’s guidance that a petitioner’s
`inability to raise indefiniteness challenges in an inter partes review is not a
`sufficient justification for an inconsistent construction because it amounts to an
`assertion that a petitioner should be permitted to raise inconsistent invalidity
`challenges in the two forums. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-
`00340, Paper 18 at 2-4 (PTAB Nov. 5, 2025) (informative); see also Am. Airlines,
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`Inc. v. Intellectual Ventures I LLC, IPR2025-01055, Paper 11 at 13 (PTAB Nov.
`21, 2025) (explaining the difficulty for the Board to determine how petitioner
`proposes to construe limitations that when it contends the limitations are
`indefiniteness in district court). Petitioner’s clear intent to raise inconsistent claim
`constructions and competing invalidity challenges in district court, while asserting
`plain and ordinary meaning here, should not stand. Accordingly, the Director
`should deny the Petition.
`E. Compelling public interests weigh against institution.
`The inventor here is the kind of individual inventor and entrepreneur that the
`patent system was designed to protect. The challenged claims include
`embodiments that address a persistent problem in public health and safety arising
`from noise pollution and the increasing ubiquity of consumer electronic devices
`with audio features (e.g., wearables and smartphones). Protecting the inventor’s
`ability to recoup his investment and support the business he built on this
`technology is essential to ensuring that Patent Owner and all small businesses
`continue to take on risk and innovate technology that benefits society.
`One potential harm that embodiments of the challenged claims can address
`is that regular exposure to loud noises, both direct and ambient, leads to stress and
`hearing loss. EX1001, 9:7-32. Loud music and other forms of loud sounds have put
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`approximately 1.1 billion young people at risk of suffering from hearing loss. Id.
`Certain frequencies and volumes can even cause stress in pets. Id.
`Additionally, hearing loss is a source of service-connected disability in
`military veterans. Military veterans are 30% more likely to suffer from severe
`hearing loss than non-veterans. EX1001, 9:7-32. In fact, according to the DoD’s
`Hearing Center for Excellence (HCE), hearing loss is the most widespread injury
`among returning veterans, driving hearing loss payments to exceed $2 billion in
`2016. Embodiments of the challenged claims can provide for an interdisciplinary
`and technologically advanced approach to hearing loss prevention. Id.
`Providing dynamic adjustments using mobile devices creates an opportunity
`to implement preventive measures, ultimately reducing hazardous exposure time
`and thus injury. EX1001, 9:33-37. The challenged claims include embodiments
`that mitigate hearing loss injury by (1) analyzing hazardous sounds in real-time
`and (2) generating a responsive auditory output through wearable mobile devices.
`EX1001, 9:37-46.
`The use of earphones by pedestrians on public walkways, riders on public
`transit, and people in other public spaces continues to increase. The environment of
`large numbers of people dividing their attention between multiple sources of audio
`sensory input gives rise to health and security concerns as it compromises the
`ability of crowds to respond to sirens, alarms, or instructions from police or other
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`emergency responders. The claimed technology can allow earphones to detect
`sirens or vocal commands from the user’s environment and automatically adjust
`the volume of the audio output of the device. See, e.g., Zophonos, Case No. 2:25-
`cv-00752, Complaint at ¶5.
`Rewarding the inventor for his important contributions to public health and
`safety thus furthers the public’s interest in strong patent rights, especially for start-
`up companies. Petitioner here is a large, sophisticated company with a prior
`awareness of Patent Owner and related patents. The parties here are well suited to
`settle their dispute in district court. It is not a good use of the Office’s limited
`resources to act as a second forum for Petitioner to litigate aspects of this larger
`dispute, especially where the Petition does not identify any error in examination.
`Rather, the balance of economic and public-interest considerations favor giving the
`inventor his day in court.
`VI. CONCLUSION
`The Director should discretionarily deny the Petition.
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`/Jason D. Eisenberg/
`Jason D. Eisenberg (Reg. No. 43,447)
`Lestin L. Kenton (Reg. No. 72,314)
`Kristina Caggiano Kelly (Reg. No. 58,164)
`Counsel for Patent Owner Zophonos Inc.
`Date: January 20, 2026
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
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`Case IPR2026-00083
`U.S. Patent No. 10,656,906
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`CERTIFICATE OF COMPLIANCE WITH PAGE LIMITATION,
`TYPEFACE REQUIREMENTS, AND TYPE STYLE REQUIREMENTS
` 1. This Discretionary Denial Brief complies with the 20-page limitation,
`excluding the parts exempted by 37 C.F.R. § 42.24(a).
` 2. This Discretionary Denial Brief complies with the general format
`requirements of 37 C.F.R. § 42.6(a) and has been prepared using Microsoft® Word
`2014 in 14 point Times New Roman.
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`/Jason D. Eisenberg/
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Patent Owner Zophonos Inc.
`Date: January 20, 2026
`1101 K Street, NW, 10th Floor
`Washington, DC 20005
`(202) 371-2600
`
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`Case IPR2026-00083
`U.S. Patent No. 10,656,906
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`I certify that the above-captioned PATENT OWNER’S BRIEF ON
`DISCRETIONARY DENIAL and associated Exhibits 2001-2002 were served in
`their entireties on January 20, 2026, upon the following parties via electronic mail:
`
`Ali R. Sharifahmadian (Lead Counsel) ali.sharifahmadian@arnoldporter.com
`Jeffrey Miller (Back-up Counsel) jeffrey.miller@arnoldporter.com
`Patrick Reidy (Back-up Counsel) patrick.reidy@arnoldporter.com
`Mark A. Patrick (Back-up Counse