Oticon As v. GN Hearing As

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Oticon A/S (Denmark) and Oticon, Inc. (California)
  • Defendant: GN Hearing A/S (Denmark)
  • Plaintiff’s Counsel: Fish & Richardson P.C.
• Case Identification: 0:17-cv-00499, D. Minn., 02/17/2017
• Venue Allegations: Venue is alleged to be proper based on Defendant's control over its Minnesota-based subsidiary, GN Hearing Care Corporation, and Defendant’s prior litigation conduct acknowledging business operations in the district.
• Core Dispute: This is a declaratory judgment action in which Plaintiff Oticon seeks a court ruling that Defendant GN Hearing’s patent for a hearing aid antenna is invalid and/or unenforceable due to alleged inequitable conduct during prosecution.
• Technical Context: The technology concerns the integration of wireless antennas into behind-the-ear (BTE) hearing aids, a key feature for enabling communication with external devices like smartphones and implanted components.
• Key Procedural History: The complaint’s primary allegation is that Defendant engaged in inequitable conduct. While prosecuting its '233 patent, Defendant allegedly failed to disclose to the U.S. Patent and Trademark Office its own arguments and expert declarations from a parallel inter partes review (IPR) proceeding, in which Defendant had argued that similar and allegedly narrower technology was obvious over the prior art. Prior litigation and the related IPRs between the parties were terminated by a settlement agreement in January 2016.

Case Timeline

Date	Event
2007-05-31	'233 Patent Priority Date
2014-05-01	GN Hearing becomes involved in '233 patent prosecution
2014-10-21	GN Hearing files IPR petitions against Oticon's '863 patent
2016-01-07	Prior litigations and IPRs settled and terminated
2016-04-01	Oticon Opn™ miniRITE hearing aid introduced in the U.S.
2016-09-20	U.S. Patent No. 9,446,233 issues
2016-09-21	GN Hearing alleges infringement of the '233 patent
2017-02-17	Complaint for Declaratory Judgment filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,446,233 - BEHIND-THE-EAR (BTE) PROSTHETIC DEVICE WITH ANTENNA

The Invention Explained

• Problem Addressed: The patent addresses the challenge of integrating wireless communication capabilities, particularly for far-field signals (like Bluetooth), into compact BTE hearing prosthetic devices without increasing their size or complexity (’233 Patent, col. 4:50-64).
• The Patented Solution: The invention proposes a dual-purpose component where an "electrically conducting element" within the "coupling element" (the wire connecting the BTE housing to the in-ear speaker) is configured to function as both the signal wire for the speaker and as part of an antenna for wireless communication (’233 Patent, col. 2:40-54). This design leverages an existing structure to perform an additional function, thereby conserving space within the small BTE device.
• Technical Importance: This approach allows for the inclusion of modern wireless features in a discreet BTE form factor, which is a significant design goal in the hearing aid industry (’233 Patent, col. 1:20-24).

Key Claims at a Glance

• The complaint specifically references independent claim 20.
• Essential elements of Independent Claim 20:
  • A hearing device with a first portion (BTE unit) and a second portion (in-ear component with a transducer).
  • A coupling element that connects the two portions and includes an electrically conducting element to transmit a signal between them.
  • The electrically conducting element in the coupling element is configured to operate as a part of an antenna for wireless communication.
  • The electrically conducting element is configured for electromagnetic signal emission and/or reception.
• The complaint does not reserve the right to assert dependent claims, as it is a declaratory judgment action filed by the accused infringer.

III. The Accused Instrumentality

Product Identification

• The Oticon Opn™ miniRITE hearing aid (Compl. ¶9).

Functionality and Market Context

• The complaint alleges the Oticon Opn miniRITE features a "dual-wireless communication system" (Compl. ¶9).
• This system is described as enabling both a high-quality binaural listening experience (presumably communication between a pair of hearing aids) and direct connection to smartphones and other devices via 2.4 GHz Bluetooth Smart streaming (Compl. ¶9). The dispute arises from GN Hearing's allegation that the "antenna technology" employed in this device infringes the ’233 patent (Compl. ¶12).

IV. Analysis of Infringement Allegations

This complaint is for a declaratory judgment of non-infringement, invalidity, and unenforceability, filed by the product manufacturer, Oticon. As such, it does not contain affirmative infringement allegations or a corresponding claim chart. The action was initiated in response to a communication from Defendant GN Hearing, which "specifically alleged that the Oticon Opn™ miniRITE hearing aid employed an antenna technology falling within the claims of the ’233 patent" (Compl. ¶12). The complaint does not provide further details on GN Hearing's specific infringement theory.

To support its argument that the ’233 patent claims are impermissibly broad, the complaint includes a side-by-side textual comparison of GN’s ’233 patent claim 20 and Oticon’s ’863 patent claim 1 (Compl. p. 9). This visual is intended to demonstrate that the asserted ’233 claim is broader in scope than a claim GN itself previously argued was obvious.

Identified Points of Contention

• Technical Question: The central infringement question, which the complaint seeks to preempt, is whether the 2.4 GHz Bluetooth antenna system in the Oticon Opn miniRITE functions in the manner required by the claims. Specifically, does it use the "electrically conducting element" that transmits the audio signal to the in-ear transducer as "part of an antenna for wireless communication"?
• Scope Questions: The dispute may turn on the definition of "operate as a part of an antenna." Does any incidental RF activity on the wire meet this limitation, or must the wire be a specifically designed and primary component of the far-field communication system as taught in the patent's specification?

V. Key Claim Terms for Construction

"operate as a part of an antenna for wireless communication"

• Context and Importance: This functional language is the core of the invention. Its construction will determine whether the claims cover only devices where the connecting wire is intentionally designed as a primary radiating element or if they also read on systems where the wire might incidentally radiate or receive RF energy but is not the principal antenna component. Practitioners may focus on this term because it is the central point of novelty and the likely focal point of any infringement or invalidity debate.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself is broad, not specifying any particular efficiency, frequency, or antenna type. It only requires the element to "operate as a part of an antenna," which could be argued to encompass any contribution to RF transmission or reception.
  • Evidence for a Narrower Interpretation: The specification repeatedly discusses using the connector for "far EM-field" communication and describes implementing impedance matching circuits and specific antenna lengths (e.g., λ/4) to improve efficiency (’233 Patent, col. 4:50-64; col. 6:1-11; Fig. 5). A party could argue that "operate as" implies being intentionally and effectively configured for this purpose, not merely exhibiting incidental RF properties.

"coupling element"

• Context and Importance: The definition of this structural term is critical because the invention requires the "electrically conducting element" to be within the "coupling element." The scope of this term will define the physical structures to which the antenna limitation applies.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claims define it by its function: "coupling the first portion and the second portion" and being "configured to transmit the signal" (’233 Patent, col. 10:55-63). This could be argued to cover any cable or wire harness that performs these functions.
  • Evidence for a Narrower Interpretation: The specification and drawings show specific embodiments, such as a wire leading to an in-ear speaker or an ear hook structure (’233 Patent, Fig. 2A; col. 5:12-15). A defendant might argue the term should be limited to these types of physical connectors that link the BTE housing to an in-ear component.

VI. Other Allegations

Inequitable Conduct

The complaint lodges a formal count for a declaratory judgment of unenforceability due to inequitable conduct (Compl. ¶¶20-41). The core allegations are:

• While prosecuting the application for the ’233 patent, Defendant GN was simultaneously pursuing IPRs to invalidate a competitor's patent (Oticon's '863 patent) (Compl. ¶23).
• In those IPRs, GN allegedly argued that claims similar to (and, Oticon alleges, narrower than) those in the ’233 patent were obvious over prior art, including a publication known as "Meskens 2008," which is the parent publication of the ’233 patent itself (Compl. ¶¶25, 27, 31, 32).
• GN allegedly failed to disclose its IPR petitions, supporting expert declarations, and prior art arguments to the PTO examiner reviewing the ’233 patent application, despite filing numerous other disclosures (Compl. ¶¶33-34).
• Oticon alleges this withheld information was highly material to patentability and that the failure to disclose it was an intentional decision to mislead the PTO (Compl. ¶¶38, 39).

VII. Analyst’s Conclusion: Key Questions for the Case

• A central issue will be one of inequitable conduct: did Defendant, during prosecution of the ’233 patent, intentionally withhold material information from the PTO—specifically, its own arguments and evidence from a parallel IPR proceeding that asserted similar technology was obvious? The court’s determination will likely depend on the materiality of the withheld arguments and the evidence of intent to deceive.
• A key substantive question for both invalidity and infringement will be one of claim scope: can the phrase "operate as a part of an antenna," in the context of the patent, be construed broadly enough to cover the accused product's functionality, and if so, is that broad construction valid in light of the prior art, including the very references Defendant allegedly used to challenge a competitor's patent?