GN ReSound As v. Oticon AS

1. Case Identification

• Case #: IPR2015-00103
• Patent #: 8,300,863
• Filed: October 21, 2014
• Petitioner(s): GN ReSound A/S
• Patent Owner(s): Oticon A/S
• Challenged Claims: 6-10, 14, 15, 21-24

2. Patent Overview

• Title: Hearing Device With Wireless Communication
• Brief Description: The ’863 patent relates to a hearing aid capable of wireless communication. The disclosed technology utilizes an electrically conducting element, such as a wire connecting two portions of the device, to function simultaneously as a signal conductor for audio and as a wireless antenna for RF signals.

3. Grounds for Unpatentability

Ground 1: Claims 6-8 and 14 are obvious over Meskens in view of Yoshino '289.

• Prior Art Relied Upon: Meskens (Application # 2008/0304686) and Yoshino '289 (Application # 2005/0245289).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Meskens discloses a behind-the-ear (BTE) hearing aid that meets nearly all limitations of independent claim 6. Meskens teaches a first portion (BTE housing) and a second portion (in-ear speaker) connected by a coupling element. This coupling element comprises two wires for signal transmission and a conductive outer shield that functions as a dipole antenna connected to an RF transceiver. Petitioner noted that during a prior reexamination, the claims were found patentable over Meskens alone because Meskens allegedly failed to disclose coupling the wireless interface to the shield element via a balun. To supply this element, Petitioner asserted that Yoshino '289 teaches a hearing device where a balun connects a shield wire, operating as a dipole antenna, to the wireless circuitry to perform impedance matching and balanced/unbalanced mode transformation.
  • Motivation to Combine: A POSITA would combine Meskens and Yoshino '289 to incorporate a balun into the dipole antenna system of Meskens. The explicit motivation, drawn from Yoshino '289, was to convert balanced antenna signals to reduce the influence of the human body and achieve higher gain over a wide frequency range. Furthermore, using a balun for mode conversion was presented as a well-known, fundamental technique for connecting balanced antennas to unbalanced circuits.
  • Expectation of Success: The combination involved applying a standard electronic component (a balun) for its known purpose in a conventional hearing aid antenna system. Therefore, a POSITA would have had a high expectation of success in achieving a functional and improved device.

Ground 2: Claims 9, 15, 21, and 22 are obvious over Meskens in view of Hathaway.

• Prior Art Relied Upon: Meskens (Application # 2008/0304686) and Hathaway (Patent 2,573,438).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground focused on independent claim 9, which differs from claim 6 by reciting a "tube for acoustically transmitting" sound rather than wires for transmitting an electrical signal. Petitioner contended Meskens teaches most elements of claim 9 but uses an electrical, not acoustical, coupling. Hathaway, a 1951 patent, was asserted to teach the missing element. Hathaway describes a hearing aid featuring an "extremely lightweight and very thin flexible tubing" to conduct sound waves from a transducer to an earpiece. Critically, Hathaway also teaches that this same flexible tube can serve the "additional purpose of an enclosure for a thin antenna wire," directly linking the acoustic transmission and antenna functions required by the claim.
  • Motivation to Combine: A POSITA would combine the teachings to replace the wired electrical coupling in Meskens with the acoustic tube taught by Hathaway. The motivation was to achieve well-known benefits in hearing aid design, such as reducing bulkiness, excessive weight, and instability, which were known problems that Hathaway's acoustic tube design was intended to solve. This represented a simple substitution of one known signal transmission means (wires) for another (acoustic tube) to gain a predictable advantage.
  • Expectation of Success: A POSITA would have reasonably expected success, as implementing an acoustic tube for sound delivery was a conventional and well-understood design choice in the field of hearing aids.

Ground 3: Claims 6 and 7 are obvious over Halstead in view of Yoshino '289.

• Prior Art Relied Upon: Halstead (Patent 2,535,063) and Yoshino '289 (Application # 2005/0245289).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Halstead, a 1950 patent, as an alternative primary reference to demonstrate that the core concepts of claim 6 were long-established. Halstead was argued to disclose a two-way communication hearing device where an earpiece is connected to a transmitter-receiver unit via a flexible cord. This cord is described as a "combination telephone cord and antenna," comprising a twin conductor for audio signals and a surrounding "outer metallic braided antenna conductor" (shield) that functions as the antenna. As in the first ground, Petitioner argued that Halstead does not explicitly disclose a balun. Yoshino '289 was again relied upon to teach connecting a shield wire antenna to a wireless interface via a balun.
  • Motivation to Combine: The motivation was identical to that asserted in Ground 1. A POSITA would be motivated to add a balun to the antenna system in Halstead to properly convert the balanced signals from the dipole antenna, thereby reducing noise, minimizing influence from the user's body, and improving overall RF performance, as taught by Yoshino '289.
  • Expectation of Success: Success was predictable, as the combination merely involved integrating a standard antenna component (balun) into a known antenna configuration (shielded twin-lead) to achieve its well-understood electrical benefits.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations including Fretz and Feeley, and a separate anticipation challenge against claims 9 and 15 over Hathaway, relying on similar theories of combining known hearing aid components to arrive at the claimed invention.

4. Key Claim Construction Positions

• The term "a size" as used in claim 23, which is not defined in the patent, should be accorded its broadest reasonable interpretation of "any measureable dimension."
• The term "on the order of 0.01 m" in claim 23 should be interpreted as "within close proximity to 0.01 m." Petitioner argued these constructions were necessary to properly apply prior art references that disclose specific hearing aid dimensions.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 6-10, 14, 15, and 21-24 of Patent 8,300,863 as unpatentable.