GN ReSound AS v. Oticon AS

1. Case Identification

• Case #: IPR2015-01948
• Patent #: 8,995,699
• Filed: September 22, 2015
• Petitioner(s): GN ReSound As
• Patent Owner(s): Oticon AS
• Challenged Claims: 1-13

2. Patent Overview

• Title: Hearing Aid with Antenna for Reception and Transmission of Electromagnetic Signals
• Brief Description: The ’699 patent discloses an in-ear communication device, such as a hearing aid, with wireless capabilities. The invention focuses on a specific physical arrangement of the battery and an unbalanced antenna, where both components are located on a surface of the device's shell facing away from the user’s head, and the antenna extends beyond the outer perimeter of the battery's projection on that surface.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tøpholm and Itakura - Claims 1-3, 5, 10, and 11 are obvious over Tøpholm in view of Itakura.

• Prior Art Relied Upon: Tøpholm (Patent 5,995,636) and Itakura (Japanese Utility Patent Application Publication No. JP H05-67910).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tøpholm disclosed a conventional in-the-ear hearing aid containing the basic components recited in claim 1, including a shell, transducers, signal processor, and a battery located on a surface part of the shell facing away from the user (the battery lid). However, Tøpholm did not explicitly teach a wireless transmission/reception circuit or an unbalanced antenna extending beyond the battery's perimeter. Petitioner contended that Itakura, which addresses miniaturized portable wireless devices, supplied these missing elements. Itakura taught an unbalanced loop antenna connected to a wireless circuit, where the antenna was explicitly shown extending beyond the battery's dimensions to improve performance. The combination of Tøpholm's hearing aid structure and Itakura's antenna configuration allegedly rendered the limitations of independent claim 1 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of Itakura with Tøpholm's hearing aid to incorporate known wireless communication functionality. Adding portable call features to a hearing aid was a known goal, and Itakura provided a miniaturized antenna solution that offered predictable improvements in gain and power savings.
  • Expectation of Success: The integration of a known antenna type (Itakura) into a standard electronic device (Tøpholm) was a routine design choice. A POSITA would have had a high expectation of success in achieving a functional wireless hearing aid with predictable performance characteristics.

Ground 2: Obviousness over Tøpholm, Itakura, and Kobayashi - Claims 6, 7, 12, and 13 are obvious over Tøpholm in view of Itakura and Kobayashi.

• Prior Art Relied Upon: Tøpholm (Patent 5,995,636), Itakura (JP H05-67910), and Kobayashi (European Patent Application Publication No. EP 0 952 756 A2).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Tøpholm and Itakura to address dependent claims related to the antenna's placement and construction. Petitioner asserted that the primary combination did not explicitly teach embedding the antenna within the shell part (claim 6), depositing antenna material on a faceplate or battery drawer (claim 7), or embedding it in molded plastic (claim 13). Kobayashi, which discloses an "Ear inserting type transmitter-receiver," taught these very techniques. Specifically, Kobayashi described an antenna with conductor portions embedded into the rear faceplate of the device's plastic case frame to position it away from other circuitry.
  • Motivation to Combine: A POSITA would have been motivated to incorporate the antenna fabrication and placement techniques from Kobayashi into the Tøpholm/Itakura device for known benefits. Embedding the antenna in the shell or faceplate, as taught by Kobayashi, was a known method to improve operational efficiency by separating the antenna from the user's inner ear and other internal electronic components, thereby reducing interference.

Ground 3: Obviousness over Tøpholm, Itakura, and Zhang - Claim 4 is obvious over Tøpholm in view of Itakura and Zhang.

• Prior Art Relied Upon: Tøpholm (Patent 5,995,636), Itakura (JP H05-67910), and Zhang (Application # 2005/0099341).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted claim 4, which requires the antenna to be shaped as part of a "flexprint." While the Tøpholm and Itakura combination provided the core device, it did not disclose this specific antenna construction. Petitioner argued that Zhang, which relates to small antennas for hearing aid systems, taught the use of a loop antenna built on a thin, flexible layer (a flexprint) that could be easily placed on a hearing aid.
  • Motivation to Combine: A POSITA would have been motivated to fabricate the Tøpholm/Itakura antenna using the flexprint method taught by Zhang to achieve several well-understood advantages. These included easier manufacturing and positioning, reduced size and cost, and improved performance through reduced human detuning effects, all of which were known benefits of using flexible circuit technology for antennas in small devices.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including that claim 8 (configuring the antenna as a charging loop) was obvious over the primary combination in view of Sandrock (EP 1 250 026 A1), and that claim 9 (the antenna encircling the battery projection) was obvious over the primary combination in view of Nanao (JP 2001-217638 A).

4. Key Claim Construction Positions

• "disposed on the surface part of the shell": Petitioner argued that this term should be interpreted as "mounted to or integral with the surface part of the shell." Petitioner noted, however, that the Patent Owner appeared to be advancing a broader construction in co-pending litigation that would also encompass positions "situated between the battery and the shell." For the purposes of the IPR, Petitioner adopted this broader construction to ensure its invalidity arguments covered any interpretation the Board might adopt.
• "facing away from the head of the user": Petitioner argued this term should be interpreted as facing a direction that, if extended, does not contact any part of the user’s head other than the external ear. This construction was based on the specification and figures, which show the battery and antenna on the outward-facing plate of the in-ear device.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-13 of Patent 8,995,699 as unpatentable under 35 U.S.C. §103.