1964 Ears LLC v. Jerry Harvey Audio Holding LLC

1. Case Identification

• Case #: IPR2016-00494
• Patent #: 8,897,463
• Filed: January 21, 2016
• Petitioner(s): 1964 Ears, LLC
• Patent Owner(s): Jerry Harvey Audio Holding, LLC
• Challenged Claims: 1-16

2. Patent Overview

• Title: Dual High Frequency Driver Canalphone System
• Brief Description: The ’463 patent discloses an in-ear monitor (IEM), or "canalphone," comprising a housing containing two low-frequency drivers (LFDs), two midrange-frequency drivers (MFDs), and two high-frequency drivers (HFDs). The invention is primarily directed to positioning and tuning the two HFDs relative to each other such that their oscillations interact to reduce harmonic distortion.

3. Grounds for Unpatentability

Ground 1: Obviousness over Warren, Nielsen/van Halteren/Mostardo, and van Halteren ’223 - Claims 1 and 7

• Prior Art Relied Upon: Warren (Application # 2008/0031481), Nielsen (Application # 2008/0170732), van Halteren ’807 (Application # 2009/0310807), Mostardo (WO 95/07014), and van Halteren ’223 (Application # 2008/0063223).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Warren taught the basic structure of a canalphone with dual LFDs, MFDs, and HFDs. The key limitation of claim 1—positioning the two HFDs so their oscillations interact to reduce harmonic distortion—was asserted to be obvious or inherent. Nielsen, van Halteren ’807, and Mostardo each taught using dual-driver units where identical drivers are positioned side-by-side or back-to-back, causing their oscillations to interact and increase the overall Sound Pressure Level (SPL). Petitioner contended that a POSITA would understand that increasing SPL capability inherently increases acoustic "headroom," which in turn reduces harmonic distortion caused by signal "clipping" when the drivers are operated at high levels. The final limitation, producing distinguishable frequencies in the 12-18 kHz range, was allegedly taught by van Halteren ’223, which disclosed dual HFDs with tweeters outputting up to 20 kHz.
  • Motivation to Combine: A POSITA would combine Warren's multi-driver earphone with the dual-driver configurations of Nielsen, van Halteren ’807, or Mostardo to achieve higher SPL and better performance, a well-known goal in audio device design. Similarly, a POSITA would incorporate the high-frequency tweeters of van Halteren ’223 to improve the fidelity and range of Warren's earphone.
  • Expectation of Success: The combination involved applying known audio engineering principles (e.g., dual drivers for higher output, tweeters for high frequencies) to a known device structure, creating a predictable result.

Ground 2: Obviousness over Warren, Nielsen/van Halteren/Mostardo, van Halteren ’223, and Harvey ’806 - Claims 2-4

• Prior Art Relied Upon: The combination from Ground 1, in further view of Harvey ’806 (Patent 7,317,806).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed dependent claims 2-4, which add limitations for sound tubes, external dampers, and tuning. Petitioner argued that Harvey ’806, an earlier patent by the same inventor, taught the use of separate sound tubes for different frequency ranges (claim 2) and the use of external dampers to tune the audio output (claim 3). Harvey ’806 also explicitly taught tuning via sound tube length and external dampers to optimize performance (claim 4). Petitioner asserted that these teachings rendered the additional limitations obvious.
  • Motivation to Combine: A POSITA would be motivated to incorporate the sound tube and damper tuning techniques from Harvey ’806 into the multi-driver system of Warren to optimize and tailor the frequency response, thereby improving the overall sound quality of the IEM.
  • Expectation of Success: Combining known tuning methods (dampers, sound tube lengths) from Harvey ’806 with the multi-driver IEM of Warren was a straightforward application of established techniques for improving audio performance.

Ground 3: Obviousness over Warren, Nielsen/van Halteren/Mostardo, van Halteren ’223, Sperrazza, and Babb - Claims 5-6

• Prior Art Relied Upon: The combination from Ground 1, in further view of Sperrazza (Patent 3,818,138) and Babb (Application # 2005/0196012).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims 5 and 6, which require the combined mass of the HFDs to be designed lighter to increase transient response and reduce power requirements. Petitioner argued that Sperrazza taught that transient response is improved by reducing the moving mass of a speaker. Babb taught that reducing the moving mass of a speaker also results in lower power consumption.
  • Motivation to Combine: A POSITA would be motivated to apply the principles from Sperrazza and Babb to the dual HFDs of the primary combination to improve the fidelity of high-frequency sound reproduction (via better transient response) and to extend battery life (via reduced power consumption), both of which are highly desirable characteristics for portable IEMs.
  • Expectation of Success: Reducing the mass of speaker components to improve transient response and power efficiency were well-understood and predictable design trade-offs in the field of audio engineering.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges against all 16 claims. These grounds relied on the same core prior art combinations (either based on Warren or, alternatively, based on Harvey ’806 in view of van Halteren ’223) with further additions of references like Harvey ’479 for crossover networks to address the remaining dependent claims.

4. Key Claim Construction Positions

• Petitioner argued that claim terms should be given their plain and ordinary meaning.
• For the limitation "comprising 12,000 hertz to 18,000 hertz" (claim 1), Petitioner asserted that the term "comprising" is not transitional and that an overlapping frequency range in the prior art is sufficient to support a prima facie case of obviousness.

5. Key Technical Contentions (Beyond Claim Construction)

• A central technical argument was that the claimed functional result of "reduc[ing] harmonic distortion" is an inherent or obvious consequence of increasing Sound Pressure Level (SPL) capability. The prior art (Nielsen, et al.) taught that using dual drivers increases SPL. Increased SPL provides greater "headroom," allowing a driver to operate at higher volumes without "clipping," a primary source of harmonic distortion. Therefore, a POSITA seeking to increase SPL would have necessarily or obviously arrived at a system with reduced harmonic distortion.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of all claims (1-16) of the ’463 patent as unpatentable.