K/S HIMPP v. III HOLDINGS 7, LLC

1. Case Identification

• Case #: IPR2017-00563
• Patent #: 6,694,034
• Filed: January 3, 2017
• Petitioner(s): K/S HIMPP
• Patent Owner(s): III HOLDINGS 7, LLC
• Challenged Claims: 1–7, 23–29, 34–36, and 38–40

2. Patent Overview

• Title: Hearing Aid with Transmission Detection and Switch System
• Brief Description: The ’034 patent discloses a hearing aid system that receives audio from a primary source (e.g., a local microphone) and a secondary source (e.g., a wireless transmitter). The system includes circuitry to automatically detect the presence of a signal from the secondary source, and based on this detection, select to output either the primary signal, a combination of the primary and secondary signals, or only the secondary signal to the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Scheller and Zilberman - Claims 1, 4–7, 23–27, 34, and 38–40 are obvious over Scheller in view of Zilberman.

• Prior Art Relied Upon: Scheller (Patent 5,802,183) and Zilberman (Patent 5,824,022).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Scheller taught a hearing aid system with nearly all the claimed features, including a primary audio source (microphone), a secondary wireless source (FM receiver), and circuitry that could output the microphone signal alone or a combination of the microphone and FM signals. In the combined mode, Scheller’s microphone signal was attenuated. However, Scheller used a manual, three-position switch for the user to select the operating mode. Petitioner contended the only missing element was circuitry for automatically analyzing the secondary signal and selecting the appropriate audio output based on that analysis. Zilberman was argued to supply this missing element, as it taught a hearing assistance device (cochlear implant system) that automatically and dynamically adjusted the audio mix between a local microphone and a remote wireless microphone based on whether the remote signal exceeded a prescribed threshold.
  • Motivation to Combine: A person of ordinary skill in the art (POSA) would combine Zilberman’s automatic switching with Scheller’s system to improve usability. Replacing a small, difficult-to-operate manual switch with an automatic system would enhance the user experience, especially for elderly users, young children, or those with diminished dexterity. The combination would solve the known problem of a user having to manually switch modes if they moved out of range of the wireless transmitter or if the transmitter signal was lost, providing a more seamless listening experience.
  • Expectation of Success: Petitioner asserted that a POSA would have a reasonable expectation of success, as the combination involved implementing a known automatic control system (from Zilberman) into a conventional hearing aid architecture (from Scheller) to achieve the predictable result of improved, automated functionality.

Ground 2: Obviousness over Scheller, Zilberman, and Killion - Claims 2 and 3 are obvious over Scheller in view of Zilberman and Killion.

• Prior Art Relied Upon: Scheller (Patent 5,802,183), Zilberman (Patent 5,824,022), and Killion (Patent 5,524,056).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims 2 and 3, which specified that the primary audio source is an omnidirectional microphone (claim 2) or a directional microphone (claim 3). While Scheller taught a "conventional hearing aid microphone," it was silent on whether it was directional or omnidirectional. Killion was introduced to show that using both types of microphones in hearing aids was well-known in the art. Killion explicitly taught a hearing aid with switchable omnidirectional and directional microphones to optimize performance in different noise environments (e.g., omni for quiet settings, directional for noisy situations).
  • Motivation to Combine: A POSA designing the hearing aid of Scheller and Zilberman would have been motivated to incorporate the teachings of Killion by selecting either a directional or omnidirectional microphone as the primary audio source. This was presented as a simple design choice from a limited number of known options to enhance the device’s performance in various listening conditions, a well-understood goal in hearing aid design.

Ground 3: Obviousness over Scheller, Zilberman, and Sharma - Claims 28 and 35 are obvious over Scheller in view of Zilberman and Sharma.

• Prior Art Relied Upon: Scheller (Patent 5,802,183), Zilberman (Patent 5,824,022), and Sharma (Patent 5,812,598).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed claims 28 and 35, which required the secondary audio signal to be transmitted using a "pulse width modulated magnetic field." The primary combination of Scheller and Zilberman taught wireless transmission via an FM radio signal. Sharma taught a hearing assistance system that used a short-range, pulse-width modulated magnetic field for wireless communication.
  • Motivation to Combine: Petitioner argued a POSA would be motivated to substitute Scheller’s FM radio transmission with Sharma’s magnetic field transmission to gain its known advantages. Sharma explicitly taught that using an inductively coupled system avoids issues with FCC licensing and regulations applicable to RF systems and results in lower power consumption, a key consideration for small, battery-powered devices like hearing aids. This substitution was argued to be a simple replacement of one known wireless transmission technology with another to achieve predictable benefits.

Ground 4: Obviousness over Scheller, Zilberman, and Bartschi - Claims 29 and 36 are obvious over Scheller in view of Zilberman and Bartschi.

• Prior Art Relied Upon: Scheller (Patent 5,802,183), Zilberman (Patent 5,824,022), and Bartschi (Patent 5,734,976).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted claims 29 and 36, which required the second audio signal to be transmitted via a "frequency modulated magnetic field." Similar to the argument in Ground 3, this ground proposed substituting Scheller's FM radio transmission. Bartschi was cited for its teaching of a hearing aid with a micro-receiver having a magnetically operated antenna specifically designed to receive frequency-modulated magnetic field signals.
  • Motivation to Combine: The motivation was to implement a known, alternative wireless transmission method into the base Scheller/Zilberman hearing aid. Bartschi demonstrated that using frequency-modulated magnetic fields was a known technique in the hearing aid art. A POSA would have recognized this as a viable design alternative to conventional RF transmission, making its use in the combined device obvious.

4. Key Claim Construction Positions

• "Hearing aid circuitry": Petitioner argued that based on the specification and prosecution history, a POSA would understand this term to mean "circuitry in a hearing aid that generates an audio output for transmission into the ear canal of the hearing aid user." This construction was based on the patent’s description of circuitry 115 as an amplifier and speaker that generates an audio output for the user's ear canal.

5. Key Technical Contentions (Beyond Claim Construction)

• Analogous Art: A central contention underlying multiple grounds was that Zilberman, which described a cochlear stimulation system, was analogous art to Scheller's traditional hearing aid. Petitioner argued that both systems address hearing loss, process audio signals from local and remote sources for a user, and face similar design challenges. Therefore, a POSA working on traditional hearing aids would have looked to the cochlear implant field for solutions to common problems like automatic source switching.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1–7, 23–29, 34–36, and 38–40 of the ’034 patent as unpatentable.