PTAB

IPR2017-01084

1964 Ears LLC An OREGon Ltd Liability Co v. Jerry Harvey Audio Holding LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Dual Bore Canalphone System
  • Brief Description: The ’555 patent discloses an in-ear monitor (IEM), or "canalphone," with separate low-frequency and high-frequency acoustical drivers. The key feature is the use of two separate, one-piece sound bores (tubes) that are adjoined to form a single, integrated unit before being installed into the canalphone housing, purportedly simplifying the assembly process.

3. Grounds for Unpatentability

Ground 1: Anticipation over von Dombrowski - Claims 1-5, 8, and 17-19 are anticipated by von Dombrowski under 35 U.S.C. §102.

  • Prior Art Relied Upon: von Dombrowski (Application # 2006/0159298).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that von Dombrowski, which discloses a hearing instrument, teaches every element of independent claims 1 and 17. von Dombrowski discloses a hearing aid with separate high-frequency and low-frequency receivers (drivers) and corresponding sound transmission channels (sound bores). Petitioner contended that while von Dombrowski does not explicitly state the sound bores are "one-piece," this was a known and obvious construction. Crucially, von Dombrowski teaches "mechanically coupled" sound tubes (Fig. 8), which Petitioner asserted directly corresponds to the ’555 patent's limitation of adjoining the bores to form a "single unit" that aids in assembly. The method steps of claim 17 were argued to be inherently taught by the disclosed structure.
    • Key Aspects: This ground asserted that hearing aids are analogous art to IEMs, as the core components (drivers, sound tubes) were originally developed for hearing aids, and a person of ordinary skill in the art (POSA) would look to this field for solutions.

Ground 2: Obviousness over von Dombrowski and Knowles TB6 - Claims 6-7, 11-15, and 20 are obvious over von Dombrowski in view of Knowles TB6.

  • Prior Art Relied Upon: von Dombrowski (Application # 2006/0159298) and Knowles TB6 (a technical bulletin published by Knowles Electronics, Inc.).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground challenged independent claim 11, which adds limitations regarding sound bore dimensions and angular positioning. Petitioner argued von Dombrowski provides the base dual-bore device with adjoined sound tubes. Knowles TB6 was introduced to teach the well-known practice of "sound tube tuning," where engineers vary the length and diameter of a sound tube to modify the frequency response of the driver. Petitioner asserted that the claim limitation of "extended lengths to reduce each sound bore's diameter" is an obvious design choice taught by Knowles TB6 for the purpose of tuning the audio output.
    • Motivation to Combine: A POSITA designing the hearing instrument in von Dombrowski would combine its teachings with Knowles TB6 to tune the frequency response of the drivers. Knowles TB6 explicitly states that "acoustical termination" (i.e., varying tube length and diameter) is a primary factor a design engineer can use to affect receiver performance.
    • Expectation of Success: A POSITA would have a high expectation of success, as sound tube tuning was a common, predictable, and well-documented practice in the art of personal listening devices for adjusting driver frequency response.
    • Key Aspects: Petitioner argued that the claimed angular range for positioning the single unit (30-65 degrees) was also obvious, representing a routine design choice to accommodate components within a custom-fit housing, influenced by the user's ear anatomy, rather than an inventive step producing a new or unexpected result.

Ground 3: Obviousness over Saggio and von Dombrowski - Claims 1-5, 8, 10, and 17-19 are obvious over Saggio in view of von Dombrowski.

  • Prior Art Relied Upon: Saggio (Application # 2011/0058702) and von Dombrowski (Application # 2006/0159298).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was presented as an alternative in the event von Dombrowski's hearing aid was not considered analogous art. Petitioner asserted that Saggio explicitly discloses a custom-fit IEM with separate high-frequency and low-frequency drivers and corresponding one-piece sound bores. However, Saggio does not expressly teach adjoining the sound bores into a single unit. This limitation, Petitioner argued, is supplied by von Dombrowski's teaching of "mechanically coupled" sound tubes.
    • Motivation to Combine: A POSITA would combine Saggio's IEM design with von Dombrowski's concept of mechanically coupling the sound tubes for the simple and predictable benefit of making the IEM easier to assemble. The ’555 patent itself touts easier assembly as the primary advantage of the "single unit" design, a motivation that a POSITA would readily recognize.
    • Expectation of Success: The combination was presented as a simple mechanical integration of known elements to achieve a predictable result (easier manufacturing).
  • Additional Grounds: Petitioner asserted numerous additional grounds, including obviousness challenges based on LoPresti (Application # 2007/0223735) in view of von Dombrowski, and further combinations adding Blanchard (Application # 2009/0147981) to teach the use of a resistor for tuning a driver. These grounds relied on similar rationales of combining base IEM designs with well-known modifications for tuning or ease of assembly.

4. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-20 of the ’555 patent as unpatentable.