PTAB

IPR2017-01084

1964 Ears, LLC, an Oregon limited liability company v. Jerry Harvey Audio Holding. LLC

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1. Case Identification

2. Patent Overview

  • Title: Dual Bore Canalphone System
  • Brief Description: The ’555 patent describes an in-ear monitor (IEM), or "canalphone," with separate low-frequency and high-frequency acoustical drivers. Each driver is connected to a dedicated one-piece sound tube (bore), and these two bores are adjoined to form a single unit, which is intended to simplify assembly within the canalphone housing.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-5, 8, and 17-19 under §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 aid, teaches every element of the independent claims. It describes a device with low-frequency and high-frequency receivers (drivers) within a housing and corresponding sound transmission channels (bores) leading to the ear canal. Petitioner asserted that while von Dombrowski does not explicitly state the channels are "one-piece," this was a known construction. Crucially, von Dombrowski teaches "mechanically coupled" sound tubes (Fig. 8), which Petitioner contended directly anticipates the ’555 patent’s "adjoining...to form a single unit" limitation. Method claim 17 was argued to be anticipated because the product structure necessitates the claimed steps of positioning the drivers and the single unit of sound bores.

Ground 2: Obviousness of Claims 6-7, 11-15, and 20 under §103

  • Prior Art Relied Upon: von Dombrowski (Application # 2006/0159298) and Knowles TB6 (Knowles Electronics, Inc., Technical Bulletin TB6).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon von Dombrowski by adding the teachings of Knowles TB6 to address claims reciting sound tube tuning and angular positioning. The challenged claims add limitations for extending the length of the sound bores while reducing their diameter (claims 6, 11, 20) and positioning the single unit at a specific angle range of 30-65 degrees (claim 11). Knowles TB6 explicitly teaches the practice of varying sound tube length and diameter to affect driver frequency response. Petitioner argued the angular limitation was an obvious design choice to accommodate components within a housing, with the specific range being discoverable through routine experimentation.
    • Motivation to Combine: A POSITA designing a personal audio device like that in von Dombrowski would be motivated to optimize its acoustic performance. Sound tube tuning was a well-known, commonplace technique for this purpose. Therefore, a POSA would have naturally looked to a reference like Knowles TB6 to apply its teachings on varying tube dimensions to tune the frequency response of von Dombrowski’s drivers.
    • Expectation of Success: A POSITA would have had a high expectation of success as tuning was a predictable and routine engineering practice for adjusting driver performance in the art.

Ground 3: Obviousness of Claims 1-5, 8, 10, and 17-19 under §103

  • Prior Art Relied Upon: Saggio (Application # 2011/0058702) and von Dombrowski (Application # 2006/0159298).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented this combination as an alternative in the event that von Dombrowski's hearing aid was not considered analogous art. Saggio discloses a custom-fit IEM with separate high and low-frequency drivers and one-piece sound bores for each. Saggio does not, however, expressly teach adjoining the tubes to form a single unit. von Dombrowski was cited specifically for its teaching of "mechanically coupled" sound tubes (Fig. 8) that form such a unit.
    • Motivation to Combine: A POSITA would combine Saggio’s IEM design with von Dombrowski’s coupled-tube feature for the known and predictable benefit of easier assembly. The ’555 patent itself touts easier installation as the benefit of the single unit. Petitioner argued that joining the two separate sound tubes of Saggio into a single unit, as taught by von Dombrowski, was an obvious engineering choice to simplify manufacturing.
    • Expectation of Success: The combination involved applying a known joining technique to known components to achieve a predictable result (easier assembly), so a POSA would have expected it to work.

  • Additional Grounds: Petitioner asserted numerous additional grounds. These included obviousness challenges combining von Dombrowski with Blanchard (Application # 2009/0147981) to teach a resistor for tuning a driver. Further grounds combined Saggio with von Dombrowski and other references (Knowles TB6, Blanchard) to address various dependent claims. A final set of challenges was presented based on LoPresti (Application # 2007/0223735) as the primary reference in combination with von Dombrowski and Knowles TB6, asserted as a contingency if the Patent Owner established an earlier effective date.

4. Key Claim Construction Positions

  • Petitioner asserted that the claim terms should be given their plain and ordinary meaning as understood by a POSA. No specific constructions were proposed as being dispositive, and Petitioner noted that no claim construction had occurred in related litigation. The term "canalphone" was understood to encompass personal listening devices including IEMs and hearing aids.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention underlying multiple grounds was that the field of hearing aids is analogous art to the field of in-ear monitors (IEMs). Petitioner argued that a person of ordinary skill in the art (POSA) designing an IEM would look to the art of hearing aids because they address similar acoustic and packaging problems, share components like drivers and sound tubes, and were the origin for many technologies later used in IEMs. This position was critical for applying references like von Dombrowski to the challenged claims.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of all challenged claims (1-20) of the ’555 patent as unpatentable.