PTAB

IPR2017-01091

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: Phase Correcting Canalphone System and Method
  • Brief Description: The ’674 patent discloses an in-ear monitor (IEM), or "canalphone," with separate low-frequency and high-frequency audio drivers. The invention centers on an "acoustical-timer" to correct for phase differences between the audio signals, which can be either a physical sound-tube assembly with specifically sized tubes or an electronic processor implementing a time delay.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Saggio and Prakash

  • Prior Art Relied Upon: Saggio (Application # 2011/0058702), Prakash (Patent 6,405,227).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Saggio, which discloses a multi-driver IEM, anticipates claims requiring a physical "acoustical-timer" (claims 1-2, 4, 9-10, 13). Under the broadest reasonable interpretation, this timer is met by a high-frequency sound tube being longer than the low-frequency tube, a feature Petitioner asserted is disclosed in Saggio’s figures. For claims requiring a processor-based timer (claims 6-8, 15-16, 21), Petitioner argued the claims are obvious over Saggio in view of Prakash, which teaches a DSP chip for programmably delaying audio signals to synchronize their arrival times in a speaker system. Dependent claims related to specific arrival time differences (e.g., <0.05 ms) were argued to be obvious matters of routine optimization.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Prakash’s DSP with Saggio’s IEM to achieve phase correction electronically. This would decouple phase alignment from the physical tube lengths, which are typically optimized for a desired frequency response. This combination provides greater design flexibility and represents an obvious modernization of Saggio’s device with commonly available technology.
    • Expectation of Success (for §103 grounds): The use of DSPs for signal delay was well-known and predictable. Applying Prakash's established technology to Saggio's IEM would have yielded the expected result of synchronized audio signals, as the underlying principles of audio timing are universal.

Ground 2: Anticipation and Obviousness over Harvey ’806 and Prakash

  • Prior Art Relied Upon: Harvey ’806 (Patent 7,317,806), Prakash (Patent 6,405,227).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Harvey ’806, which teaches a multi-driver earpiece, anticipates the claims directed to a physical "acoustical-timer" (claims 1-2, 4-5, 9-10, 13-14). Harvey ’806 explicitly discloses correcting a phase shift by creating a time delay through an "appropriate driver offset," which is implemented by extending one driver's sound tube. This was argued to directly teach the claimed structure of making one sound tube longer to align signal arrival times. For processor-based claims (6-8, 15-16, 21), the teachings of Harvey ’806 were combined with the DSP from Prakash.
    • Motivation to Combine (for §103 grounds): A POSITA would be motivated to implement the time delay taught by Harvey ’806 using Prakash's more modern and flexible DSP chip instead of a fixed physical tube offset. This would allow for dynamic adjustment and optimization of both frequency response and phase alignment, representing a known design trade-off and an obvious technological update.
    • Expectation of Success (for §103 grounds): The function of Prakash's DSP is to provide a programmable delay, which would predictably achieve the time delay required for phase correction as described in Harvey ’806. The combination simply substitutes one known method of creating a time delay (physical) with another (electronic).

  • Additional Grounds: Petitioner asserted additional obviousness challenges where claims are obvious over Saggio in view of Dahlquist (Patent 3,824,343), with some claims further including Prakash. Dahlquist teaches phase correction in traditional speakers by physically offsetting transducers to account for different signal rise times, providing another rationale for modifying Saggio's IEM to improve fidelity.

4. Key Claim Construction Positions

  • "acoustical-timer": Petitioner argued this central term, under its broadest reasonable interpretation, should be construed to encompass two distinct species disclosed in the ’674 patent: (1) a physical implementation ("acoustical-timer 17a") where the high-frequency sound tube is sized to be longer than the low-frequency sound tube to create a delay, and (2) an electronic implementation ("acoustical-timer 17b") using a processor to delay the audio signal. This construction was critical to Petitioner's anticipation arguments, as it contended prior art figures showing relatively longer tubes met the limitation for the physical timer, even without explicit text describing the purpose as "phase correction."

5. Key Technical Contentions (Beyond Claim Construction)

  • Analogous Art: Petitioner contended that the field of conventional loudspeakers is analogous art to the field of IEMs. This assertion was central to grounds relying on references like Dahlquist. The petition supported this by citing the patent inventor's own public statements comparing IEM phase alignment issues directly to those in large PA systems, arguing that a POSITA would naturally look to the well-developed art of traditional speaker design for solutions to identical physical problems like phase alignment.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of all challenged claims (1-21) of the ’674 patent as unpatentable.