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

1. Case Identification

• Case #: IPR2017-01091
• Patent #: 8,925,674
• Filed: March 15, 2017
• Petitioner(s): 1964 Ears, LLC
• Patent Owner(s): Jerry Harvey Audio Holding, LLC
• Challenged Claims: 1-21

2. Patent Overview

• Title: Phase Correcting Canalphone System and Method
• Brief Description: The ’674 patent relates to a multi-driver in-ear monitor (IEM), or "canalphone," designed to correct for phase distortion between high-frequency and low-frequency audio signals. The invention is an "acoustical-timer" that ensures signals from different drivers arrive at the user's ear at approximately the same time, which is achieved either physically by making the high-frequency sound tube longer than the low-frequency sound tube, or electronically using a digital signal processor (DSP) to delay the high-frequency signal.

3. Grounds for Unpatentability

Ground 1: Anticipation over Saggio - Claims 1-2, 4, 9-10, and 13 are anticipated by Saggio under 35 U.S.C. §102.

• Prior Art Relied Upon: Saggio (Application # 2011/0058702).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Saggio disclosed all elements of the independent claims, focusing on the physical embodiment of the "acoustical-timer." Saggio taught an IEM with adjacent low-frequency and high-frequency drivers, each connected to a separate sound tube. Petitioner contended that Saggio’s figures, particularly FIG. 1, explicitly showed a prior art IEM where the high-frequency sound tube is visibly longer than the low-frequency sound tube. This physical arrangement inherently creates a time delay for the high-frequency signal, thus performing the phase correction function of the claimed "acoustical-timer." Petitioner asserted this structural disclosure in Saggio was sufficient to anticipate the claims under the broadest reasonable interpretation, an interpretation Petitioner noted was consistent with Patent Owner's own arguments in related district court litigation.

Ground 2: Obviousness over Saggio and Prakash - Claims 6-8, 15-16, and 21 are obvious over Saggio in view of Prakash under 35 U.S.C. §103.

• Prior Art Relied Upon: Saggio (Application # 2011/0058702) and Prakash (Patent 6,405,227).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the electronic embodiment of the "acoustical-timer" recited in claims such as 6, 7, and 15. Petitioner asserted that Saggio provided the foundational IEM structure with dual drivers and sound tubes. Prakash disclosed a DSP chip designed for speaker systems that could programmably delay audio signals to synchronize their arrival times. Combining these references, Saggio's IEM would be equipped with Prakash's DSP to perform the claimed electronic phase correction.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Prakash's electronic delay with Saggio's IEM to achieve more precise and flexible phase correction. This would allow a designer to optimize sound-tube lengths for a desired frequency response—a primary design consideration—while handling phase alignment electronically. Petitioner argued this represents a simple and obvious modernization of a known mechanical concept (physical offsets) with a readily available electronic solution (a DSP chip) to gain known benefits of miniaturization, improved performance, and reliability.
  • Expectation of Success: Using a DSP to implement a time delay for audio signals was a well-understood and routine technique at the time. Therefore, a POSITA would have a high expectation of success in integrating Prakash’s known DSP technology into Saggio’s IEM to achieve the desired phase correction.

Ground 3: Obviousness over Saggio and Dahlquist - Claims 1-5, 9-14, and 17-20 are obvious over Saggio in view of Dahlquist under 35 U.S.C. §103.

• Prior Art Relied Upon: Saggio (Application # 2011/0058702) and Dahlquist (Patent 3,824,343).
• Core Argument for this Ground:
  • Prior Art Mapping: This argument asserted that even if Saggio’s disclosure of a longer high-frequency tube was not anticipating, it would have been obvious to implement this structure in light of Dahlquist. Saggio provided the basic multi-driver IEM. Dahlquist, teaching in the analogous art of conventional multi-transducer loudspeakers, explicitly taught phase correction by physically offsetting the high-frequency transducer rearward of the low-frequency one. This physical offset compensates for the transducers' different signal rise times, ensuring their sound waves arrive at the listener's ear "essentially simultaneously."
  • Motivation to Combine: A POSITA would have been motivated to apply the fundamental time-alignment principles from the well-established loudspeaker art (Dahlquist) to the IEM art (Saggio) to improve audio fidelity. Petitioner argued that the underlying acoustic principles are identical, and Saggio itself suggested that the phase relationship can be tuned by varying sound-tube lengths. Dahlquist provided the explicit rationale and method for such tuning—creating a physical offset to achieve time alignment.
  • Expectation of Success: Applying the basic physical principle of increasing a signal's travel path to create a time delay is predictable and would have been straightforward for a POSITA. Therefore, there was a reasonable expectation of success in applying Dahlquist's established phase-correction technique to Saggio's IEM design.
• Additional Grounds: Petitioner asserted additional anticipation and obviousness challenges based on Harvey ’806, both alone and in combination with Prakash. The Harvey ’806 reference was argued to teach an earpiece that uses a sound-tube extension to create a driver offset for phase correction. An additional ground combined Saggio, Dahlquist, and Prakash.

4. Key Claim Construction Positions

• "acoustical-timer": Petitioner argued that the term "acoustical-timer," particularly the physical embodiment (species 17a), should be interpreted under its broadest reasonable construction as simply a high-frequency sound tube that is longer than the low-frequency sound tube. This construction was presented as being consistent with the patent’s specification and the Patent Owner's own infringement contentions in co-pending litigation, and it formed a crucial basis for Petitioner's anticipation arguments.

5. Key Technical Contentions (Beyond Claim Construction)

• Analogous Art: A central technical contention was that the art of conventional loudspeakers is directly analogous to the art of IEMs. Petitioner argued that a POSITA would routinely look to loudspeaker design for solutions to problems like phase alignment because the fundamental acoustic principles are the same, merely applied on a miniaturized scale. This contention was used to justify combining references like Dahlquist with primary IEM references like Saggio.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-21 of the ’674 patent as unpatentable.