Samsung Electronics Co Ltd v. Staton Techiya LLC

1. Case Identification

• Case #: IPR2022-00302
• Patent #: 9,609,424
• Filed: December 21, 2021
• Petitioner(s): Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
• Patent Owner(s): Staton Techiya LLC
• Challenged Claims: 1-20

2. Patent Overview

• Title: Personalized Hearing Measurement and Listening Device
• Brief Description: The ’424 patent describes an earpiece that uses a processor, speaker, and microphone to monitor and adjust audio delivered to a user's ear. The system evaluates the quality of the earpiece's seal in the ear canal and can compensate for leakages.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 5-7, and 10-11 are obvious over Ryan, alone or in view of Svean

• Prior Art Relied Upon: Ryan (Application # 2004/0196992) and Svean (Patent 6,567,524).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ryan taught all limitations of independent claim 1. Ryan disclosed a hearing instrument with a loudspeaker (speaker) and microphone within a sealed cavity (earpiece) to determine if a proper seal is formed. Ryan's signal processing circuitry (processor) evaluated seal quality by monitoring the frequency response ratio of signals from the speaker input and microphone output, which Petitioner equated to the claimed "seal quality measurements." Ryan also taught issuing a periodic tone to notify the user of an improper seal, which Petitioner contended met the limitation of generating a message "identifying whether" the earpiece is properly sealed.
  • Motivation to Combine (for §103 grounds): To the extent Ryan’s warning tone for a poor seal was deemed insufficient, Petitioner argued a POSITA would combine Ryan with Svean. Svean explicitly taught providing an "audible or other messaged confirmation if the leakage is acceptably low." A POSITA would combine these teachings to provide users and audiologists with clear, unambiguous feedback on both good and poor seals, improving on Ryan's system and satisfying known market desires for user-friendly feedback.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in adding Svean’s explicit confirmation message to Ryan’s seal detection system, as it involved combining known feedback techniques to improve a known device in a predictable manner.

Ground 2: Claims 12 and 15-16 are obvious over Allen in view of Victorian

• Prior Art Relied Upon: Allen (Application # 2006/0083395) and Victorian (European Publication EP1519625A2).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Allen, which disclosed a hearing aid, met the limitations of independent claim 12. Allen taught using an ambient microphone and an ear canal microphone to measure acoustic reflectance and monitor for seal leakage over time. Allen's processing system adjusted the hearing aid's gain based on changes in a "reverse transfer function" (measured using the two microphones) to compensate for seal leakage. Petitioner contended this function corresponded to the claimed in-situ measurement of an Ear Canal Transfer Function (ECTF) required by claim 15.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Allen's system with Victorian to add modern wireless functionality. While Allen taught the core audio processing and leakage compensation, Victorian disclosed an earpiece with a wireless transceiver for communicating with external devices like a cellular phone, and the ability to mix audio from the remote device with ambient sound. A POSITA would have been motivated to add Victorian's transceiver to Allen's hearing aid to improve its functionality and expand its applicability, allowing users to take phone calls without removing the device.
  • Expectation of Success: Combining a known wireless transceiver (Victorian) with a known hearing aid processing system (Allen) was a straightforward application of existing technologies to achieve the predictable result of a wirelessly connected hearing aid.

Ground 3: Claims 18 and 20 are obvious over Ryan in view of Allen, alone or with Svean

• Prior Art Relied Upon: Ryan (Application # 2004/0196992), Allen (Application # 2006/0083395), and Svean (Patent 6,567,524).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued the combination of Ryan and Allen rendered independent claim 18 obvious. Ryan provided the foundational system of a non-transitory memory with instructions for a processor to deliver audio and measure sound pressure level (SPL) in the ear canal to determine seal quality, as argued in Ground 1. However, where Ryan focused on simply detecting and notifying the user of a leak, Allen taught the further step of adjusting the audio (by changing gain) to compensate for an ear seal leakage.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Ryan's seal detection with Allen's leakage compensation to solve a known problem. Ryan taught that improper seating causes howling, a nuisance that gain reduction can prevent. Allen provided a specific method for adjusting audio to compensate for seal leakage. A POSITA would have been motivated to incorporate Allen's compensation method into Ryan's device to create a more robust system that not only detects leaks but also actively mitigates their negative effects, like howling, thereby improving user comfort and performance.
  • Expectation of Success: Modifying Ryan's system, which already had gain control capabilities, to implement Allen's specific audio compensation technique was a predictable design choice that would have been well within the skill of a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges against other claims, primarily relying on combinations of the above art with references including Voix (Application # 2005/0123146) for measuring SPL differences between ambient and internal microphones, Alberth (Application # 2004/0125965) for mixing mobile communication audio with other audio content, and Simon (Application # 2005/0078838) for creating a personalized hearing level (PHL) profile.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, stating that the parallel district court litigation was in its earliest stages, with no trial date set and minimal investment by the court or parties. Petitioner contended these factors weighed heavily in favor of institution.
• Petitioner also argued against denial under 35 U.S.C. §325(d), asserting that the Examiner never considered the specific teachings from Svean relied upon in the petition (i.e., generating an explicit confirmation message for a proper seal) during prosecution of the ’424 patent or its parent applications.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-20 of the ’424 patent as unpatentable.