Filed via PTAB E2E on January 27, 2017
`
`DOCKET NO.: 2212665-00120US7
`Filed on behalf of K/S HIMPP
`By: Donald R. Steinberg, Reg. No 37,241
`Yung-Hoon Ha, Reg. No. 56,368
`Haixia Lin, Reg. No. 61,318
`Christopher R. O’Brien, Reg. No. 63,208
`Vera A. Shmidt 74,944
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Email: Don.Steinberg@wilmerhale.com
`Yung-Hoon.Ha@wilmerhale.com
`Haixia.Lin@wilmerhale.com
`Christopher.O’Brien@wilmerhale.com
`Vera.Shmidt@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`K/S HIMPP
`Petitioner
`
`v.
`
`III HOLDINGS 4, LLC
`Patent Owner
`
`Case IPR2017-00781
`Patent No. 8,654,999
`
`PETITION FOR INTER PARTES REVIEW OF CLAIMS 1-9 AND 16-19 OF
`U.S. PATENT NO. 8,654,999
`
`

`

`TABLE OF CONTENTS
`
`
`I. 
`Introduction .................................................................................................... 1 
`Mandatory Notices under 37 C.F.R. § 42.8 ................................................... 1 
`II. 
`A.  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ..................................... 1 
`
`B.  Related Matters - 37 C.F.R. § 42.8(b)(2) ....................................................... 2 
`
`C.  Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3) .................................... 2 
`
`D.  Service Information - 37 C.F.R. § 42.8(b)(4) ................................................ 2 
`
`Payment of Fees ............................................................................................. 3 
`III. 
`Requirements for Inter Partes Review........................................................... 3 
`IV. 
`A.  Grounds for Standing under 37 C.F.R. § 42.104(a) ....................................... 3 
`
`B. 
`
`Identification of the Challenge under 37 C.F.R. § 42.104(b) ........................ 3 
`
`1.  The Specific Art on Which the Challenge is Based ................................... 4 
`
`2.  The Specific Grounds on Which the Challenge is Based .......................... 5 
`
`Background of the ’999 Patent, State of the Art Prior to the Relevant Date,
`V. 
`and Person of Ordinary Skill in the Art ..................................................................... 6 
`A.  Summary of the ’999 Patent ........................................................................... 6 
`
`B.  The Prosecution History of the ’999 Patent ................................................... 7 
`
`C.  The State of the Art Prior to the Relevant Date ........................................... 10 
`
`D.  Person of Ordinary Skill in the Art .............................................................. 11 
`
`Claim Construction - 37 CFR § 41.104(b)(3) .............................................. 11 
`VI. 
`A.  Legal Overview ............................................................................................ 11 
`
`B.  Terms Needing Construction ....................................................................... 12 
`
`1. 
`
`“hearing aid profile” ................................................................................. 12 
`
`2. 
`“hearing correction filter” ......................................................................... 13 
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`3. 
`
`4. 
`
`“incremental hearing correction” ............................................................. 15 
`
`“incremental hearing correction filter” ..................................................... 16 
`
`VII.  GROUND 1: Claims 1-5 and 16 are unpatentable as obvious under 35
`U.S.C. § 103 over Fichtl (Ex. 1003) in view of Mangold (Ex. 1007) and Bisgaard
`(Ex. 1006). ................................................................................................................ 18 
`A. 
`[1. Preamble] ................................................................................................ 18 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`G. 
`
`H. 
`
`[1.1] - “a microphone to convert sound into electrical signals” ................... 18 
`
`[1.2] - “a speaker to output audible sound” .................................................. 19 
`
`[1.3] - “a processor” ..................................................................................... 19 
`
`[1.4] - “a memory to store instructions” ....................................................... 20 
`
`[1.5.1] – “…instructions, which when executed by the processor, cause the
`processor to: receive a selection of a hearing aid profile from a plurality of
`hearing aid profiles, the selected hearing aid profile configured to modulate
`the electrical signals to a level to compensate for a hearing impairment of a
`user” .............................................................................................................. 21 
`
`[1.5.2] “apply a first one of a sequence of incremental hearing correction
`filters to the modulated electrical signals to produce a modulated output
`signal to reduce the amplitude of the modulated electrical signals produced
`by the selected hearing aid profile to a first level that is less than a level to
`compensate for the hearing impairment of the user” ................................... 24 
`
`[1.5.3] “select a second one of the sequence of incremental hearing
`correction filters in response to receiving a trigger, the second one being
`designated to follow the first one in the sequence of incremental hearing
`correction filters and to reduce the amplitude of the modulated electrical
`signals produced by the selected hearing aid profile to a second level that is
`
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`greater than the first level and less than the level to compensate for the
`hearing impairment of the user” ................................................................... 29 
`
`I. 
`
`[1.6] “cause the speaker to output an alert when a final one of the sequence
`of incremental hearing correction filters is being applied, the final one being
`the last hearing correction filter of the sequence of incremental hearing
`correction filters” .......................................................................................... 31 
`
`J.  KSR Rationale to Combine ........................................................................... 32 
`
`K. 
`
`L. 
`
`M. 
`
`N. 
`
`O. 
`
`P. 
`
`[2] “each of the incremental hearing correction filters comprises a
`collection of acoustic configuration settings configured to modulate the
`electrical signal to a level that is within a range between an uncompensated
`hearing level of the user and the level to compensate for the hearing
`impairment of the user” ................................................................................ 36 
`
`[3.1] “a transceiver coupled to the processor and configurable to
`communicate with a computing device through a communication channel
`during operation, the transceiver to receive a signal from the computing
`device and to provide the signal to the processor” ....................................... 37 
`
`[3.2] “wherein the processor applies the selected one of the sequence of
`incremental hearing correction filters in response to receiving the signal” . 41 
`
`[4] “hearing aid of claim 3, wherein the signal includes the selected one of
`the sequence of incremental hearing correction filters” ............................... 42 
`
`[5.1] “hearing aid of claim 3, further comprising a memory to store the
`sequence of incremental hearing correction filters” ..................................... 42 
`
`[5.2] “wherein the signal includes an indicator identifying the selected one
`of the incremental hearing correction filters within the sequence” ............. 43 
`
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`Q. 
`
`R. 
`
`[5.3] “wherein, in response to receiving the signal, the processor retrieves
`the selected one of the incremental hearing correction filters from the
`memory and applies the selected one to the modulated electrical signals” . 43 
`
`[16] “hearing aid of claim 1, further comprising instructions that, when
`executed by the processor, cause the processor to generate the sequence of
`incremental hearing correction filters based at least in part on a magnitude
`of a difference between a hearing aid profile and a hearing loss level
`associated with the user of the hearing aid, the sequence of incremental
`hearing correction filters including at least the first hearing correction filter
`and the second hearing correction filter” ..................................................... 44 
`
`VIII.  GROUND 2: Claim 18 is unpatentable as obvious under 35 U.S.C. § 103
`over Fichtl (Ex. 1003) in view of Mangold (Ex. 1007), Bisgaard (Ex. 1006), and
`Sacha (Ex. 1004). ..................................................................................................... 45 
`A. 
`[18.1] “hearing aid of claim 1, further comprising instructions that, when
`executed by the processor, cause the processor to: determine an amount of
`time during which the first hearing correction filter is applied” .................. 45 
`
`B. 
`
`[18.2] “apply the second hearing correction filter when the amount of time
`exceeds a pre-determined threshold” ........................................................... 47 
`
`IX.  GROUND 3: Claims 6-9 and 17 are unpatentable as obvious under 35
`U.S.C. § 103 over Fichtl (Ex. 1003) in view of Sacha (Ex. 1004), Mangold (Ex.
`1007), and DE19542961 (Ex. 1009). ....................................................................... 47 
`A. 
`[6.1] “A non-transitory computer-readable device comprising instructions
`that, when executed by a processor, cause the processor to…” ................... 47 
`
`B. 
`
`[6.2] “select a hearing aid profile from a plurality of hearing aid profiles,
`the selected hearing aid profile configured to modulate an audio signal to a
`level to compensate for a hearing impairment of a user” ............................ 48 
`
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`C. 
`
`D. 
`
`E. 
`
`[6.3] “apply a first hearing correction filter to the selected hearing aid
`profile to reduce the amplitude of the modulated audio signal produced by
`the selected hearing aid profile to a first level that is less than the level to
`compensate for the hearing impairment of the user” ................................... 48 
`
`[6.4] “determine an amount of time during which the first hearing
`correction filter is applied” ........................................................................... 48 
`
`[6.5.1] “selectively apply a second hearing correction filter to the selected
`hearing aid profile to reduce the amplitude of the modulated audio signal
`produced by the selected hearing aid profile to a second level that is greater
`than the first level and less than the level to compensate for the hearing
`impairment of the user when the amount of time exceeds a pre-determined
`threshold” ..................................................................................................... 49 
`
`F. 
`
`[6.5.2] “the pre-determined threshold is programmable by the user” ......... 49 
`
`G.  KSR Rationale to Combine ........................................................................... 50 
`
`H. 
`
`I. 
`
`J. 
`
`[7] “computer-readable device of claim 6, wherein the pre-determined
`threshold is configurable by the user” .......................................................... 52 
`
`[8] “computer-readable device of claim 6, further comprising instructions
`that, when executed by the processor, cause the processor to receive the
`first hearing correction filter and the second hearing correction filter from a
`transceiver configured to communicatively couple to a computing device
`during operation” .......................................................................................... 53 
`
`[9] “non-transitory computer-readable device of claim 6, further
`comprising instructions that, when executed by the processor, cause the
`processor to dynamically generate the first hearing correction filter and the
`second hearing correction filter based on at least one of the hearing
`
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`K. 
`
`impairment of the user and a hearing aid profile including a collection of
`acoustic configuration settings for producing the modulated output signal at
`the corrected hearing level” .......................................................................... 54 
`
`[17] “non-transitory computer-readable device of claim 6, further
`comprising instructions that, when executed by the processor, cause the
`processor to generate the sequence of incremental hearing correction filters
`based at least in part on a magnitude of a difference between a hearing aid
`profile and a hearing loss level associated with the user of the hearing aid,
`the sequence of incremental hearing correction filters including at least the
`first hearing correction filter and the second hearing correction filter” ....... 55 
`
`GROUND 4: Claim 19 is unpatentable as obvious under 35 U.S.C. § 103
`X. 
`over Fichtl (Ex. 1003) in view of Sacha (Ex. 1004), Mangold (Ex. 1007), Bisgaard
`(Ex. 1006), and DE19542961 (Ex. 1009). ............................................................... 55 
`A. 
`[19] “hearing aid of claim 18, wherein the pre-determined threshold is
`adjustable by the user” ................................................................................. 55 
`
`XI. 
`
`Conclusion .................................................................................................... 56 
`
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`I.
`
`Introduction
`K/S HIMPP (“Petitioner”), in accordance with 35 U.S.C. §§ 311–19 and 37
`
`C.F.R. §§ 42.100 et seq., respectfully requests inter partes review of claims 1–9
`
`and 16-19 of U.S. Patent No. 8,654,999 (“the ’999 Patent”) (Ex. 1001) assigned to
`
`III Holdings 4, LLC (“Patent Owner”) via assignment record at Reel/Frame:
`
`36535-249. This Petition shows by at least a preponderance of the evidence that
`
`there is a reasonable likelihood that Petitioner will prevail in proving that claims 1–
`
`9 and 16-19 of the ’999 Patent are unpatentable based on prior art that the Patent
`
`Office did not have before it or did not fully consider during prosecution.
`
`II. Mandatory Notices under 37 C.F.R. § 42.8
`Pursuant to 37 C.F.R. § 42.8(a)(1), Petitioner provides the following
`
`mandatory disclosures:
`
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`Petitioner K/S HIMPP is a real party-in-interest. For purposes of this
`
`Petition and for the avoidance of disputes, Petitioner identifies HIMPP members
`
`and affiliates GN Hearing A/S (formerly GN Resound A/S) and GN Store Nord
`
`A/S; IntriCon Corporation; Sivantos GmbH and Sivantos Inc.; Sonova Holding AG
`
`and Sonova AG (formerly Phonak AG); Starkey Laboratories, Inc. (aka Starkey
`
`Hearing Technologies); Widex A/S; and William Demant Holding A/S as
`
`additional real parties-in-interest.
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`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`Petitioner is not aware of any other matters related to the ’999 Patent.
`
`
`
`Concurrently with this Petition for Inter Partes Review, Petitioner is also filing a
`
`Petition for Inter Partes Review of claims 10–15 and 20 of the ’999 Patent and
`
`requests that both petitions be assigned to the same panel.
`
`C. Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`Lead Counsel: Donald R. Steinberg (Reg. No. 37,241)
`
`
`
`First Backup Counsel: Yung-Hoon Ha (Reg. No. 56,368)
`
`Backup Counsel: Haixia Lin (Reg. No. 61,318); Christopher R. O’Brien
`
`(Reg. No. 63,208); Vera A. Shmidt (Reg. No. 74,944)
`
`D.
`Service Information - 37 C.F.R. § 42.8(b)(4)
`Email:
`Donald R. Steinberg, don.steinberg@wilmerhale.com;
`
`
`
`Haixia Lin, Haixia.Lin@wilmerhale.com;
`
`Christopher O’Brien, Christopher.O’Brien@wilmerhale.com;
`
`Vera Schmidt, Vera.Schmidt@wilmerhale.com;
`
`Yung-Hoon Ha Yung-Hoon.Ha@wilmerhale.com
`
`Post and Hand Delivery: Wilmer, Cutler, Pickering, Hale and Dorr LLP
`
`60 State St., Boston MA 02109
`
`Telephone: 617-526-6000
`
`
`
`
`
`Facsimile: 617-526-5000
`
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`Petitioner consents to email delivery on lead, first backup, and backup
`
`counsel.
`
`III. Payment of Fees
`The undersigned authorizes the Patent Office to charge the fee required by
`
`37 C.F.R. § 42.15(a) for this Petition for inter partes review to Deposit Account
`
`No. 080219. Any additional fees that might be due are also authorized.
`
`IV. Requirements for Inter Partes Review
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`Petitioner hereby certifies that the ’999 Patent is available for inter partes
`
`review and that the Petitioner is not barred or estopped from requesting an inter
`
`partes review challenging the patent claims of the ’999 Patent on the grounds
`
`identified herein.
`
`B.
`Identification of the Challenge under 37 C.F.R. § 42.104(b)
`Petitioner requests inter partes review of claims 1–9 and 16-19 of the ’999
`
`Patent and that the Board cancel the same as unpatentable. Petitioner asks that
`
`each claim be found unpatentable. The ’999 Patent claims priority to U.S.
`
`Provisional Patent Application Nos. 61/323,841 filed April 13, 2010 and
`
`61/305,759 filed June 2, 2010. ’999 Patent, Ex. 1001.1
`
`
`1 As described below, the prior art relied on in this Petition predates the provisional
`
`dates cited on the front of the ’999 Patent. Accordingly, for purposes of this
`
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`1. The Specific Art on Which the Challenge is Based
`Petitioner relies upon the following patents and printed publications:
`
`Exhibit 1003 – U.S. Patent No. 8,787,603 to Fichtl, et al. (“Fichtl”) was
`
`filed on December 22, 2009 and issued on July 22, 2014. Fichtl, which was not
`
`considered during prosecution of the ’999 Patent and is not cumulative of any prior
`
`art considered by the Examiner(s), is prior art under 35 U.S.C. § 102(e).
`
`Exhibit 1004 – U.S. Patent Application Publication 2003/0215105 to Sacha
`
`(“Sacha”) was filed on May 16, 2002 and published on November 20, 2003. Sacha
`
`is prior art under at least 35 U.S.C. § 102(b) and was considered during
`
`prosecution of the ’999 Patent.
`
`Exhibit 1006 – U.S. Patent No. 6,741,712 to Bisgaard (“Bisgaard”) was
`
`filed on June 21, 2001 and issued on May 25, 2004. Bisgaard, which was not
`
`considered during prosecution of the ’999 Patent and is not cumulative of any prior
`
`art considered by the Examiner(s), is prior art under at least 35 U.S.C. § 102(b).
`
`
`Petition, Petitioner assumes, without taking a position, that the ’999 Patent is
`
`entitled to the filing dates of those provisional applications. However, Petitioner
`
`reserves the right to argue in later proceedings (before the USPTO or other
`
`tribunals) that the subject matter claimed in the ’999 Patent is unsupported by those
`
`provisional patent applications.
`
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`Exhibit 1007 – U.S. Patent No. 4,972,487 to Mangold (“Mangold”) was
`
`filed on May 16, 1989 as a continuation of U.S. Application No. 07/175,233 filed
`
`March 30, 1988. Mangold issued on November 20, 1990. Mangold, which was
`
`not considered during prosecution of the ’999 Patent and is not cumulative of any
`
`prior art considered by the Examiner(s), is prior art under at least 35 U.S.C. §
`
`102(b).
`
`Exhibit 1009 – German patent publication DE19542961 (“DE961”) was
`
`published on May 15, 1997. DE961, which was not considered during prosecution
`
`of the ’999 Patent and is not cumulative of any prior art considered by the
`
`Examiner(s), is prior art under at least 35 U.S.C. § 102(b).
`
`2. The Specific Grounds on Which the Challenge is Based
`Petitioner respectfully requests cancellation of claims 1–9 and 16-19 of the
`
`’999 Patent on the following grounds:
`
`Ground
`1
`
`’999 Patent Claims
`1-5, 16
`
`2
`
`3
`
`4
`
`Basis
`Obvious under §103 by Fichtl (Ex. 1003) in
`view of Mangold (Ex. 1007) and Bisgaard
`(Ex. 1006)
`Obvious under §103 by Fichtl (Ex. 1003) in
`view of Mangold (Ex. 1007), Bisgaard (Ex.
`1006), and Sacha (Ex. 1004)
`Obvious under §103 by Fichtl (Ex 1003) in
`view of Sacha (Ex 1004), Mangold (Ex.
`1007), and DE961 (Ex. 1009)
`Obvious under § 103 by Fichtl (Ex. 1003) in
`view of Mangold (Ex. 1007), Bisgaard (Ex.
`1006), Sacha (Ex. 1004), and DE961 (Ex.
`1009)
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`
`6-9, 17
`
`19
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`

`
`
`Pursuant to 37 C.F.R. § 42.104(b)(4) and (5), Sections VII-X demonstrate
`
`that claims 1–9 and 16-19 of the ’999 Patent are unpatentable.
`
`V. Background of the ’999 Patent, State of the Art Prior to the Relevant
`Date, and Person of Ordinary Skill in the Art
`A. Summary of the ’999 Patent
`The ’999 Patent relates to a hearing aid that includes the ability to provide an
`
`incremental or progressive hearing adjustment for a user. ’999 Patent, Ex. 1001 at
`
`Abstract, 1:58-67, 2:26-39. A user who is wearing a hearing aid for the first time
`
`may not be accustomed to hearing certain sounds or frequencies. As described in
`
`the ’999 Patent, some first-time hearing aid users may experience psychological
`
`distress when their hearing is restored to a normal level after years of hearing loss.
`
`Id. at 1:58-67. A user suffering from distress related to the abrupt change may stop
`
`wearing his or her hearing aid. Id. Although already known prior to the filing of
`
`the ’999 Patent, the purported invention of the ’999 Patent is the incremental or
`
`progressive application of hearing adjustments over time to ease a user’s transition
`
`from an uncompensated hearing level to a fully-compensated hearing level. Id. at
`
`2:26-39.
`
`According to the ’999 Patent, the hearing aid processor would normally
`
`immediately apply a complete hearing correction for the user by applying a
`
`“hearing aid profile.” Id. at 4:48-59. The purported invention of the ’999 Patent is
`
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`the application of multiple, incremental correction levels in the form of “hearing
`
`correction filters.” Id. at 4:60-5:2, 6:42-52, 8:55-58. Both the hearing correction
`
`filters and the amount of time that a particular hearing correction filter is applied
`
`before transitioning to the next hearing correction filter may vary. Id. at 8:36-54.
`
`The ’999 Patent also discloses that the hearing aid may generate a trigger
`
`that signals the hearing aid to provide the next incremental hearing correction. Id.
`
`at 10:32-52, Fig. 3. The trigger can be generated a number of different ways,
`
`including once a number of clock cycles exceeds a preset limit, based on a
`
`calendar, or after a period of time programmed by the user or preset by an
`
`audiologist. Id. at 10:36-52; see also id. at 7:51-54 (user can program time period
`
`using an input interface of a computing device). The trigger can also be user
`
`initiated, such as through a graphical user interface (GUI). Id. at 8:3-16, 10:47-53.
`
`
`
`The progressive application of “filtered” hearing correction profiles
`
`continues until the user’s full hearing aid profile is implemented. At that time, the
`
`hearing aid processor may provide an audible alert indicating to the user that the
`
`adjustment process is complete. Id. at 10:53-61.
`
`B.
`The Prosecution History of the ’999 Patent
`During prosecution of the ’999 Patent, the claims were amended twice in
`
`response to Office Actions in order to overcome prior art. The first Office Action
`
`issued on April 4, 2013 and rejected claims 1-20 as unpatentable on the basis of 35
`
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`U.S.C. §§ 101, 102, and 103. ’999 Patent File History, Ex. 1002 at 57-72.
`
`Specifically, the Examiner rejected claims 1 and 4 under § 102(b) as being
`
`anticipated by Janssen (Ex. 1005); claims 2, 3, and 10 under § 103(a) over Janssen
`
`in view of Davis et al. (U.S. Patent 6,574,342); claim 6 under § 103(a) over
`
`Janssen; claims 5 and 7-9 under § 103(a) over Janssen in view of Sacha (Ex.
`
`1004); claims 11-13 under § 103(a) over Janssen and Davis and further in view of
`
`Sacha; claims 14-15 under § 103(a) over Janssen in view of Topholm (U.S. Patent
`
`5,202,927); and claims 16-20 under §103(a) over Janssen and Topholm and further
`
`in view of Sacha. Id.
`
`In response to the first Office Action, the Applicant amended the claims on
`
`May 21, 2013. ’999 Patent File History, Ex. 1002 at 79-91. The Applicant
`
`narrowed claim 1 by adding several limitations, including “a speaker to output
`
`audible sound,” and “a memory to store instructions, which when executed by the
`
`processor, cause the processor to: apply a first one of a sequence of incremental
`
`hearing corrections the electrical signals to produce a modulated output signal to at
`
`least partially compensate for a hearing impairment of a user when output by the
`
`speaker; select a second one of the sequence of incremental hearing corrections in
`
`response to receiving a trigger, the second one being designated to follow the first
`
`one in the sequence of incremental hearing corrections; and cause the speaker to
`
`output an alert when a final one of the sequence of incremental hearing corrections
`
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`is being applied, the final one being the last hearing correction of the sequence of
`
`incremental hearing corrections.” Id. Claims 3, 5, 6, 10-14, and 18-19 were also
`
`amended. Id.
`
`The Examiner did not find the amendments and arguments persuasive, and
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`issued a Final Office Action on July 26, 2013 rejecting claims 1-20. ’999 Patent
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`File History, Ex. 1002 at 103-122. The Examiner rejected claims 10-13 under §
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`102(b) as being anticipated by Sacha; claims 1 and 4-9 under § 103(a) over Janssen
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`in view of Sacha; claims 2 and 3 under § 103(a) over Janssen and Sacha and
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`further in view of Davis; claims 14 and 15 under § 103(a) over Janssen in view of
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`Topholm and further in view of Zhang et al. (U.S. Patent App. Publication
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`2010/0246869); and claims 16-20 under § 103(a) over Janssen, Topholm and
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`Zhang and further in view of Sacha. Id.
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`In response to the Final Office Action, the Applicant filed a Request for
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`Continued Examination (RCE) on September 13, 2013 cancelling claims 3-6 and
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`18, amending claims 1, 2, 8-17, 19, and 20, and adding new claims 21-25. ’999
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`Patent File History, Ex. 1002 at 127-146. The Applicant amended claim 1 to
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`include the additional limitations of “receiv[ing] a selection of a hearing aid
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`profile from a plurality of hearing aid profiles, the selected hearing aid profile
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`configured to modulate the electrical signals to a level to compensate for a hearing
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`impairment of a user” and applying a first one of incremental hearing correction
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`filters to the “modulated electrical signals to produce a modulated output signal to
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`reduce the amplitude of the modulated electrical signals produced by the selected
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`hearing aid profile to a first level that is less than a level to compensate for the
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`hearing impairment of the user.” Id.
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`A Notice of Allowance was mailed on October 2, 2013 and included an
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`Examiner’s Amendment to claims 1, 2, 10-14, 21 and 22. ’999 Patent File History,
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`Ex. 1002 at 154-165. The Examiner concluded, without explanation, that the prior
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`art did not disclose the limitations of the amended claims. Id. Claims 1-20 issued
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`on February 18, 2014. Id. at 184.
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`C. The State of the Art Prior to the Relevant Date
`As discussed below, all of the components involved in the ’999 Patent
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`claims were known prior to the critical date. For example, hearing aids with
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`processors and memory, as well as the other physical components and software
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`functionality recited in the ’999 Patent claims, were all known and in use in the
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`field. The art discussed below also establishes that before 2010, one of ordinary
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`skill in the art would have recognized that many first time hearing aid users
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`experience discomfort due to a sudden increase in hearing sensitivity. The process
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`of incrementally adjusting the hearing aid correction, claimed in the ’999 Patent
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`and referred to as “acclimatization,” was a known solution to this problem. Atlas
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`Decl., Ex. 1008, ¶¶ 29-34, 61-101.
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`D.
`Person of Ordinary Skill in the Art
`The level of ordinary skill in the art is evidenced by the prior art. See In re
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`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did
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`not err in adopting the approach that the level of skill in the art was best
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`determined by references of record). The prior art discussed herein, and in the
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`declaration of Dr. Les Atlas, demonstrates that a person of ordinary skill in the art
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`(“POSA”) in the field of the ’999 Patent would have been someone with a
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`bachelor’s degree in electrical or computer engineering, or the equivalent, and at
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`least two years of experience in audio signal processing for audiological products.
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`Graduate education could substitute for work experience, and additional work
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`experience/training could substitute for formal education. Atlas Decl., Ex. 1008,
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`¶¶ 22-28.
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`VI. Claim Construction - 37 CFR § 41.104(b)(3)
`A. Legal Overview
`In an IPR, the terms in the challenged claims should be given their plain
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`meaning under the broadest reasonable interpretation standard. Cuozzo Speed
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`Technologies, LLC v. Lee, 136 S. Ct. 2131, 2145-46 (2016). If the specification
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`sets forth an alternate definition of a term with reasonable clarity, deliberateness,
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`and precision, the patentee’s lexicography governs. In re Paulsen, 30 F.3d 1475,
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`1480 (Fed. Cir. 1994). Petitioner adopts this standard for this proceeding, but
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`reserves the right to pursue different constructions in a district court, where
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`different claim construction standards apply.
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`Should the Patent Owner, seeking to avoid the prior art, contend that the
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`claim terms have a construction different from their broadest reasonable
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`interpretation, the appropriate course is for the Patent Owner to seek to amend the
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`claims to expressly correspond to its contentions in this proceeding. See 77 Fed.
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`Reg. 48,764, 68,766-767 (Aug. 14, 2012).
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`Any claim terms not included in this section have their broadest reasonable
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`meaning in light of the specification as commonly understood by those of ordinary
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`skill in the art.
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`B. Terms Needing Construction
`1. “hearing aid profile”
`The term “hearing air profile” should be construed as “a collection of
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`acoustic configuration settings for a hearing aid which are used by a processor to
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`shape acoustic signals to correct for a user’s hearing loss.” According to the ’999
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`Patent, “[a]s used herein, the term ‘hearing aid profile’ refers to a collection of
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`acoustic configuration settings for a hearing aid, such as hearing aid 202 depicted
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`in FIG. 2, which are used by a processor 210 (in FIG. 2) to shape acoustic signals
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`to correct for a user’s hearing loss.” ’999 Patent, Ex. 1001 at 2:40-44.2 Thus,
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`2 All emphasis is added unless otherwise noted.
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`Petitioner’s construction is consistent with the ’999 Patent’s explicit definition of
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`this term. The specification further confirms that a “hearing aid profile” is applied
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`to signals to correct for a user’s hearing loss. Id. at 2:46-49 (“Each of the hearing
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`aid profiles are designed to compensate for the hearing loss of the user based on
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`the user’s particular hearing characteristics (impairment).”), 2:49-58. Atlas Decl.,
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`Ex. 1008, ¶¶ 47-48.
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`2.
`“hearing correction filter”
`The term “hearing correction filter” should be construed as “an adjustment
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`applied by a processor to a hearing aid profile to reduce the level of correction
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`provid