IPR2017-00781
`U.S. Patent No. 8,654,999
`
`Docket No.: 2212665-00120US7
`Filed on behalf of K/S HIMPP
`By: Donald R. Steinberg, Reg. No. 37,241
`Haixia Lin, Reg. No. 61,318
`Christopher R. O’Brien, Reg. No. 63,208
`Vera A. Shmidt, Reg. No. 74,944
`Yung-Hoon Ha, Reg. No. 56,368
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 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
`_______________
`
`PETITIONER’S REPLY
`
`
`

`

`IPR2017-00781
`U.S. Patent No. 8,654,999
`
`B. 
`
`C. 
`
`D. 
`
`I. 
`II. 
`
`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1 
`Claim 1 is Obvious over the Cited References ................................................ 1 
`A. 
`Fichtl discloses a “sequence of incremental hearing correction filters,”
`a “second one” in the sequence “being designated to follow” a “first
`one” in the sequence .............................................................................. 2 
`IV adopts an overly narrow interpretation of “hearing correction
`filter” ...................................................................................................... 4 
`Fichtl discloses “hearing correction filters” even under IV’s overly
`narrow interpretation ............................................................................. 8 
`IV adopts an overly narrow interpretation of a “sequence of
`incremental hearing correction filters” ................................................ 10 
`Fichtl discloses a “sequence of incremental hearing correction filters”
`even under IV’s overly narrow interpretation ..................................... 11 
`IV adopts an overly narrow interpretation of “the second [incremental
`hearing correction filter] being designated to follow the first
`[incremental hearing correction filter]” .............................................. 13 
`Fichtl discloses “the second [incremental hearing correction filter]
`designated to follow the first [incremental hearing correction filter]”
`even under IV’s overly narrow interpretation ..................................... 14 
`III.  Claim 6 is Obvious over the Cited References .............................................. 15 
`IV.  Claims 2-5, 7-9, and 16-19 are Obvious over the Cited References ............. 15 
`V.  Dr. Atlas’ Opinions are Based on Factual Evidence ..................................... 15 
`VI.  Conclusion ..................................................................................................... 17 
`
`
`
`E. 
`
`F. 
`
`G. 
`
`i
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`

`

`IPR2017-00781
`U.S. Patent No. 8,654,999
`
`I.
`
`INTRODUCTION
`In its Decision on Institution, the Board recognized that there is a reasonable
`
`likelihood that the challenged claims 1-9 and 16-19 should be cancelled. IPR2017-
`
`00781 Decision on Institution (“DI”) at 37. None of the arguments raised by the
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`Patent Owner III Holdings 4, LLC (hereinafter “IV”) provides any reason to alter
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`the determination of the Board in the DI.
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`IV argues that the cited references fail to teach particular claim terms by first
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`adopting overly narrow interpretations of the terms, then mischaracterizing the
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`disclosure of U.S. Patent No. 8,787,603 (“Fichtl”) to argue that it fails to disclose
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`these terms under IV’s narrow interpretation. IV’s claim interpretations are
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`unsupported by the specification, file history, or the claims themselves.
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`Furthermore, even under IV’s narrow interpretations, Fichtl, in view of the other
`
`cited references, would still render the claims obvious.
`
`II. CLAIM 1 IS OBVIOUS OVER THE CITED REFERENCES
`IV argues that Fichtl fails to disclose a “sequence of incremental hearing
`
`correction filters,” a “second one” in the sequence “being designated to follow” a
`
`“first one” in the sequence, as recited in claim 1. However, as discussed below, IV
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`relies on unsupported and incorrect narrow interpretations of these terms. Even
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`under IV’s narrow interpretations of the claims, Fichtl would still disclose these
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`terms.
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`1
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`

`

`A.
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`Fichtl discloses a “sequence of incremental hearing correction
`filters,” a “second one” in the sequence “being designated to
`follow” a “first one” in the sequence
`Fichtl discloses executing an acclimatization algorithm where the amount of
`
`compensation for the user’s hearing loss increases over time. Fichtl, Ex. 1003 at
`
`Abstract (“The intensity of the hearing device is increased in the long term”), 3:32-
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`34 (“controller 6 is adapted to execute an acclimatization algorithm . . .”), 4:25-26
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`(“acclimatization process is controlled by software being executed on the
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`controller 6”). As represented by the curve marked “X” plotted on the graph
`
`depicted in Fig. 2, the acclimatization algorithm increases the value of an audio
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`processing parameter (APP) over time. Id. at Fig. 2, 3:35-36 (“FIG. 2 shows how
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`an audio processing parameter APP is changed over time in a hearing device 1”),
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`3:42-4:15, 4:25-67. In particular, an intermediate value X is slowly increased
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`while the hearing aid is on, then held constant in memory while the hearing aid is
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`off, such that each time the hearing aid is turned on, APP is set to the last value for
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`X as stored in memory. Id. at Fig. 2, 3:55-57, 3:66-4:7, 4:31-36, 4:41-53.
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`2
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`

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`IPR2017-00781
`U.S. Patent No. 8,654,999
`
`Fichtl, Ex. 1003, Fig. 2
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`
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`As shown in Fig. 2, APP starts at an initial power-on value (iPOV) selected to
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`provide a smaller degree of compensation than the target power-on value (tPOV),
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`which is the value for APP corresponding to the selected hearing aid profile that
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`compensates for the user’s hearing impairment. Id. at Fig. 2, 3:42-48 (“At time
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`‘A,’ a fitter programs an initial power-on value iPOV for the audio processing
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`parameter as well as a target power-on value tPOV…The target power-on value
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`tPOV is, for example, 10 dB higher than the initial power-on value iPOV”),
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`Abstract (“An initial power-on value (iPOV) and a target power-on value (tPOV),
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`which is to be reached at the end (H) of the acclimatization phase, may be
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`programmed by an audiologist.”), 3:49-4:24, 4:25-67. The compensation increases
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`to each of a sequence of replacement power-on-values (e.g., rPOV1, rPOV2, . . .)
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`3
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`

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`IPR2017-00781
`U.S. Patent No. 8,654,999
`each time the hearing aid is turned on until it reaches tPOV. Id. Fichtl discloses a
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`processor that uses APP values provided by a controller, including iPOV, rPOV1,
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`rPOV2, etc., generated by the acclimatization algorithm, to process sounds for a
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`hearing device user. Id. at Figs. 1-2, 3:23-34. Thus, Fichtl’s acclimatization
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`algorithm corresponds to adjustments applied by the controller to the collection of
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`APPs of the processor to reduce the level of correction provided to the hearing
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`device user by application of the hearing aid profile. In other words, Fichtl’s
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`acclimatization algorithm as executed by the controller comprises a sequence of
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`“hearing correction filters.”
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`In one embodiment of Fichtl, after the initial APP value (iPOV) is
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`implemented when a user first turns on the hearing aid, the algorithm is executed
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`and a second APP value is stored as a replacement power-on-value (rPOV1) when
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`the hearing aid is turned off. Id. at Fig. 2, 3:66-4:4; see also id. at 5:11-41. This
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`second APP value (rPOV1) corresponds to a second in a sequence of incremental
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`hearing correction filters and is designated to follow the initial APP value (iPOV),
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`corresponding to a first in a sequence of incremental hearing correction filters. Id.
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`at Fig. 2, 3:66-4:7, 4:31-36, 4:41-53.
`
`B.
`
`IV adopts an overly narrow interpretation of “hearing correction
`filter”
`The Board adopted the following construction for “hearing correction filter”:
`
`“a filter that is applied by a processor within a hearing aid to a hearing aid profile
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`4
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`

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`IPR2017-00781
`U.S. Patent No. 8,654,999
`to reduce the level of correction provided to the user by application of the hearing
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`aid profile.” DI at 11. IV disagrees with the Board’s construction, reiterating its
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`argument from its preliminary response that the construction of the term “hearing
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`correction filter,” as recited in claim 1, should be narrowed to require a “collection
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`of filters.” IPR2017-00781 Patent Owner Response (“POR”) at 14. However, the
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`Board already correctly rejected this construction. DI at 9-11. The term “hearing
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`correction filter” does not require a “collection of filters.”
`
`IV argues that the specification expressly defines this term as a “collection
`
`of filters.” POR at 14. However, the specification does not state that a “hearing
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`correction filter” is itself a collection of filters, merely that it “refers to” (i.e.,
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`alludes to) such a collection. ’999 patent, Ex. 1001, 2:65-66. Namely, as
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`acknowledged in the DI, each filter in the collection is applied sequentially over a
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`period of time to provide incremental corrections for a user’s hearing loss. Id.,
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`2:65-3:7 (“As used herein, the term “hearing correction filter” refers to a
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`collection of filters . . . . The collection of hearing correction filters may include a
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`series of hearing correction adjustments designed to be applied in a sequence over
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`a period of time to provide incremental corrections for the user's hearing
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`5
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`loss . . .”); see also DI at 9-10.1 None of the other portions of the specification
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`cited by IV support requiring a single hearing correction filter to itself be a
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`collection of filters. In particular, the specification notes that “the filter or
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`correction used to achieve the correction lines and ultimately the hearing aid
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`profile is composed of a plurality of coefficients, parameters, or other
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`settings.” ’999 patent, Ex. 1001, 5:42-48. This portion merely states that a filter or
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`correction includes multiple settings, but fails to require that a hearing correction
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`filter must be a collection of filters. Thus, a “hearing correction filter” is not
`
`required to be a “collection of filters” as IV proposes.
`
`IV also appears to interpret the term “hearing correction filter” to require a
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`mechanism that “change[s] frequency characteristics of the underlying audio
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`signal” (POR at 25-26) and “impacts different frequencies of the signal in different
`
`ways” (POR at 27) because the specification discloses an “illustrated example” that
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`“adjust[s] selected frequencies to the desired hearing level while providing less of
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`an enhancement to other frequencies.” ’999 patent, Ex. 1001, 4:35-39. IV’s expert
`
`acknowledges that he adopts this narrow view of the term “hearing correction
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`filter.” Brown Tr., Ex. 1016, 48:17-22 (agreeing that his opinion is that “a hearing
`
`
`
` 1
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` Emphasis added throughout this Reply unless otherwise indicated.
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`6
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`correction filter has to provide a varying effect on different frequencies of a
`
`signal”). This interpretation is incorrect.
`
`First, these requirements are absent from IV’s own proposed construction of
`
`the term “hearing correction filter.” As IV’s expert acknowledges, a filter can treat
`
`all frequencies equally. Brown Tr., Ex. 1016, 21:8-25. Thus, a collection of
`
`filters, as recited in IV’s construction, could adjust all frequencies equally and need
`
`not necessarily impact different frequencies in different ways.
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`Second, there is no indication in the specification or file history that the
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`patentee intended to disclaim any hearing correction filter that did not apply
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`adjustments that varied across frequencies. As noted above, IV’s requirements
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`appear to be based solely on a mere “illustrated example” disclosed in the
`
`specification. ’999 patent, Ex. 1001, 4:35-39; see also id., 4:39-40 (“However, it
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`should be understood that other incremental hearing corrections could be used.”)
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`Third, these requirements are contrary to the specification, which further
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`discloses that in another example, “the incremental hearing correction could
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`dampen or otherwise apply filters to the selected hearing aid profile to
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`incrementally adjust the hearing correction across the entire range of frequencies
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`substantially evenly.” Id., 4:40-44. In other words, the ’999 patent discloses that a
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`hearing correction filter could dampen the selected hearing aid profile across the
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`entire range of frequencies substantially evenly, rather than having a varying effect
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`7
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`on different frequencies. IV’s expert acknowledges that his view of the term
`
`“hearing correction filter” would not cover this example from the specification.
`
`Brown Tr., Ex. 1016, 48:24-49:3 (describing a hearing correction filter that
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`“evenly dampen[s] the entire range of frequencies” as “not [] logical”).
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`Thus, there is no requirement that a “hearing correction filter” must impact
`
`different frequencies of the signal in different ways, as IV alleges.
`
`C.
`
`Fichtl discloses “hearing correction filters” even under IV’s overly
`narrow interpretation
`IV argues that Fichtl fails to disclose a “hearing correction filter” by first
`
`mischaracterizing Fichtl as only disclosing incremental volume adjustments, then
`
`arguing that a volume adjustment does not meet IV’s overly narrow interpretation
`
`of the term. Namely, IV argues that a volume adjustment is not implemented by a
`
`collection of filters and does not change frequency characteristics of an audio
`
`signal. POR at 25-29.
`
`First, even if Fichtl only disclosed volume adjustments as IV alleges, Fichtl
`
`would still disclose a “hearing correction filter,” as recited in claim 1. IV argues
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`that a volume adjustment “adjust[s] the amplitude across all frequencies of the
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`signal.” POR at 27. For example, IV’s expert describes evenly dampening the
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`entire range of frequencies as a volume adjustment. Brown Tr., Ex. 1016, 48:24-
`
`49:3. Like this volume adjustment, the ’999 patent discloses that a hearing
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`correction filter could dampen across the entire range of frequencies substantially
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`8
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`

`

`IPR2017-00781
`U.S. Patent No. 8,654,999
`evenly. ’999 patent, Ex. 1001, 4:40-44; see also Brown Tr., Ex. 1016, 21:8-25
`
`(acknowledging it was known that a filter could treat all frequencies equally).
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`Thus, a volume adjustment is one type of “hearing correction filter.”
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`Furthermore, a person of ordinary skill in the art would have understood that
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`a volume adjustment may comprise a vector of volume values, each associated
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`with the loudness of a different frequency band. Atlas Tr., Ex. 2005, 42:3-10. As
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`IV’s expert agreed, it was known before the ’999 patent that hearing aids included
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`filter coefficients, including a coefficient for each frequency band for changing its
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`level of attenuation, or loudness. Brown Tr. Ex. 1016, 22:2-23:8. Thus, a vector
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`volume adjustment would correspond to a collection of filters, capable of
`
`impacting different frequencies in a different way. A volume adjustment is
`
`therefore a “hearing correction filter,” even under IV’s overly narrow view of the
`
`term.
`
`Second, Fichtl discloses adjustments other than volume that also constitute
`
`“hearing correction filters,” as recited in claim 1, even under IV’s narrow view of
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`this term. As discussed in the Petition, Fichtl discloses hearing correction filters
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`corresponding to power-on values iPOV, rPOV1, rPOV2, etc. for audio processing
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`parameters (APP). IPR2017-00781 Petition (“Petition”) at 24-31. Fichtl discloses
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`that APP may be volume “but may also be something else, as, for example, treble
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`or noise canceling.” Fichtl, Ex. 1003, 3:44-47. Thus, APP may include multiple
`
`9
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`

`

`IPR2017-00781
`U.S. Patent No. 8,654,999
`parameters, not just a single volume adjustment, where those parameters may
`
`correspond to filters and impact different frequencies in different ways. For
`
`example, treble adjustments are adjustments to a set of higher frequencies. Brown
`
`Tr., Ex. 1016, 20:11-16. Adjusting some frequencies, such as a set of higher
`
`frequencies, more than others could be accomplished via a filter. Id., 18:18-23; see
`
`also id., 17:20-25. In fact, IV’s expert agrees that adjusting a set of higher
`
`frequencies constitutes a “hearing correction filter.” Id., 54:24-55:8. In another
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`example, noise canceling could adjust some frequency bands, that are mostly
`
`noise, to be lower, and other frequency bands, that are mostly speech, to be higher.
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`Atlas Tr., Ex. 2005, 87:12-23. Thus, Fichtl discloses power-on values for APP that
`
`each correspond to a collection of filters and may adjust selected frequencies more
`
`than others, as required by IV’s interpretation of “hearing correction filter.”
`
`D.
`
`IV adopts an overly narrow interpretation of a “sequence of
`incremental hearing correction filters”
`IV argues that hearing correction filters only form a “sequence,” as recited in
`
`claim 1, if the filters are determined in advance or predictable. POR 31-32.
`
`However, this interpretation is contrary to the plain and ordinary meaning of the
`
`term “sequence,” which merely requires the following of one hearing correction
`
`filter after another. Webster’s New College Dictionary 2007, Ex. 1017, 1308
`
`(defining “sequence” to be “the following of one thing after another in
`
`chronological, causal, or logical order”). As acknowledged by IV’s expert, there
`
`10
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`is no special meaning for the term “sequence” in the field of hearing aids. Brown
`
`Tr., Ex. 1016, 61:15-17. Futhermore, there is no indication in the specification or
`
`file history that the patentee intended to limit the term “sequence” as IV proposes
`
`or to disclaim any sequence of hearing correction filters that are not determined in
`
`advance or predictable. Thus, IV’s narrow interpretation of “sequence” should be
`
`rejected.
`
`E.
`
`Fichtl discloses a “sequence of incremental hearing correction
`filters” even under IV’s overly narrow interpretation
`IV argues that Fichtl’s hearing correction filters do not form a “sequence” as
`
`recited in claim 1 because they correspond to a running average of values based on
`
`user inputs. POR at 31-33. However, IV agrees that Fichtl’s hearing correction
`
`filters occur gradually over time. Id. at 33. Thus, they occur sequentially, forming
`
`a “sequence,” as recited in claim 1. In particular, each power-on value (POV)
`
`follows one after another in time, where each POV corresponds to a hearing
`
`correction filter. See Webster’s New College Dictionary 2007, Ex. 1017, 1308
`
`(defining “sequence” to be “the following of one thing after another in
`
`chronological, causal, or logical order”). For example, as IV’s expert agrees, the
`
`first replacement power-on value (rPOV1) occurs later in time and is subsequent to
`
`the initial power-on value (iPOV), and the second replacement power-on value
`
`(rPOV2) occurs later in time and is subsequent to rPOV1. Brown Tr., Ex. 1016,
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`60:2-25; see also Fichtl, Ex. 1003, Fig. 2, 3:42-4:15, 4:25-53. In fact, IV’s expert
`
`11
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`agrees that iPOV, rPOV1, and rPOV2 form a “sequence” under his understanding
`
`of that term. Brown Tr., Ex. 1016, 61:1-11.
`
`Fichtl, Ex. 1003, Fig. 2
`
`
`
`Thus, Fichtl discloses a “sequence” of hearing correction filters.
`
`Furthermore, even assuming that the hearing correction filters must be
`
`determined in advance to form a “sequence,” as IV requires, Fichtl discloses such
`
`hearing correction filters. The power-on values are determined in advance, before
`
`they are applied. For example, in the embodiment depicted in Fig. 2, iPOV is
`
`programmed at time A before it is applied at time B. Fichtl, Ex. 1003, 3:42-53,
`
`Fig. 2; POR at 21-22. Then rPOV1 is determined at time F before it is applied at
`
`time G. Fichtl, Ex. 1003, 3:66-4:7, Fig. 2; POR at 22; see also Brown Tr., Ex.
`
`1016, 66:7-14. In another example, Fichtl discloses an acclimatization algorithm
`
`12
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`which “does not take into account user inputs,” as its hearing correction filters are
`
`“independent of how the audio processing parameter APP was adjusted by the
`
`hearing device user.” Fichtl, Ex. 1003, 5:11-16; see also id., 5:16-41, Fig. 3.
`
`Thus, Fichtl discloses a “sequence” of hearing correction filters, even under
`
`IV’s overly narrow interpretation of the term.
`
`F.
`
`IV adopts an overly narrow interpretation of “the second
`[incremental hearing correction filter] being designated to follow
`the first [incremental hearing correction filter]”
`Claim 1 recites “a first one” and “a second one” of a “sequence of
`
`incremental hearing correction filters,” “the second one being designated to follow
`
`the first one.” IV appears to argue that in order for a hearing correction filter to be
`
`“designated to follow” another, as recited in claim 1, its value(s) must be
`
`designated in advance. See POR at 31-32; Brown Tr., Ex. 1016, 65:25-66:5
`
`(defining “designated” to “mean[] to know the value beforehand”). However,
`
`claim 1 merely recites that the second hearing correction filter is “designated to
`
`follow” the first hearing correction, not that its value must be designated in
`
`advance. Futhermore, there is no indication in the specification or file history that
`
`the patentee intended to limit the term “designated to follow” as IV proposes or to
`
`disclaim any hearing correction filter whose value is not designated in advance.
`
`Thus, IV’s narrow interpretation of “designated to follow” should be rejected.
`
`13
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`

`G.
`
`IPR2017-00781
`U.S. Patent No. 8,654,999
`Fichtl discloses “the second [incremental hearing correction filter]
`designated to follow the first [incremental hearing correction
`filter]” even under IV’s overly narrow interpretation
`Fichtl’s second hearing correction filter is “designated to follow” its first
`
`hearing correction filter, as recited in claim 1. In particular, Fichtl discloses
`
`power-on values (POV), each one corresponding to a hearing correction filter. As
`
`IV’s expert agrees, rPOV1 is designated to occur after, and thus “designated to
`
`follow,” iPOV. Brown Tr., Ex. 1016, 63:2-4. Because iPOV and rPOV1
`
`correspond to, respectively, first and second hearing correction filters, Fichtl
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`discloses a second hearing correction filter that is “designated to follow” a first
`
`hearing correction filter.
`
`Even if claim 1 were construed to require that the second hearing correction
`
`filter’s value(s) must be designated in advance, as IV alleges, the value(s) of
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`Fichtl’s rPOV1 are designated before rPOV1 is applied, as acknowledged by IV’s
`
`expert. Brown Tr., Ex. 1016, 66:7-14; Fichtl, Ex. 1003, 3:66-4:7, Fig. 2; POR at
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`22; see also Fichtl., Ex. 1003, 5:11-41 (disclosing an “acclimatization algorithm
`
`which does not take into account user inputs,” where “[t]he inclination of the line
`
`representing intermediate value X is indepenent of how the audio processing
`
`parameter APP was adjusted by the hearing device user”), Fig. 3. Thus, Fichtl
`
`discloses a second hearing correction filter “designated to follow” a first one, even
`
`under IV’s narrow interpretation of the claim.
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`14
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`III. CLAIM 6 IS OBVIOUS OVER THE CITED REFERENCES
`IV argues independent claim 6 should be patentable for the same reasons as
`
`discussed for claim 1 because it recites, like claim 1, “hearing correction filter[s].”
`
`POR at 35-36. Thus, for the reasons dicussed in sections II.A-C above regarding
`
`“hearing correction filters,” claim 6 is obvious over the cited references as
`
`instituted in the DI.
`
`IV. CLAIMS 2-5, 7-9, AND 16-19 ARE OBVIOUS OVER THE CITED
`REFERENCES
`IV argues dependent claims 2-5, 7-9, and 16-19 should be patentable based
`
`on the limitations discussed above with respect to claims 1 and 6, from which they
`
`depend. POR at 19-37. Thus, for the reasons dicussed in sections II and III above,
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`these claims are obvious over the cited references as instituted in the DI.
`
`V. DR. ATLAS’ OPINIONS ARE BASED ON FACTUAL EVIDENCE
`
`The petition discussed the specific factual evidence that Dr. Atlas provided
`
`in his declaration to support the invalidity analysis. In response, IV cites to a
`
`number of cases in which the Board rejected mere conclusory statements included
`
`in a declaration, without any supporting factual evidence, and requests the Board to
`
`give Dr. Atlas’s testimony little to no weight. See POR at 37-39. IV’s argument is
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`meritless.
`
`The simple fact that the petition and Dr. Atlas’ declaration are similar is not
`
`the probative factor in whether Dr. Atlas’ declaration should be given little or no
`
`15
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`weight. The cases relied upon by IV are cases in which the declaration was not
`
`based on any factual evidence in reaching its conclusory statements. For instance,
`
`Patent Owner’s Response cited Infobionic, Inc. v. Braemer Manufacturing LLC.,
`
`IPR2015-01704, Paper No. 11, Decision Denying Institution at 6 (PTAB Feb. 16,
`
`2016) to support its position. POR at 37. However, Infobionic specifically noted
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`that “[w]e do not find the testimony of Petitioner’s expert to be persuasive or
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`helpful as it repeats the Petitioner’s arguments and offers little or no elaboration as
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`to how one of ordinary skill in the art would understand the term ‘subset.’”
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`Infobionic, Inc. v. Braemer Manufacturing LLC., IPR2015-01704, Paper No. 11,
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`Decision Denying Institution at 6 (PTAB Feb. 16, 2016). Thus, in Infobionic, the
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`Board gave the expert’s declaration little weight, not because the declaration
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`repeats the Petitioner’s arguments, but because the declaration offers no factual
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`evidence regarding the meaning of “subset.” In fact, in reaching their decisions, all
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`the cases cited in the POR at pp. 37-39 directly relied on 37 CFR §42.65(a), which
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`states that “[e]xpert testimony that does not disclose the underlying facts or data
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`on which the opinion is based is entitled to little or no weight.” See, e.g.,
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`Infobionic, Inc. v. Braemer Manufacturing LLC., IPR2015-01704, Paper No. 11,
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`Decision Denying Institution at 6, 15 (PTAB Feb. 16, 2016); CaptionCall LLC, et.
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`al. v Ultratec, Inc., IPR2015-00637, Paper No. 98, Final Written Decision at 54, 66
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`(PTAB Sept. 7, 2016); Kinetic Technologies, Inc. v. Skyworks Solutions, Inc.,
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`IPR2014-00529, Paper No. 8, Decision Denying Institution at 14 (PTAB Sept. 23,
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`2014); and Roxane Laboratories, Inc. v. Novartis AG, IPR2016-01461, Paper No.
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`9, Decision Denying Institution at 10 (Feb. 13, 2017).
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`Here, in sharp contrast, both Dr. Atlas’ declaration and the petition provide
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`the underlying factual evidence. The Board has stated that in such cases an
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`Expert’s declaration should be given weight. See, e.g., Silicon Laboratories, Inc.
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`vs. Cresta Technology Corporation, Case IPR2014-00881, Paper No. 9, Decision
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`of Institution at p. 14 (October 24, 2014) (“The Declaration is not discredited
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`because it repeats the Petition. … the Declaration cites to the portion of Gomez
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`explicitly disclosing that tunable filter 311 is a band pass filter…. For that reason,
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`the Declaration adequately discloses the facts and data underlying the opinion that
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`Gomez discloses a band pass filter.”); p. 16 (“repetition of the Petition, without
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`more, does not discredit the Declaration.”). In this Petition, both Dr. Atlas’
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`declaration and the petition provide the underlying factual evidence. For example,
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`Dr. Atlas provides citations to Fichtl in arriving at the conclusion that the cited
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`references teach a sequence of hearing correction filters. Atlas Decl., Ex. 1008, ¶¶
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`117-126. Accordingly, there is no reason why the Board should disregard Dr.
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`Atlas’ declaration.
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`VI. CONCLUSION
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`The Board correctly instituted inter partes review, finding a reasonable
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`likelihood that the claims should be cancelled based on the Petition and the
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`supporting declaration. Nothing that IV has submitted alters those conclusions.
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`Based on the foregoing, Petitioners request cancellation of the challenged claims 1-
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`9 and 16-19.
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`Respectfully submitted,
`K/S HIMPP, Petitioner
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`By: /Donald R Steinberg/
`Donald R. Steinberg
`Registration No. 37,241
`Wilmer Cutler Pickering
`Hale & Dorr LLP
`Tel: 617-526-6453
`Fax: 617-526-5000
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`IPR2017-00781
`U.S. Patent No. 8,654,999
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`TABLE OF EXHIBITS
`
`Description
`Exhibit
`1001 U.S. Patent No. 8,654,999 B2 to Mindlin
`1002
`File History for U.S. Patent No. 8,654,999 B2 to Mindlin
`1003 U.S. Patent No. 8,787,603 to Fichtl, et al.
`1004 U.S. Patent Application Publication 2003/0215105 to Sacha
`1005 U.S. Patent Application Publication 2005/0036637 to Janssen
`1006 U.S. Patent No. 6,741,712 to Bisgaard
`1007 U.S. Patent No. 4,972,487 to Mangold
`1008 Declaration of Dr. Les Atlas
`1009 German patent publication DE19542961 with certified translation
`1010 U.S. Patent No. 7,933,419 to Roeck
`1011 Michael Valente, “Guideline for Audiologic Management of the
`Adult Patient”
`1012 Good Practice Guidance for Adult Hearing Aid Fittings and
`Services – Background to the Document and Consultation
`1013 Keidser et al., “Variation in preferred gain with experience for
`hearing-aid user”
`1014 Dillon et al., “The trainable hearing aid: What will it do for clients
`and clinicians?”
`1015 German patent publication DE19542961 with certified translation
`(not filed)
`1016 Deposition transcript of Mr. Brown, February 1, 2018
`1017 Webster’s New College Dictionary 2007 (excerpt)
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`IPR2017-00781
`U.S. Patent No. 8,654,999
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`document, excluding the portions exempted under 37 C.F.R. § 42.24(c), contains
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`3800 words according to Microsoft Word.
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`Respectfully submitted,
`
`
`
`/Haixia Lin/
`Haixia Lin
`Reg. No. 61,318
`
`Dated: February 12, 2018
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`IPR2017-00781
`U.S. Patent No. 8,654,999
`CERTIFICATE OF SERVICE
`I hereby certify that on February 12, 2018, I caused a true and correct copy
`of the foregoing materials:
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`• Petitioner’s Reply
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`• Exhibits 1016-1017
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`• Table of Exhibits
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`• Certificate of Word Count
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`to be served electronically via e-mail on February 12, 2018 to the following:
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`Henry A. Petri, Jr., (Lead Counsel Reg. No. 33,063)
`hpetri@polsinelli.com
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`James P. Murphy (Back-up Counsel Reg. No. 55,474)
`jpmurphy@polsinelli.com
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`Margaux A. Savee (Back-up Counsel Reg. No. 62,940)
`msavee@polsinelli.com
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`Tim R. Seeley (Back-up Counsel Reg. No. 53,575)
`tims@intven.com
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`Russ Rigby (Back-up Counsel Reg. No. 50,267)
`rrigby@intven.com
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`
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`Respectfully Submitted,
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`/Haixia Lin/
`Haixia Lin
`Reg. No. 61,318
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`ii
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