UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Petitioner, OTICON A/S, Listed Patent Owner.

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD GN RESOUND A/S, Petitioner, v. OTICON A/S, Listed Patent Owner. IPR2014- Patent 8,300,863 PETITION FOR INTER PARTES REVIEW

2 TABLE OF CONTENTS I. MANDATORY NOTICES... 1 A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1))... 1 B. Related Matters (37 C.F.R. 42.8(b)(2))... 1 C. Counsel and Service Information (37 C.F.R. 42.8(b)(3)-(4))... 1 D. Payment of Fees (37 C.F.R (a))... 1 II. GROUNDS FOR STANDING... 2 III. INTRODUCTION... 3 IV. CLAIMS FOR WHICH REVIEW IS REQUESTED... 6 A. Statutory Grounds of Challenge... 6 B. The Construed Claims are Unpatentable Under the Statutory Grounds Identified in 37 C.F.R (b)(2) and Supporting Evidence Relied Upon to Support the Challenge... 9 V. OVERVIEW OF THE 863 PATENT A. Summary of the 863 Patent & Prosecution History B. Original Prosecution of the 863 Patent C. Ex parte Reexamination of the 863 Patent VI. DECLARATION EVIDENCE A. The Level of Skill in the Art VII. CLAIM CONSTRUCTION A. a size B. on the order of 0.01 m i

3 VIII. GROUNDS OF UNPATENTABILITY SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING A. Claims 1, 4, 11, 12, 17-19, and 25 are Rendered Obvious by Meskens in view of Yoshino 869 Under 35 U.S.C. 103(a) B. Claim 5 is Rendered Obvious by Meskens in view of Yoshino 869 and Yoshino 289 Under 35 U.S.C. 103(a) C. Claim 16 is Rendered Obvious by Meskens in view of Yoshino 869 and Hagedoorn Under 35 U.S.C. 103(a) D. Claim 20 is Rendered Obvious by Meskens in view of Yoshino 869 and Fretz Under 35 U.S.C. 103(a) E. Statement of Non-Redundancy F. Claims 1, 4, 11, 17, and 25 are Rendered Obvious by Halstead in view of Yoshino 869 Under 35 U.S.C. 103(a) G. Claim 5 is Rendered Obvious by Halstead in view of Yoshino 869, Yoshino 289, and Meskens Under 35 U.S.C. 103(a) H. Claims 12, 18, 19 are Rendered Obvious by Halstead in view of Yoshino 869 and Meskens Under 35 U.S.C. 103(a) I. Claim 16 is Rendered Obvious by Halstead in view of Yoshino 869 and Hagedoorn Under 35 U.S.C. 103(a) J. Claim 20 is Rendered Obvious by Halstead in view of Yoshino 869 and Fretz Under 35 U.S.C. 103(a) IX. CONCLUSION ii

4 EXHIBIT LIST 1001 U.S. Patent No. 8,300,863 to Knudsen et al. ( the 863 patent ), including the ex parte reexamination certificate issued October 20, Excerpts from the Prosecution History of Application No. 12/342,241, which matured into the 863 patent 1003 Excerpts from Ex Parte Reexamination Control No. 90/013,189, which was ordered on the 863 patent 1004 U.S. Patent Application Publication No. 2008/ to Meskens et al. ( Meskens ) 1005 U.S. Patent Application Publication No. 2006/ to Yoshino et al. ( Yoshino 869 ) 1006 U.S. Patent Application Publication No. 2005/ to Yoshino ( Yoshino 289 ) 1007 [INTENTIONALLY LEFT BLANK] 1008 U.S. Patent Application Publication No. 2003/ to Hagedoorn ( Hagedoorn ) 1009 U.S. Patent No. 7,027,608 to Fretz et al. ( Fretz ) 1010 U.S. Patent No. 2,535,063 to Halstead ( Halstead ) 1011 [INTENTIONALLY LEFT BLANK] 1012 Declaration of Professor Bruce McNair 1013 IEEE 100, The Authoritative Dictionary of IEEE Standards Terms, 7 th Edition, 2000, ISBN , Institute of Electrical and Electronic Engineers, New York, NY 1014 K. Fujimoto, A. Henderson, K. Hirasawa, and J. R. James, Small Antennas, Research Studies Press, Ltd. and John Wiley & Sons, New York, NY, 1987, ISBN C. E. Smith and E. M. Johnson, Performance of Short Antennas, Proc. IRE, Vol. 35, No. 10, pp , Oct Kurt Ikrath, William Kennebeck, Robert Hoverter, Performance of Trees as Radio Antennas in Tropical Jungle Forests (Panama Canal Zone Experiments), Research and Development Technical Report ECOM-3534, US Army Electronics Command, Fort Monmouth, NJ, iii

5 February 1972, retrieved June 14, C. A. Balanis, Antenna Theory-Analysis and Design, 3 rd Edition, John Wiley & Sons, Hoboken, NJ, 2005, ISBN X 1018 The 1987 ARRL Handbook for the Radio Amateur, 64 th edition, American Radio Relay League, Newington, CT, 1986, pp WIPO Publication No. WO 03/ to Edeler et al U.S. Provisional Patent Application Nos. 60/924,800 and 60/924,807 to Meskens et al. ( Meskens Provisionals ) iv

6 I. MANDATORY NOTICES Petitioner GN ReSound A/S ( ReSound or Petitioner ) respectfully requests inter partes review of Claims 1, 4, 5, 11, 12, 16-20, and 25 of U.S. Patent No. 8,300,863 ( the 863 patent, Ex. 1001) in accordance with 35 U.S.C and 37 C.F.R et seq. Pursuant to 37 C.F.R. 42.8(a)(1), Petitioner provides the following mandatory disclosures. A. Real Party-In-Interest (37 C.F.R. 42.8(b)(1)) GN ReSound A/S is the real party-in-interest. B. Related Matters (37 C.F.R. 42.8(b)(2)) Petitioner is concurrently filing a petition for inter partes review of Claims 6-10, 14, 15, and of the 863 patent and recommends assignment of both petitions to the same panel. C. Counsel and Service Information (37 C.F.R. 42.8(b)(3)-(4)) Counsel: Lead Counsel: Scott A. McKeown (Reg. No. 42,866) Backup Counsel: Greg Gardella (Reg. No. 46,045) Service: CPDocketMcKeown@oblon.com CPDocketGardella@oblon.com Post: Oblon Spivak, 1940 Duke St., Alexandria, VA Phone: (703) Fax: (703) D. Payment of Fees (37 C.F.R (a)) The undersigned authorizes the Office to charge the fee required for this 1

7 Petition for inter partes review to Deposit Account No Any additional fees that might be due are also authorized. II. GROUNDS FOR STANDING As set forth below and pursuant to 37 C.F.R , each requirement for inter partes review of the 863 patent is satisfied. Pursuant to 37 C.F.R (a), Petitioner hereby certifies that the 863 patent is available for inter partes review and that the Petitioner is not barred or estopped from requesting inter partes review challenging the claims of the 863 patent on the grounds identified herein. Pursuant to 37 C.F.R (a)-(c), Petitioner further certifies that the 863 patent has not been subject to a previous estoppel-based proceeding of the AIA, and the prohibitions of 35 U.S.C. 315 (a)-(b) are inapplicable. 2

8 III. INTRODUCTION The 863 patent is directed to a hearing device, such as a hearing aid, capable of wireless communication. The alleged advancement of this patent is the utilization of a wire (16) as both a conducting element and wireless antenna. Accordingly, independent Claim 1, as originally issued, broadly described an offthe-shelf hearing device with an electrically conducting element functioning as part of an antenna. After the 863 patent was issued, the patentee attempted to license this technology to competitors within their industry, but was informed that this feature was notoriously well-known. Since that time, Patentee requested ex parte reexamination of the 863 patent using a single prior art reference, Meskens (discussed infra), which clearly discloses a hearing aid with an electrically conducting element functioning as part of an antenna. To salvage something of the 863 patent, Patentee amended its original claims during reexamination to include specific signal processing elements of the dependent claims. Since the reexamination examiner had only a single reference to review from the patentee, and reexamination examiners do not independently 3

9 search the art, otherwise standard features were successfully argued as inventive. For example, Claim 1 was amended to include two balanced wires that transmit said signal to said output transducer such that said two balanced wires function both as a link for transmitting said signal to said output transducer and as an antenna for wireless reception or transmission of RF signals. Claim 4, which was originally dependent on original Claims 1 and 3, was amended to independent form. Unlike amended Claim 1, amended Claim 4 does not specifically require that the two balanced wires function as an antenna for wireless reception or transmission of RF signals. Original Claim 6, which was originally dependent on original Claim 1, was amended to independent form and to include a balun. As noted above, some claims require a balun (i.e., a device that converts between a balanced signal and an unbalanced signal; see Ex ( McNair Dec. ) at 31-35). By Patentee s own admission, this element is notoriously well known: A balun in general is a passive electronic device that converts between balanced and unbalanced electrical signals. The skilled person is well aware of a number of examples of baluns. (Ex at 4:17-20) Most low power transceivers have a balanced RF I/O, and a balun is preferably provided to transform the balanced RF signal to single ended before it is applied to a diplexer and an antenna matching 4

10 circuit. (Ex at 6:57-60) Despite this admission, Patentee argued in the reexamination that Claims 4, 6, and 25 distinguished over Meskens because Meskens does not disclose a balun, connected in a hearing device. Ex at 17, 18. As to balanced wires used for transmitting a signal for acoustic output and for wireless reception or transmission of RF signals, this structure has also been used in the art for decades to transmit various signals. Balanced wires and balanced signals are merely one form of signaling that one of ordinary skill in the art can employ for transmission and reception. See McNair Dec. at 32, 33. The prior art discloses using balanced wires for wired audio signals, for wireless antenna signals, and both in the same embodiments. The claims recite this structure for the very same functionality; yet this too was somehow argued as distinguishing during the reexamination. Ex at As can be appreciated, the single reference reexamination was designed to limit the scope and content of prior art before the examiner. But for this limited review and clear patentee misrepresentations as to the state of the art admitted in the 863 patent itself, the reexamination certificate for these claims never would have issued. 5

11 Petitioner presents numerous references that render obvious the claims of the 863 patent. Section V of this Petition further details the 863 patent and its prosecution history. Section VIII sets forth the detailed grounds for invalidity of Claims 1, 4, 5, 11, 12, 16-20, and 25. This showing is accompanied by the Declaration of Professor Bruce McNair (Ex. 1012). Petitioner respectfully requests a inter partes review of the 863 patent be isntituted. IV. CLAIMS FOR WHICH REVIEW IS REQUESTED Pursuant to 37 C.F.R (b) and (b)(1), Petitioner requests inter partes review of Claims 1, 4, 5, 11, 12, 16-20, and 25 of the 863 patent and requests that the Patent Trial and Appeal Board ( PTAB ) cancel those claims as unpatentable. 1 A. Statutory Grounds of Challenge Pursuant to 37 C.F.R (b)(2), inter partes review of the 863 patent is requested in view of the following references, each of which is prior art to the 863 patent under 35 U.S.C. 102(a), (b), and/or (e): 1 Petitioner notes that Claims 6-10, 14, 15, and of the 863 patent are challenged in a concurrently filed petition to avoid page limit constraints. It is suggested that the PTAB consider assigning these petitions to the same panel for administrative efficiency. 6

12 i. Meskens (U.S. Patent Application Publication No. 2008/ ; Ex. 1004) was filed as Application No. 12/131,867 on June 2, 2008 and claims the benefit of provisional Application Nos. 60/924,800 and 60/924,807, filed on May 31, The features of Meskens, applied herein to the claims of the 863 patent, are fully supported by the provisional applications. See Ex Therefore, Meskens is prior art to the 863 patent under 35 U.S.C. 102(e). Meskens was not considered during the original prosecution of the 863 patent, but was considered during the reexamination of the 863 patent. However, Meskens was considered alone, and not in combination with any other reference. ii. Yoshino 869 (U.S. Patent Application Publication No. 2006/ ; Ex. 1005) was published on April 6, 2006, and is prior art to the 863 patent under 35 U.S.C. 102(b). Yoshino 869 was considered during the original prosecution of the 863 patent as a secondary reference with Kim (U.S. 2009/ ). Yoshino 869 is presented in new combinations, not previously considered, herein. Yoshino 869 was listed on an IDS submitted during the ex parte reexamination of the 863 patent, which was unaccompanied by any explanation or statement of its relevance. The patent examiner s consideration of Yoshino 869 during reexamination was limited by the degree to which such explanation or relevance was provided. See MPEP 2256 and Ex at 53. iii. Yoshino 289 (U.S. Patent Application Publication No. 2005/ ; Ex. 7

13 1006) was published on November 3, 2005, and is prior art to the 863 patent under 35 U.S.C. 102(b). Yoshino 289 was cited in an IDS but not discussed during the original prosecution of the 863 patent, nor is it cumulative of any prior art considered by the original patent examiner. Yoshino 289 was listed on an IDS submitted during the ex parte reexamination of the 863 patent, unaccompanied by any explanation or statement of its relevance. The patent examiner s consideration of Yoshino 289 during reexamination was limited by the degree to which such explanation or relevance was provided. See MPEP 2256 and Ex at 53. iv. Hagedoorn (U.S. Patent Application Publication No. 2003/ ; Ex. 1008) was published on March 6, 2003, and is prior art to the 863 patent under 35 U.S.C. 102(b). Hagedoorn was not considered during the original prosecution of the 863 patent, nor is it cumulative of any prior art considered by the original patent examiner. v. Fretz (U.S. Patent No. 7,027,608; Ex. 1009) was issued on April 11, 2006, and is prior art to the 863 patent under 35 U.S.C. 102(b). Fretz was not considered during the original prosecution of the 863 patent, nor is it cumulative of any prior art considered by the original patent examiner. vi. Halstead (U.S. Patent No. 2,535,063; Ex. 1010) was issued on December 26, 1950, and is prior art to the 863 patent under 35 U.S.C. 102(b). Halstead was not considered during the original prosecution of the 863 patent, nor is it 8

14 cumulative of any prior art considered by the original patent examiner. Halstead was listed on an IDS submitted during the ex parte reexamination of the 863 patent, which was unaccompanied by any explanation or statement of its relevance. The patent examiner s consideration of Halstead during reexamination was limited by the degree to which such explanation or relevance was provided. See MPEP 2256 and Ex at 53. The grounds of unpatentability presented in this petition are as follows: 35 U.S.C. Claims References 103(a) 1, 4, 11, 12, 17-19, 25 Meskens, Yoshino (a) 5 Meskens, Yoshino 869, Yoshino (a) 16 Meskens, Yoshino 869, Hagedoorn 103(a) 20 Meskens, Yoshino 869, Fretz 103(a) 1, 4, 11, 17, 25 Halstead, Yoshino (a) 5 Halstead, Yoshino 869, Yoshino 289, Meskens 103(a) 12, 18, 19 Halstead, Yoshino 869, Meskens 103(a) 16 Halstead, Yoshino 869, Hagedoorn 103(a) 20 Halstead, Yoshino 869, Fretz B. The Construed Claims are Unpatentable Under the Statutory Grounds Identified in 37 C.F.R (b)(2) and Supporting Evidence Relied Upon to Support the Challenge Pursuant to 37 C.F.R (b)(4), an explanation of how Claims 1, 4, 5, 9

15 11, 12, 16-20, and 25 of the 863 patent are unpatentable under the statutory grounds identified above is provided in Section VIII below, including the identification of where each element of the claim is found in the prior art. Pursuant to 37 C.F.R (b)(5), the exhibit numbers of the supporting evidence relied upon to support the challenges and the relevance of the evidence to the challenges raised, including identifying specific portions of the evidence that support the challenges, are set forth infra. V. OVERVIEW OF THE 863 PATENT An overview of the 863 patent, its original prosecution history, and its reexamination history follows. A. Summary of the 863 Patent & Prosecution History The 863 patent does not allege to have created a new type of hearing device, but alleges to build upon existing hearing aids such as behind-the-ear (BTE) and receiver-in-the-ear (RITE) hearing aids that are typically known to include various configurations of wires, tubes, and ear moulds. See Ex at 2:59 to 3:20; 6: See McNair Dec. at 42, 43. The conducting antenna principle on which the 863 patent originally issued was abandoned as a point of novelty during patent reexamination and rightfully so. Yet, to recover the patent from the limited, one reference reexamination, the Patentee simply added notoriously well-known signal processing structures as 10

16 outlined above. B. Original Prosecution of the 863 Patent U.S. Patent Application No. 12/342,241 ( the 241 application ) was filed on December 23, 2008, with Claims Ex at As a result of the original prosecution, Applicant amended the independent claims to recite an electrically conducting element, wherein said electrically conducting element is operatively coupled to said wireless interface and functions as at least a part of said antenna by wirelessly receiving or transmitting RF signals. Ex at 34-44, The Office issued a first Notice of Allowability on April 2, 2012, and a second Notice of Allowability on June 25, 2012 after Applicant introduced new dependent claims in a Request for Continued Examination. See Ex at The Examiner s two statements of reasons for allowance were similar, though not identical, and included: 11

17 A hearing aid with a first and second portions arranged separate from each other and connected by a coupling element, the positioning of the antenna to transmit the wireless signal, the antenna that wirelessly transmits the RF signal running along the length of the coupling element that is used to acoustically transmit (eg. use of sound waves not electrical signals) 2 the acoustic signal distinguishes over the prior art of record. Claims 1-24 of the 863 patent issued on October 30, C. Ex parte Reexamination of the 863 Patent 2 Petitioner respectfully notes that the Examiner s interpretation, in which the coupling element is used to acoustically transmit sound waves, may be applicable to the limitations of independent Claim 9, but is contrary to the limitations of Claim 1. Specifically, Claim 1 recites that (a) a first portion provides a signal to a second portion; (b) the second portion includes an output transducer that converts the signal into an acoustical output; and (c) a coupling element couples the first portion and the second portion, and transmits the signal to the output transducer of the second portion. Thus, in light of the 863 patent s disclosure, the signal of Claim 1 cannot be sound waves not electrical signals because the signal of Claim 1 must be a signal (i.e. an electrical signal) that is converted to an acoustical output (i.e. sound waves). 12

18 Patent Owner submitted a request for ex parte reexamination of the 863 patent on March 25, Patent Owner identified a single reference, Meskens, alleged to raise a substantial new question of patentability with respect to independent Claim 1 and dependent Claims 6 and 11. Ex at 2-3. As Meskens directly read on the alleged invention of the originally issued claims, Patent Owner included a detailed explanation of how Meskens, alone, anticipated or rendered obvious each of Claims 1, 6, and 11. Ex at Patent Owner foresaw the unpatentability of the independent claims and included a preliminary amendment with its request that retreated to the features found in dependent Claims 3 and 4. In particular, Claim 1 was amended to include two balanced wires that function both as a link for transmitting a signal and as an antenna, and Claims 4 and 6 were amended to be independent claims including baluns. Ex at 11-15, As discussed above, the claims merely feature standard baluns and balanced wires as were known in the art, and one of ordinary skill in the art would have realized the same. Patent Owner, however, reinforced its broad claims in the ex parte reexamination by only presenting arguments in view of a single reference that did not explicitly disclose the amended features. The Office granted ex parte reexamination of the 863 patent on June 4, 2014 (Ex at 38-45), and issued a Notice of Intent to Issue Ex Parte 13

19 Reexamination Certificate (NIRC) on July 16, 2014 (Ex at 49-55), indicating Claims 1, 4-8, 11, 12, 14, 16-20, and 25 as being patentable over Meskens. An ex parte reexamination certificate issued on October 20, Ex at pp VI. DECLARATION EVIDENCE This Petition is supported by the Declaration testimony of Professor Bruce McNair, which describes the scope and content of the prior art at the time of the application of the 863 patent. See Ex A. The Level of Skill in the Art The level of skill in the art is evidenced by prior art references. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did not err in adopting the approach that the level of skill in the art was best determined by references of record). VII. CLAIM CONSTRUCTION Pursuant to 37 C.F.R (b)(3), the claims subject to inter partes review shall receive the broadest reasonable construction in light of the specification of the patent in which [they] appear[]. See also In re Swanson, No (Fed. Cir. 2008); In re Trans Texas Holding Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)). As the Federal Circuit noted in Trans Texas, the Office has traditionally applied a broader standard than a court does when interpreting claim scope. Moreover, the 14

20 Office is not bound by any district court claim construction. Trans Texas, 498 F.3d at , In view of the above, claim interpretations submitted herein for the purpose of demonstrating a Reasonable Likelihood of Prevailing are not binding upon litigants in any litigation, nor do such claim interpretations correspond to the construction of claims under the legal standards that are mandated to be used by the courts in litigation. The interpretation of the claims presented either implicitly or explicitly herein should not be viewed as constituting, in whole or in part, Petitioner s own interpretation and/or construction of such claims for the purposes of any future litigation. Instead, such constructions in this proceeding should be viewed only as constituting an interpretation of the claims under the broadest reasonable construction standard. All claim terms have been accorded their broadest reasonable interpretation in light of the patent specification, including their plain and ordinary meaning, to the extent such a meaning could be determined by a skilled artisan. A. a size The term a size is not defined in the 863 patent, and as used in Claim 20, accorded a broadest reasonable construction, is properly interpreted as any measureable dimension. See also McNair Dec. at

21 B. on the order of 0.01 m The term on the order of is not defined in the 863 patent, nor is there provided a standard for measuring the degree intended. See MPEP (b)(II)(f). However, to the extent that one can apply such a limitation in Claim 20, on the order of 0.01 m, accorded a broadest reasonable construction, is properly interpreted as within a range in close proximity to 0.01 m. See also McNair Dec. at VIII. GROUNDS OF UNPATENTABILITY SHOWING THAT PETITIONER HAS A REASONABLE LIKELIHOOD OF PREVAILING The 863 patent alleges a novel hearing device and method for wirelessly receiving and/or sending data. But, as discussed above, as demonstrated by the state of the art, and as shown by the discussion of relevant patents and publications below, Patentee s purported invention represents nothing more than an application of well-known engineering principles and hardware to existing hearing devices. The 863 patent attempts to build from existing hearing devices by making very few modifications using standard passive components. Ex at 1:62-67; 3:30-32; 4: Those standard passive components include baluns, capacitors, high pass filters, and low pass filters. Notably, these standard components are only used according to their known standard properties. Thus, for example, the balun relied upon in ex parte reexamination is a well-known standard component, and, as 16

22 admitted by Patentee, is well-known to persons of ordinary skill in the art to convert between balanced and unbalanced electrical signals. See Ex at 4:17-20; 6: Similarly, the 863 patent s alleged insight that wires may be used as antenna for a built-in radio transceiver was not a newly discovered principle of antenna theory, but was well-known for decades prior to the time of the 863 patent application and had been previously applied in the specific area of hearing devices. The references below provide the teachings believed by the Examiner to be missing from the prior art and render obvious the claimed subject matter. See also McNair Dec. at A. Claims 1, 4, 11, 12, 17-19, and 25 are Rendered Obvious by Meskens in view of Yoshino 869 Under 35 U.S.C. 103(a) As described in detail in the claim charts below, Meskens discloses a hearing device having a first portion, arranged at a user, configured to provide a signal to a second portion, arranged in an ear canal of the user and including an output transducer, wherein a coupling element couples the first portion and the second portion. Meskens further discloses that the coupling element has two balanced wires for transmitting the signal and an outer body for functioning as an antenna. Meskens further discloses various circuit elements including a low-pass filters, high-pass filters to isolate RF signals to a wireless interface, and impedance matching circuits. See, e.g., Ex at Figs. 3B and 6B: 17

23 In the ex parte reexamination, the Office confirmed Claim 1 as being patentable over Meskens, alone, based on Patent Owner s argument that Meskens does not state that the same electrical wires in lead 430 are used both for 1) audio signal transmission and 2) as an antenna for wireless reception or transmission of RF signals. Ex at 15, 16, 51, 52. However, Patent Owner s interpretation unnecessarily limits Meskens antenna to an optional wire (see Fig. 6B above; see also Ex at 16). Meskens should not be read so narrowly. As shown in the excerpt of Fig. 1 below, Meskens discloses that antenna 500 includes both connector antenna 170 and auxiliary antenna device 300, and auxiliary antenna device 300 includes lead 430 comprising two or more wires. Thus, the total length of antenna 500 includes the extension provided by lead 430, which is described as a preferred object for use as radiating/receiving element and lends itself as an extension of antenna 170. Ex at 48,

24 Contrary to Patent Owner s assertion, Meskens does not state that the optional wire is the radiating/receiving element, or that the lead 430 requires the optional wire for use as a radiating/receiving element. In fact, Meskens does not even mention the optional wire in its written description. Furthermore, as shown in Fig. 6B, Meskens shows that impedance matching circuit 420 interfaces between lead 430, on one side, and plugs 413 and outer body 411, on the other side. While the optional wire is depicted with a broken line, the connection between outer body 411 and impedance matching circuit 420 is not. Thus, Meskens reasonably suggests that the balanced wires of lead 430 function as the radiating/receiving element, whose signals are processed by impedance matching circuit 420 to/from outer body

25 Although Patent Owner focused on anticipation based on a limiting inference about the optional wire, one of ordinary skill in the art would have found the limitations of Claim 1 obvious in view of the teachings within Meskens alone. See also McNair Dec. at Yoshino 869 also teaches that, in a hearing device, balanced signal lines may be used as audio/high-frequency dual-function signal lines that function as audio signal transmission lines and also as receiving antenna for high-frequency signals. Yoshino 869 further teaches the use of a balun to perform mode conversion from a balanced input into an unbalanced output and to perform impedance conversion to produce an appropriate output, and the use of capacitors to isolate various signals from each other. 20

26 One of ordinary skill in the art at the time of the earliest priority date to which the 863 patent is entitled would have been motivated to combine the teachings of Yoshino 869 with Meskens to integrate audio signals and highsensitivity wide band antenna with an earphone unit and to overcome the problems of signal noise from the human body. Ex at [0012], [0024]. Furthermore, one of ordinary skill in the art would have been motivated to include a balun to perform mode conversion between a balanced and unbalanced signal as necessary for the connected circuits/devices, functionality that is admittedly well-known to those of skill in the art. Ex at 4: See also McNair Dec. at 25-41,

27 Claim 1 [1a] A hearing device, comprising: a first portion configured to be arranged at a user and to provide a signal to a second portion; Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes a hearing device. [0003] The present invention relates generally to hearing prostheses and, more particularly, to a behind-the-ear (BTE) prosthetic device with an antenna. Meskens describes a first portion configured to be arranged at a user. [0034] Ear hook 180 provides a mounting means for holding BTE prosthetic device 100 behind the ear of the recipient. Meskens describes the first portion configured to provide a signal to a second portion. [0037] an input or output jack for transmitting and/or receiving electrical signals, such as audio signals, to and from the attached auxiliary device 440. [1b] the second portion configured to be arranged in an ear canal of said user and to provide acoustic output to said user, the second portion including an output transducer for converting said [0041] a jack for transmitting and/or receiving electrical signals, such as audio signals, to and from an auxiliary device 440 attached thereto. Meskens describes the second portion arranged in an ear canal of said user and to providing acoustic output to said user, the second portion including an output transducer for converting said signal into said acoustic output. [0035] an auxiliary device 440, such as an earphone. [0055] In accordance with certain embodiments, an auxiliary device may comprise an external plug-in device, such as an in-the-ear speaker. 22

28 Claim 1 signal into said acoustic output; [1c] a coupling element coupling said first portion and said second portion and transmitting said signal to said output transducer, the coupling element including an electrically conducting element; [1d] an antenna; and [1e] a wireless interface for receiving and/or sending data through said antenna, [1f] wherein said electrically conducting Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes a coupling element coupling said first portion and said second portion and transmitting said signal to said output transducer, the coupling element including an electrically conducting element. [0051] Lead 430 may conduct low-band electrical signals (e.g. audio signals) from BTE prosthetic device 100 to the auxiliary device 440 or vice versa. Meskens describes an antenna. [0038] The outer body 171 is configured to operate as, or function as, as part of an electromagnetic antenna for transmitting or receiving signals. [0042] In the embodiments of FIG. 3B, the outer body 171 may operate as an electromagnetic antenna similar to that described above with reference to FIG. 3A. Meskens describes a wireless interface for receiving and/or sending data through said antenna. [0039] RF transceiver 120 is connected to the outer body 171. Meskens describes that the electrically conducting element comprises two balanced wires that transmit said signal to said output transducer. 23

29 Claim 1 element comprises two balanced wires that transmit said signal to said output transducer, said two balanced wires being operatively coupled to said wireless interface and functioning as at least a part of said antenna by wirelessly receiving or transmitting RF signals, such that said two balanced wires function both as a link for transmitting said signal to said output transducer and as an antenna for wireless reception or transmission of RF signals. Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) [0041] As shown, the twin-axial connector 170 of FIG. 3B comprises two electrically conductive receptacles 173, in addition to a conductive outer body 171. Hence, the receptacles 173, which are electrically shielded from each other, constitute a jack for transmitting and/or receiving electrical signals, such as audio signals, to and from an auxiliary device 440 attached thereto. [0051] Lead 430 may conduct low-band electrical signals (e.g. audio signals) from BTE prosthetic device 100 to the auxiliary device 440 or vice versa. See also Fig. 6B Meskens describes the two balanced wires being operatively coupled to said wireless interface and functioning as at least a part of said antenna by wirelessly receiving or transmitting RF signals, such that said two balanced wires function both as a link for transmitting said signal to said output transducer and as an antenna for wireless reception or transmission of RF signals. [0038] In certain embodiments, outer body 171 operates as an open-ended wire, a monopole, sub, helix or helical wound coil, meander or dipole electromagnetic antenna. [0039] RF transceiver 120 is connected to the outer body 171. [0048] The lead 430 is naturally preferred object for use as radiating/receiving element and lends itself as an extension of antenna 170. Yoshino 869 further describes two balanced wires being operatively coupled to a wireless interface and functioning as at least a part of said antenna by wirelessly receiving or transmitting RF signals, such that said two balanced wires function both as a link for transmitting said signal to said 24

30 Claim 1 Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) output transducer and as an antenna for wireless reception or transmission of RF signals. [0055] earphone antennal includes audio/highfrequency dual-function signal lines 8La, 8Lb, 8Ra, 8Rb as earphone cords connected to terminals on a balanced side of the above-mentioned balun 4. [0058] The reason for forming one side from two signal lines (8La, 8Lb on the left side and 8Ra, 8Rb on the right side) in this way is to cause these audio/high-frequency dual-function signal lines 8La, 8Lb, 8Ra, 8Rb to function not only as a receiving antenna for high-frequency signals, but also as audio signal transmission means that transmits audio signals to the respective left and right earphone units 12L, 12R. Note that in order to expand the frequency band as a receiving antenna (dipole antenna) toward the lower side, it may be acceptable to connect capacitors C3L, C3R between the audio/high-frequency dual-function signal lines 8La, 8Lb and between the audio/high-frequency dual-function signal lines 8Ra, 8Rb, respectively. See also [0056] and [0057]. Claim 4 [4a] A hearing device, comprising: a first portion configured to be arranged at a user and to provide a signal to a second portion; Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes a hearing device. [0003] The present invention relates generally to hearing prostheses and, more particularly, to a behind-the-ear (BTE) prosthetic device with an antenna. Meskens describes a first portion configured to be arranged at a user. [0034] Ear hook 180 provides a mounting means for holding BTE prosthetic device 100 behind the ear of the recipient. 25

31 Claim 4 Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes the first portion configured to provide a signal to a second portion. [0037] an input or output jack for transmitting and/or receiving electrical signals, such as audio signals, to and from the attached auxiliary device 440. [4b] the second portion configured to be arranged in an ear canal of said user and to provide acoustic output to said user, the second portion including an output transducer for converting said signal into said acoustic output; [4c] a coupling element coupling said first portion and said second portion and transmitting said signal to said output transducer, [0041] a jack for transmitting and/or receiving electrical signals, such as audio signals, to and from an auxiliary device 440 attached thereto. Meskens describes the second portion arranged in an ear canal of said user and to providing acoustic output to said user, the second portion including an output transducer for converting said signal into said acoustic output. [0035] an auxiliary device 440, such as an earphone. [0055] In accordance with certain embodiments, an auxiliary device may comprise an external plug-in device, such as an in-the-ear speaker. Meskens describes a coupling element coupling said first portion and said second portion and transmitting said signal to said output transducer, the coupling element including an electrically conducting element. [0051] Lead 430 may conduct low-band electrical signals (e.g. audio signals) from BTE prosthetic device 100 to the auxiliary device 440 or vice versa. 26

32 Claim 4 the coupling element including an electrically conducting element; [4d] an antenna; and [4e] a wireless interface for receiving and/or sending data through said antenna, [4f] wherein said electrically conducting element is operatively coupled to said wireless interface and functions as at least a part of said antenna by wirelessly receiving or transmitting RF signals, and Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes an antenna. [0038] The outer body 171 is configured to operate as, or function as, as part of an electromagnetic antenna for transmitting or receiving signals. [0042] In the embodiments of FIG. 3B, the outer body 171 may operate as an electromagnetic antenna similar to that described above with reference to FIG. 3A. Meskens describes a wireless interface for receiving and/or sending data through said antenna. [0039] RF transceiver 120 is connected to the outer body 171. Meskens describes the electrically conducting element operatively coupled to said wireless interface and functioning as at least a part of said antenna by wirelessly receiving or transmitting RF signals. [0038] In certain embodiments, outer body 171 operates as an open-ended wire, a monopole, sub, helix or helical wound coil, meander or dipole electromagnetic antenna. [0039] RF transceiver 120 is connected to the outer body 171. [0048] The lead 430 is naturally preferred object for use as radiating/receiving element and lends itself as an extension of antenna

33 Claim 4 wherein said coupling element comprises two balanced wires for transmitting said signal to said output transducer, wherein said electrically conducting element comprises said wires, and Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes the coupling element comprising two balanced wires for transmitting said signal to said output transducer, wherein said electrically conducting element comprises said wires. [0041] As shown, the twin-axial connector 170 of FIG. 3B comprises two electrically conductive receptacles 173, in addition to a conductive outer body 171. Hence, the receptacles 173, which are electrically shielded from each other, constitute a jack for transmitting and/or receiving electrical signals, such as audio signals, to and from an auxiliary device 440 attached thereto. [0051] Lead 430 may conduct low-band electrical signals (e.g. audio signals) from BTE prosthetic device 100 to the auxiliary device 440 or vice versa. See also Fig. 6B. Yoshino 869 further describes two balanced wires being operatively coupled to a wireless interface and functioning as at least a part of said antenna by wirelessly receiving or transmitting RF signals, such that said two balanced wires function both as a link for transmitting said signal to said output transducer and as an antenna for wireless reception or transmission of RF signals. [0055] earphone antennal includes audio/highfrequency dual-function signal lines 8La, 8Lb, 8Ra, 8Rb as earphone cords connected to terminals on a balanced side of the above-mentioned balun 4. [0058] The reason for forming one side from two signal lines (8La, 8Lb on the left side and 8Ra, 8Rb on the right side) in this way is to cause these audio/high-frequency dual-function signal lines 8La, 8Lb, 8Ra, 8Rb to function not only as a receiving antenna for high-frequency signals, but also as audio signal transmission means that transmits 28

34 Claim 4 [4g] wherein said wireless interface is coupled to said wires via a highpass filter, wherein said wireless interface is coupled to said high-pass filter via a balun and wherein said high-pass filter is coupled to said wires via respective capacitors, wherein said first portion includes a low-pass filter in the path of said signal. Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) audio signals to the respective left and right earphone units 12L, 12R. Note that in order to expand the frequency band as a receiving antenna (dipole antenna) toward the lower side, it may be acceptable to connect capacitors C3L, C3R between the audio/high-frequency dual-function signal lines 8La, 8Lb and between the audio/high-frequency dual-function signal lines 8Ra, 8Rb, respectively. See also [0056] and [0057]. Meskens describes the wireless interface coupled to said wires via a high-pass filter, and said first portion including a low-pass filter in the path of said signal. [0039] A high-pass or band-pass filter 130 and a lowpass or band-pass filter 140 ensure a separation of the radiated RF signals and the signals transferred over the jack combination 171/172. See also [0042]. Meskens describes an impedance matching circuit coupled to said wires. See [0042]. Yoshino 869 describes coupling audio/high-frequency dualfunction signal lines to a wireless interface via a balun, which performs mode conversion and impedance conversion. [0057] The above-mentioned balun 4 converts a balanced mode into an unbalanced mode, and performs impedance conversion. From one side of the balanced-side terminal extend the left-side audio/high-frequency dual-function signal lines 8La, 8Lb, and from the other side extend the right-side audio/high-frequency dual-function signal lines 8Ra, 8Rb at a fixed angle of 30 or more (90 in the present example), for connection such that they can 29

35 Claim 4 Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) function as a V-shaped dipole antenna. [0061] Terminals on an unbalanced side of the abovementioned balun 4 are connected to, e.g., a liquid crystal TV (television receiver) 16 via a coaxial cable 14. Yoshino 869 describes coupling capacitors to the audio/high-frequency dual function signal lines and the balun for isolation. See [0075] and [0092]. Claim 11 The hearing device according to claim 1, wherein said wireless interface is configured to receive and/or send data as radio frequency signals by electromagnetic radiation in the frequency range of 1 MHz to 1000 GHz, and the wireless interface is configured to receive and/or send data according to a communications Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes the wireless interface configured to receive and/or send data as radio frequency signals by electromagnetic radiation in the frequency range of 1 MHz to 1000 GHz. See [0038]. Meskens describes the wireless interface configured to receive and/or send data according to a communications standard. [0032] communication between components of a medical system may occur in a near-field or far EM-field, via, for example, electromagnetic field propagation. An antenna tuned to the frequency range of operation is generally used for efficient communication using the EMfield. Yoshino 869 describes the wireless interface configured to receive and/or send data as radio frequency signals by electromagnetic radiation in the frequency range of 1 MHz to 1000 GHz, according to a communications standard. See [0008] and [0041]. 30

36 Claim 11 standard. Claim 12 The hearing device according to claim 1, wherein said first portion is adapted for being arranged behind an ear of said user. Claim 17 The hearing device according to claim 11, wherein the frequency range is from 1 MHz to 3 GHz, inclusive. Claim 18 The hearing device according to claim 1, wherein the first portion is a behind-the-ear portion configured to be Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes that the first portion is adapted for being arranged behind an ear of said user. [0034] Ear hook 180 provides a mounting means for holding BTE prosthetic device 100 behind the ear of the recipient. Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes receiving and/or sending data in the frequency range according to claim 11, wherein the frequency range is from 1 MHz to 3 GHz, inclusive. [0038] The electromagnetic antenna is operable in a variety of frequency ranges, including above 100 KHz, and in some embodiments in a frequency range above 30 MHz or 3 GHZ. Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes that the first portion is a behind-the-ear portion configured to be located at or behind an ear of the user. [0034] Ear hook 180 provides a mounting means for holding BTE prosthetic device 100 behind the ear of the recipient. 31

37 Claim 18 located at or behind an ear of the user. Claim 19 The hearing device according to claim 1, wherein said electrically conducting element included in the coupling element has a spatial extension less than 5 cm. Claim 25 The hearing Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes the electrically conducting element included in the coupling element having a spatial extension less than 5 cm. [0038] The electromagnetic antenna is operable in a variety of frequency ranges, including above 100 KHz, and in some embodiments in a frequency range above 30 MHz or 3 GHZ. [0046] From an antenna-matching viewpoint, it is preferable to choose the total physical length of the antenna (e.g. the length of the outer body 171 of connector 170) to λ/4 or ⅝λ, with λ the wavelength of the operating frequency of the antenna. 3 4 Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) Meskens describes an impedance matching circuit coupled 3 Based on the formula λ = c/f, where λ = wavelength, f = frequency, and c = the speed of light, a frequency of 2.4 GHz results in a value of λ/4 = cm. 4 See also Fretz (Ex. 1009) at Figs. 3-4 and 5:26-39, showing a coupling element having a length varying between 4.4 cm and 5.15 cm to accommodate different sized ears of users. 32

38 Claim 25 device according to claim 1, wherein said wireless interface is coupled to said two balanced wires via a balun. Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) to said wires. See [0042]. Yoshino 869 describes coupling audio/high-frequency dualfunction signal lines to a wireless interface via a balun, which performs mode conversion and impedance conversion. [0057] The above-mentioned balun 4 converts a balanced mode into an unbalanced mode, and performs impedance conversion. From one side of the balanced-side terminal extend the left-side audio/high-frequency dual-function signal lines 8La, 8Lb, and from the other side extend the right-side audio/high-frequency dual-function signal lines 8Ra, 8Rb at a fixed angle of 30 or more (90 in the present example), for connection such that they can function as a V-shaped dipole antenna. [0061] Terminals on an unbalanced side of the abovementioned balun 4 are connected to, e.g., a liquid crystal TV (television receiver) 16 via a coaxial cable 14. B. Claim 5 is Rendered Obvious by Meskens in view of Yoshino 869 and Yoshino 289 Under 35 U.S.C. 103(a) 1. Overview Meskens in view of Yoshino 869 teaches the hearing device of Claim 4, as demonstrated above. However, Meskens and Yoshino 869 do not explicitly disclose that the balun comprises a transformer. Yoshino 289 teaches a typical balun comprising a transformer. 33

39 One of ordinary skill in the art at the time of the earliest priority date to which the 863 patent is entitled would have been motivated to combine the teachings of Meskens and Yoshino 869 with Yoshino 289 to include a standard transformer balun. See also McNair Dec. at 31-35, Claim Charts Claim 5 Claim 5. The hearing device according to claim 4, wherein said balun comprises a transformer and wherein said high-pass filter comprises a capacitor and an inductance. Meskens (Ex. 1004) in view of Yoshino 869 (Ex. 1005) and Yoshino 289 (Ex. 1006) Meskens describes the high-pass filter comprising a capacitor and an inductor. See Fig. 4 and [0044]. Yoshino 289 describes a balun 37 comprising a transformer. See Fig. 6. C. Claim 16 is Rendered Obvious by Meskens in view of Yoshino 869 and Hagedoorn Under 35 U.S.C. 103(a) 1. Overview Meskens in view of Yoshino 869 teaches the hearing device of Claim 11, as demonstrated above. However, Meskens and Yoshino 869 do not explicitly disclose communicating via a Bluetooth communications standard. 34