[00:00:07] Speaker 04:
The first argued case was won on December 19, 1105, cochlear bone anchored against Articon Medical.

[00:00:16] Speaker 04:
This is Bunsen.

[00:00:31] Speaker 01:
Good morning.

[00:00:32] Speaker 01:
May it please the court, Laura Burson on behalf of Cochlear.

[00:00:35] Speaker 01:
I'd like to start with the board's construction of the claim term induction that appears in both claims 11 and 12.

[00:00:44] Speaker 01:
After weighing the evidence, the board concluded that induction in the plain and ordinary meaning of induction is electromagnetic induction and that the plain and ordinary meaning of induction

[00:00:54] Speaker 01:
applied to claims 11 and 12.

[00:00:56] Speaker 01:
And that conclusion is supported by the intrinsic record.

[00:00:59] Speaker 01:
Claim 12, which depends from claim 11, part of the intrinsic record, and it includes the limitation power is transmitted by induction.

[00:01:09] Speaker 01:
It includes that limitation.

[00:01:11] Speaker 01:
Claim 12 further specifies that the internal component that is being powered by the induction

[00:01:19] Speaker 01:
is a rechargeable battery.

[00:01:20] Speaker 01:
And no one disputes in this case that the principle of operation to charge a battery by electromagnetic induction is electromagnetic induction, and that requires an internal receiving coil where current is generated inside the patient to charge this rechargeable battery.

[00:01:40] Speaker 01:
There's no dispute in the record.

[00:01:42] Speaker 01:
There's no other evidence in the record that any other structure would be able to charge

[00:01:46] Speaker 01:
a rechargeable battery by electromagnetic induction without receiving oil.

[00:01:52] Speaker 01:
And the record evidence is consistent with that arrangement and that meaning of electromagnetic induction.

[00:01:59] Speaker 01:
We have LACIFER, the 996 application, which was in the prosecution history.

[00:02:04] Speaker 01:
So it's part of the intrinsic record.

[00:02:06] Speaker 01:
The examiner relied on LACIFER.

[00:02:09] Speaker 01:
At appendix 1166, LACIFER 996 shows that arrangement.

[00:02:14] Speaker 01:
There is an internal receiving coil.

[00:02:16] Speaker 01:
The LACIFER reference that Oticon itself relies on at appendix 929, 930, 928 in figure 1 shows this internal receiving coil.

[00:02:27] Speaker 01:
Dr. Rubenstein's testimony is also consistent, 1736.

[00:02:32] Speaker 01:
And then the board itself cited two dictionary definitions, appendix 2752 and 2756.

[00:02:38] Speaker 05:
But is your complaint really with the construction, or is your complaint with what the board ultimately concluded that the prior references showed?

[00:02:52] Speaker 01:
It's the latter, Your Honor, because the board correctly determined that the meaning of induction is electromagnetic induction.

[00:03:00] Speaker 01:
And then when it analyzed the Huff reference, which does not have a receiving coil, it's not doing electromagnetic induction.

[00:03:07] Speaker 01:
It's vibrating a magnet by an external coil, but it does not have any internal receiving coil.

[00:03:14] Speaker 01:
And there's no dispute in the record about that, that what Huff is doing, it does not have a receiving coil at all.

[00:03:22] Speaker 01:
And so the board disregarded its own correct interpretation for electromagnetic induction, which does require this structure, that there be an internal receiving coil.

[00:03:32] Speaker 01:
And Huff clearly doesn't have it.

[00:03:34] Speaker 01:
It didn't even have any need for any internal components that were powered.

[00:03:41] Speaker 01:
In fact, the board specifically made that finding about Huff

[00:03:45] Speaker 01:
When it discussed claim 12, this is at appendix 83, it says, we recognize that the HUS device does not include any implanted components that require power, end quote.

[00:03:57] Speaker 01:
But that's exactly the claim requirement in claim 11, that there is power that's being transmitted to the internal components of the device.

[00:04:07] Speaker 01:
And claim 12 makes it clear that it further specifies what that internal component is, that it is a rechargeable battery.

[00:04:15] Speaker 01:
So had the board correctly applied the meaning

[00:04:19] Speaker 01:
of what electromagnetic induction means to a person of skill in the art.

[00:04:23] Speaker 01:
And there's no evidence in the record that a person of skill in the art would interpret a vibrating magnet by an external coral to be the same thing as electromagnetic induction.

[00:04:35] Speaker 01:
There is one statement by Dr. Propelka, and it's a conclusory paragraph.

[00:04:41] Speaker 01:
It's at 1302, and he just says it.

[00:04:44] Speaker 01:
He doesn't give any explanation as to how or why, or he doesn't even provide any backup reference that a person of skill in the art would interpret this vibrating magnet by an external coil to be electromagnetic induction.

[00:04:58] Speaker 01:
And yet there are plenty of references in the record, I think I've just given about three or four, that are consistent with Cochlear's understanding of electromagnetic induction, that it does require this receiving coil.

[00:05:10] Speaker 01:
So there's no evidence to support this vibrating magnet by an external coil is the same thing, would mean the same thing to a personal skill in the art for electromagnetic induction.

[00:05:21] Speaker 01:
And on that basis, the board's finding is erroneous.

[00:05:24] Speaker 01:
and should be reversed.

[00:05:25] Speaker 01:
There's nothing to remand for, because there's clear evidence.

[00:05:29] Speaker 01:
No one disputes that Huff does not have this internal receiving coil.

[00:05:35] Speaker 01:
I'd like to talk about claim 12, unless there are questions further about claim 11.

[00:05:42] Speaker 01:
Claim 12, the board erroneously concluded there was a motivation to combine the Huff reference with a cochlear implant, the Lasifer reference.

[00:05:51] Speaker 01:
And that finding was based on hindsight reconstruction, and it's not supported by substantial evidence.

[00:05:57] Speaker 01:
The only basis that the board relied on for making this combination is an alleged reduction in size and aesthetics.

[00:06:05] Speaker 01:
But there's no evidence in the record what the product, what size it would have been, or that there would have been any reduction in the external components by adding this battery, because no one disputes

[00:06:15] Speaker 01:
that Huff does not need any battery.

[00:06:18] Speaker 01:
The board found there's no parts inside that need any power, so it has no need for a battery.

[00:06:23] Speaker 01:
So either by adding the battery, you're going to end up with a device that has a battery that's just sitting there in someone's head not doing anything, or you're going to be changing the principle of operation.

[00:06:34] Speaker 01:
The principle of operation, again, is this vibrating magnet by this external coil.

[00:06:39] Speaker 01:
If you're adding a battery, then you're changing that principle of operation.

[00:06:42] Speaker 05:
So this turns on your argument that it has to be electric.

[00:06:46] Speaker 05:
power that we're talking about, right?

[00:06:48] Speaker 01:
Well, it turns on the argument they combined Huff with Lacefer.

[00:06:51] Speaker 01:
So there's an acknowledgment that Huff by itself is not doing the charging.

[00:06:58] Speaker 05:
Right, it's not an anticipation finding.

[00:07:00] Speaker 01:
Yes, exactly.

[00:07:01] Speaker 01:
Whereas the other is an anticipation finding.

[00:07:04] Speaker 01:
Claim 11.

[00:07:04] Speaker 01:
So here they're combining the two and they're saying there's a reason that a person of skill in the art would have combined the two because

[00:07:11] Speaker 01:
of this alleged reduction in size.

[00:07:13] Speaker 01:
But my point, Your Honor, is there's no evidence there would have been any reduction in size.

[00:07:18] Speaker 01:
And combining the two doesn't give you a streamlined product.

[00:07:21] Speaker 01:
It gives you either a product with a battery that's not doing anything, or it's completely changing the principle of operation.

[00:07:27] Speaker 01:
And in fact, the board's own finding here undermines its conclusion of motivation, because its own finding is that this combination would be a substantial redesign.

[00:07:40] Speaker 01:
So at best, this is a generic motivation to build something better.

[00:07:47] Speaker 01:
And we've cited cases in our yellow brief, page 62 and 63, that a generic motivation to combine is not sufficient.

[00:07:56] Speaker 05:
So the board's finding with respect to size and aesthetics you think is just not supported by the evidence?

[00:08:02] Speaker 01:
The only basis that there is no finding as to what would be the result in terms of size for the product.

[00:08:10] Speaker 01:
It's just this generic interest to make something smaller.

[00:08:13] Speaker 01:
But there's no evidence that there would actually be something smaller.

[00:08:16] Speaker 05:
Well, if you're removing a portion of it, doesn't that make it smaller?

[00:08:20] Speaker 01:
Well, we're actually adding to it.

[00:08:22] Speaker 01:
We're adding a battery.

[00:08:23] Speaker 01:
We're not removing anything.

[00:08:25] Speaker 01:
That's my point, Your Honor.

[00:08:26] Speaker 01:
We're adding structure instead of taking structure away.

[00:08:28] Speaker 01:
And there's some alleged allegation, I guess, that by adding this structure inside is somehow going to change and make the structure on the outside smaller.

[00:08:39] Speaker 01:
But there's no evidence of that.

[00:08:41] Speaker 01:
And if you did something different to the outside, then now you're going to be changing the principle operation of how the device works to begin with.

[00:08:47] Speaker 01:
So there is no basis other than some generic interest to build something better.

[00:08:53] Speaker 05:
Well, I mean, explain what you mean by changing the principle of operation.

[00:08:57] Speaker 05:
I mean, whenever you're modifying a reference to combine two, there's a big difference between changing the principle of operation and completely

[00:09:08] Speaker 05:
undoing the way it operates.

[00:09:11] Speaker 05:
So of course you're changing the principle of operation when you combine two references.

[00:09:18] Speaker 01:
There could be an example where you could add something to an existing device to add a feature.

[00:09:25] Speaker 01:
But here, it's undisputed that this device, the Huff device, works with this external coil.

[00:09:33] Speaker 01:
And it has no ability to use anything to power anything on the inside.

[00:09:39] Speaker 01:
So we would have to be adding structure on the inside.

[00:09:44] Speaker 01:
to do something with the magnet.

[00:09:46] Speaker 01:
But then you have the outside is not going to be operating in the same way that it was with the magnet on the inside.

[00:09:55] Speaker 01:
So there's no dispute as to how Huff itself is sending bone conduction signals to the patient's ear.

[00:10:04] Speaker 01:
through this external coil and this magnet.

[00:10:07] Speaker 01:
And by adding this alleged battery, then you presumably it's going to be used now instead of the principle of operation of how Huff is.

[00:10:16] Speaker 01:
It's going to be used in some way, or it's not going to be used at all.

[00:10:21] Speaker 01:
If you're still going to stick with the way Huff is designed to have this external coil vibrate the magnet,

[00:10:28] Speaker 01:
then there's no purpose for the battery, because there's nothing in the Huff device to be powered by any power.

[00:10:37] Speaker 01:
So there's nothing to be powered by a battery.

[00:10:39] Speaker 01:
And so in that sense, you're either putting in a component in the device that's not going to be useful, because there's nothing there to use it, or it's going to change the principle of operation, because now you're not using the external coil to vibrate the battery, to vibrate the magnet.

[00:10:53] Speaker 01:
You're going to be using the battery to somehow vibrate the magnet.

[00:10:57] Speaker 01:
So that's why it would be changing the principle of operation.

[00:11:01] Speaker 01:
And then if there are no further questions on claim 12, I'll briefly touch on our preamble argument that we have for claims 4, 5, and 6, and 12.

[00:11:12] Speaker 01:
The preamble, in this case, breathes life and meaning into the claims.

[00:11:17] Speaker 01:
And there's two bases for that.

[00:11:19] Speaker 01:
There's the antecedent basis.

[00:11:21] Speaker 01:
The preamble provides antecedent basis for the claims.

[00:11:26] Speaker 01:
There are the skull bone and the patient and elements in the claims, and that comes directly from the preamble.

[00:11:33] Speaker 01:
But I think the most important one is the essence of the invention point here, is that the inventor clearly defines its invention

[00:11:45] Speaker 01:
for a bone conduction hearing device for treatment of single-sided deafness, patients with single-sided deafness.

[00:11:52] Speaker 05:
How does that even if, because the board found in the alternative that even if it was limiting, it wouldn't matter.

[00:12:00] Speaker 05:
So how does the fact that it's used for a particular type of condition change the structure of the elements that are then disclosed?

[00:12:13] Speaker 01:
It has to do with the board, because the board disregarded the essence of the invention, that it was for treatment of single-sided deafness.

[00:12:22] Speaker 01:
I mean, this patent says that it's an improvement.

[00:12:25] Speaker 01:
It contrasts its invention over the ordinary bone conduction device.

[00:12:29] Speaker 01:
So this is considered to be an improvement patent.

[00:12:32] Speaker 01:
And so by the boards disregarding the essence of the invention, that it was for treatment of single-sided deafness, it disregarded certain evidence in the record.

[00:12:40] Speaker 01:
It didn't even consider certain evidence in the record.

[00:12:42] Speaker 01:
So for example, in connection with claim 12, it didn't consider the fact that the Huff device, the Huff authors of that publication themselves found the evidence very equivocal as to whether or not the device helped individuals with single-sided deafness.

[00:12:58] Speaker 05:
And so we pointed to that as another basis for... So are you saying that the prior Arctic device had to have intended to serve the precise same purpose

[00:13:11] Speaker 05:
in order for it to be considered relevant prior art?

[00:13:15] Speaker 01:
I don't believe that's what I'm saying, Your Honor.

[00:13:17] Speaker 01:
But I'm saying that we had evidence in the record as to why a individual, a person of skill in the art would not have, and to go back to the Claim 12 example, would not have combined the Huff device with it.

[00:13:31] Speaker 05:
I mean, this is a substantial evidence analysis.

[00:13:33] Speaker 05:
And the board cited to expert testimony that they would have combined the two, that you could look at it more broadly.

[00:13:41] Speaker 05:
that anytime you're dealing with trying to deal with deafness, you might have things that were for different types of hearing conditions, but that when you look at them, I mean, are you saying we should define the scope of the art differently because of this preamble?

[00:14:00] Speaker 01:
I guess I'm saying we should define what evidence, there is additional evidence that should have been considered that the board disregarded, did not even address the evidence because of its determination that the preamble was not limiting.

[00:14:14] Speaker 01:
And so, for example, I mentioned the Huff device and the teaching and Huff, that this teaching away, that it didn't recommend its device for patients with single-sided deafness.

[00:14:28] Speaker 01:
There's also evidence, the Banaclu reference that's used for obviousness for claims four and five.

[00:14:36] Speaker 01:
There's, Vana Clu never mentions anything about transcranial attenuation, any reason to address transcranial attenuation.

[00:14:44] Speaker 01:
It talks about head shadow effect, the air conduction of sound.

[00:14:48] Speaker 01:
It doesn't talk about bone conduction of sound attenuation.

[00:14:52] Speaker 05:
The board didn't consider that evidence because- I guess I'm still trying to understand, and I've read this multiple times and trying to sort of drill down on why you think this

[00:15:04] Speaker 05:
preamble, limitation is meaningful.

[00:15:07] Speaker 05:
Do you think it's meaningful because it limits the prior art that the board is allowed to consider?

[00:15:13] Speaker 05:
That somehow the scope of the art can only relate to this hearing condition?

[00:15:19] Speaker 05:
So why is it so important?

[00:15:21] Speaker 05:
Because there are complete structures that are disclosed in the substance of the claim.

[00:15:28] Speaker 01:
It limits the way the board would combine the art, Your Honor.

[00:15:35] Speaker 01:
There isn't any other art.

[00:15:38] Speaker 01:
It's Huff, and it's Lacefer, it's Carlson, but it limits the way and how the board views the disclosures in those references and what they're teaching.

[00:15:51] Speaker 01:
And I see my time is almost up.

[00:15:53] Speaker 01:
I'll hold the rest of the revertal.

[00:15:55] Speaker 04:
It is more than up, but we'll save you some rebuttal.

[00:15:58] Speaker 01:
Thank you, Your Honor.

[00:16:11] Speaker 04:
OK.

[00:16:11] Speaker 04:
Mr. Andrews.

[00:16:12] Speaker 03:
Yes.

[00:16:13] Speaker 03:
Good morning, Your Honors, and may it please the court.

[00:16:16] Speaker 03:
The 040 patent has a detailed description that is less than one column in length.

[00:16:22] Speaker 03:
And much of the text from that one column relates to subject matter that patent owner disclaimed during IPR trial.

[00:16:31] Speaker 03:
The 040 patent further includes three figures, which are rather rudimentary and fail to include any significant detail.

[00:16:40] Speaker 05:
But it is true that the entire patent talks about the single-sided deafness, right?

[00:16:47] Speaker 03:
Your Honor, the patent does talk about single-sided deafness.

[00:16:50] Speaker 03:
There was one method claim, a method of treatment.

[00:16:55] Speaker 03:
That claim has been disclaimed.

[00:16:56] Speaker 03:
So the only claim remaining or claims remaining are directed to the apparatus.

[00:17:02] Speaker 03:
So as you pointed out, I think you were alluding to in your question, the question is, what is the apparatus?

[00:17:10] Speaker 03:
What are the characteristics of that apparatus?

[00:17:13] Speaker 03:
And that has been the focus of the petition, and that has been the focus of the appeal.

[00:17:18] Speaker 03:
You touched upon the preamble.

[00:17:20] Speaker 03:
And not only did the board conclude that the claims aren't patentable even if the preamble is given patentable weight, but they extensively considered the issue of the preamble over six pages of their decision.

[00:17:33] Speaker 03:
And they found that at best, the preamble recites an intended use and does not further limit the structure of the apparatus.

[00:17:42] Speaker 05:
So even if it doesn't limit the structure of the apparatus, as I'm beginning to understand your friend's argument,

[00:17:50] Speaker 05:
It is more that it should have limited or expanded, depending on how you're looking at it, what the board considered regarding how a POSA would choose to combine the references.

[00:18:04] Speaker 03:
Well, Your Honor, in terms of the combination, if we're talking about claims four and five, the Vanikli reference clearly describes successfully treating patients suffering from signal-sighted deafness using a bone-anchored hearing device.

[00:18:19] Speaker 03:
So the only reliance on a secondary reference was based on the understanding that Vaniclu is a technical publication describing a clinical use of a product.

[00:18:33] Speaker 03:
But it didn't go into detail of the physical characteristics of the Baja device being used therein.

[00:18:39] Speaker 03:
The only reliance on Carlson was to fill some of those gaps to the extent they existed.

[00:18:47] Speaker 03:
The petition nor the final written decision from the board relied on Carlson for treating single-side deafness.

[00:18:54] Speaker 03:
The only reliance on Carlson was basic physical characteristics of the Baja, such as an implantable screw and a vibrator.

[00:19:02] Speaker 03:
The primary reference Vaniclu from just before a year before the earliest filing date of the 040 patent clearly taught successfully treating

[00:19:13] Speaker 03:
patients suffering from single-site deafness using a Baja device.

[00:19:17] Speaker 03:
So there's no teaching away.

[00:19:19] Speaker 03:
It's simply a matter of the argument about teaching away is misdirected because it doesn't reflect what the actual combination is.

[00:19:29] Speaker 03:
The reliance on the secondary reference Carlson was quite limited.

[00:19:34] Speaker 03:
just to fill in those specific physical gaps.

[00:19:37] Speaker 03:
Well, what about claim 12?

[00:19:38] Speaker 03:
So claim 12, again, it's an apparatus claim.

[00:19:41] Speaker 03:
So how does the apparatus distinguish over the prior art?

[00:19:45] Speaker 03:
And claim 11, same basic situation.

[00:19:51] Speaker 03:
The Huff reference actually describes using a bone-anchored device to treat single-sided deafness.

[00:19:57] Speaker 03:
It describes that treatment as a desirable application.

[00:20:02] Speaker 03:
It describes

[00:20:04] Speaker 05:
Does the use of an internal battery completely change the operation of Huff?

[00:20:11] Speaker 03:
No, Your Honor.

[00:20:12] Speaker 03:
In fact, if we look at the 040 patent, the only illustration of a rechargeable battery is in Figure 3.

[00:20:21] Speaker 03:
And there really are no implementation details whatsoever.

[00:20:27] Speaker 03:
So it's difficult to make this argument of,

[00:20:33] Speaker 03:
changing principle operation when there's really nothing in the 040 patent to suggest that they've designed any particular way to implement a rechargeable battery in a bone anchored hearing device.

[00:20:46] Speaker 03:
As we see in Life Safer, which is an implantable type hearing device, using a rechargeable battery was known.

[00:20:53] Speaker 03:
Not only was using a rechargeable battery known, but the implanted part in Life Safer includes additional components that take advantage of that rechargeable battery

[00:21:03] Speaker 03:
including a DSP digital signal processor, 141, as well as an analog to digital converter, as well as memory that stores operating parameters.

[00:21:15] Speaker 03:
So this characterization of the combination as simply plugging in a rechargeable battery where none exists is not consistent with the grounds of patentability that the board actually decided that wasn't the grounds of patentability presented in the petition.

[00:21:31] Speaker 03:
The grounds of patentability presented in the petition presented and relied on expert testimony showing that it would have been obvious to not only include a rechargeable battery, but also to include additional components in that implanted part.

[00:21:46] Speaker 03:
And that is specifically what's taught in Life Safer.

[00:21:49] Speaker 03:
In fact, the board pointed to

[00:21:52] Speaker 03:
the dimension in Life Safer, with respect to claim 12, that having a large, bulky external hearing aid in the vicinity of the ear has this stigmatizing effect.

[00:22:07] Speaker 03:
And patients will tend not to use these devices.

[00:22:09] Speaker 05:
What about the argument, I mean, your opposing counsel says that there was no evidence that it was going to be more aesthetically pleasing if you changed

[00:22:21] Speaker 05:
that they said that, that that would be the motivation, but there was no evidence to support it.

[00:22:25] Speaker 03:
Well, again, it's an issue of substantial evidence that the board looked at that evidence, particularly LifeSafe, where LifeSafe was specifically recognized.

[00:22:33] Speaker 03:
Here's a problem.

[00:22:35] Speaker 03:
A large, bulky external device stigmatizes users.

[00:22:39] Speaker 03:
It's also referred to in the Koken article, Appendix 1343, that's discussed in Dr. Propelka's declaration.

[00:22:48] Speaker 05:
I get that, that's the basic principle, that you want it smaller, you want it, but the point is, is there anything about Huff that becomes smaller or more aesthetically pleasing if you alter it in the way that the board proposes?

[00:23:01] Speaker 03:
Sure, if we're moving processing, the digital signal processor or a processor at all into the internal part, if we're moving the memory that stores the operating parameters of the device, if we're moving the programming that would

[00:23:16] Speaker 03:
dictate the signal processing that's being performed to benefit the patient.

[00:23:21] Speaker 03:
Life Safer specifically recognizes that moving these things into the internal part addresses the stigmatism problem.

[00:23:30] Speaker 03:
Now, obviously patent owner may disagree, but it's really an issue of substantial evidence.

[00:23:35] Speaker 03:
And the board cited specific evidence.

[00:23:38] Speaker 05:
Well, what specific evidence did the board cite to say that Huff would be rendered more aesthetically pleasing?

[00:23:47] Speaker 03:
They cited to Life Safer, which was the secondary reference, combination with Huff.

[00:23:54] Speaker 03:
And the rationale was, if you take processing from the external part and move it into the internal part, that reduces the processing and the battery requirements of the external part.

[00:24:08] Speaker 03:
The elements that drive the output stimulation to the user, if those are in the internal part,

[00:24:17] Speaker 03:
it stands to reason that they don't need to exist in the external part.

[00:24:24] Speaker 03:
Okay.

[00:24:24] Speaker 03:
Okay, thank you.

[00:24:25] Speaker 03:
I would like to briefly touch upon claim 11 and the issue of power and induction.

[00:24:33] Speaker 03:
The patent owner argues that power must mean electric power, even for claim 11, where there's no rechargeable battery and that induction must mean electromagnetic induction.

[00:24:44] Speaker 03:
Neither claim 11 nor the 040 patent used the term electric power, electrical power.

[00:24:50] Speaker 03:
They never used the term electromagnetic induction.

[00:24:54] Speaker 03:
During IPR, we submitted a translation of the Swedish, or at least a relevant portion of the Swedish filing.

[00:25:01] Speaker 02:
Well, what did the board conclude as to claim construction of those two terms, power and induction?

[00:25:07] Speaker 03:
So for power, it was a bit more clear.

[00:25:09] Speaker 03:
They clearly rejected patent owner's argument that power must mean electric power.

[00:25:15] Speaker 02:
Right, and an induction.

[00:25:16] Speaker 03:
And by extension,

[00:25:19] Speaker 03:
Induction, or if you want to say electromagnetic induction, does not require some non-disclosed internal coil for generating electricity.

[00:25:30] Speaker 03:
It's a natural consequence from the board's interpretation of power.

[00:25:35] Speaker 02:
I remember, right, the board said

[00:25:37] Speaker 02:
There's a paragraph that quotes a couple of dictionaries, that induction is electromagnetic induction, and then the board says, we agree with that, but we don't think a current or a voltage needs to result as part of that.

[00:25:50] Speaker 02:
Is that what the board said?

[00:25:51] Speaker 03:
I think that's basically accurate.

[00:25:53] Speaker 03:
On page 44 of their decision, they do cite a computer dictionary, which this technology here is not a computer.

[00:25:59] Speaker 03:
They cite an IEEE standards dictionary, which is not

[00:26:04] Speaker 03:
the technology at issue either.

[00:26:06] Speaker 03:
But on the very next page, they make it clear that when they're using the term electromagnetic induction, despite the specification and the claims never using that term, that does not require an internal part for generating electricity.

[00:26:26] Speaker 03:
And here we have Huff reference that uses the same

[00:26:29] Speaker 03:
Terminology refers to the transcutaneous transfer of inductive electric magnetic energy.

[00:26:36] Speaker 03:
So it's important to recognize how this terminology was actually used in the actual field.

[00:26:43] Speaker 03:
The board looked at the issue really as one of inherent disclosure.

[00:26:48] Speaker 03:
There's no inherent disclosure in Figure 2 of an implanted battery.

[00:26:54] Speaker 03:
The only implanted battery is a retractable battery

[00:26:58] Speaker 03:
10 in figure 3.

[00:27:00] Speaker 03:
In fact, hound owners cited to that figure to element 10.

[00:27:04] Speaker 03:
And the original claims as filed included parentheticals where they pointed to number, numeral 10.

[00:27:10] Speaker 03:
They're referring to the configuration of figure 3, which isn't the relevant embodiment for figure 2.

[00:27:19] Speaker 03:
In figure 2, the only description of an element in the implanted part is a vibrator.

[00:27:25] Speaker 03:
And the board correctly concluded that a vibrator

[00:27:28] Speaker 03:
as in Figure 2 does not inherently require a rechargeable battery or any mechanism for generating electricity.

[00:27:36] Speaker 03:
So Your Honor, we agree that it would have been cleaner if the board simply said that the claim uses the term induction.

[00:27:44] Speaker 03:
It doesn't use the term electromagnetic induction.

[00:27:47] Speaker 03:
And under the broadest reasonable interpretation, we are not going to add

[00:27:51] Speaker 03:
language that isn't in the claim.

[00:27:53] Speaker 03:
It's not even in the specification.

[00:27:54] Speaker 05:
But I thought there was really not much dispute that electromagnetic induction and induction were essentially the same thing.

[00:28:00] Speaker 05:
The only dispute was what does that ultimately mean in terms of what the structure would have to look like?

[00:28:07] Speaker 03:
Well, Your Honor, we disagreed with the argument that induction and electromagnetic induction are synonymous terms.

[00:28:14] Speaker 03:
Induction itself is generic.

[00:28:19] Speaker 02:
But you have a board decision that that piece of the claim construction went against you, but then said it reads that its own construction not to require an internal coil.

[00:28:35] Speaker 02:
Are those two things consistent if you accept the board's view that induction does mean electromagnetic conduction?

[00:28:43] Speaker 03:
What the board said is that it ordinarily means

[00:28:48] Speaker 03:
Electromagnetic induction.

[00:28:49] Speaker 03:
They say plain and ordinary.

[00:28:51] Speaker 03:
Ordinarily, yes.

[00:28:57] Speaker 03:
Sorry.

[00:29:02] Speaker 02:
At the top of 45, right.

[00:29:04] Speaker 02:
Ordinarily.

[00:29:07] Speaker 03:
Ordinarily.

[00:29:07] Speaker 03:
Although we agree that it ordinarily means.

[00:29:11] Speaker 03:
But then they said it's the plain and ordinary mean.

[00:29:14] Speaker 03:
Ordinarily means... Right, but now 44 is plain and ordinary.

[00:29:19] Speaker 02:
That seems to be endorsing the equivalence of the concepts and then saying either and here or but here.

[00:29:27] Speaker 02:
I'm not quite sure what it means, but you still don't need an internal coin.

[00:29:32] Speaker 03:
Correct.

[00:29:33] Speaker 03:
And that's ultimately in the context of this patent.

[00:29:36] Speaker 03:
That's the issue.

[00:29:38] Speaker 03:
What does it mean in the context of the 040 patent?

[00:29:40] Speaker 03:
There, despite what the board said on

[00:29:44] Speaker 03:
page 44, which granted, I'm not sure why they went there, but they did.

[00:29:49] Speaker 03:
But on page 45, they recognized it in the context of the 040 pattern.

[00:29:54] Speaker 03:
There's no requirement in figure two for an internal coil that generates electricity.

[00:29:59] Speaker 02:
Do you have a cross appeal here?

[00:30:01] Speaker 03:
We do, yes.

[00:30:02] Speaker 02:
Can I just ask you this?

[00:30:04] Speaker 02:
Yes.

[00:30:04] Speaker 02:
So let me just state a view for you to react to, not necessarily my view.

[00:30:10] Speaker 02:
So Samsung recently said,

[00:30:13] Speaker 02:
indefiniteness does not translate one way or the other into a categorical ability or inability to address obviousness.

[00:30:22] Speaker 02:
It depends, rather, on what kind of and how much indefiniteness there is.

[00:30:27] Speaker 02:
So that, you know, mixed method

[00:30:30] Speaker 02:
apparatus indefiniteness, the court actually remanded and said that by itself does not necessarily preclude an obviousness ruling.

[00:30:39] Speaker 02:
Here it seems to me we have seven and nine in one category and ten in the other.

[00:30:45] Speaker 02:
Seven and nine is indefiniteness as a result of clearly being a means-plus-function claim and absolutely no structure, which means there is a big ink blot in the middle of the claim and you can't apply

[00:30:58] Speaker 02:
our prior art to an inkblot.

[00:31:01] Speaker 02:
But ten is different.

[00:31:03] Speaker 02:
And or.

[00:31:04] Speaker 02:
Right, so it says a directivity means comprising a directional microphone or a directivity dependent microphone.

[00:31:13] Speaker 02:
And or directional microphone.

[00:31:15] Speaker 02:
And that means essentially two things, a directivity means including a microphone or a directivity means including a signal processing means.

[00:31:24] Speaker 02:
That second part is in the same category as seven and nine, namely no structure, because that's means plus function.

[00:31:30] Speaker 02:
But that first part,

[00:31:31] Speaker 02:
is not necessarily even a means-plus-function claim because it specifies the structure right in the claim.

[00:31:38] Speaker 02:
So why wouldn't the board be able to do an obviousness analysis on that even if it can't do one on all the rest?

[00:31:47] Speaker 03:
They could, Your Honor.

[00:31:49] Speaker 03:
In fact, for the directional microphone,

[00:31:55] Speaker 03:
There's no even mention in the specification of directional microphone.

[00:31:57] Speaker 03:
The 040 patent is relying entirely on the technology.

[00:32:00] Speaker 02:
But as to the directional microphone, it might not even be a 112-6 claim at all.

[00:32:04] Speaker 03:
The board did not adopt a 112-6 paragraph interpretation for the directional microphone.

[00:32:09] Speaker 03:
They just focused on the first part of the claim.

[00:32:12] Speaker 05:
But our position is that they said that what the board said is we've got to construe the claim as a whole.

[00:32:18] Speaker 05:
And they didn't parse out the and versus the or, right?

[00:32:21] Speaker 03:
They looked at means plus function interpretation as the first step.

[00:32:26] Speaker 03:
It was starting on page 20 of their decision and found that the directivity means was means plus function.

[00:32:32] Speaker 03:
They did not adopt a means plus function interpretation for directional microphone.

[00:32:37] Speaker 03:
And they just determined.

[00:32:39] Speaker 03:
They just didn't address it.

[00:32:41] Speaker 03:
They didn't address it, no.

[00:32:43] Speaker 03:
And its proposition is that they could have conducted an obviousness analysis for not only a claim,

[00:32:51] Speaker 03:
10, but also for 7 through 9.

[00:32:53] Speaker 03:
But not the entirety of claim 10.

[00:32:59] Speaker 03:
Not the entirety of claim 10.

[00:33:00] Speaker 02:
The signal processing means part of it.

[00:33:02] Speaker 03:
Well, I think, frankly, they could have by recognizing the 040 patent does not refer to any structure that would possibly distinguish over the prior art.

[00:33:13] Speaker 03:
The board recognized that claims 7 through 10

[00:33:17] Speaker 03:
relate to a mere 13 lines of disclosure, essentially a single sentence.

[00:33:22] Speaker 03:
It's a laundry list of well-known hearing aid components.

[00:33:26] Speaker 05:
But don't you have to have claim construction before you can do an obvious misanalysis?

[00:33:32] Speaker 03:
There are certain situations where you don't need to define the outer boundaries of the claim to identify an example that falls within the scope of the claim.

[00:33:42] Speaker 03:
And here you have the patent owner admitting that

[00:33:48] Speaker 03:
digital signal processing means would be satisfied by a known digital signal processor.

[00:33:53] Speaker 03:
So the issue was actually teed up for the board to conduct an obviousness analysis because of this admission.

[00:33:59] Speaker 03:
There's no argument that the 040 patent disclosed any unique

[00:34:06] Speaker 02:
digital signal processing means.

[00:34:08] Speaker 02:
If the board were limited to conducting an obviousness analysis just on the directivity means comprising a directional microphone, full stop, have you made an argument that there's some prior art showing that directional microphone?

[00:34:24] Speaker 03:
We have, Your Honor.

[00:34:25] Speaker 03:
We relied on the Leszczynski reference, and the board simply didn't conduct the obviousness analysis.

[00:34:34] Speaker 03:
And again, there's no argument that there's anything unexpected about using a directional microphone in a bone-anchored hearing device.

[00:34:41] Speaker 03:
In fact, it was an afterthought.

[00:34:42] Speaker 03:
The 040 patent never mentions a directional microphone.

[00:34:45] Speaker 03:
The only place it shows up is in the claim.

[00:34:48] Speaker 03:
So our contention is that there was nothing unique about a directional microphone.

[00:34:54] Speaker 04:
OK.

[00:34:54] Speaker 04:
Let's hear from the other side, and we'll save you a rebuttal.

[00:34:58] Speaker 04:
And let's give this person a full rebuttal time.

[00:35:00] Speaker 04:
How many minutes?

[00:35:02] Speaker 04:
Five minutes.

[00:35:04] Speaker 01:
Thank you, Judge Newman.

[00:35:06] Speaker 01:
So I'd like to start, Judge Toronto, with the last question there that you asked my colleague about, with the Samson case and the iPixel issue.

[00:35:17] Speaker 01:
So here, the board, there isn't an iPixel issue with these claims.

[00:35:22] Speaker 01:
And the reason, as I understand the Samson decision, that it was remanded was so that the board

[00:35:28] Speaker 01:
could consider iPixel issue, that it had stopped short of evaluating those claims because it had found Section 112 issues in those same claims.

[00:35:42] Speaker 01:
We don't have that situation here.

[00:35:44] Speaker 01:
In fact, the board below did consider the arguments about claim construction.

[00:35:51] Speaker 01:
And I think correctly recognize that Oticon didn't say that

[00:35:57] Speaker 01:
the patent owner's construction was the correct construction.

[00:36:00] Speaker 01:
So it wasn't an agreed upon construction, per se.

[00:36:04] Speaker 01:
They just said, use it for this proceeding.

[00:36:06] Speaker 01:
And I think the board correctly recognized that claim construction is within the purview of the court or the board.

[00:36:14] Speaker 01:
And they disagreed with that claim construction.

[00:36:17] Speaker 01:
And so they already considered these claims

[00:36:20] Speaker 01:
in connection with that construction and decided that they could not render a patentability analysis.

[00:36:25] Speaker 05:
But what the board said, as I understand it, is the board said, well, we get that there is this one specific structure that's identified and claimed.

[00:36:35] Speaker 05:
But because it also claims this other digital processing means, and it's a means plus function claim, therefore, we have a 112 problem.

[00:36:45] Speaker 05:
But I don't see the board actually saying it's impossible to construe

[00:36:50] Speaker 05:
to one portion of the claim when you've got an and or, because the or has to be meaningful.

[00:36:56] Speaker 01:
Well, I think it's because of the and.

[00:36:58] Speaker 01:
And I can't remember the exact language that the board used, but they said that the two were tied together.

[00:37:04] Speaker 02:
But they're not, but they're not, because and is only one alternative.

[00:37:07] Speaker 02:
The fact is that the claim language would literally embrace something with a directional microphone, full stop.

[00:37:15] Speaker 02:
And if that was shown in the prior art, there would be something in the prior art within the coverage of the claim that would invalidate the claim for that reason.

[00:37:26] Speaker 01:
But I think the issue then, Your Honor, is whether the board could have or whether it was required to.

[00:37:34] Speaker 01:
So here the board looked at these claims and it determined

[00:37:38] Speaker 01:
that it was not able to construe them because of 112 issues.

[00:37:43] Speaker 01:
Whether the board could have gone on and done, as you say, that might have been a scenario.

[00:37:50] Speaker 01:
But was it incorrect for the board to stop short saying that this would not have been a meaningful comparison because we can't interpret with reasonable certainty the scope and the meaning of these claims?

[00:38:02] Speaker 01:
And then to touch on something about motivation to combine that was raised with counsel, I believe it might have been you, Judge Newman.

[00:38:14] Speaker 01:
I understand or I appreciate that we're looking at that this is a substantial evidence finding.

[00:38:19] Speaker 01:
Is there substantial evidence to support this combination of references?

[00:38:23] Speaker 01:
But the substantial evidence has got to be, would a reasonable mind accept this evidence to be adequate to support the conclusion?

[00:38:30] Speaker 01:
And I would submit, Your Honor, that a reasonable person would not find the evidence adequate.

[00:38:35] Speaker 01:
that the only evidence in the record that adding this battery to Huff would reduce the size is at 1305 and 1306.

[00:38:45] Speaker 01:
And again, it's a conclusory statement by Dr. Propelka that doing so would result in a smaller size, but saying it doesn't make it so.

[00:38:54] Speaker 01:
And there's no evidence in the record that actually

[00:38:58] Speaker 02:
It's not implausible on its face, right?

[00:39:01] Speaker 02:
If you take a bunch of functions out of the thing that needs to be on the outside, it sort of stands to reason that you might need less space, both for the items performing the function and for the power enabling them to do it.

[00:39:19] Speaker 01:
I agree that it arises to an interest.

[00:39:22] Speaker 01:
There is a generic interest to do that.

[00:39:23] Speaker 01:
But there's not evidence that there would actually be a product that would be smaller.

[00:39:28] Speaker 01:
And that would not change the principle of operation.

[00:39:32] Speaker 01:
I guess that gets back to that it would change the entire principle of operation.

[00:39:37] Speaker 01:
Because the way this device is designed is designed to have this external conductor on the outside that is vibrating this magnet on the inside.

[00:39:44] Speaker 01:
And that's the whole principle of operation that it's designed to do.

[00:39:48] Speaker 01:
And if there aren't any other further questions, I think we'll rest, Your Honor.

[00:39:53] Speaker 04:
Thank you.

[00:39:53] Speaker 04:
Thank you, Ms.

[00:39:55] Speaker 04:
Person.

[00:39:55] Speaker 04:
OK.

[00:39:56] Speaker 04:
Mr. Anderson, you have three minutes on the cross appeal, please.

[00:40:01] Speaker 03:
So just to touch further on the issue of claims seven through 10, again, I think it's important to recognize that the board conducted their own analysis of these claims.

[00:40:13] Speaker 03:
It wasn't an issue with respect to the petition being deficient in terms

[00:40:18] Speaker 03:
may be pointing to irrelevant parts or confusing parts of the record for claim construction.

[00:40:25] Speaker 03:
Here, the board, starting on page 20, conducted their own analysis and found that there's simply no distinguishing structure in the 040 patent for the elements of claims 7 through 10.

[00:40:38] Speaker 03:
Our position is that the lack of distinguishing detail in the 040 patent should not make these claims immune from an IPR challenge.

[00:40:48] Speaker 03:
Patent owner's argument now seems to be.

[00:40:53] Speaker 02:
Would you understand footnote three in Samsung?

[00:40:58] Speaker 02:
if you remember what that says.

[00:41:00] Speaker 02:
With respect to estoppel?

[00:41:01] Speaker 02:
With respect to estoppel to mean that if in a district, the board did not rule on the merits of obviousness here.

[00:41:10] Speaker 02:
It couldn't rule on the merits of indefiniteness, because that's not part of the IPR process.

[00:41:18] Speaker 02:
So in district court,

[00:41:21] Speaker 02:
you would have an indefiniteness challenge remaining.

[00:41:26] Speaker 02:
And if the district court disagreed with you and found that it was definite, contrary to the reasoning, by definition, not the holding of the IPR board, then there would be no estoppel for you to raise your obviousness challenge then and there.

[00:41:45] Speaker 02:
I think that's what Footnote 3 indicates.

[00:41:47] Speaker 03:
That's my reading of footnote three.

[00:41:51] Speaker 03:
However, since the issue before the court was one of a final written decision which did not deal with the issue of the scope of estoppel, it wouldn't surprise me that a patent owner would argue that that is merely dicta and that they would actually, it certainly wouldn't surprise me that they would actually raise an estoppel, IPR estoppel type defense.

[00:42:16] Speaker 03:
despite what's in footnote three.

[00:42:19] Speaker 03:
And as to your point about if a stoppile doesn't apply, then the accused infringer is free to argue indefiniteness in prior art in district court.

[00:42:34] Speaker 02:
The IPR statute provides.

[00:42:36] Speaker 02:
Well, the accused infringer is entitled to argue indefiniteness in district court.

[00:42:40] Speaker 02:
It's wholly apart from estoppel because the board could not, in law, rule on indefiniteness in this case.

[00:42:47] Speaker 03:
I was referring to the second part.

[00:42:49] Speaker 03:
He said if the court disagreed with indefiniteness, then they could do prior analysis.

[00:42:55] Speaker 03:
Well, that leads us back into the situation of the district court not being the most efficient

[00:43:02] Speaker 03:
jurisdiction for prior art review, the IPERA statute recognizes that... Okay, be careful about saying district courts can't do these kinds of things.

[00:43:11] Speaker 03:
I'm not saying they can't do it, of course, but in terms of an efficient way, particularly when we've been going through this case for over two years, the PTO simply decided that

[00:43:25] Speaker 03:
we're not going to decide obviousness for these claims, even though the patent owner is admitting that Means for Digital Signal Processing is a known digital signal processor.

[00:43:36] Speaker 03:
The notion that the board would have needed to engage in specular assumptions to conduct obviousness analysis, we disagree with that notion here, where you have a clear

[00:43:49] Speaker 03:
admission from the patent owner regarding an example of prior art that would satisfy their claim, and no argument that they've disclosed anything distinguishing over what was already available in the prior art.

[00:44:01] Speaker 03:
I believe in this case, even if there's not a sweeping holding that the PTAB must always perform obviousness analysis, even if the claims are indefinite, here I think we have a situation where the patent owner's own admission made it

[00:44:19] Speaker 03:
such that the PTAP clearly could have conducted an obviousness analysis.

[00:44:25] Speaker 04:
Okay, any more questions?

[00:44:27] Speaker 04:
Thank you.

[00:44:28] Speaker 04:
Thank you very much.

[00:44:29] Speaker 04:
Thank you.

[00:44:29] Speaker 04:
The case is taken under submission.