[00:00:42] Speaker 03:
Ms.

[00:00:43] Speaker 03:
Paton, please proceed.

[00:00:48] Speaker 02:
Good morning, Your Honors, and may it please the Court.

[00:00:51] Speaker 04:
Do you agree independent claim one of 978 is representative of the claims on appeal?

[00:00:57] Speaker 02:
I do to the extent that we're focused on the open area limitations and the open pathway limitations, Your Honor.

[00:01:06] Speaker 02:
All of the independent claims have those characteristics in common, and they are the focus of this appeal today.

[00:01:13] Speaker 04:
On pages 40 and 41 of the blue brief, Inova argues that the board failed to engage in claim construction before determining whether the characteristics of the open passageway and open area are found in the prior art.

[00:01:27] Speaker 04:
And then you provide what you say are proper constructions for each term.

[00:01:33] Speaker 04:
Where in the record did Inova ask for those claim constructions before the board?

[00:01:38] Speaker 02:
Your Honor, Inova did not ask for those constructions below.

[00:01:41] Speaker 02:
However, it became clear from the board opinion that a construction would be helpful to the party interpreting the claims.

[00:01:48] Speaker 02:
When it was clear from the board decision below that the board failed to engage with the intrinsic record, the claim language itself and its structure, the written description, and the prosecution history to understand what those terms meant in light of the specification.

[00:02:03] Speaker 02:
Under the broadest reasonable interpretation standard, the board is not supposed to look at those claims in isolation

[00:02:11] Speaker 02:
it's supposed to evaluate them in light of the intrinsic record.

[00:02:15] Speaker 02:
So that intrinsic record, and in particular, the information about the calculation of the open area relating to the outer portion of the flexible mount when it's in position, that is something that provided specific information about what the applicant meant when they described the term open area.

[00:02:35] Speaker 02:
Therefore, that's why we're presenting these claim constructions to this court.

[00:02:39] Speaker 02:
The board is welcome if it feels that claim construction is appropriate to request that.

[00:02:44] Speaker 02:
The parties are welcome to request it.

[00:02:46] Speaker 02:
It just became clear upon review of the board's decision.

[00:02:50] Speaker 02:
It failed to appreciate what those two terms meant.

[00:02:53] Speaker 04:
But you agree.

[00:02:54] Speaker 04:
You didn't raise it below.

[00:02:56] Speaker 02:
I do, Your Honor.

[00:02:57] Speaker 02:
It was not clear at that time that construction would have been helpful to the trier effect.

[00:03:02] Speaker 01:
Did you file a petition for rehearing?

[00:03:05] Speaker 02:
we didn't your honor given the nature of the board's decision in the deficiencies we felt it was better to come to this court to have the court review

[00:03:14] Speaker 02:
the evidence in the record and determine that substantial evidence did not support the decision below.

[00:03:19] Speaker 01:
In the claim construction, I understand your position.

[00:03:23] Speaker 01:
That would be one way to make sure you preserve it.

[00:03:25] Speaker 01:
But I'm not seeing a tremendous difference between what the board's claim constructions were and what you're asking for on appeal.

[00:03:34] Speaker 01:
That's a second issue.

[00:03:36] Speaker 01:
So I think that the only difference between your construction and open passageway on appeal

[00:03:43] Speaker 01:
and the construction that the board provided is you say it should be an acoustic passageway.

[00:03:48] Speaker 01:
Do I understand that correctly, that that's the only difference between what you're asking for and how the board interpreted the term?

[00:03:57] Speaker 02:
In effect, Your Honor, yes, because really this is about understanding the purpose of that passageway in light of the specification.

[00:04:05] Speaker 02:
So when you look at how the court applied

[00:04:08] Speaker 02:
its implicit construction, it was clear that it was looking at vents, which are designed to let air move out of the inner ear area and to the outside area to preclude occlusion and pressure buildup behind the ear.

[00:04:23] Speaker 02:
It was equating that to the ANOVA device, which has this open passageway that's designed to allow natural air and natural sounds pass the case into the ear so that it could mix with the augmented sound

[00:04:38] Speaker 02:
and then hit the eardrum.

[00:04:40] Speaker 01:
That's a significant difference.

[00:04:41] Speaker 01:
What about Brown just talking about this?

[00:04:45] Speaker 01:
Brown talks about acoustical energy.

[00:04:48] Speaker 01:
And acoustical energy, isn't that the same thing as sound?

[00:04:53] Speaker 02:
Acoustical energy becomes sound if it's in the right location.

[00:04:59] Speaker 02:
But when it talks about acoustical energy, it's talking about releasing through the valves

[00:05:06] Speaker 02:
that acoustic energy buildup that's behind the ear or in that open space between the front of that device, that's an in the ear device with an obstruction in front of the case.

[00:05:19] Speaker 02:
And then it has a clasp that goes around that connects it to the outside of the ear wall.

[00:05:25] Speaker 02:
And again, that's a compartmentalized space, right?

[00:05:28] Speaker 02:
And there's also pressure that builds up or acoustical energy that builds up behind the ear.

[00:05:33] Speaker 02:
So that is why Brown talks about allowing for release of acoustical energy buildup to the outer area of the ear.

[00:05:41] Speaker 01:
Do I understand correctly that that acoustical energy is, it's when you have the ears plugged and the sound is coming from the mouth, I guess, through the bones to the ear in that passageway and that's the acoustical energy that they're talking about.

[00:05:59] Speaker 01:
It's still sound.

[00:06:01] Speaker 01:
You're talking about the occlusion effect, Your Honor.

[00:06:03] Speaker 01:
I'm talking about brown and saying that it has the vents in order to allow that to dissipate.

[00:06:11] Speaker 02:
That's correct, Your Honor.

[00:06:13] Speaker 02:
There's a number of situations in which that acoustical energy buildup would occur when you have a sealed device like brown.

[00:06:19] Speaker 02:
One instance is if you're getting on a plane and you have a sudden pressure change, right?

[00:06:23] Speaker 02:
That will change the pressure in your ear canal.

[00:06:26] Speaker 02:
You may need to allow that to escape.

[00:06:28] Speaker 02:
Likewise, whenever you have a sealed device like Brown and you are speaking, there are sound waves that are moving through the bone to the ear, and they sit there and can interfere with the microphone effort to take the outside sound and move it directly to the inner ear.

[00:06:46] Speaker 02:
So there are a number of ways in which this unwanted acoustical energy can be generated and get trapped within the device pieces or behind the device, and this is why

[00:06:57] Speaker 02:
all of the prior art in the ear or completely in the canal devices have a vent to allow for that passage of the unwanted acoustical energy.

[00:07:09] Speaker 02:
So it doesn't interfere with the microphone, and you don't have this uncomfortable pressure buildup in the ear.

[00:07:16] Speaker 02:
Your Honors, with respect to the claim construction, even if we put that aside for a second, it's really to help the party looking at the language of the patent claims

[00:07:26] Speaker 02:
and applying it to the prior art.

[00:07:28] Speaker 02:
It is not a significant distinction in any manner from the specifications teachings.

[00:07:34] Speaker 02:
It just makes clear that when we're talking about the ANOVA device, the important difference between the ANOVA device and the prior art that was in the ear or completely in the canal is that it does exactly what they don't teach.

[00:07:49] Speaker 02:
They say, seal the device.

[00:07:52] Speaker 02:
Do not allow this occlusion.

[00:07:54] Speaker 02:
This is a problem with a sealed device.

[00:07:56] Speaker 02:
So we're going to allow small vents for air to come out.

[00:08:00] Speaker 02:
What the board does, it equated that with movement of natural sound through the open passageway in the Innova device.

[00:08:08] Speaker 01:
Where in your claim do you say that open sound should be coming through the open passageway and the open air?

[00:08:16] Speaker 01:
Because I don't see, in the claim one at least, where

[00:08:21] Speaker 01:
the claim is talking about particular sound, or that it has to be sound from outside the ear that's coming in, in addition to the sound that's being picked up by the microphone in the case.

[00:08:37] Speaker 02:
So Your Honor, when you look at claim one, it talks about an open passageway for movement, an acoustic passageway.

[00:08:48] Speaker 02:
And then a flexible insert defining an open area that's mounted within the Eaters Canal to create a sound path extending through the at least one open passageway instead open area.

[00:09:00] Speaker 02:
So the sound path is what we're talking about.

[00:09:02] Speaker 02:
A way for air to move from outside the ear through the device past the case.

[00:09:10] Speaker 02:
which has spaces around it on all sides and past the open area on the flexible mounting insert.

[00:09:16] Speaker 01:
Sorry to interrupt you.

[00:09:18] Speaker 01:
It just says to create a sound path extending through the at least one open passageway in the open area.

[00:09:25] Speaker 01:
It doesn't say a sound path that extends past and outside the ear, for example.

[00:09:33] Speaker 02:
It does not specifically in the claim, but when you look at the entirety of the specification, it makes clear what that sound path is designed for.

[00:09:40] Speaker 02:
And remember, we're talking about the broadest reasonable interpretation of the claims in light of the specification.

[00:09:47] Speaker 02:
When you look at the abstract, the summary of the invention, the detailed description of the invention, in all of these locations as described in the opening brief and reflected in the summary in the opening brief, the ANOVA device is designed for the purpose of allowing that natural sound

[00:10:07] Speaker 02:
into and past the device and mixed with the sound coming from the receiver.

[00:10:11] Speaker 02:
So that makes it clear that this is what the open passageway is designed for.

[00:10:15] Speaker 02:
And to read it any other way would be improper, particularly in light of the prior art, where the prior art talks about the disadvantageous nature of natural sound coming into the ear, the importance of sealing the device.

[00:10:31] Speaker 01:
What about this limitation, the 5% to 70% limitation?

[00:10:34] Speaker 01:
At one point in the board's opinion, it says it doesn't say what it's 5% to 70% of.

[00:10:41] Speaker 01:
So really, it doesn't have any meaning at all.

[00:10:47] Speaker 01:
Are you familiar with what I'm referring to?

[00:10:49] Speaker 01:
So what is your position on that?

[00:10:51] Speaker 01:
I noticed that that was not raised on appeal, but I was wondering what your position was.

[00:10:58] Speaker 02:
Actually, Your Honor, that was raised on an appeal, and it was raised below.

[00:11:02] Speaker 02:
When we're talking about that 5% to 70% as provided in the appendix, page 486, there was a description during prosecution of what that 5% to 70% of open area is meant to encompass.

[00:11:17] Speaker 02:
And it was compared to the Chenib device.

[00:11:20] Speaker 02:
The Chenib device is enclosed in the canal device.

[00:11:25] Speaker 02:
And it has 1.9% at the most generous calculation.

[00:11:30] Speaker 02:
So if you want to put it differently, during prosecution, as a matter of prosecution history estoppel, the applicant actually described what it means by that open area at the outer portion of the insert.

[00:11:43] Speaker 02:
And it provided calculations within the record to support that.

[00:11:47] Speaker 01:
Where is that referred to in your briefing before the court?

[00:11:52] Speaker 02:
In the reply brief, I know that we discussed in detail that open area

[00:11:56] Speaker 02:
in the calculations, and again, both at page 486 in the appendix and 500 and 501 in the appendix.

[00:12:03] Speaker 01:
So where in the reply brief do you talk about the claim construction of the 5% to 70% limitation, or in your blue brief?

[00:12:14] Speaker 02:
It's actually page 5 of the reply brief, I believe.

[00:12:23] Speaker 02:
Let me just check.

[00:12:32] Speaker 01:
I'm not seeing it here.

[00:12:44] Speaker 02:
Let me get it for you, Your Honor.

[00:12:58] Speaker 02:
I believe it was also in the opening brief

[00:13:01] Speaker 02:
I'll find it for you, Your Honor.

[00:13:03] Speaker 04:
Are you dropping the reference to the requirement?

[00:13:07] Speaker 02:
I am not, Your Honor, but I believe actually 486 was cited in the opening brief as well.

[00:13:20] Speaker 02:
Yes, Your Honor, on page 46 and 47 of the opening brief, there was a description of the open area calculations.

[00:13:30] Speaker 02:
And it talks about the calculations I just walked through with your honor in terms of the 5% to 70%.

[00:13:38] Speaker 02:
So this is where we argue that when you look at these prior art devices in the vents, even in the most generous calculation of the prior art devices, they do not overlap with the percentage of open area that's described and claimed in the ANOVA patent.

[00:13:56] Speaker 02:
They talk about routine optimization or experimentation to get there, but there's nothing within the record that actually points to how one of ordinary skill in the art would decide that you take a closed-in-the-canal device that's sealed and borrow pieces from a behind-the-ear device that may or may not have a receiver within the ear to come up with an open device to allow natural sound waves through.

[00:14:22] Speaker 03:
Ms.

[00:14:23] Speaker 03:
Payton, you're into your bottle time.

[00:14:24] Speaker 03:
Do you want to save the remainder?

[00:14:26] Speaker 02:
I will say the remainder.

[00:14:27] Speaker 02:
Thank you, your honor.

[00:14:30] Speaker 03:
Let's hear from the government.

[00:14:33] Speaker 03:
Is it Solwert?

[00:14:35] Speaker 03:
Yes, it is.

[00:14:35] Speaker 03:
Mr. Solwert, please proceed.

[00:14:49] Speaker 00:
May it please the court.

[00:14:51] Speaker 00:
The only limitations that are in dispute before the court today are the open passageway and open area limitations.

[00:15:00] Speaker 00:
And as Judge Wallach already noted, those can be considered just in light of claim one, because those are common to all the claims that are being disputed.

[00:15:16] Speaker 00:
So what the claim requires is that there is a sound path created that has two parts.

[00:15:20] Speaker 00:
an open passageway and an open area.

[00:15:22] Speaker 03:
Before you get into the merits, did you or are you making any arguments related to waiver?

[00:15:27] Speaker 03:
Do you believe that?

[00:15:29] Speaker 03:
And did you argue to us that the appellant waived claim construction arguments?

[00:15:36] Speaker 00:
We are making a light waiver argument, Your Honor, which is to say that we know that.

[00:15:40] Speaker 00:
That sounds like an ad on the Silverbone waiver of light.

[00:15:44] Speaker 00:
I don't know.

[00:15:45] Speaker 00:
Maybe he's really, really drunk.

[00:15:48] Speaker 00:
Sorry.

[00:15:48] Speaker 00:
So there were no specific claim constructions argued to the board below.

[00:15:57] Speaker 00:
You're an opponent.

[00:15:58] Speaker 00:
It concedes that.

[00:16:00] Speaker 00:
Yes, that's correct.

[00:16:01] Speaker 00:
And so the board's decision should be read in light of that, that these specific arguments weren't raised with a chance for the board to address them.

[00:16:10] Speaker 04:
Doesn't that constitute waiver?

[00:16:11] Speaker 00:
Some of the arguments raised about the merits of Brown and the other prior art references obviously implicate those terms.

[00:16:19] Speaker 00:
And so the board looked at them with their plain and ordinary means.

[00:16:22] Speaker 00:
And so the board's opinion should be construed or looked at by this court favorably in that light.

[00:16:30] Speaker 03:
Did you argue to us that they waived this issue?

[00:16:32] Speaker 00:
We did say in the summary of the argument, Your Honor, in the blue brief, I'm sorry, the red brief, that the board addressed the arguments that were before it.

[00:16:45] Speaker 00:
And it can't have been expected to address arguments now being raised before this court for the first time.

[00:16:50] Speaker 01:
That's the only place where you address and make any waiver argument?

[00:16:53] Speaker 00:
That's correct.

[00:16:54] Speaker 00:
Because ultimately, this court is, whether it's under plain and ordinary meaning or not, is going to do some form of review of the claim construction question.

[00:17:03] Speaker 00:
And so ultimately, it has to reach that.

[00:17:05] Speaker 00:
The question is, you know,

[00:17:08] Speaker 00:
how much of these new constructions should be given credit or looked at as part of that consideration of what plain and ordinary meaning of these terms is.

[00:17:19] Speaker 00:
Ultimately, I don't think it matters a whole lot, because as has already been raised, the new constructions don't really add anything.

[00:17:27] Speaker 00:
I don't think that Inova has raised a persuasive argument before this court

[00:17:33] Speaker 00:
that these new constructions add something that would result in reversal in any case.

[00:17:39] Speaker 01:
Can I ask you something?

[00:17:40] Speaker 01:
This is a different issue.

[00:17:42] Speaker 01:
One of the things that troubles me about this case is how the government seems to have changed its position a lot.

[00:17:48] Speaker 01:
So you've got a rejection by the examiner that is Brown in view of various other references, the Bowman 086, Brown, Fretz, Bowman

[00:18:01] Speaker 01:
Bauman 086, Bauman 076.

[00:18:05] Speaker 01:
And there were some other references that were cited, the admitted prior art.

[00:18:09] Speaker 01:
And then you get to the board.

[00:18:11] Speaker 01:
And the board says mostly it's just we're going to reject this in view of Brown, and says that the 5% to 70% limitation doesn't have any meaning.

[00:18:20] Speaker 01:
And then it says, assuming it does, Bauman teaches that you would want to optimize this parameter for the open areas.

[00:18:28] Speaker 01:
And then it says, and also there's all this other stuff here that teaches other examples of having open areas.

[00:18:34] Speaker 01:
And then you go to the red brief, and now we're talking and focusing mostly on the immediate priority as being the primary reference.

[00:18:44] Speaker 01:
Why is it that there's all this variation for something

[00:18:48] Speaker 01:
that allegedly is obvious.

[00:18:50] Speaker 01:
Why is it that there's so many different permutations here in the record on what the actual rejection is?

[00:18:58] Speaker 01:
And it makes it really hard for me to review this.

[00:19:01] Speaker 00:
Yes.

[00:19:02] Speaker 00:
Respectfully, Your Honor, I don't think that there have been a lot of different permutations.

[00:19:06] Speaker 00:
I think that the emphasis on different pieces of prior art has changed in light of the arguments at each stage of the prosecution.

[00:19:14] Speaker 00:
But the board did reject the claims over the same combinations that were argued by the examiner.

[00:19:21] Speaker 01:
I know, but then what is the reason for modifying Brown, which has open areas, in view of these prior art references?

[00:19:30] Speaker 01:
including Bowman 086, Bowman 076, and frets.

[00:19:34] Speaker 01:
What is the motivation for modifying a totally in-the-ear device to have components of a device that's only partly in the ear?

[00:19:44] Speaker 00:
Correct.

[00:19:45] Speaker 01:
I mean, especially when brown doesn't even look necessarily like it needed to be modified.

[00:19:49] Speaker 01:
So that's the problem.

[00:19:50] Speaker 01:
But anyway, what is the motivation?

[00:19:53] Speaker 00:
Okay, Your Honor.

[00:19:54] Speaker 00:
So I'll take that step by step and break it down.

[00:19:56] Speaker 00:
So the board's starting point is sort of looking at brown and sour as the primary references that have a completely in canal device disclosed that is smaller than the ear canal.

[00:20:09] Speaker 00:
And so it has to be mounted and held in the ear in some way.

[00:20:12] Speaker 00:
And they do that in slightly different ways with these flexible mounts.

[00:20:17] Speaker 00:
And in each case, the board said, looking at Brown, there's a venting system because you have to release this pressure due to this occlusion effect that's discussed.

[00:20:27] Speaker 00:
Also, Brown talks about the problem with feedback, which it says happens even in behind the ear devices, which is that you have some of the amplified sound from the receiver closest to the tympanic membrane coming back around the microphone.

[00:20:42] Speaker 00:
probably heard that at public events or something like that, where somebody's a little too close or far from the microphone, you get the high-pitched whistling sound.

[00:20:49] Speaker 00:
You can get that effect.

[00:20:50] Speaker 00:
That's the feedback.

[00:20:52] Speaker 00:
And so the board said, there's this known problem.

[00:20:56] Speaker 00:
And that's part of the reason that they rely on so many of the references, in particular the Bauman 086 reference for a more detailed discussion of

[00:21:04] Speaker 00:
Another occlusion problem, which is occlusion loss, you're putting an object in the ear and therefore you're losing some of the natural resonances that are created by the architecture of the ear itself, which is another occlusion problem.

[00:21:20] Speaker 00:
And so the board says you have a complete being canal device, and you know about these sort of competing effects.

[00:21:27] Speaker 00:
You have occlusion from blocking it off too much, and you also have the potential for feedback.

[00:21:33] Speaker 00:
And you have to balance out those two concerns.

[00:21:37] Speaker 01:
And Brown actually recognizes those concerns and itself has a solution to them, right?

[00:21:42] Speaker 00:
That is correct.

[00:21:45] Speaker 00:
But the board also found that a person of ordinary art looking at Brown and these other prior art references would know very full and well about occlusion and feedback and look to optimize the design in Brown.

[00:22:01] Speaker 01:
Why did Brown need to be further optimized?

[00:22:03] Speaker 01:
What would make a person of ordinary skill in the art think Brown needed to be changed?

[00:22:08] Speaker 00:
Well, because they specifically discussed the occlusion effect.

[00:22:11] Speaker 00:
And many of these other references also discussed the occlusion effect.

[00:22:16] Speaker 03:
But Brown had its own solution to that.

[00:22:18] Speaker 00:
Well, it has a limited solution.

[00:22:20] Speaker 03:
And what the board is finding is that there's motivation to- So you think one of these outside-the-ear devices has a better solution than Brown's venting system?

[00:22:30] Speaker 00:
No.

[00:22:30] Speaker 03:
And that's what you're saying the board found?

[00:22:32] Speaker 00:
No.

[00:22:34] Speaker 03:
And you're wondering why we think there's a moving target?

[00:22:37] Speaker 00:
I know your honor so let me explain that you have once you know you're motivated that you want to optimize the design that's in brown or also in sour similar types of starting points that.

[00:22:53] Speaker 00:
You would then be motivated to go look at other disclosures, including behind the ear devices, because they are also mounting a piece of the device floating in the ear that is smaller than the ear canal, using different designs for these, you know, rubbery sort of soft pliable mounts that hold that piece in place.

[00:23:12] Speaker 00:
And since the completely in canal device has everything, not just that component, but it's still in a similar situation, you're still designing for that situation where you have a device smaller than the ear canal that needs to be held in place, you would look at the kind of mounts that they were using in those behind-the-ear devices.

[00:23:32] Speaker 00:
And so they're offering

[00:23:34] Speaker 00:
the Bowman references as yet more alternatives for how a person of skill in the art would look at these different designs that have increased open space.

[00:23:43] Speaker 00:
And then they would optimize the open space to get the maximum relief from the occlusion effect without producing any feedback.

[00:23:53] Speaker 00:
And that's consistent with the disclosure in the re-exam application.

[00:23:57] Speaker 03:
So what exactly is the motivation to combine all five of these references?

[00:24:03] Speaker 00:
It's the disclosure of both the occlusion and the feedback effects.

[00:24:09] Speaker 03:
In the primary reference.

[00:24:13] Speaker 00:
They're all being relied on because they all disclose this effect of occlusion and feedback.

[00:24:22] Speaker 00:
And those are kind of countervailing concerns.

[00:24:24] Speaker 00:
Because the more you open up the space in the ear around the- So here's my problem.

[00:24:29] Speaker 03:
I feel like the board's opinion, for me, is troubling

[00:24:33] Speaker 03:
because it's five references with wildly differently designed hearing aids.

[00:24:40] Speaker 03:
And it just, I don't even understand really what it's picking from some of the references that it says are missing in the primary reference.

[00:24:49] Speaker 03:
I don't understand why it's motivated to go to some of those references.

[00:24:53] Speaker 03:
And I feel like there's a lot of hand waving.

[00:24:55] Speaker 03:
And what I'm worried about is a five reference rejection.

[00:24:58] Speaker 03:
is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together.

[00:25:06] Speaker 03:
But here it's even worse than that because I'm not sure which elements are being chosen from some of these references.

[00:25:11] Speaker 03:
I'm not sure what some of these references even add to the primary reference that hasn't been made clear to me.

[00:25:18] Speaker 03:
So I am a little bit veiled in my understanding of the board's analysis.

[00:25:24] Speaker 00:
Right.

[00:25:25] Speaker 00:
And I am trying to convey what I think the board was saying.

[00:25:28] Speaker 00:
And I think one of the best places the board explains this is at appendix 11 to 12.

[00:25:34] Speaker 00:
And the board is saying, our starting point is brown or sour, which has the open passageway around a device that's smaller than the ear canal.

[00:25:47] Speaker 00:
And it also has, in each case, a vent to deal with this occlusion effect.

[00:25:52] Speaker 00:
And that a person of ordinary skill in the art, looking at these other references that also disagree.

[00:25:58] Speaker 01:
What language are you relying on?

[00:25:59] Speaker 01:
You pointed us to pages 11 and 12.

[00:26:02] Speaker 00:
Right.

[00:26:08] Speaker 00:
OK.

[00:26:11] Speaker 00:
Beginning on the second paragraph on Appendix 11, it would have been obvious to one of ordinary skill in the art, being of ordinary creativity, not an automaton, to have combined a known hearing aid with an open passageway and a flexible insert, creating a sound path through the open passageway, an open area formed by the flexible insert, i.e.

[00:26:35] Speaker 00:
Brown.

[00:26:36] Speaker 03:
So wait, just to be clear, is Brown, then, the known hearing aid that we're talking about?

[00:26:44] Speaker 00:
Yes.

[00:26:44] Speaker 03:
The known hearing aid with an open passageway and a flexible insert.

[00:26:47] Speaker 03:
That's Brown?

[00:26:48] Speaker 00:
That's correct.

[00:26:49] Speaker 03:
OK.

[00:26:50] Speaker 00:
With the known feature of flexible inserts of varying dimensions, sizes, or specifications.

[00:26:56] Speaker 00:
And they're showing that any of Brown threats, Bauman 076 or Bauman 086,

[00:27:03] Speaker 00:
in order to address the known problem of the occlusion effect in hearing aids, any of Brown, Fretz, Bauman 076 or Bauman 086.

[00:27:13] Speaker 01:
Do you think this is a combination 103 rejection?

[00:27:18] Speaker 00:
It is a 103 rejection, Your Honor.

[00:27:20] Speaker 00:
But is it?

[00:27:20] Speaker 01:
Is he trying to combine Brown with Fretz, Bauman, and Bauman 086?

[00:27:26] Speaker 00:
It's very confusing.

[00:27:31] Speaker 00:
the primary references are brown and sour, and that the remaining references are being relied on for two purposes.

[00:27:38] Speaker 00:
One, to show knowledge of those of skill in the art about both occlusion and feedback problems, and that those are competing concerns.

[00:27:46] Speaker 04:
They also say any of brown and then the others.

[00:27:50] Speaker 04:
So they're saying you can just rely on brown, but the others give you

[00:27:55] Speaker 00:
Are there varying solutions?

[00:27:57] Speaker 00:
Correct.

[00:27:58] Speaker 00:
But in this respect, it's sort of like relying on these pieces of prior art to show the state of the art.

[00:28:03] Speaker 00:
Multiple references demonstrating knowledge about these problems in design.

[00:28:08] Speaker 00:
And then further relying on- Is that what the examiner did?

[00:28:11] Speaker 00:
That is what the examiner did.

[00:28:13] Speaker 01:
What about the red brief?

[00:28:15] Speaker 01:
Because the red brief on page 16 is talking about the admitted prior art.

[00:28:21] Speaker 01:
If you look at page 16, for example, it says the APA,

[00:28:25] Speaker 01:
shows claim one except for space around the hearing aid.

[00:28:29] Speaker 01:
However, Sauer and Brown show space around the hearing aid.

[00:28:32] Speaker 01:
And so the admitted priority is what's relied on for most of the limitations of claim one.

[00:28:38] Speaker 00:
Right.

[00:28:38] Speaker 00:
But those are sort of the standard components of any hearing device that aren't really at dispute here.

[00:28:44] Speaker 01:
Don't you agree that this is a different primary reference being relied on here than what you just read to us from the board's opinion?

[00:28:52] Speaker 00:
I suppose so, Your Honor, in that respect of those sort of building block type elements to the extent that you find that they're not disclosed specifically in Brown, which does disclose completely in canal hearing device, which would necessarily have a microphone, an acoustic passageway, and a receiver just to function as that type of device.

[00:29:12] Speaker 00:
It's sort of inherent.

[00:29:13] Speaker 01:
I thought Brown wasn't completely in the ear device.

[00:29:17] Speaker 01:
I think Brown is.

[00:29:20] Speaker 00:
It certainly discloses them.

[00:29:22] Speaker 00:
You could argue about whether all of the illustrations show it as completely in the canal or not.

[00:29:29] Speaker 00:
But I think it does specifically discuss them as being a part of the state of the art.

[00:29:36] Speaker 03:
Can I get you to go back to the open passageway concept, please?

[00:29:40] Speaker 03:
I'm trying to figure out what the construction of open passageway should be.

[00:29:44] Speaker 03:
Am I understanding correct if I look at Figure 6?

[00:29:50] Speaker 03:
Which portion is the open passageway?

[00:29:55] Speaker 00:
I'm sorry, Figure 6 of?

[00:29:56] Speaker 03:
The patent?

[00:29:58] Speaker 03:
I'm trying to understand the construction of open passageway because that's one of the issues appealed to us, right?

[00:30:03] Speaker 03:
You told me two issues, open area and open passageway.

[00:30:05] Speaker 00:
That's correct.

[00:30:06] Speaker 03:
So look at Figure 6.

[00:30:08] Speaker 03:
Where's the open passageway?

[00:30:09] Speaker 00:
So in figure six, it would be sort of the open space that you can see around the case, between the case and the ear canal.

[00:30:23] Speaker 00:
Right.

[00:30:25] Speaker 03:
So I guess when it describes figure six, and it talks about it as the present invention, it says, it's readily apparent that case one is smaller in cross-section than the wearer's ear canal along its entire length.

[00:30:39] Speaker 03:
Is that true about Brown?

[00:30:45] Speaker 00:
So.

[00:30:47] Speaker 03:
The answer is no.

[00:30:49] Speaker 03:
Brown is sealed on both ends with events.

[00:30:51] Speaker 00:
That's actually not correct, Your Honor, respectfully.

[00:30:54] Speaker 00:
So Brown never says.

[00:30:56] Speaker 03:
And try to talk in terms of what the board found, too, as opposed to what you might think now Brown discloses.

[00:31:04] Speaker 00:
OK.

[00:31:07] Speaker 00:
So the board did address the notion that.

[00:31:11] Speaker 03:
Because they referred to Brown as sealed on both ends.

[00:31:15] Speaker 00:
The board did not refer to the Browns sealed in both ends.

[00:31:19] Speaker 00:
They referred to it as sealed at the location of the retaining element, but that wasn't truly sealed because there's a vent.

[00:31:28] Speaker 00:
And so with a vent in place, there's obviously no seal.

[00:31:32] Speaker 03:
There's obviously also not a device that is smaller in cross-section than the wearer's ear canal, is there?

[00:31:38] Speaker 00:
There is in the receiver portion.

[00:31:42] Speaker 03:
But that's not the entire length.

[00:31:45] Speaker 03:
This specification says, the present invention is readily apparent.

[00:31:48] Speaker 03:
The case one is smaller in cross-section than the wearer's ear canal along its entire length.

[00:31:55] Speaker 03:
I don't see that in Brown.

[00:31:56] Speaker 03:
And that's what I think is the absolute clear definition of open passageway.

[00:32:01] Speaker 00:
Respectfully, Your Honor, first, that's not in claim one or any of the other claims.

[00:32:06] Speaker 03:
What isn't?

[00:32:07] Speaker 00:
that notion that the entire... It's the word open passageways in claim one.

[00:32:11] Speaker 00:
It is, but it simply says an open passageway between the year now and the case.

[00:32:15] Speaker 03:
And yes, I have to understand what open passageway means.

[00:32:17] Speaker 03:
Is there something... Do you think something else in the spec is better than the definition I'm pointing to, which is referring to the President's invention?

[00:32:25] Speaker 00:
I think that claim one and the other claims are written in terms that are broader than what is disclosed in the specification, and no such requirement

[00:32:34] Speaker 00:
that the entire circumference does not touch the canal wall is included in claim one.

[00:32:40] Speaker 03:
When we say present invention, which is what that says in that sentence, how have we as a court construed that in terms of looking at definitions to give claim terms?

[00:32:51] Speaker 00:
Sometimes the court has found those statements to be limiting.

[00:32:54] Speaker 03:
I've never seen anywhere we haven't.

[00:32:56] Speaker 03:
Do you know of any case where we have had a sentence that defines something in terms of the present invention and then found it wasn't limiting?

[00:33:03] Speaker 00:
I couldn't give you one off the top of my head, Your Honor.

[00:33:08] Speaker 00:
Just to briefly finish addressing your point, I do believe it's fair to say that they wrote claim one broader than that to allow, for example, what if there was an open passageway only along the top of the case?

[00:33:21] Speaker 00:
Claim one seems to allow for that.

[00:33:23] Speaker 00:
They haven't written claim one in a manner to require space all around.

[00:33:27] Speaker 00:
But even if they did,

[00:33:31] Speaker 03:
I think that perhaps but but I guess that's the question of what does it mean when it says open passageway?

[00:33:38] Speaker 00:
Correct.

[00:33:38] Speaker 03:
What does it mean?

[00:33:40] Speaker 00:
Well, it means an open space but they didn't specify that's along the entire length of the case passageway.

[00:33:45] Speaker 03:
So things have to be able to travel along that space.

[00:33:49] Speaker 00:
Yes, Your Honor.

[00:33:50] Speaker 00:
I think that's fair.

[00:33:51] Speaker 00:
I just want to make the point that I don't think they claim that way.

[00:33:55] Speaker 00:
But even if it's interpreted that way, Brown, the board addressed the argument about there being a seal at the outer portion of the receiver and says there's no description in Brown.

[00:34:04] Speaker 00:
And that's accurate.

[00:34:04] Speaker 00:
There's no description that that creates a seal.

[00:34:07] Speaker 00:
It's only based on looking at a two-dimensional drawing, not a three-dimensional one.

[00:34:13] Speaker 00:
to the expressed disclosure of Brown about venting, which I can just help the court with a brief reference to that.

[00:34:26] Speaker 00:
At appendix 396, column 8, higher up in column 8, there's some discussion of occlusion, and then beginning at line 24,

[00:34:40] Speaker 00:
Brown states that the sound apertures 44 provide a pathway for the rearward diffusion of this accumulated acoustical energy as indicated by the arrows 48 That's figure eight and then skipping one sentence this air gap which is described in that prior sentence is

[00:35:02] Speaker 00:
farther down in the structure combined with the sound aperture 44 provides a route of escape to the external environment for the low frequency acoustical energy responsible for the occlusion effect.

[00:35:13] Speaker 00:
It is also important to vent the ear canal to allow the dissipation of accumulated moisture within the ear canal, a possible source of damage to the receiver module.

[00:35:22] Speaker 01:
Just to be clear, that accumulated acoustical energy, that's the noise that's going through the bone from the speaker's mouth.

[00:35:31] Speaker 00:
That's right.

[00:35:31] Speaker 00:
And it results in accumulated sound pressure trapped if there's no way for it to escape.

[00:35:36] Speaker 00:
And so the vents, 48 in brown, are provided to release that sound pressure.

[00:35:41] Speaker 03:
So just to be clear, that's that bouncing around sound?

[00:35:43] Speaker 03:
That's not the stuff that's coming in from outside through the passageway, right?

[00:35:52] Speaker 00:
That's what this vent is there for, but it's not a valve.

[00:35:56] Speaker 00:
It's a vent.

[00:35:56] Speaker 00:
So there's nothing to prevent sounds also coming in that way, which is, you know.

[00:36:02] Speaker 00:
And furthermore, there's the disclosure and the additional references about increasing the size of this space.

[00:36:08] Speaker 00:
Sauer explicitly says at least one vent.

[00:36:11] Speaker 00:
And it also has slots in the outer portion that open up the space even more.

[00:36:15] Speaker 00:
And we noted that in the brief.

[00:36:17] Speaker 03:
But if I were to construe those vents as

[00:36:21] Speaker 03:
not creating an open passageway the entire length of the canal.

[00:36:25] Speaker 03:
If I think open passageway requires a passageway the entire length of the canal, how do I get to obviousness?

[00:36:35] Speaker 00:
Well, you can see that open passageway in Sauer, for example, because there are slots in the retaining measure members in addition to the vents.

[00:36:45] Speaker 00:
And remember, the open passageway doesn't mean- OK, but time out.

[00:36:48] Speaker 03:
If I construe the claim this way, don't you want me to remand this and have the board do all that?

[00:36:51] Speaker 03:
Because the board never said there are slots in Sauer that create this open passageway, because the board, in fairness, clearly didn't construe the claim the way I'm suggesting to you I might.

[00:37:00] Speaker 03:
So wouldn't it be best if I at that point vacated and remanded?

[00:37:03] Speaker 03:
And since there are five references, the board can kind of go through which ones may or may not support the open passageway.

[00:37:10] Speaker 00:
That's certainly an alternative, Your Honor.

[00:37:12] Speaker 00:
I just think that the board was addressing the arguments in front of it.

[00:37:16] Speaker 00:
And many of these things are apparent from just looking.

[00:37:18] Speaker 03:
But this argument was made.

[00:37:20] Speaker 03:
They absolutely repeatedly made the argument

[00:37:22] Speaker 03:
that the primary reference was sealed and therefore didn't have an open passageway.

[00:37:26] Speaker 00:
And that is explicitly addressed, that point in the board's opinion, that the argument was made that Brown has ceiling at the outer portion, and the board said there's no disclosure or teaching about that as being necessary or occurring in Brown.

[00:37:41] Speaker 00:
The board just sensibly found that argument unsupported.

[00:37:46] Speaker 03:
When the vents are closed, is there an open passageway?

[00:37:50] Speaker 00:
Well, just to remind, Your Honor, the vents are about the open area.

[00:37:54] Speaker 00:
So you have the open passageway, which is the space around the case, and the open area is the space in the retaining element.

[00:38:01] Speaker 00:
And together, those make the sound path.

[00:38:04] Speaker 00:
So if you had no vents, you would have no open area, but you could still have an open passageway.

[00:38:09] Speaker 03:
I understand.

[00:38:11] Speaker 03:
OK.

[00:38:13] Speaker 03:
Unless you want to keep going, why don't we get going?

[00:38:15] Speaker 00:
I'm well over my time, so if there are no further questions.

[00:38:17] Speaker 03:
Just a couple minutes.

[00:38:17] Speaker 03:
Yeah.

[00:38:18] Speaker 03:
Thank you.

[00:38:18] Speaker 03:
It was very helpful.

[00:38:19] Speaker 03:
Miss Peyton will give you four minutes of rebuttal time since the PTO got an extra eight minutes.

[00:38:26] Speaker 03:
I'm sure he didn't want it all though, so we'll cut it in half and give you four.

[00:38:29] Speaker 02:
I appreciate your honor.

[00:38:31] Speaker 02:
Hopefully I will not use all of it.

[00:38:32] Speaker 02:
Three quick points.

[00:38:35] Speaker 02:
First of all, Inova has an open design choice.

[00:38:39] Speaker 02:
Brown and Sauer have a closed and sealed design choice.

[00:38:43] Speaker 02:
Optimization is not doing the opposite thing with your design choice.

[00:38:47] Speaker 02:
And so I think that argument falls flat.

[00:38:50] Speaker 03:
Secondly, with respect to this- So you're saying because of those differences, you can't say optimization is the motivation to combine?

[00:38:57] Speaker 02:
Correct, Your Honor.

[00:38:58] Speaker 02:
Correct.

[00:38:59] Speaker 02:
Optimization doesn't lead us to the opposite choice.

[00:39:01] Speaker 02:
That is explicitly described in the reference as a problematic decision in terms of the design.

[00:39:08] Speaker 02:
Secondly, Your Honor, there were many changing references, as Judge Stoll noted, which one's the primary, which one's not the primary.

[00:39:16] Speaker 02:
In fact, Fretz was first argued by the examiner on appeal.

[00:39:20] Speaker 02:
So this is why we are suggesting, though it's not required, that this court engage in claim construction.

[00:39:27] Speaker 02:
It has the power to do so.

[00:39:29] Speaker 02:
But given the board's confusion about the references and how it takes certain characteristics of some references and combines them with others,

[00:39:38] Speaker 02:
It's clear to us now that that is helpful.

[00:39:40] Speaker 02:
We don't need that claim construction.

[00:39:42] Speaker 02:
We think it's plain from the language of the claim and the specification and prosecution history.

[00:39:48] Speaker 02:
But it helps inform why these closed designs and the other.

[00:39:51] Speaker 03:
When you say you don't need that construction, it seems to me that the construction you're proffering is critical to your potentially getting either a vacate and remand or a reversal because the board

[00:40:06] Speaker 03:
clearly didn't construe, for example, open passage the way you think it should be construed.

[00:40:11] Speaker 03:
And we know that because of what it cited for what discloses the open passage.

[00:40:15] Speaker 02:
Understood, Your Honor.

[00:40:16] Speaker 02:
To be clear, we think that the claim language is clear and the specification is clear, right?

[00:40:22] Speaker 02:
And so there's nothing special we're asking the court to do here.

[00:40:26] Speaker 02:
But it's right, Your Honor, when you look at the way that the board below applied these claim terms,

[00:40:33] Speaker 02:
took closed areas within a closed device and called it an open passageway.

[00:40:39] Speaker 02:
That is error.

[00:40:40] Speaker 02:
So clearly, the board did not understand what the claim and the specification meant when it talked about an open passageway for sound to come in from the outside through the device and then mix with the sound coming from the receiver.

[00:40:55] Speaker 02:
Finally, Your Honors, Sauer was briefly mentioned by the government.

[00:40:59] Speaker 02:
Again, like Brown, Sauer is a device with ceiling elements.

[00:41:04] Speaker 02:
It's a completely in-the-canal device.

[00:41:06] Speaker 02:
It specifically talks about the ceiling nature of the elements and how important it is to seal the device.

[00:41:13] Speaker 02:
Again, this is a situation where we have every single reference that we look at that's an in-the-ear or in-the-canal device.

[00:41:20] Speaker 02:
They all teach ceiling.

[00:41:22] Speaker 02:
They all teach.

[00:41:23] Speaker 01:
Yes.

[00:41:24] Speaker 01:
One question about your proposed claim construction for open passageway.

[00:41:28] Speaker 01:
I see it in your blue brief at page 40, but I don't see anything in this construction that makes me think that it's along the entire year.

[00:41:39] Speaker 01:
Just tell me what I'm missing.

[00:41:40] Speaker 02:
I mean, Your Honor, when you're talking about open passageway.

[00:41:46] Speaker 01:
Yeah, your proposed construction, it bridges pages 40 and 41.

[00:41:51] Speaker 02:
So the reason why we're not focused on the entire passageway throughout the device is because there's two open pieces here.

[00:42:02] Speaker 02:
There's the one that passes past the case, and there's another that goes through that flexible mounting device when it's actually put in the ear.

[00:42:12] Speaker 02:
That's called the open area.

[00:42:13] Speaker 02:
So the open passageway is focused on the case area.

[00:42:20] Speaker 02:
And the open area is focused on the area around the flexible mounting member.

[00:42:26] Speaker 02:
So let's look at figure six.

[00:42:27] Speaker 03:
Do you have figure six?

[00:42:29] Speaker 02:
I do, Your Honor.

[00:42:29] Speaker 03:
So really, that thing that looks like in your plug, the space around that is the open passageway, correct?

[00:42:37] Speaker 03:
Like where 61 is pointing, I know 61 is not technically the open passageway.

[00:42:42] Speaker 03:
But that is the passageway or not?

[00:42:46] Speaker 02:
I believe it is, Your Honor.

[00:42:47] Speaker 02:
Yes, 61 is that space that's called the open passageway.

[00:42:51] Speaker 03:
Between that earplug and the ear canal, right?

[00:42:54] Speaker 02:
Yes, Your Honor.

[00:42:55] Speaker 03:
And it extends, 61 that extends all the way back and then the open area is that bubbly looking stuff that number two points to generally.

[00:43:01] Speaker 03:
I know that's not what number two is.

[00:43:04] Speaker 02:
Yes, that's right, Your Honor.

[00:43:05] Speaker 02:
The open area is the outer area that contacts with the ear canal, the outer area of that flexible member.

[00:43:12] Speaker 02:
There's little holes in there.

[00:43:15] Speaker 02:
Actually the the little holes and figure six are focused on Preferrations within that device when we talk about that open area There's that's where that calculation comes in and 7e is a good example the perforations were the things that made the open area The prep the the perforations shown there It's not clear that that's the open area your honor.

[00:43:41] Speaker 02:
That's actually a

[00:43:42] Speaker 02:
just a depiction of a device that may have perforations.

[00:43:45] Speaker 02:
There's a number of different devices for the flexible mounting member that are described.

[00:43:50] Speaker 02:
And again, if we go back to 7E for a second, that's where there's a description of the propeller design or 7D, the offset propeller design.

[00:44:00] Speaker 02:
What we're talking about is at that outer area near the ear canal where that flexible mounting member contacts the ear canal.

[00:44:08] Speaker 02:
That edge of the diameter, as described by the patentee during prosecution, that's the open area that we're talking about, the 5% to 7%.

[00:44:17] Speaker 02:
It's not an area close to the receiver on the inner side.

[00:44:20] Speaker 02:
It's not little holes.

[00:44:21] Speaker 01:
So there's different embodiments that you have depicted here for what the open area, how the open area is created.

[00:44:28] Speaker 01:
It could be little holes, or it could be more larger portions.

[00:44:33] Speaker 02:
It actually is not described as open holes per se.

[00:44:37] Speaker 02:
It's really described as areas near the outer diameter.

[00:44:41] Speaker 02:
So my only point is, Your Honor, it's not a vent, right?

[00:44:44] Speaker 02:
It's not a series of tiny vents.

[00:44:46] Speaker 02:
It's rather an area that provides for movement of the outside sound all the way through, and it's 5 to 70 percent, which is significantly different

[00:44:55] Speaker 02:
Their closest device when you look at the calculations So unless your honors have more questions.

[00:45:02] Speaker 02:
Thank both counsel cases taken under submission