Takeaway: Petitioner must provide evidence showing that all of the features of a claim are known and not rely on general statements, even if the feature is allegedly well known to one of ordinary skill in the art.

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 1 and 2 of the ’483 patent are unpatentable, but had not shown by a preponderance of the evidence that claim 3 of the ’483 patent is unpatentable. The ’483 patent is generally “directed to sound reproduction, and, in particular, narrow profile speaker configurations and systems.”

The Board began by construing the claims according to their broadest reasonable interpretation in light of the specification. The Board had provided construction of the term “sound reflecting surface” its Decision on Institution. Petitioner had not provided a construction for that term. However, Petitioner had provided constructions for other terms that the Board determined did not need to be construed.

Patent Owner agreed with the Board’s interpretation of “sound reflecting surface” as “a surface that redirects sound waves output from a speaker, not made of a sound damping material,” and stated in its Response that Tomonori asserted by Petitioner did not disclose a “sound reflecting surface” as that term was construed by the Board. The Board maintained its construction of the term based on the description of embodiments and drawings in the specification.

The Board then turned to the grounds of unpatentability, and specifically the asserted obviousness of claims 1-3 over the combination of Tomonori, Virva, and Sadaie. Petitioner asserted that Tomonori discloses all the limitations in independent claim 1 except for “sound damping material forming sides of the sound duct,” and then provided the secondary references for allegedly disclosing that missing limitation. Patent Owner argued that Tomonori also failed to disclose the “sound reflecting surface” recited in claim 1, and “that Tomonori does not support any reason to place sound damping material (derived from another reference) on the ‘sides of the sound duct,’ as recited in claim 1.”

The Board disagreed with Patent Owner that Tomonori failed to disclose a “sound reflecting surface” as that term was defined by the Board in its Decision on Institution. Accordingly, the Board agreed with Petitioner that the only element of claim 1 not taught by Tomonori was “sound damping material forming sides of the sound duct.” In its analysis of whether there was a reason or motivation for one of skill in the art to use sound damping material to form sides of Tomonori’s sound duct, the Board assessed the described use of sound damping material in the ’483 patent and what Virva and Sadaie disclosed. The Board determined that Tomonori disclosed use of sound damping material for the same function disclosed and claimed in ’483 patent, and that Petitioner’s evidence established the use of sound damping material along the sides of a sound duct as known. The Board further determined that Petitioner’s evidence in the form of expert testimony was sufficient to provide a reason or motivation for extending the damping material of Tomonori along the sidewalls of the duct. Accordingly, the Board concluded that Petitioner had satisfied its burden of providing by a preponderance of the evidence that claim 1 was obvious over the asserted combination of references.

The Board then discussed dependent claims 2 and 3. Patent Owner did not address claim 2 separately form claim 1, and the Board agreed with Petitioner that the same combination of references also rendered claim 2 obvious.

With regard to claim 3, the Board noted that Tomonori also failed to disclose the feature in claim 3 that the sound damping material follows a curved contour of a portion of the speaker cone farthest opposite the output slot. Petitioner had merely asserted that this feature would have been obvious “because straight and curved back walls ‘have both been commonly used in loudspeaker design with predictable results.’” The Board agreed with Patent Owner that Petitioner failed to provide any evidence of sound damping material forming a back wall of a sound duct that follows a curved contour of a speaker cone. Accordingly, the Board concluded that Petitioner had not shown by a preponderance of the evidence that the asserted combination of references would have rendered claim 3 obvious.

Apple Inc. v. THX Ltd., IPR2014-00235
Dated: June 9, 2015
Patent 7,433,483 B2
Before: Michael W. Kim, Barbara A. Parvis, and Brian P. Murphy
Written by: Murphy
Related Proceedings: THX, Ltd. v. Apple Inc., Civil Action No. 3:13-cv-01161 (N.D. Cal.)