Case: 19-1967   Document: 59     Page: 1   Filed: 04/10/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

      JERRY HARVEY AUDIO HOLDING, LLC,
                  Appellant

                            v.

                   1964 EARS, LLC,
                        Appellee
                 ______________________

                  2019-1967, 2019-1968
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. IPR2017-
 01091, IPR2017-01092.
                  ______________________

                 Decided: April 10, 2020
                 ______________________

     DANIEL RAVICHER, Ravicher Law Firm, Coral Gables,
 FL, for appellant. Also represented by DAVID GARROD,
 Pittsburgh, PA.

   HILLARY ANNE BROOKS, Brooks Quinn, LLC, Kirkland,
 WA, for appellee. Also represented by DELFINA SARAH
 HOMEN.
                 ______________________

    Before CHEN, SCHALL, and HUGHES, Circuit Judges.
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 2              JERRY HARVEY AUDIO HOLDING    v. 1964 EARS, LLC



 PER CURIAM.
     In two inter partes reviews, the Patent Trial and Ap-
 peals Board denied Jerry Harvey Audio Holding’s motions
 to amend U.S. Patent Nos. 8,925,674 and 9,197,960 to in-
 clude proposed substitute claims 22–41 and 19–26, respec-
 tively, holding that these claims would have been obvious.
 See 1964 Ears, LLC v. Jerry Harvey Audio Holding, LLC,
 No. IPR2017-01091, 2019 WL 1486751, at *26 (P.T.A.B.
 Apr. 2, 2019) (“Board Decision”); 1964 Ears, LLC v. Jerry
 Harvey Audio Holding, LLC, No. IPR2017-01092, 2019 WL
 1486754, at *30 (P.T.A.B. Apr. 2, 2019). 1 Jerry Harvey ap-
 peals these decisions, arguing that the Board misconstrued
 the claims and that the Board’s alternative obviousness
 findings, which apply Jerry Harvey’s proposed claim con-
 struction, are not supported by substantial evidence. Be-
 cause the Board’s alternative obviousness findings are
 supported by substantial evidence, we affirm the Board’s
 decision.
                               I
     1964 Ears, LLC petitioned for inter partes review of
 Jerry Harvey’s ʼ674 and ʼ960 patents. Both patents de-
 scribe canalphones 2 where a high audio signal is phase cor-
 rected with respect to a low audio signal. For example,
 claim 1 of the ʼ674 patent, representative of the petitioned
 claims relevant on appeal, recites:
     1. A system comprising:




     1   Because substantively identical decisions were en-
 tered in both cases, we hereinafter cite solely to the Board’s
 decision in IPR2017-01091.
     2   Canalphones “are personal listening devices that
 are substantially smaller than a person’s outer ear.” ʼ960
 Patent col. 1 ll. 26–28.
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 JERRY HARVEY AUDIO HOLDING      v. 1964 EARS, LLC               3



     a high audio driver carried by a canalphone hous-
     ing;
     a low audio driver carried by the canalphone hous-
     ing adjacent to the high audio driver; and
     an acoustical-timer to phase correct a high audio
     signal from the high audio driver directed to the
     outside of the canalphone housing with delivery of
     a low audio signal from the low audio driver di-
     rected to the outside of the canalphone housing.
ʼ674 Patent col. 12 ll. 30–38.
      1964 Ears challenged the claims’ validity based on sev-
 eral references, including U.S. Patent No. 7,317,806 (Har-
 vey ʼ806). Harvey ʼ806 describes a canalphone using two
 drivers, each feeding an output to its respective sound tube
 that then produces an audible output to the user. Harvey
 ʼ806 col. 1 ll. 24–26, col. 1 l. 59–col. 2 l. 5, col. 2 ll. 29–34,
 col. 6 ll. 3–8. When employing two drivers, the canalphone
 splits an input signal at a crossover frequency into a high
 frequency and a low frequency component, where each
 component is then fed to a different driver. Id. col. 1 l. 66–
 col. 2 l. 5, col. 3 ll. 46–50. Harvey ʼ806 teaches that fre-
 quency division between the drivers causes an unwanted
 phase shift between their outputs that is “inherent” to a
 two-driver, frequency-divided design. Id. col. 6 ll. 12–52.
 But Harvey ʼ806 teaches correcting this inherent phase
 shift by optimizing the lengths of the sound tubes receiving
 each driver’s output. Id. col. 6 ll. 37–65. As an example,
 Harvey ʼ806 provides that if the phase shift “inherent in [a]
 specific [canalphone] design is 45 degrees” and “assuming
 that the center of the frequency range of interest is 11.5
 kHz,” then an adjustment in a driver’s sound tube’s length
 (an “offset of 3.75 mm”) corrects that phase shift. Id. col. 6
 ll. 55–61; see also id. col. 7 ll. 2–7.
     After considering 1964 Ears’ petitions, the Board insti-
 tuted inter partes review of both patents. Jerry Harvey
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 4              JERRY HARVEY AUDIO HOLDING    v. 1964 EARS, LLC



 then filed contingent motions to amend the ʼ674 and ʼ960
 patents to include substitute claims for the Board’s consid-
 eration if it held any of the originally petitioned claims un-
 patentable. The proposed substitute claims modified
 independent claims from each patent, of which the ʼ674 pa-
 tent’s claim 1 is representative, to further specify “wherein
 the phase corrected response is between 90 degrees and -
 90 degrees from 31.5Hz to 16kHz.” Board Decision at *24;
 see also J.A. 396–98 (providing substitute independent
 claims 22 and 30 for the ʼ674 patent), 1797–98 (providing
 substitute independent claim 19 for the ʼ960 patent).
     In its Final Written Decisions, the Board found the rel-
 evant petitioned claims of the ʼ674 and ʼ960 patents to be
 anticipated or obvious. Next, the Board denied Jerry Har-
 vey’s contingent motions to amend, holding that even un-
 der Jerry Harvey’s proposed construction—that the phase
 correction be “through the frequency range from 31.5Hz to
 16kHz”—the proposed substitute claims would be obvious.
 Board Decision at *26. The Board found Harvey ʼ806 to
 teach phase correction over an audible range of frequen-
 cies, of which “20Hz to above 11.5kHz” is representative,
 where the two-driver system is less than 45 degrees out-of-
 phase at its crossover. Id. at *25. And 45 degrees out-of-
 phase is “less out of phase than 90 degrees,” as the substi-
 tute claims require. Id. Thus, the Board concluded that
 the teachings of Harvey ʼ806 “concerning phase correction
 within th[e] range [of audible frequencies] would establish
 prima facie obviousness, which [Jerry Harvey] makes no
 attempt to rebut.” Id. at *26 (citing In re Peterson, 315 F.3d
 1325, 1329 (Fed. Cir. 2003)). The Board therefore denied
 the requested amendment.
     Jerry Harvey appeals the Board’s denial of its motions
 to amend. We have jurisdiction under 28 U.S.C.
 § 1295(a)(4)(A) and 35 U.S.C. § 141(c).
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 JERRY HARVEY AUDIO HOLDING   v. 1964 EARS, LLC            5



                              II
     Obviousness is a question of law based on underlying
 questions of fact.     See Graham v. John Deere Co.,
 383 U.S. 1, 17 (1966). Underlying questions of fact include
 the scope and content of the prior art, the differences be-
 tween the prior art and the claimed invention, and the ex-
 istence of a motivation to combine prior art references. See
 Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
 2015).    And in considering prima facie obviousness,
 “[w]hether an invention has produced unexpected results
 and whether a reference teaches away from a claimed in-
 vention are questions of fact.” In re Peterson, 315 F.3d at
 1328. We review the Board’s legal decisions de novo and
 its factual determinations for substantial evidence. See
 Belden, 805 F.3d at 1073. Substantial evidence “means
 such relevant evidence as a reasonable mind might accept
 as adequate to support a conclusion.” Consol. Edison Co.
 v. N.L.R.B., 305 U.S. 197, 217 (1938).
      On appeal, Jerry Harvey argues that the Board’s alter-
 native obviousness findings applying Jerry Harvey’s pro-
 posed construction are not supported by substantial
 evidence. To start, Jerry Harvey argues that Harvey ʼ806
 fails to teach a “phase corrected response between 90 de-
 grees and -90 degrees from 31.5Hz to 16kHz,” particularly
 because 1964 Ears’ expert witness admitted that Harvey
 ʼ806 does not teach how to determine “how much phase
 shift is existing in [a] system.” Appellant’s Br. at 18–19
 (citing J.A. 1539). Assuming Harvey ʼ806’s lack of explicit
 teachings, Jerry Harvey next argues that the Board also
 fails to describe a motivation to produce a phase corrected
 response in the claimed frequency range or a reasonable
 expectation of success in doing so. Appellant’s Br. at 21–
 24 (citing Board Decision at *25–26).
    We disagree. First, substantial evidence supports the
 Board’s finding that Harvey ʼ806 teaches phase correction
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 6              JERRY HARVEY AUDIO HOLDING    v. 1964 EARS, LLC



 over a frequency range, as Jerry Harvey’s proposed con-
 struction requires. See Harvey ’806 col. 6 l. 59 (stating that
 phase correction is performed across a “frequency range of
 interest”). Moreover, Harvey ʼ806 teaches that the phase
 correction performed “compensate[s] for [a] phase shift” of
 45 degrees, which is well within the claimed phase shift
 range of 90 degrees to -90 degrees. Id. col. 6 ll. 55–61. And
 contrary to Jerry Harvey’s assertions, whether Harvey
 ʼ806 teaches how to calculate a system’s phase shift is ir-
 relevant to its teachings of phase correction over a fre-
 quency range. Thus, because the phase shift and frequency
 teachings of Harvey ’806 are encompassed by the claimed
 phase shift range over the claimed frequency range, Har-
 vey ʼ806 establishes prima facie obviousness. See In re Pe-
 terson, 315 F.3d at 1329 (“In cases involving overlapping
 ranges, we and our predecessor court have consistently
 held that even a slight overlap in range establishes a prima
 facie case of obviousness.”). A patent owner may overcome
 a prima facie case of obviousness by showing that a claimed
 range achieves unexpected results or that the prior art
 teaches away from the claimed range. See id. at 1330–31.
 But Jerry Harvey “makes no attempt to rebut” the prima
 facie obviousness. Board Decision at *26.
     Substantial evidence also supports the Board’s findings
 on reasonable expectation of success and motivation to pro-
 duce the claimed phase corrected response. Foremost, as
 recognized by the Board, Jerry Harvey admits that phase
 correction across the claimed frequency range can be
 achieved through routine experimentation. See Board De-
 cision at *25 (citing J.A. 719 (Jerry Harvey admitting at
 IPR hearing that phase correction “as defined in the pa-
 tent” is “something that basically has to be played with in
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 JERRY HARVEY AUDIO HOLDING   v. 1964 EARS, LLC             7



 the lab” and is not “beyond routine experimentation”)) 3; see
 also In re Ethicon, 844 F.3d 1344, 1350 (Fed. Cir. 2017)
 (holding that “an explicit teaching, suggestion, or motiva-
 tion in the references is not necessary to support a conclu-
 sion of obviousness”). And if routine experimentation
 provides for optimizing the phase shift across a frequency
 range, then we find a motivation to produce a phase cor-
 rected response in the claimed frequency range and a rea-
 sonable expectation of success in doing so.
     Thus, substantial evidence supports the Board’s find-
 ings that, applying Jerry Harvey’s proposed claim con-
 struction, Harvey ʼ806 renders the proposed substitute
 claims obvious. We therefore need not consider the Board’s
 alternative obviousness finding based on U.S. Patent Ap-
 plication 2011/0058702. See Board Decision at *26. Simi-
 larly, we need not consider the Board’s construction of the
 proposed substitute claims. See id.
                              III
     We have considered Jerry Harvey’s remaining argu-
 ments and find them unpersuasive. Because substantial
 evidence supports the Board’s finding that Jerry Harvey’s
 proposed substitute claims would have been obvious, we af-
 firm the Board’s decisions.
                        AFFIRMED




     3   Jerry Harvey’s admission that the claimed range
 was nothing more than routine experimentation also fur-
 ther supports our earlier finding that the claimed range it-
 self would have been obvious.
