Invalidity dossier
US 11057701
Method and device for in ear canal echo suppression
Current assignee: Staton Techiya, LLC
Added 9/29/2026, 9:11:49 PM
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Patent summary
Title, assignee, inventors, filing/issue dates, abstract, and a plain-language overview of the claims.
I'll verify against live sources before summarizing.
Now let me check for any Federal Circuit appeal activity and confirm the IPR outcome.
Let me check specifically whether the IPR2022-01078 decision was appealed and its 2026 status.
US 11,057,701 B2 — Verified Summary
Bibliographic record
| Field | Value |
|---|---|
| Patent number | US 11,057,701 B2 ("the '701 patent") |
| Title | Method and device for in ear canal echo suppression |
| Application no. | 16/247,186 |
| Filing date | January 14, 2019 |
| Pre-grant publication | US 2019/0149915 A1 (May 16, 2019) |
| Issue/grant date | July 6, 2021 |
| Earliest priority | May 4, 2007 (Prov. 60/916,271 → Ser. No. 12/115,349) |
| Parent (continuation of) | Ser. No. 13/956,767 (Aug. 1, 2013), now US 10,182,289; itself a continuation of Ser. No. 12/170,171 (Jul. 9, 2008), now US 8,526,645 |
| Inventors | Steven Wayne Goldstein (Delray Beach, FL); Marc Andre Boillot (Plantation, FL); John Usher (Devon, GB); Jason McIntosh (Sugar Hill, GA) |
| Assignee (as printed on face) | Staton Techiya, LLC, Lighthouse Point, FL |
| Current recorded assignee chain (Google Patents / Unified Patents) | STATON TECHIYA → ST Portfolio Holdings, LLC (2024-06-21) → ST Case1Tech, LLC (2024-06-21) → ST Awaretech, LLC (2025-07-24); DM Staton Family LP also listed |
| Examiner / Art Unit | Lun-See Lao / TC 2600, Art Unit 2651 |
| Claims | 16 total; one independent claim (claim 1) |
| Status | Active, adjusted expiration 2028-05-30 (154(b) adjustment of 25 days noted on the face) |
Plain-text face of the patent: https://patentimages.storage.googleapis.com/a8/77/48/e876f76149f2b6/US11057701.pdf ; Google Patents record: https://patents.google.com/patent/US11057701/en
Two text-level anomalies I am reporting rather than silently correcting: (1) the printed CROSS-REFERENCE paragraph states the parent 13/956,767 was "filed on Aug. 1, 2018," while the front-page data and family tables show Aug. 1, 2013; (2) the abstract refers to "acoustic management module (300)" although the specification consistently uses reference numeral 201.
Abstract (verbatim)
"An earpiece (100) and acoustic management module (300) for in-ear canal echo suppression control suitable is provided. The earpiece can include an Ambient Sound Microphone (111) to capture ambient sound, an Ear Canal Receiver (125) to deliver audio content to an ear canal, an Ear Canal Microphone (123) configured to capture internal sound, and a processor (121) to generate a voice activity level (622) and suppress an echo of spoken voice in the electronic internal signal, and mix an electronic ambient signal with an electronic internal signal in a ratio dependent on the voice activity level and a background noise level to produce a mixed signal (323) that is delivered to the ear canal (131)."
Independent claim 1, in plain language
Claim 1 (the sole independent claim) is a method that, step by step, requires:
- Receiving an electronic ambient signal produced by an ambient microphone;
- Receiving an electronic internal signal produced by an ear-canal microphone, where that internal signal includes an echo of the wearer's spoken voice;
- Calculating a background noise signal using both the ambient signal and the internal signal (not one alone);
- Producing a modified electronic internal signal by reducing (suppressing) the echo in the internal signal;
- Generating a voice activity level using the modified electronic signal and the background noise signal;
- Mixing the ambient signal with the modified internal signal in a ratio that depends on the background noise signal, to yield a mixed signal with reduced echo; and
- Sending that mixed signal to an ear-canal receiver (ECR).
Two facets worth flagging for claim-charting: (a) the background-noise estimate is expressly computed from both microphone signals, and (b) the thing that gets mixed is the echo-suppressed (modified) internal signal, whereas the specification's summary language sometimes describes mixing "the electronic internal signal" generally — the claim is narrower than that summary prose.
Dependent claims 2–16 (grouped for brevity)
- Gain generation/application (2–5, 12): generating an internal gain value (2) and an external gain value (3); applying the internal gain to the modified internal signal (4); applying the external gain to the ambient signal (5); claim 12 depends from claim 4 and further recites applying the external gain to the ambient signal.
- Voice-activity semantics (6–7, 13): identifying a probability the wearer is speaking from the voice activity level (6); indicating a degree of voicing corresponding to periodicity, amplitude, or both (7); determining the voice activity level from an energy-level characteristic and a frequency-response characteristic of the modified signal and the background noise signal (13).
- Noise-dependent gain directionality (8–11): internal gain increases with increasing background noise (8) and with decreasing background noise (10); external gain decreases with increasing background noise (9) and increases with decreasing background noise (11).
- Adaptive-filter handling (14–16): generating a first set of LMS filter coefficients to model an inner ear-canal transfer function (ECTF) (14); freezing that first coefficient set when the voice activity level exceeds a predetermined threshold (15); generating a second coefficient set while the first is frozen and substituting it for the first set when voice activity falls below a second predetermined threshold (16).
Litigation and PTAB posture (verified)
- District court: asserted in Staton Techiya, LLC v. Samsung Electronics Co., Ltd., No. 2:22-cv-00053 (E.D. Tex., filed Feb. 14, 2022), consolidated with lead case 2:21-cv-00413-JRG-RSP (Judge Gilstrap). The '701 patent was one of the patents asserted against Samsung Galaxy Buds/phones (see the 2:21-cv-00413 docket listing 11,039,259; 11,057,701; 11,217,237; 11,244,666).
- PTAB — IPR2022-01078: petitioned by Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. on June 9, 2022; instituted Dec. 29, 2022 on claims 1–9 and 11–13; Final Written Decision Nov. 13, 2023 holding all challenged claims (1–9, 11–13) unpatentable for obviousness. Panel: Turner, Cass, and Howard (Howard authored). https://www.docketalarm.com/cases/PTAB/IPR2024-01032/Samsung_Electronics_Co._Ltd/docs/06-26-2024-Petitioner/Exhibit-1013-EX1013___IPR2022_01078_Final_Written_Decision.pdf
- Discrepancy to note: the Patexia case summary for IPR2022-01078 lists claim 10 as invalidated; the Board's own FWD states the petition requested review of claims 1–9 and 11–13 only, and claim 10 is not a challenged claim. The Board's document is the authoritative source. https://services.patexia.com/lawsuits/Samsung-Electronics-Co-Ltd-et-al-v-Staton-Techiya-LLC-et-al-id-[164287](/patent/164287)
- Federal Circuit, 2026: the CAFC activity I could locate for this family in 2025–2026 concerns sibling patents — e.g., ST Case1Tech, LLC v. Squires, Nos. 23-2294, 23-2305, 23-2306, 23-2335, 23-2387, 23-2388 (always-on recording and personalized-hearing patents, decided Oct. 9, 2025 and Feb. 2026), and the dismissed appeals Nos. 23-2341, 23-2423, and 24-1917. I did not locate a Federal Circuit docket specifically for the IPR2022-01078 Final Written Decision on the '701 patent, and I did not find confirmation that Techiya noticed such an appeal. Given that the IPR terminated in November 2023, an appeal deadline would have run in early 2024; a later dismissal flowing from the parties' 2024 settlement is plausible but I cannot confirm it.
Explicit uncertainties
- Claim 10's survival is the key open question. Because claim 10 was not challenged in IPR2022-01078, it would not have been cancelled by that FWD — but claims 1–9 and 11–16 depend from claim 1, which was held unpatentable, so the practical scope of the patent is limited to whatever claim 10 (depending from claims 1, 3, and 11) retains.
- Appeal status of IPR2022-01078 unconfirmed. I could not verify from the sources retrieved whether a notice of appeal was filed and/or dismissed.
- Exact current ownership is a recorded-assignment chain rather than a single clean assignee; the Google Patents "current assignee" field lists three entities, and I have not independently verified present ownership of the '701 patent (the 2024–2025 assignments appear to have been portfolio-level transfers).
Sources: patent PDF and Google Patents record above; IPR FWD PDF (docketalarm URL above); Patexia IPR2022-01078 docket summary; UniCourt case 2:22-CV-00053; CAFC orders 23-2294/23-2305 (Jan. 29, 2025) and Fed Circuit Blog, Oct. 9, 2025 opinions.
Generated 9/29/2026, 9:22:05 PM
Cases on file (3)
Group view →Specific litigation cases in our database that name US patent 11057701. The free-form analysis below may also discuss cases beyond this list.
Lawsuits filed per year
- Staton Techiya, LLC v. Samsung Electronics Co., Ltd. et al.filed Jun 6, 20242024-1917U.S. Court of Appeals for the Federal Circuitterminated Dec 20, 2024dismissed
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Other patents asserted: 10979836, 8111839, 8254591, 8315400, 9124982, 9270244, 9491542, 9609424, 10405082, 10966015, 11039259, 11217237, 11244666
- Samsung Electronics Co., Ltd. et al. v. Staton Techiya, LLCfiled Jun 9, 2022IPR2022-01078Patent Trial and Appeal Board (PTAB), U.S. Patent & Trademark Officeterminated Nov 13, 2023final written decision
Defendants: Staton Techiya, LLC
- Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al.filed Feb 14, 20222:22-cv-00053-JRG-RSP (consolidated into lead case 2:21-cv-00413-JRG-RSP)U.S. District Court for the Eastern District of Texas, Marshall Divisionterminated Jun 21, 2024closed; on appeal
Defendants: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.
Litigation summary
Past and pending lawsuits — plaintiffs, defendants, jurisdictions, outcomes, and notable rulings.
I'll research litigation involving US patent 11057701. Let me run several targeted searches.
Let me dig deeper into the specific district court case and the PTAB proceeding for this patent.
Let me verify whether the '701 IPR decision was appealed and check for any other litigation involving this patent.
Litigation Involving U.S. Patent No. 11,057,701
Based on my searches of patent-litigation resources (Unified Patents portals, Docket Alarm, CourtListener, Patexia, Justia Dockets, UniCourt, and news coverage), the only litigations I could identify that specifically involve U.S. Patent No. 11,057,701 ("Method and device for in ear canal echo suppression") are the Staton Techiya v. Samsung matters — one district-court action and one PTAB inter partes review. I found no litigation involving any other defendant/plaintiff.
Important caveat: The '701 patent was one of several patents asserted in a larger consolidated dispute; most public case summaries focus on the broader case and other patents. Below I flag where the record specifically ties the '701 patent to each matter.
1. District Court — Staton Techiya, LLC et al. v. Samsung Electronics Co., Ltd. et al.
| Item | Detail |
|---|---|
| Plaintiff(s) | Staton Techiya, LLC and Synergy IP Corporation |
| Defendant(s) | Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. |
| Jurisdiction / Court | U.S. District Court for the Eastern District of Texas, Marshall Division (Judge Rodney Gilstrap; Magistrate Judge Roy S. Payne) |
| Case Number | 2:22-cv-00053-JRG-RSP (member case; consolidated into lead case 2:21-cv-00413-JRG-RSP) |
| Filing Date | February 14, 2022 |
| Patents asserted (this case) | U.S. Pat. Nos. 11,244,666 ('666), 11,217,237 ('237), 11,057,701 ('701), and 11,039,259 ('259) |
| Accused products | Samsung Galaxy Buds family (Buds, Buds+, Buds Pro, Buds Live, Buds2), Galaxy S21 5G and similar smartphones, the Samsung Wearable app, and the Bixby assistant app |
Why the '701 patent is specifically tied to this case: The complaint filed in 2:22-cv-00053 identifies the '701 patent (issued July 6, 2021; from application Ser. No. 16/247,186) as one of the four asserted patents, and the same complaint appears as an exhibit in Samsung's IPR filings (IPR2022-00302, Ex. 1024-26 – Complaint, ED Tex, 22-cv-53).
Procedural history / outcome:
- Nov. 5, 2021 — First suit filed (2:21-cv-00413), asserting ten patents.
- Feb. 14, 2022 — Second suit (2:22-cv-00053) filed, adding the '701 patent among others.
- May 4, 2022 — The two cases were consolidated (2:21-cv-00413 designated lead), over Samsung's motion to stay (which was denied Sept. 6, 2022).
- May 2024 — The court issued a Memorandum & Opinion finding all asserted claims unenforceable against Samsung based on unclean hands (rooted in the conduct of former Samsung in-house personnel who formed Synergy IP).
- June 21, 2024 — Final Judgment entered: asserted claims unenforceable; Samsung declared the prevailing party and awarded costs; Samsung's patent counterclaims dismissed without prejudice.
- 2024 — Techiya's motion to amend the judgment (to be declared the winner) was denied.
- Nov. 2024 — News reports indicate the parties settled the dispute (motion filed ~Nov. 24, 2024), following Samsung's win in the ~$300M suit.
2. PTAB Inter Partes Review — Samsung Electronics Co., Ltd. et al. v. Staton Techiya, LLC
| Item | Detail |
|---|---|
| Petitioner(s) | Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. |
| Patent Owner | Staton Techiya, LLC |
| Forum | Patent Trial and Appeal Board (PTAB), U.S. Patent & Trademark Office |
| Case Number | IPR2022-01078 |
| Filing Date | June 9, 2022 |
| Institution Decision | December 29, 2022 |
| Final Written Decision | November 13, 2023 |
| Panel | Scott B. Howard (writing), Russell E. Cass; Monica S. Ullagaddi (per Patexia) |
| Claims challenged | 1–9 and 11–13 |
| Result | Claims 1–13 held unpatentable (invalid) — i.e., the Board found the challenged claims unpatentable, effectively invalidating the patent's claim set |
Note on the discrepancy: The '701 patent contains 16 claims total. The petition challenged claims 1–9 and 11–13, while the reported "Claims Invalidated" list spans 1–13. I could not fully reconcile whether claim 10 (unchallenged in the petition) was addressed, so treat the exact scope of the claim-by-claim outcome with caution.
3. Federal Circuit Appeal — not confirmed for the '701 patent specifically
- There was a Federal Circuit appeal in the broader Techiya/Samsung family, Staton Techiya, LLC v. Samsung Electronics Co., Ltd., No. 24-1917 (Fed. Cir., filed June 6, 2024), and a separate consolidated appeal (Nos. 23-2305 / 23-2294) decided Oct. 9, 2025, affirming PTAB invalidity decisions.
- However, the Oct. 9, 2025 CAFC opinion I reviewed addresses the '839 and '982 patents ("Always On Headwear Recording System"), not the '701 patent. News coverage in Korean media refers generally to "three patents" being finally invalidated on appeal, but I could not confirm from the sources reviewed that the IPR2022-01078 ('701) decision was separately appealed or affirmed. I recommend verifying the docket for IPR2022-01078 and checking the Federal Circuit's docket directly before relying on any "fully terminated" characterization as to the '701 patent.
Summary
| # | Type | Parties | Case No. | Filed | Status/Outcome |
|---|---|---|---|---|---|
| 1 | District Court (E.D. Tex.) | Staton Techiya, LLC & Synergy IP Corp. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc. | 2:22-cv-00053-JRG-RSP (consolidated into 2:21-cv-00413-JRG-RSP) | Feb. 14, 2022 | Claims held unenforceable (unclean hands); Samsung prevailing party; settled Nov. 2024 |
| 2 | PTAB IPR | Samsung Electronics v. Staton Techiya, LLC | IPR2022-01078 | June 9, 2022 | Final Written Decision Nov. 13, 2023 — claims held unpatentable |
No other litigation involving U.S. Patent No. 11,057,701 was found. The patent does appear in the Darts-IP litigation family (family ID 40338157) and on the Unified Patents litigation portal, both of which point to the same Texas Eastern District Court case (2:22-cv-00053) and PTAB proceeding (IPR2022-01078) identified above.
If you need the exact, current status of the IPR2022-01078 appeal (or the precise claim-by-claim disposition), I'd recommend pulling the IPR2022-01078 docket on the USPTO PTAB Portal and the Federal Circuit docket directly, since my searches could not definitively resolve those two points.
Generated 9/29/2026, 9:22:09 PM
Proceedings on file (0)
All PTAB activity →AIA trial proceedings (IPR / PGR / CBM) filed at the USPTO Patent Trial and Appeal Board against this patent. Sourced from the USPTO Open Data Portal and refreshed every six hours; each proceeding number deep-links to the PTAB E2E docket.
Current assignee: Staton Techiya, LLC
No PTAB proceedings on file. This patent has not been challenged via IPR, PGR, or CBM. The absence is itself a signal — well-asserted patents eventually attract IPRs. The LLM analysis below may surface filings the ODP feed hasn’t indexed yet.
PTAB challenges
AIA trial proceedings at the USPTO Patent Trial and Appeal Board — IPR, PGR, and CBM. Petitioners, judge panels, claim-level invalidation outcomes from Final Written Decisions, and Federal Circuit appeals. The single most important defensive datapoint after litigation history.
I'll start by researching the PTAB proceedings referenced in the patent record, particularly IPR2022-01078.
Key finding: IPR2022-01078 by Samsung. Let me get the actual Final Written Decision and check for related proceedings and appeals.
Let me pull the actual Final Written Decision and check for an appeal docket.
AIA Trial Proceedings — US 11,057,701 ("Method and device for in ear canal echo suppression")
Data-integrity flag before anything else: the structured PTAB proceedings on file block in the prompt states the USPTO ODP API returns no AIA trial proceedings for this patent. That is stale/incomplete. The patent's own Google Patents record carries a litigation entry — "PTAB case IPR2022-01078 filed (Final Written Decision)" — and web sources confirm a full IPR tried to an FWD. Treat the ODP "none" as a metadata gap, not as the absence of a proceeding. My findings below are the corrected list.
Proceedings overview
One (1) AIA trial is confirmed on US 11,057,701: IPR2022-01078, which ran to a Final Written Decision on 2023-11-13. Status breakdown: 0 active, 1 claims-invalidated (FWD issued, terminated), 0 settled, 0 institution denials. Per third-party aggregator data, that FWD cancelled claims 1–13 — i.e., the patent's sole independent claim (claim 1) plus every issued claim that was challenged. Because claims 2–16 all depend, directly or transitively, from claim 1, the practical defensive posture for a defendant is: the '701 patent's asserted claim set is dead or dying — a demand letter citing claims 1–13 is citing cancelled claims, and any residual theory has to run through unchallenged claims 14–16, which are dependent on the cancelled claim 1 and are therefore both narrow and exposed. The health warning that accompanies this good news is the family: Techiya/Staton has live continuations issued off the same disclosure (US 11,683,643; US 11,856,375; US 2023/0262384 A1), so killing '701 does not kill the portfolio.
Confidence caveat: I retrieved the proceeding metadata (docket, dates, panel, claim lists) from a PTAB docket aggregator and a commercial litigation database, but not the FWD opinion text itself. Claim-level dispositions below are attributed to those sources and should be verified against the FWD PDF on PTAB E2E before you rely on them in a brief. Where sources conflict, I say so.
IPR2022-01078 — Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc. v. Staton Techiya, LLC
- Type: Inter Partes Review (35 U.S.C. §§ 311–319). Tech Center 2600, Art Unit 2651.
- Filed: 2022-06-09.
- Status: "Final Written Decision" — terminated 2023-11-13. Plain English: tried to judgment; PTAB terminated the proceeding by issuing its final decision.
- Judge panel: Sources conflict, and I could not resolve it from the FWD itself. One docket aggregator lists Kevin Turner, Russell E. Cass, and Scott B. Howard; the commercial database lists Scott B. Howard (opinion author), Monica S. Ullagaddi, and Russell E. Cass, with Howard writing. Both agree Howard and Cass sat. Verify the panel from the FWD caption.
- Petition grounds: The petition challenged claims 1–9 and 11–13 (16 claims issue in total; claim 1 is the only independent claim — every other claim is a "The method of claim X, further comprising…" dependent claim). The statutory basis (§ 102 anticipation and/or § 103 obviousness) and the specific reference combinations are not confirmed from the sources I obtained; IPR cannot reach § 112, so the grounds are necessarily §§ 102/103 on patents or printed publications. Corroborating petition-record details that are confirmed: Petitioner's expert was Dr. Richard M. Stern (Ex. 1002/1003); the exhibit set filed 2022-06-09 included the '701 file history (Ex. 1004), the parent application S/N 12/115,349 file history (Ex. 1006), the provisional 60/916,271 file history (Ex. 1007), a '701 patent family tree (Ex. 1014), the E.D. Tex. complaint in 2:22-cv-00053 (Ex. 1015), the E.D. Tex. consolidation order (Ex. 1018), and two standards publications — GSM 06.31 (Ex. 1016) and GSM 06.12 (Ex. 1017) — i.e., the DTX/comfort-noise standards. The inclusion of the parent and provisional file histories suggests priority/benefit and claim-support theories accompanied the art-based grounds. Do not attribute a specific reference mapping to the FWD without reading it.
- Institution decision: Instituted 2022-12-29 (institution-decision date per the docket record). The petition was filed 2022-06-09, i.e., within one year of the 2:22-cv-00053 complaint (filed 2022-02-14), so no § 315(b) bar. Notably, institution was granted notwithstanding the co-pending E.D. Tex. litigation and the Fintiv line of cases, and notwithstanding the parallel Samsung/Staton IPR campaign. The panel's institution reasoning is not in my sources — retrieve the institution Decision on E2E for the true reasoning rather than inferring it.
- Final Written Decision (2023-11-13): Aggregator data records the outcome as all challenged claims unpatentable — claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13 invalidated. That list contains an internal inconsistency: claim 10 does not appear in the "claims challenged" list but does appear in the "claims invalidated" list. A FWD cannot cancel an unchallenged claim under § 318(a), so one of the two fields is wrong. Treat the confirmed-challenged set as 1–9 and 11–13, and treat claim 10 as unverified pending the FWD text. Claims 14, 15, and 16 were not challenged and were therefore not decided. With claim 1 cancelled, claims 2–13 fall with it; claims 14–16 formally survive but depend from cancelled claim 1.
I am not quoting the panel's reasoning because I did not obtain the opinion text. If the ground was anticipation of claim 1, the same reference maps onto every dependent claim; if it was obviousness, claims 14–16's added LMS-filter/ECTF-freeze limitations ("generating a first set of filter coefficients of a Least Mean Squares (LMS) filter to use in modelling an inner ear-canal transfer function (ECTF)" — claim 14) would need separate treatment. - Settlement / termination: No settlement or adverse-judgment termination reported. The case terminated on the FWD docket entry (2023-11-13), i.e., it was decided, not settled. If any late paper reflects a different disposition, confirm on E2E.
- Appeal: I could not confirm an appeal of this FWD. With an FWD dated 2023-11-13, a notice of appeal under 35 U.S.C. § 142 / 37 C.F.R. § 90.3(a)(1) would have been due in mid-January 2024, yielding a Federal Circuit case number in the 24- series. My searches surfaced the Staton Techiya/Samsung Federal Circuit docket numbers 23-2290, 23-2294, 23-2295, 23-2305 and 23-2335 / 2023-2388 — but those all trace to other IPRs (the '839, '982, '400, '424 patents), not '701. So: no appeal identified for IPR2022-01078; treat "no appeal, FWD final" as the working assumption and confirm on the CAFC docket and on the '701 file wrapper for a § 318(b) certificate.
- Defensive value: If the FWD stands unappealed, claim 1 — the patent's only independent claim — is cancelled, and with it claims 2–13. Any infringement theory built on claims 1–13 of '701 is asserting cancelled claims; that is Rule 11 territory. What is left is claims 14–16, which were never tested in this IPR but hang off the cancelled claim 1 and can be attacked in district court with the very same prior art Samsung used (no estoppel runs against you, since you are not Samsung).
(No other AIA trial — IPR, PGR, or CBM — on US 11,057,701 surfaced in my searches. One confirmed proceeding is the full count, subject to my tooling limits.)
Strategic summary
Claim status on US 11,057,701. Per the aggregator record of IPR2022-01078, claims 1–13 are cancelled (claim 1 is the sole independent claim; claims 2–13 depend from 1 / 2 / 3 / 4 and are swept up). Claims 10 and 14–16 are the open questions. Claim 10's status is internally inconsistent in the source data — an unchallenged claim cannot be cancelled by a FWD, so assume it is untested until the FWD says otherwise. Claims 14–16 were unquestionably not challenged, so they are formally alive; but each depends directly (14) or transitively (15, 16) on cancelled claim 1, which makes them (a) narrow, (b) construed as incorporating cancelled claim 1's limitations, and (c) freshly attackable by anyone not estopped, on the same art. Bottom line: there is no clean surviving independent claim to assert. Note also that the Google Patents legal-status field still reads "Active, expires 2028-05-30" and lists no statutory disclaimer — consistent with the FWD being recent relative to the index, but check the file wrapper for the § 318(b) certificate and confirm nothing was appealed.
Estoppel landscape. Section 315(e)(2) estoppel binds Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and their real parties in interest and privies as to every ground they raised or reasonably could have raised in IPR2022-01078. For a defendant being asserted today, that poses two questions: (1) Are you in privity with Samsung (e.g., a customer/supplier relationship, joint defense, or indemnity arrangement)? If yes, estoppel may bite and your IPR options narrow. (2) If you are unaffiliated, you are not estopped at all — you may file your own IPR on claims 14–16 with the same Stern/GSM-standard art and any art Samsung did not use, and you face no § 315(b) bar until a year after you are served. Because the FWD cancelled claim 1, your district-court invalidity case on the residuals is largely a follow-on: assert the same art against claims 14–16 and expect the patentee to concede that a dependent claim cannot survive its cancelled parent on the same disclosure.
Pattern signals. (1) This was a serial campaign, not a one-off. Samsung filed a coordinated wave of IPRs against the Staton Techiya portfolio — including IPR2022-00234, -00242, -00243, -00282, and -00369 — and prevailed broadly (the Board held many '839 and '982 claims unpatentable; the Federal Circuit affirmed in nonprecedential decisions such as No. 23-2305, 2025-10-09). (2) No defensive aggregator as petitioner here. The "Unified Patents" reference on the Google Patents litigation block is the data source attribution for the PTAB portal link (portal.unifiedpatents.com/ptab/case/IPR2022-01078), not the petitioner. The petitioner was Samsung. Unified is not in the chain. (3) The patent owner fought and lost the district-court case, not just the IPRs. In Staton Techiya, LLC v. Samsung Electronics Co., Nos. 2:21-cv-00413 / 2:22-cv-00053 (E.D. Tex.), the court entered findings of fact and conclusions of law for Samsung on 2024-05-09 (with an unclean-hands finding reported in the press), and Samsung was reportedly awarded roughly $26M in costs; Techiya noticed a Federal Circuit appeal on 2024-06-03. '701 was among the patents asserted in that case. (4) The family keeps regenerating. US 11,683,643 and US 11,856,375 (both filed 2021-03-29 as continuations-in-part of the '701 chain) and US 2023/0262384 A1 (filed 2023-04-28) put new, untested claims into the hands of the same owner. Expect re-assertion on a sibling patent rather than on '701.
Recommended next steps
- Get the FWD and quote it. Pull IPR2022-01078 Paper (FWD, 2023-11-13) from PTAB E2E / the PTAB decisions portal, and the Unified Patents PTAB case page mirrored in the patent record (https://portal.unifiedpatents.com/ptab/case/IPR2022-01078). Confirm verbatim: the panel, the ground-by-ground outcome, and whether claim 10 was challenged. The aggregator inconsistency on claim 10 is the single biggest factual gap in this memo.
- Confirm finality and the paper trail. Check (a) the CAFC docket for any 2024 notice of appeal from IPR2022-01078 (none found; the CAFC 23-xxxx appeals I saw cover other patents), and (b) the '701 file wrapper for the § 318(b) certificate cancelling claims 1–13. If unappealed, the cancellation is final and the "patent has survived" framing is unavailable to the patentee.
- If you have a demand letter citing '701: identify the asserted claim numbers. If it cites claims 1–13 inclusive, those are cancelled — respond with the FWD disposition and the certificate. If it cites claims 14–16, they are untested but dependent on the cancelled claim 1; demand the patentee's infringement theory for the LMS/ECTF-freeze limitations and prepare an IPR on those three claims with the same prior art (you are not estopped unless you are a Samsung privy).
- No active trial-stage milestones to track. There is no live IPR on '701, so there is no institution deadline, no oral hearing, and no § 316(a)(11) one-year FWD due date to calendar. The only live dates to watch are the appeal clock on the E.D. Tex. judgment (Samsung's cost proceedings and Techiya's CAFC appeal) and any newly filed IPR on the sibling patents (US 11,683,643; US 11,856,375; US 2023/0262384 A1).
Sources consulted: Google Patents record for US11057701B2 (litigation block linking portal.unifiedpatents.com/ptab/case/IPR2022-01078 and E.D. Tex. 2:22-cv-00053); PTAB docket summary for Samsung Electronics Co., Ltd. v. Staton Techiya, LLC, IPR2022-01078 (filed 2022-06-09, terminated 2023-11-13); Patexia case summary for IPR2022-01078 (institution 2022-12-29, decision 2023-11-13, claim lists); petition exhibit lists for IPR2022-01078 reproduced in later Staton Techiya patent records (Dr. Richard M. Stern declaration; GSM 06.31/06.12; file histories); E.D. Tex. consolidated docket materials in 2:21-cv-00413 (Techiya notice of appeal, 2024-06-03); Federal Circuit nonprecedential dispositions in the related Staton Techiya appeals (23-2305, 2025-10-09; and the 2025-01-29 orders in 23-2290 and 23-2295).
Explicit non-findings: I did not locate the IPR2022-01078 FWD opinion text, the institution decision text, a settlement, or a Federal Circuit appeal of this FWD. An absence of search results is not proof of absence — verify against PTAB E2E and the CAFC docket before filing anything that depends on it.
Generated 9/29/2026, 9:22:37 PM
Ownership chain (9)
Asserters network →Structured records extracted from the assignment-history narrative below. Each entity links to its full ownership-network profile.
2007-12-04 / 2018-01-01 · recorded 2019-01-14 · reel 042992/0524 · Assignment
Personics Holdings, Inc. and Personics Holdings, LLCDM Staton Family Limited Partnership
Correspondent: John P. Keady · Staton Techiya, LLC
internal reorg
? · recorded 2019-01-14 · reel 043393/0001 · Assignment
DM Staton Family Limited PartnershipStaton Techiya, LLC
Correspondent: John P. Keady · Staton Techiya, LLC
transfer-to-asserter
? · recorded 2019-01-14 · Assignment
Steven Wayne GoldsteinPersonics Holdings, Inc. and Personics Holdings, LLC
chain-of-title perfection
? · recorded 2019-01-14 · Assignment
Marc Andre BoillotPersonics Holdings, Inc. and Personics Holdings, LLC
chain-of-title perfection
? · recorded 2019-01-14 · Assignment
Jason McIntoshPersonics Holdings, Inc. and Personics Holdings, LLC
chain-of-title perfection
? · recorded 2019-01-14 · Assignment
John UsherPersonics Holdings, Inc.
chain-of-title perfection
? · recorded 2024-06-21 · Assignment
Staton Techiya, LLCST Portfolio Holdings, LLC
internal reorg
? · recorded 2024-06-21 · Assignment
ST Portfolio Holdings, LLCST Case1Tech, LLC
internal reorg
? · recorded 2025-07-24 · Assignment
ST Case1Tech, LLCST Awaretech, LLC
internal reorg
Assignment history
Inventors, original assignee, and the chain of ownership recorded with the USPTO — including the correspondent attorney who recorded each assignment, since shell-LLC chains often share one repeat-player attorney even when the entity names look unrelated. Surfaces NPE / patent-troll patterns: shell-entity transfers, known asserters in the chain, repeat correspondent fingerprints, pre-litigation assignments, and bankruptcy fire-sales.
I'll research the assignment record and litigation history for US 11057701. Let me run several searches in parallel.
Good context. Now let me pin down the specific reel/frame records and the 2024–2025 transfers.
I was able to pull the family-level chain from the patent's own legal-events record, PTAB filings, and district-court exhibits, but I could not open the USPTO Assignment Center record for US 11,057,701 (application 16/247,186) directly in this session. Where I cite a reel/frame it comes from PTAB chain-of-title exhibits for sibling members of the same family (which were recorded under portfolio-level instruments), not from a direct pull of this patent's Assignment Center page. I flag every such inference below rather than presenting it as confirmed.
Inventors
| Inventor | Residence of record | Employer at filing (determinable) |
|---|---|---|
| Steven Wayne Goldstein | Delray Beach, FL | Personics Holdings, Inc. (founder/principal) |
| Marc Andre Boillot | Plantation, FL | Personics Holdings, Inc./LLC |
| John Usher | (US) | Personics Holdings, Inc. |
| Jason McIntosh | Sugar Hill, GA | Personics Holdings, Inc./LLC |
- These four are the named inventors on the granted patent (confirmed by the PTAB docket for IPR2022-01078, which lists inventors "Steven Wayne Goldstein, Marc Andre Boillot, John Usher, Jason McIntosh").
- Unusual pattern: the inventors' own assignment instruments were not recorded until 2019-01-14 — roughly eleven years after the 2007-05-04 priority date — and were recorded the same day as the entity-chain assignments to Staton Techiya, LLC. That is a chain-of-title clean-up batch, not contemporaneous employment paperwork, and it is typical of pre-assertion title perfecting rather than of a normal operating-company filing.
- I found no evidence of all four inventors departing within 12 months of filing in the classic "fire-sale" pattern; the notable timing anomaly is the recordation date, not the departure date.
- Additional note: John P. Keady (Reg. No. 56389) is a named inventor on sibling Staton Techiya patents in this family (e.g., US 11,610,587) and appears as the prosecution/assignment correspondent of record for Staton Techiya (see §Assignment timeline). Dual inventor/attorney roles recur across this portfolio.
Original assignee
- Entity named on the issued patent (73): Staton Techiya, LLC, Delray Beach, FL (a Delaware limited liability company, per the 2:21-cv-00413 Dkt. 469-3 IP Assignment Agreement). Google Patents and Unified Patents both list "Original Assignee: Staton Techiya LLC."
- First owner in the chain of title: Personics Holdings, Inc. / Personics Holdings, LLC — the original 2008-era applicant entity.
- Products: Staton Techiya is characterized by third-party databases as a holding company (Patsnap: "Holding Company… founded 2017"), not a product company. It did conduct prototype demonstrations (ear-worn "talk-to-hear" / ambient-awareness prototypes shown to Harman beginning Oct. 2018, per the Harman/1:23-cv-00802 complaint), but there is no evidence it shipped a commercial product embodying the claims. Its commercialization model is licensing: Synergy IP Corporation is pleaded as the "exclusive licensee" that "help[s] license Techiya's patents" (2:21-cv-00413).
- Current status: Active as an asserting entity; the patent's legal status is Active, adjusted expiration 2028-05-30. The entity itself has been reorganized post-litigation (see 2024–2025 transfers).
Assignment timeline
Caveat on reel/frame: Google Patents' legal-events table for US 11,057,701 reports each 2019-01-14 event without reel/frame. The two reel/frame numbers below (042992/0524 and 043393/0001) are drawn from PTAB 37 CFR 3.73(c) chain-of-title exhibits for sibling patents (13/917,079 and 8,150,044) filed by Staton Techiya, which recite the same portfolio-wide instruments. I could not confirm that this specific patent appears on the schedules of those exact recordings.
2007-12-04 / 2018-01-01 (executed) / recorded 2019-01-14 — Reel 042992/0524 (family-level record; unconfirmed for this patent)
- Conveyance: Assignment
- Assignor: Personics Holdings, Inc. and Personics Holdings, LLC
- Assignee: DM Staton Family Limited Partnership (as assignee of Staton Family Investments, Ltd.)
- Correspondent: John P. Keady, Staton Techiya, LLC, 16193 Bridlewood Circle, Delray Beach, FL 33445 (also 2500 NE 35th Street, Lighthouse Point, FL 33064) — Keady recurs across every Staton Techiya recording I could see and is also a named inventor on sibling patents; repeat-player flag.
- Context: Internal reorg — the original patent-holding entity's portfolio is conveyed into the Staton family partnership.
2019-01-14 (recorded) — Reel 043393/0001 (family-level record; unconfirmed for this patent)
- Conveyance: Assignment (portfolio-wide "Intellectual Property Assignment Agreement," Dkt. 469-3 in 2:21-cv-00413)
- Assignor: DM Staton Family Limited Partnership (Wyoming partnership, 6800 Broken Sound Parkway, Suite 200, Boca Raton, FL)
- Assignee: Staton Techiya, LLC (Delaware LLC, 16193 Bridlewood Circle, Delray Beach, FL)
- Correspondent: John P. Keady — same correspondent as the prior link. Repeat correspondent, confirmed.
- Context: Transfer-to-asserter — IP carved out of the family partnership into the licensing/assertion vehicle, with all "claims and causes of action… for past, present, and future infringement" expressly assigned.
2019-01-14 (recorded) — four inventor-to-company assignments (no reel/frame published by Google Patents)
- Conveyance: Assignment
- Assignors / Assignees:
- Steven Wayne Goldstein → Personics Holdings, Inc. & Personics Holdings, LLC
- Marc Andre Boillot → Personics Holdings, LLC & Personics Holdings, Inc.
- Jason McIntosh → Personics Holdings, Inc. & Personics Holdings, LLC
- John Usher → Personics Holdings, Inc.
- Correspondent: not determinable from the records available to me.
- Context: Chain-of-title perfection — the four inventor instruments are recorded the same day as the entity transfers, eleven years after the priority date, completing the record back to Personics.
2024-06-21 (recorded) — (reel/frame not available in my sources)
- Conveyance: Assignment
- Assignor: Staton Techiya, LLC
- Assignee: ST Portfolio Holdings, LLC
- Correspondent: not determinable from the records available to me.
- Context: Internal reorg / transfer inside the "ST" family — same-day double hop (see next entry).
2024-06-21 (recorded) — (reel/frame not available in my sources)
- Conveyance: Assignment
- Assignor: ST Portfolio Holdings, LLC
- Assignee: ST Case1Tech, LLC
- Correspondent: not determinable from the records available to me.
- Context: Internal reorg — ST Case1Tech was then substituted as the appellant in the Federal Circuit appeals ("although it assigned the patents to a related entity, ST Case1Tech, LLC, which was substituted as the appellant," CAFC No. 23-2305, 2025-10-09). The transfer coincides with the post-trial appellate phase (~3 weeks after the May 9, 2024 district-court judgment).
2025-07-24 (recorded) — (reel/frame not available in my sources)
- Conveyance: Assignment
- Assignor: ST Case1Tech, LLC
- Assignee: ST Awaretech, LLC (current assignee; also reported as "ST Awaretech, LLC," matching the current-assignee field on Google Patents)
- Correspondent: not determinable from the records available to me.
- Context: Internal reorg — third "ST" holding vehicle in ~13 months.
Net chain: Personics Holdings, Inc./LLC → DM Staton Family LP → Staton Techiya, LLC → ST Portfolio Holdings, LLC → ST Case1Tech, LLC → ST Awaretech, LLC.
Timeline diagram
timeline
title Ownership of US 11057701
2007 : Priority date
2008 : Filed as US 12 170 171
2017 : Portfolio moved to Staton family vehicle
2019 : Inventor assignments recorded
: DM Staton to Staton Techiya
2021 : Patent issued 2021-07-06
: Techiya and Synergy sue Samsung
2022 : IPR2022-01078 filed against this patent
2023 : Board invalidates claims 1 to 13
2024 : Staton Techiya to ST Portfolio Holdings
: ST Portfolio to ST Case1Tech
2025 : ST Case1Tech to ST Awaretech
NPE / troll-pattern signals
Shell-entity transfer — PRESENT. The patent sits in a licensing-only holding company, Staton Techiya, LLC (Delray Beach, FL), whose pleaded commercialization model is licensing through an exclusive licensee (Synergy IP Corp). It then moved through a chain of name-suffix vehicles: ST Portfolio Holdings, LLC → ST Case1Tech, LLC (2024-06-21) and ST Case1Tech, LLC → ST Awaretech, LLC (2025-07-24). Staton Techiya is itself a Delaware single-entity LLC with no product revenue shown. The "IP / Holdings / Tech" suffix pattern alone would not be enough — it is the combination with (a) no products and (b) the 2024–2025 LLC-to-LLC hops that makes this a finding.
Known asserter in the chain — NOT PRESENT (but adjacent). None of the named lists (Acacia, Marathon, IV, IPNav, Wi-LAN, Mosaid/Conversant, Vringo, Pendrell, Innovatio, MPHJ, Lumen View, Round Rock, Document Generation Corp, Spangenberg entities) appear anywhere in this chain. However, Staton Techiya is a high-frequency patent plaintiff surfaced by Unified Patents' public litigation/PTAB tracker: the patent appears in Unified's litigation portal for Texas E.D. case 2:22-cv-00053 and in its PTAB docket for IPR2022-01078. Note: the Google Patents "Petitioner:" field for IPR2022-01078 is blank and merely links to Unified's database — the record at Patexia names the petitioner as Samsung Electronics Co., Ltd. et al., not Unified Patents. Treat "Unified Patents" on that page as the data host, not the challenger.
Repeat correspondent across the chain — PRESENT (for the 2019 batch); UNKNOWN for 2024–2025. John P. Keady (Reg. No. 56389) is the correspondence of record for Staton Techiya at customer numbers 150139 and 154598, with addresses at 16193 Bridlewood Circle, Delray Beach, FL and 2500 NE 35th Street, Lighthouse Point, FL (e-mail yasmin.seyal@techiya.co), and he filed/signed the chain-of-title statements citing Reel 042992/0524 and Reel 043393/0001. He is additionally a named inventor on sibling Staton Techiya patents (e.g., US 11,610,587: "Inventors: Steven Goldstein…; John P. Keady"), a dual-role pattern. One repeating name across multiple links is the classic tell; here the same individual runs both prosecution and the title recordings. A parallel correspondence address, Akerman LLP, 777 South Flagler Drive, Suite 1100 West Tower, West Palm Beach, FL 33401 (customer no. 150139; filers Peter Allen Chiabotti / Edward Mercier), appears on Staton Techiya filings as well. I could not confirm who recorded the 2024-06-21 or 2025-07-24 assignments.
Cascading transfers — PRESENT. Two consecutive assignments on the same day, 2024-06-21 (Staton Techiya → ST Portfolio Holdings → ST Case1Tech), followed by a third on 2025-07-24 (ST Case1Tech → ST Awaretech). Three LLC-to-LLC hops in ~13 months, all within the "ST" family naming scheme. No individual reel/frame is available to me for these, so I cannot yet show a shared correspondent address across all three.
Pre-litigation transfer — NOT PRESENT. The operative transfer (DM Staton → Staton Techiya, recorded 2019-01-14) precedes the first suit naming this patent (Staton Techiya/Synergy IP v. Samsung, E.D. Tex. 2:21-cv-00413, filed Nov. 5/8, 2021) by roughly 2.8 years — well outside the 6-month window. The 2024-06-21 ST Case1Tech transfer is a post-judgment appellate reorganization (the CAFC substituted ST Case1Tech as appellant), not a pre-filing venue/title setup.
Bankruptcy fire-sale — NOT PRESENT. No Chapter 7/11 filings, sale motions, or bankruptcy-court assignments involving Personics Holdings, Staton Family Investments, DM Staton Family LP, or Staton Techiya surfaced in any source I checked. The conveyances were bilateral IP assignment agreements, not court-supervised sales.
Privateering — NOT PRESENT as classically defined. This is not an operating company handing patents to an NPE to sue its competitors; Staton Techiya is the non-practicing owner and asserts directly (with Synergy IP as exclusive licensee). The closest analogue is the pleaded 2018–2019 Harman/NDA disclosure-then-sue sequence in 1:23-cv-00802, which is a disclosure/misappropriation theory, not privateering.
Defensive aggregator — NOT PRESENT. The chain terminates at ST Awaretech, LLC (2025-07-24). No RPX, AST, LOT Network, Unified Patents, or OIN entity appears anywhere in the chain, so the patent has not been neutralized.
Litigation overlay (context for the verdict): US 11,057,701 was among the patents asserted by Staton Techiya, LLC and Synergy IP Corp. against Samsung Electronics (E.D. Tex. 2:21-cv-00413 / consolidated 2:22-cv-00053). IPR2022-01078 (filed 2022-06-09; Final Written Decision 2023-11-13) invalidated claims 1–13 per the PTAB record at Patexia (I could not independently verify the full claim list; the patent carries 16 claims). The district court found against Techiya on unclean hands (May 9, 2024) and Samsung was awarded costs.
Verdict
NPE — high confidence.
Three signals are independently supported. (1) Shell-entity / licensing-only ownership: the patent is held by Staton Techiya, LLC — a Delaware holding LLC with no products on the market, monetized through an exclusive licensee (Synergy IP Corp.) — and was then pushed into two further name-suffix vehicles, ST Portfolio Holdings, LLC → ST Case1Tech, LLC (2024-06-21) and ST Case1Tech, LLC → ST Awaretech, LLC (2025-07-24). (2) Cascading transfers: three LLC-to-LLC hops in about 13 months, two of them same-day. (3) Repeat correspondent: John P. Keady (Reg. No. 56389) is the recurring correspondence of record on the Staton Techiya title recordings (Reel 042992/0524 and Reel 043393/0001) and a named inventor on sibling patents. The assertion history — Techiya and Synergy IP suing Samsung over this patent, IPR2022-01078 invalidating claims 1–13, and the CAFC/ST Case1Tech substitution — confirms the portfolio exists to be asserted, not practiced.
Verify at the USPTO Assignment Center (search "11057701"): https://assignmentcenter.uspto.gov/ , mirrored at https://assignment.uspto.gov/patent/index.html#/patent/search/result?q=11057701
Open items I could not close: (a) the reel/frame numbers specific to application 16/247,186 — the two I cite are family-level and drawn from PTAB exhibits for sibling patents; (b) the recording correspondents for the three 2024–2025 assignments; and (c) whether ST Portfolio Holdings / ST Case1Tech / ST Awaretech share a common registered-agent address (which would upgrade signal 4 to "present, with shared correspondent address").
Generated 9/29/2026, 9:22:45 PM
Prior art
Earlier patents, publications, and products that may anticipate or render the claims unpatentable.
I'll research the prior-art citations for US 11,057,701 against live sources before charting them.
Let me research the remaining key citations.
Prior-Art Analysis — US 11,057,701 B2
"Method and device for in ear canal echo suppression"
Scope and method
I worked from the authoritative citation tables in the '701 patent text (58 examiner/third-party citations in the main list, 62 in the consolidated "Patent Citations" table) and cross-checked the highest-relevance entries against live sources (Google Patents, OSTI, FreePatentsOnline, Justia, IPO/unifiedpatents portals, and the IPR2022-01078 record). Per your rule, I have not auto-corrected any patent or publication number; every identifier below is transcribed literally from the source.
Important framing before the charts. A §102 anticipation analysis requires a single reference to disclose every element of the claim as arranged. The '701 patent's sole independent claim (claim 1) is a combination claim requiring, in one method:
- receiving an electronic ambient signal (via an ambient microphone);
- receiving an electronic internal signal (via an ear-canal microphone) that includes an echo of the wearer's spoken voice;
- calculating a background noise signal using BOTH the ambient signal and the internal signal (the claim says "the electronic ambient signal and the electronic internal signal");
- producing a modified internal signal by reducing the echo;
- generating a voice activity level using the modified electronic signal AND the background noise signal;
- mixing the ambient signal with the modified internal signal in a ratio dependent on the background-noise signal → mixed signal with reduced echo; and
- sending the mixed signal to an ear-canal receiver (ECR).
As set out at the end, no single one of the cited references discloses all seven elements. That is consistent with the IPR2022-01078 outcome (all challenged claims held unpatentable, but on obviousness, not anticipation — see the FWD at the docketalarm URL already cited in the earlier summary). So the honest §102 answer is: the citations below are anticipation candidates mostly for sub-combinations of dependent claims, and the true validity threat was §103.
Tier 1 — Closest prior art (highest §102 relevance)
T1-1. US 6,728,385 B2 — Kvaløy et al. (Nacre AS)
- Full citation: US 6,728,385 B2, "Voice detection and discrimination apparatus and method," Nacre AS (Trondheim, NO); inventors Kvaløy, Ottesen, Henriksen, Stensby, Sorsdal, Pettersen, Svean. Filed 2002-02-28, issued 2004-04-27. (Corresponding WO 03/073790 A1, published 2003-09-04; EP 1 479 265 B1.)
- Description: A protective ear terminal with an inner electroacoustic transducer (in the meatus) producing a first electronic signal and an outer transducer producing a second electronic signal; an electronics unit compares the two signals (difference/comparison means) and applies criteria to decide voice present/absent — i.e., a voice-activity/discrimination engine explicitly intended to work in noisy environments.
- §102 relevance: Directly discloses the duality of an inner ear element + outer element and the comparison-based voice decision. This is the closest single-reference teaching of claim-1 element (5) in its broadest reading. It is the primary reference used by Petitioner in IPR2022-01078 (Ex. 1008).
- Claims it could arguably reach on §102 (if read broadly): none fully; strongest against claim 6 ("probability that the wearer is speaking") and claim 13 (voice activity from energy/frequency characteristics), and as the inner/outer-transducer teaching underlying the preamble. Not a standalone anticipator of claim 1.
T1-2. US 6,754,359 B1 — Svean et al. (Nacre AS)
- Full citation: US 6,754,359 B1, "Ear terminal with microphone for voice pickup," Nacre AS; inventors Svean, Sorsdal, Pettersen, Ottesen, Stensby. Filed 2000-09-01, issued 2004-06-22 (Appl. No. 09/653,869).
- Description: Ear-terminal with a sealing section in the ear meatus, an inner microphone whose signal is filtered/conditioned (programmable filters, vowel/nasal/fricative classification) to reconstruct the wearer's own speech, and an outer microphone M1; the processed signal can be reproduced via an internal loudspeaker SG, with express attention to feedback/feedback cancellation when the loudspeaker is in the same meatus.
- §102 relevance: Discloses the ear-canal microphone-for-voice-capture plus the loudspeaker-in-the-same-canal feedback problem the '701 addresses. Used by Petitioner in IPR2022-01078 as Ex. 1015.
- Claims it could arguably reach: the preamble/ASM-ECM architecture and aspects of claim 7 (degree of voicing — the patent classifies vowel/nasal/fricative). Not a standalone anticipator of claim 1.
T1-3. US 2009/0010444 A1 — Goldstein, Usher, Boillot (Personics Holdings Inc.)
- Full citation: US 2009/0010444 A1, "Method and device for personalized voice operated control," Personics Holdings Inc.; inventors Goldstein, Usher, Boillot. Priority 2007-04-27 (Prov. 60/914,318); filed 2008-04-28; published 2009-01-08 (later granted as US 9,066,167 / US 8,910,056-family).
- Description: An earpiece with ASM + ECM + ECR; an echo canceller suppresses echo of the audio content in the ECM signal to produce a modified electronic internal signal; a VOX generates a voicing activity level based on the electronic ambient signal and the modified electronic internal signal; the VOX controls a mixing of the electronic ambient signal and the modified electronic internal signal based on the voice activity level to produce a mixed signal; the mixed signal can be transmitted to a phone/media player and combined with audio content delivered to the ECR.
- §102 relevance: This is the single closest reference in subject matter — it tracks claim 1 elements (1), (2), (4), (5), (6), (7) almost verbatim. The critical gap is element (3): the '701 claim requires the background-noise signal to be calculated from both microphone signals, whereas '044's VOX mixing is keyed to the voicing activity level, not to a separately calculated background-noise signal. Also, '044 is a commonly-owned sibling Personics application by the same inventors — so depending on the priority/invention-date analysis it may be disqualified as §102 art (pre-AIA §103(c) common ownership; or, under AIA principles, §102(b)(2)(C)) rather than being a clean anticipator.
- Claims it could arguably reach: strong candidate for independent claim 1 if the "background noise from both signals" limitation is read to be met; otherwise strongest against claims 4, 5, 6, 7, 12.
T1-4. US 2009/0147966 A1 — Personics Holdings Inc.
- Full citation: US 2009/0147966 A1, "Method and Apparatus for In-Ear Canal Sound Suppression," Personics Holdings Inc.; priority 2007-05-04; published 2009-06-11.
- Description: In-ear canal sound suppression — the same family line that runs to the '701 (the '701's own priority chain descends from the same 2007-05-04 provisional). Discloses ASM/ECM/ECR architecture and in-canal sound handling.
- §102 relevance: Same-inventor/same-family issue as T1-3; it is a family relation to the '701 itself, not independent art, and therefore is more properly treated as a priority/§112 question than as §102 anticipation. Flagged because it appears in the patent's own citation table.
T1-5. US 2005/0058313 A1 — Victorian (Thomas A.)
- Full citation: US 2005/0058313 A1, "External ear canal voice detection," Victorian, Thomas A. Filed 2003-09-11, published 2005-03-17.
- Description: Detecting the wearer's voice using the external ear canal acoustic field (as distinct from the ambient field), i.e., voice detection at the ear canal.
- §102 relevance: Discloses the concept of isolating wearer speech from the ear-canal field — relevant to the '701's ECM-based spoken-voice capture and the VAD discrimination between the user's own voice and ambient/played audio.
- Claims it could arguably reach: preamble and claim 6/7 concepts; not claim 1.
T1-6. US 5,787,187 A — Bouchard & Osbourn (Sandia Corporation)
- Full citation: US 5,787,187 A, "Systems and methods for biometric identification using the acoustic properties of the ear canal," Sandia Corporation (Albuquerque, NM); inventors Bouchard & Osbourn. Filed 1996-04-01, issued 1998-07-28. (DOE Contract AC04-94AL85000; OSTI 871746.)
- Description: Emits an acoustic source signal s(t) into the ear canal, detects the response f(t) with an in-canal detector, and characterizes an ear-canal transfer function as a biometric.
- §102 relevance: Core teaching of modeling an ear-canal acoustic/transfer response via an emitter + in-canal sensor — the conceptual ancestor of the '701's ECTF modeling (claim 14). Cited by examiner.
- Claims it could arguably reach: foundational for claim 14 (ECTF modeling) only; no echo suppression, no mixing.
Tier 2 — Secondary references most relevant to specific dependent claims
T2-1. US 5,259,033 — Goodings et al. (GN Danavox A/S)
- Full citation: US 5,259,033 A, "Hearing aid having compensation for acoustic feedback," GN Danavox AS. Filed 1989-08-30, issued 1993-11-02.
- Description: Hearing aid with adaptive compensation/cancellation of acoustic feedback (the classic LMS-style feedback-path model).
- §102 relevance: Teaching of adaptive filter modeling of an acoustic feedback path in a worn ear device — the mechanism the '701 claims in claim 14 (LMS filter modeling ECTF).
- Claims it could arguably reach: claim 14 (and claim 15/16 by extension).
T2-2. US 7,039,195 B1 — Nacre AS ("Ear terminal")
- Full citation: US 7,039,195 B1, "Ear terminal," Nacre AS. Filed 2000-09-01, issued 2006-05-02.
- Description: Ear-terminal (voice pickup / hearing-protection) with inner + outer transducers and signal processing.
- §102 relevance: Further Nacre disclosure of the inner/outer transducer pairing and own-voice handling — cumulative with T1-1/T1-2.
- Claims it could arguably reach: preamble-level only.
T2-3. US 6,738,482 B1 — Jaber Associates, LLC
- Full citation: US 6,738,482 B1, "Noise suppression system with dual microphone echo cancellation," Jaber Associates, LLC. Filed 1999-09-27, issued 2004-05-18.
- Description: Combined dual-microphone noise suppression + echo cancellation — i.e., using two mics for noise reduction while also cancelling echo.
- §102 relevance: Directly relevant to the '701's dual-microphone (ASM+ECM) noise estimation combined with echo suppression — arguably the closest art to the combination of elements (3)+(4).
- Claims it could arguably reach: elements of claim 1 (noise + echo), claims 8–11 (noise-dependent gain behavior). Still not a complete claim-1 anticipator.
T2-4. US 5,692,059 — Kruger (Frederick M.)
- Full citation: US 5,692,059 A, "Two active element in-the-ear microphone system," Kruger, Frederick M. Filed 1995-02-24, issued 1997-11-25.
- Description: In-the-ear microphone system with two active elements (i.e., an in-ear and an outer/ambient pickup in one earpiece).
- §102 relevance: Early teaching of the dual-microphone in-ear arrangement (ASM-type + ECM-type) the '701 presupposes.
- Claims it could arguably reach: preamble only.
T2-5. US 2007/0036342 A1 — Boillot (Marc A.)
- Full citation: US 2007/0036342 A1, "Method and system for operation of a voice activity detector," Boillot, Marc A. Filed 2005-08-05, published 2007-02-15.
- Description: Voice activity detector operation — VAD decision logic.
- §102 relevance: Directly relevant to the '701's voice activity level generation (element 5) and claim 13's energy/frequency characteristics. Note the shared-inventor overlap with the '701 (Boillot) — a possible common-ownership/§103(c) issue as art.
- Claims it could arguably reach: claims 6, 7, 13.
T2-6. US 2008/0037801 A1 — Cambridge Silicon Radio Ltd.
- Full citation: US 2008/0037801 A1, "Dual microphone noise reduction for headset application," Cambridge Silicon Radio, Ltd. Filed 2006-08-10, published 2008-02-14.
- Description: Dual-microphone noise reduction for a headset.
- §102 relevance: The two-microphone noise-reduction/mixing teaching relevant to claim-1 element (3) (background-noise from the pair).
- Claims it could arguably reach: element (3) support; claims 8–11.
T2-7. US 5,133,032 — Esaki et al. (Hitachi)
- Full citation: US 5,133,032 A, "Echo canceller and communication apparatus employing the same," Hitachi, Ltd. Filed 1989-03-13, issued 1992-07-14.
- Description: Adaptive echo canceller used in a communication apparatus.
- §102 relevance: Generic adaptive echo-cancellation teaching underlying element (4) and claim 14.
- Claims it could arguably reach: claim 14 (LMS/adaptive filter basics).
T2-8. US 2008/0019539 A1 — Motorola, Inc.
- Full citation: US 2008/0019539 A1, "Method and system for near-end detection," Motorola, Inc. Filed 2006-07-21, published 2008-01-24.
- Description: Near-end (local speaker) detection in a communication device.
- §102 relevance: Near-end/own-voice detection logic relevant to VAD-based mixing.
- Claims it could arguably reach: claim 6.
T2-9. US 2006/0067512 A1 — Motorola, Inc.
- Full citation: US 2006/0067512 A1, "Speakerphone having improved outbound audio quality," Motorola, Inc. Filed 2004-08-25, published 2006-03-30.
- Description: Speakerphone outbound-audio improvement using multiple microphones / echo handling.
- §102 relevance: Dual-mic outbound voice enhancement and echo control.
- Claims it could arguably reach: element (6) mixing concept; claims 8–11.
T2-10. US 5,963,901 — Nokia Mobile Phones Ltd.
- Full citation: US 5,963,901 A, "Method and device for voice activity detection and a communication device," Nokia Mobile Phones Ltd. Filed 1995-12-12, issued 1999-10-05.
- Description: Voice activity detection method.
- §102 relevance: Basic VAD teaching for element (5).
- Claims it could arguably reach: claim 6.
T2-11. US 6,597,787 B1 — Telefonaktiebolaget LM Ericsson
- Full citation: US 6,597,787 B1, "Echo cancellation device for cancelling echoes in a transceiver unit," Ericsson. Filed 1999-07-29, issued 2003-07-22.
- Description: Echo cancellation device in a transceiver.
- §102 relevance: Adaptive echo cancellation in communication devices (element 4).
- Claims it could arguably reach: claim 14.
T2-12. US 5,796,819 — Ericsson Inc. (Echo canceller for non-linear circuits)
- Full citation: US 5,796,819 A, "Echo canceller for non-linear circuits," Ericsson Inc. Filed 1996-07-24, issued 1998-08-18.
- Description: Non-linear echo cancellation.
- §102 relevance: Echo-cancellation refinement (element 4).
- Claims it could arguably reach: claim 14.
Tier 3 — Background/cumulative references appearing on the face of the '701 patent
The following are cited on the '701 face but are, on their face, general echo-cancellation, VAD, or earpiece art rather than close anticipators. I list them so the "each citation" instruction is honored:
| Citation (literal) | Priority / Issue or Pub. date | Brief description | Claim(s) it could touch under §102 |
|---|---|---|---|
| US 4,809,262 A (Deutsche Telephonwerke) | 1987-02-23 / 1989-02-28 | Conference-call connections | — (general) |
| US 5,999,828 A (Qualcomm) | 1997-03-19 / 1999-12-07 | Dual echo cancellers | 14 |
| US 6,021,207 A (Resound) | 1997-04-03 / 2000-02-01 | Wireless open ear canal earpiece | preamble |
| US 6,081,732 A (Nokia) | 1995-06-08 / 2000-06-27 | Acoustic echo elimination in digital mobile comm. | 14 |
| US 6,118,878 A (Noise Cancellation Tech.) | 1993-06-23 / 2000-09-12 | Variable-gain ANC w/ residual noise sensing | 8–11 |
| US 6,169,912 B1 (Pericom) | 1999-03-31 / 2001-01-02 | RF front-end signal cancellation | — |
| US 6,304,648 B1 (Lucent) | 1998-12-21 / 2001-10-16 | Multimedia conference call | — |
| US 2001/0046304 A1 (Rast) | 2000-04-24 / 2001-11-29 | Selective acoustic isolation in headsets | preamble |
| US 6,381,572 B1 (Pioneer) | 1998-04-10 / 2002-04-30 | Speech-recognition feature parameter | — |
| US 6,466,666 B1 (Ericsson) | 1997-09-10 / 2002-10-15 | Echo estimation and suppression | 14 |
| US 6,570,985 B1 (Ericsson) | 1998-01-09 / 2003-05-27 | Adaptive-filter optimization | 14 |
| US 2003/0112947 A1 (Cohen) | 2000-05-25 / 2003-06-19 | Conference calling device | — |
| US 6,631,196 B1 (GN Resound) | 2000-04-07 / 2003-10-07 | Ultrasonic-carrier transduction | — |
| US 6,647,368 B2 (Think-A-Move) | 2001-03-30 / 2003-11-11 | Sensor pair detecting changes in the ear | preamble, 6 |
| US 6,760,453 B1 (NEC) | 1998-03-30 / 2004-07-06 | Received/transmitted voice-level control | 8–11 |
| US 2004/0137969 A1 (Nassimi) | 2002-05-09 / 2004-07-15 | Voice-activated wireless headset | 6 |
| US 2004/0202340 A1 (Armstrong) | 2003-04-10 / 2004-10-14 | Audio via serial port in hearing instrument | — |
| US 6,870,807 B1 (Avaya) | 2000-05-15 / 2005-03-22 | Suppressing music on hold | — |
| US 2005/0069161 A1 (Kaltenbach) | 2003-09-30 / 2005-03-31 | Bluetooth-enabled hearing aid | — |
| US 2005/0102133 A1 (Canon) | 2003-09-12 / 2005-05-12 | Voice-activated device | 6 |
| US 7,003,097 B2 (Tellabs) | 1999-11-03 / 2006-02-21 | Synchronization of echo cancellers | 14 |
| US 2006/0062395 A1 (Klayman) | 1995-07-28 / 2006-03-23 | Acoustic correction apparatus | — |
| US 7,236,580 B1 (Cisco) | 2002-02-20 / 2007-06-26 | Conference call | — |
| US 2007/0189544 A1 (Outland Research) | 2005-01-15 / 2007-08-16 | Ambient-sound-responsive media player | — |
| US 2007/0291953 A1 (Think-A-Move) | 2006-06-14 / 2007-12-20 | Ear sensor assembly for speech processing | 6, 7 |
| US 7,349,353 B2 (Intel) | 2003-12-04 / 2008-03-25 | Techniques to reduce echo | 14 |
| US 7,403,608 B2 (France Telecom) | 2002-06-28 / 2008-07-22 | Echo-processing devices | 14 |
| US 2009/0034748 A1 (Sibbald) | 2006-04-01 / 2009-02-05 | Ambient noise-reduction control system | 8–11 |
| US 7,783,054 B2 (Harman Becker) | 2000-12-22 / 2010-08-24 | Auralizing a loudspeaker | — |
| US 7,817,803 B2 (Personics Holdings) | 2006-06-22 / 2010-10-19 | Hearing-damage notification/intervention | same-family note |
| US 7,986,802 B2 (Sony Ericsson) | 2006-10-25 / 2011-07-26 | Portable device w/ audio disable | — |
| US 8,027,481 B2 (Beard) | 2006-11-06 / 2011-09-27 | Personal hearing control | — |
| US 8,060,366 B1 (West Corp.) | 2007-07-17 / 2011-11-15 | Verbal control of conference call | — |
| US 8,081,780 B2 (Personics Holdings) | 2007-05-04 / 2011-12-20 | Acoustic management control of multiple microphones | same-family parent (not independent art) |
| US 2012/0184337 A1 (Burnett) | 2010-07-15 / 2012-07-19 | Wireless conference-call telephone | — |
| US 8,275,145 B2 (Harman Int'l) | 2006-04-25 / 2012-09-25 | Vehicle communication system | — |
| US 2013/0051543 A1 (Verizon) | 2011-08-25 / 2013-02-28 | Muting/un-muting user devices | — |
| US 8,401,178 B2 (Apple) | 2008-09-30 / 2013-03-19 | Multiple-microphone switching/config | element (3) |
| US 2014/0370838 A1 (Kim) | 2012-01-26 / 2014-12-18 | Preventing abuse of emergency calls | — |
| US 10,182,289 B2 (Staton Techiya) | 2007-05-04 / 2019-01-15 | In ear canal echo suppression | same-family parent (not independent art) |
| JP 2007-502593 A (Koninklijke Philips) | 2003-05-27 / 2007-02-08 | Loudspeaker-microphone echo cancellation | 14 |
Bottom line — which references are genuinely the "most relevant prior art"
Ranked by closeness to the '701's independent claim 1:
- US 2009/0010444 A1 (Personics / Goldstein, Usher, Boillot) — discloses ASM+ECM+ECR, an echo canceller producing a modified internal signal, a VOX voicing level from ambient + modified internal signal, and mixing ambient with modified internal, with transmission and ECR playback. Missing only the claim's express requirement that the background-noise signal (not the voicing level) be computed from both mics. Complication: common inventor/owner with the '701 → likely disqualified as §102 art under pre-AIA §103(c) / common-ownership principles, and practically a priority/§112 issue rather than §102.
- US 6,728,385 B2 (Nacre/Kvaløy) — inner+outer transducer comparison and voice discrimination in noise (IPR Ex. 1008). Strongest independent art for the voice-activity/discrimination element.
- US 6,738,482 B1 (Jaber Associates) — the closest independent art to the dual-microphone noise + echo cancellation combination.
- US 6,754,359 B1 (Nacre/Svean) — inner mic own-voice capture + in-canal loudspeaker feedback (IPR Ex. 1015).
- US 5,787,187 (Sandia) and US 5,259,033 (GN Danavox) — the ECTF modeling / adaptive feedback-path lineage behind claims 14–16.
- US 2005/0058313 A1 (Victorian) and US 2007/0036342 A1 (Boillot) — ear-canal voice detection and VAD operation for claims 6–7, 13.
Honest caveats (per your "say so if uncertain" instruction)
- I found no single cited reference that anticipates claim 1. The closest independent references each miss at least one element (typically the "background-noise signal computed from both signals" limitation, or the "mixing the modified signal" limitation). Anticipation via these references is weak; obviousness is the realistic theory, matching the IPR2022-01078 FWD outcome already documented in the prior section.
- I did not retrieve the complete list of grounds/exhibits from IPR2022-01078 beyond confirming Ex. 1008 = US 6,728,385 (Kvaløy) and Ex. 1015 = US 6,754,359 (Svean). I cannot state with certainty which additional references the Board relied on for the mixing/background-noise limitations.
- The same-family Personics references (US 2009/0010444 A1; US 2009/0147966 A1; US 8,081,780 B2; US 10,182,289 B2) appear in the '701's own citation table but are not clean third-party art; I have flagged rather than treated them as independent §102 references.
- Dates above are transcribed from the '701 patent's printed citation table and spot-checked against Google Patents/OSTI/FreePatentsOnline; where a reference shows only a priority year (e.g., US 2009/0147966 A1 at "2007-05-04"), that is the priority date, not the publication date.
- One inconsistency already flagged upstream persists and I am not auto-correcting it: the '701 abstract and some family listings refer to an "acoustic management module (300)" while the specification body uses reference numeral 201.
Generated 9/29/2026, 9:22:59 PM
Obviousness
Combinations of prior art that suggest the claimed invention would have been obvious under 35 U.S.C. § 103.
I'll research the specific prior-art grounds used against this patent before constructing the § 103 analysis.
Let me pull the actual grounds and references from the IPR2022-01078 Final Written Decision.
Let me get the specific grounds/references from the FWD and the exhibit list.
Obviousness Analysis — U.S. Patent No. 11,057,701 B2 (35 U.S.C. § 103)
0. Framework and material caveats
Governing law. Because every claim of the '701 patent traces to the May 4, 2007 provisional (60/916,271), the claims are governed by pre-AIA 35 U.S.C. § 103(a). The controlling test is Graham v. John Deere, 383 U.S. 1 (1966), as elaborated by KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). The four Graham factors are: (1) scope and content of the prior art; (2) level of ordinary skill; (3) differences between the claims and the prior art; and (4) secondary considerations. Under KSR, a claimed combination of known elements is obvious where each element performs its established function and the combination yields no more than predictable results; an explicit "teaching, suggestion, or motivation" is not required, and "market demand, rather than scientific literature," may supply the reason to combine. 550 U.S. at 417–19.
Two caveats I am obligated to state up front.
- I could not retrieve the four corners of the IPR2022-01078 Petition or the body of the Final Written Decision's ground-by-ground reference tables. I confirmed from the FWD's own caption text that (a) the petition requested review of claims 1–9 and 11–13, (b) the Board instituted on all grounds, and (c) the Board held all challenged claims unpatentable. I confirmed from Samsung's Nov. 10, 2022 stipulation letter that its district-court invalidity case on the '701 patent used "the grounds instituted in IPR2022-01078" plus "any ground using EP 1,385,324 ('Pederson')." I therefore treat EP 1,385,324 (Pedersen/Pederson) as a confirmed reference in this patent's prior-art record, but I will not invent the remaining ground references or attribute specific reasoning to the Board. Everything below after that point is my own independent § 103 analysis grounded in the prior art of record on the face of the '701 patent (its "Citations" list), plus Pedersen.
- Flagged contradiction with the earlier-generated summary. The prior section states claim 10 depends "from claims 1, 3, and 11." The claim text in the authoritative full text instead reads: "10. The method of claim 2, further comprising: increasing the internal gain when a background noise level decreases." Claim 10 depends from claim 2, full stop. I use the claim text, not the earlier summary, and flag the discrepancy explicitly per the cross-reference rule.
1. Claim 1, decomposed for § 103 purposes
From the claim text (16 claims; claim 1 sole independent):
| # | Limitation | Functional character |
|---|---|---|
| 1a | Receiving an electronic ambient signal from an ambient microphone | Conventional transducer front end |
| 1b | Receiving an electronic internal signal from an ear-canal microphone, the signal including an echo of the wearer's spoken voice | Occluded-earcana transducer + recognition of intra-canal echo |
| 1c | Calculating a background noise signal using BOTH the ambient and the internal signal | Dual-microphone noise estimation |
| 1d | Producing a modified internal signal by reducing the echo | Adaptive echo/feedback suppression |
| 1e | Generating a voice activity level using the modified signal AND the background noise signal | VAD fed by echo-cancelled internal signal + BNL |
| 1f | Mixing the ambient signal with the modified internal signal in a ratio dependent on the background noise signal → mixed signal with reduced echo | Noise-level-driven gain cross-fade |
| 1g | Sending the mixed signal to an ear-canal receiver | Occluded-canal playback |
Nothing in claim 1 recites a specific filter topology, a specific coefficient count, or any numerical threshold. That breadth is decisive here: each limitation is a known function, and the claim is a specific arrangement of known building blocks — the classic KSR "predictable use of prior art elements according to their established functions."
Level of ordinary skill (POSITA). A bachelor's degree in electrical engineering, acoustics, or a related field, plus 2–3 years' experience (or equivalent) in earpiece/hearing-aid signal processing, including adaptive filtering and multi-microphone audio. This is the level the Board and the parties effectively applied in the parallel Techiya IPRs (cf. IPR2022-00324, where the Board credited expert testimony on what "one of ordinary skill would have known" about feedback/echo in close-proximity mic/speaker systems). The field was mature by 2007: adaptive echo cancellation, own-voice detection, and mic-signal-dependent gain mixing were all textbook.
2. The prior art of record
Drawn from the '701 patent's own "Citations" list (all pre-2007, hence available under § 102(b)/(e)) plus Pedersen:
| Reference | What it supplies |
|---|---|
| EP 1,385,324 A1 (Pedersen, Siemens AG; pub. Jan. 28/28 2004; priority 2002-07-22) — "A System and Method for Reducing the Effect of Background Noise" | Two microphones with different sensitivity to background noise; estimate the level of background noise; and depending on that level, either (i) modify the amplification gain of the signals before combining, or (ii) change the way of combining them, to yield a signal with less background noise than one microphone alone. Per the Unified Patents abstract: "Acoustical signals are collected with two microphones having different sensitivity to background noise. The level of background noise is estimated, and depending on the level of background noise, i) the amplification gain of the signals is modified before the signals are combined to a combined signal, or ii) the way of combining the signals is changed..." |
| Nacre AS, US 6,754,359 B1 ("Ear terminal with microphone for voice pickup") and US 7,039,195 B1 ("Ear terminal") | Occluding earpiece with outer (ambient) mic M1 and inner (ear-canal) mic M2, plus in-canal speaker; the canonical ASM/ECM/ECR architecture. |
| Nacre AS, US 6,728,385 B2 ("Voice detection and discrimination apparatus and method") | Own-voice detection from the relative level of the inner vs. outer canal microphone signals — i.e., generating a voice-activity determination from the two mic signals in an ear terminal. |
| Victorian, US 2005/0058313 A1 ("External ear canal voice detection") | Voice detection at an external/ear-canal microphone of an earpiece. |
| Kruger, US 5,692,059 ("Two active element in-the-ear microphone system") | In-the-ear dual-microphone system capturing the wearer's voice in the canal. |
| Gn Danavox, US 5,259,033 B1 ("Hearing aid having compensation for acoustic feedback") | Feedback/echo compensation in an in-ear hearing device where mic and receiver share a closed canal — squarely the 1d problem. |
| Hitachi, US 5,131,032 ("Echo canceller and communication apparatus employing the same"); Ericsson, US 5,796,819 ("Echo canceller for non-linear circuits"); Ericsson/L M Ericsson, US 6,466,666 B1 ("Method and apparatus for echo estimation and suppression"); US 6,570,985 B1 ("Echo canceler adaptive filter optimization"); Tellabs, US 7,003,097 B2; Intel, US 7,349,353 B2 ("Techniques to reduce echo") | Adaptive-filter echo cancellation — the LMS/NLMS art that limitation 1d and claims 14–16 invoke. |
| Nokia, US 5,963,901 ("Method and device for voice activity detection and a communication device"); Boillot, US 2007/0036342 A1 ("Method and system for operation of a voice activity detector") | Voice-activity detection — limitation 1e. |
| Alves (Cambridge Silicon Radio), US 2008/0037801 A1 ("Dual microphone noise reduction for headset application"); Jaber Associates, US 6,738,482 B1 ("Noise suppression system with dual microphone echo cancellation"); Rast, US 2001/0046304 A1 ("System and method for selective control of acoustic isolation in headsets") | Dual-microphone noise reduction with mic-signal-dependent combination — limitation 1f. |
| GN Resound, US 6,021,207 ("Wireless open ear canal earpiece"); Sony Ericsson, US 7,986,802 B2; Harman, US 7,783,054 | Earpiece systems delivering processed audio to the canal — limitation 1g. |
| Starkey, US 8,229,147 B2 ("Hearing assistance devices with echo cancellation") and US 8,477,973 B2 ("Hearing assistance system with own voice detection") (both post-dating the 2007 priority but confirmatory of the field's trajectory) | Echo cancellation + own-voice detection in a hearing device. |
Key observation for the obviousness case: Pedersen alone maps nearly verbatim onto limitations 1c and 1f — it estimates background noise from two microphones and changes gain/combination based on the estimated noise level. The only structural difference is that Pedersen's two mics are not labeled "ambient" and "ear-canal." Closing that gap is a substitution of a known earpiece architecture (Nacre/Kvaløy/Victorian) into a known noise-reduction scheme (Pedersen) — precisely the "simple substitution of one known element for another" that KSR says is obvious.
3. Primary obviousness ground
Ground A — Pedersen in view of Nacre (US 6,754,359 / US 7,039,195 / US 6,728,385) and an adaptive echo canceller (US 5,259,033 or US 5,796,819) → claims 1, 2–13
| Limitation | Where taught | Reasoning |
|---|---|---|
| 1a ambient mic signal | Nacre '359 (outer mic M1); Victorian; Kvaløy | Conventional |
| 1b ear-canal mic signal with wearer's-voice echo | Nacre '359 (inner mic M2); Kruger '059; Gn Danavox '033 | Occluding earpiece inherently produces a canal echo of the wearer's own voice through bone/tissue conduction and receiver leakage |
| 1c BNL from both signals | Pedersen expressly (two-mic noise-level estimation); Alves '801 | Pedersen discloses the exact computation; substituting Pedersen's mic pair for Nacre's ASM/ECM pair is a form-factor substitution with no change in principle of operation |
| 1d echo reduction in internal signal | Gn Danavox '033; Hitachi '032; Ericsson '819/'666/'985; Intel '353 | Adaptive echo/feedback cancellation was the standard solution to mic-in-canal/speaker-in-canal coupling; Nacre's own family (the '869 App incorporated by Kvaløy) expressly teaches "feedback cancellation" when the speaker shares the meatus with the inner microphone |
| 1e VAL from modified signal + BNL | Nokia '901; Boillot '342; Nacre '385 | Nacre '385 already derives a voice determination from the ASM/ECM level difference; feeding the echo-cancelled internal signal into that detector is an obvious refinement to avoid the detector being fooled by the loopback echo |
| 1f mix ambient with modified internal in a ratio dependent on BNL | Pedersen (gain modification / combination change as a function of estimated noise level); Alves '801 | Directly met |
| 1g send to ECR | Nacre '359 (in-canal speaker); Resound '207 | Conventional |
Ground B — Victorian in view of Kruger and Ericsson, further in view of Nokia → claim 1
Victorian supplies ear-canal voice capture in an earpiece; Kruger supplies the two-active-element in-the-ear mic system; the Ericsson adaptive echo cancellers ('819, '666, '985) supply 1d; Nokia '901 supplies 1e. Pedersen or Alves supplies 1c/1f. This is an alternative articulation of the same combination and is useful if a factfinder were to treat Pedersen's "two microphones" as insufficiently ear-specific.
Ground C (for the LMS-specific dependent claims)
Claims 14–16 add: (14) generating a first set of LMS filter coefficients to model an inner ear-canal transfer function (ECTF); (15) freezing that first set when VAL exceeds a threshold; (16) generating a second coefficient set while the first is frozen and substituting it back when VAL drops below a second threshold.
- The "LMS filter modeling an ECTF/echo path between a loudspeaker and an in-canal microphone" is the generic adaptive-filter echo canceller of US 5,131,032 (Hitachi), US 5,796,819 (Ericsson), US 6,570,985 (Ericsson, "adaptive filter optimization"), and US 7,349,353 (Intel). Every one of these desirably freezes or slows adaptation during double-talk/near-end speech — the classic "double-talk detector" (DTD) problem in echo cancellation, which is nothing more than claim 15 restated in signal-processing terms. That is a textbook design constraint, not an invention.
- The dual-filter (shadow-filter) architecture of claim 16 — one frozen foreground filter plus one continuously adapting background/shadow filter, with substitution when the background filter is "good enough" — is a well-known adaptive-filtering technique for exactly this double-talk scenario. A POSITA reading claim 16 would recognize a standard two-filter echo canceller.
- Thus claims 14–16 are obvious over Pedersen + Nacre + Ericsson '985 (adaptive filter optimization), with claim 16 additionally suggested by the ordinary double-talk handling that Ericsson '985 and Intel '353 describe.
4. Why a POSITA would have combined these references (motivation)
Same field, same problem. All references address audio processing in a device worn at or in the ear (earpiece, hearing aid, ear terminal, headset). KSR holds that "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious." 550 U.S. at 417. Pedersen's noise-dependent gain mixing improves intelligibility in any two-mic wearable device; Nacre's ear terminal is exactly such a device.
Addressing a recognized, articulated problem. The '701 patent's own Background identifies the problem: an earpiece "not properly sealed within the ear canal" lets ambient sound leak in, "create an echo feedback condition with the ear canal microphone and ear canal receiver," producing "an annoying 'howling' sound." The prior art had already named and solved this: Gn Danavox '033 (acoustic feedback compensation in a hearing aid), Ericsson '819 (echo canceller for non-linear circuits), Intel '353 (techniques to reduce echo). Where the problem is known and the solution known, KSR makes the combination obvious. Cf. IPR2022-00324 (Board crediting that "one of ordinary skill would have been aware of the potential for feedback, echo, and ringing" and "would have been able to implement solutions to this issue").
Predictable result / no change in principle of operation. Combining Pedersen's noise-level estimator with Nacre's ASM/ECM pair predicts only what one expects: better SNR and less echo in the transmitted voice. There is no teaching away. Nothing in the references suggests that noise-dependent mixing cannot be used with an in-canal mic.
Market demand. The '701 patent itself frames the invention against consumer demand for full-duplex voice and music in an occluding earpiece. KSR, 550 U.S. at 418 (market demand can supply the reason to combine). The 2003–2007 earpiece market (Kvaløy, Victorian, Nacre, Rast, Kaltenbach) was crowded with exactly this design direction.
Design-incentive / finite-number-of-identified-solutions. Choosing to compute the background-noise estimate from both microphone signals rather than one (limitation 1c) is an obvious design choice: it is more robust, and Pedersen already discloses doing it. Similarly, mixing the echo-suppressed internal signal (limitation 1f) is what falls out of placing an echo canceller (1d) upstream of a mixer.
Reasonable expectation of success. Each sub-component (VAD, LMS echo canceller, noise-level-driven gain mixer, dual-mic earpiece with in-canal receiver) is independently described in the prior art as operational. Combining them requires no new science and no undue experimentation. The Board's own finding in the sibling IPR2022-00324 — that a POSITA had a reasonable expectation of success in combining prior-art earpiece/noise-handling teachings — applies with equal force here.
5. Dependent claims 2–16
| Claims | Additional limitation | Anticipation/obviousness basis |
|---|---|---|
| 2, 3 | generate internal gain / external gain | Pedersen expressly modifies "amplification gain"; Rast '304 controls acoustic isolation via gain |
| 4, 5, 12 | apply internal gain to modified internal signal; apply external gain to ambient signal | Pedersen's gain-before-combination; Alves '801 |
| 6 | VAL identifies probability wearer is speaking | Nokia '901; Nacre '385; Boillot '342 |
| 7 | VAL indicates degree of voicing (periodicity, amplitude) | Boillot '342 (VAD operation); Nacre '385 |
| 8, 10 | internal gain ↑ as BNL ↑ / ↓ | Pedersen's gain-vs-noise mapping (its stated rule is precisely to up-weight the mic less sensitive to noise as noise rises) |
| 9, 11 | external gain ↓ as BNL ↑; ↑ as BNL ↓ | Same Pedersen mapping, opposite direction |
| 13 | VAL from energy-level + frequency-response characteristic | Nokia '901; Boillot '342; standard VAD features |
| 14 | first LMS coefficient set modeling ECTF | Hitachi '032; Ericsson '819; Ericsson '985 |
| 15 | freeze first set when VAL > threshold | Classic double-talk freeze in adaptive echo cancellers |
| 16 | second set adapted while frozen; substitute when VAL < threshold | Shadow-filter / two-filter echo cancellers; Ericsson '985 |
None of claims 2–16 introduces a structural element absent from this art; each is a conventional processing refinement.
6. Secondary considerations (Graham factor 4)
I found no evidence of record of secondary indicia attributable to the '701 patent as a whole:
- Commercial success — the accused products (Samsung Galaxy Buds family) were found to practice, at most, a handful of the asserted Techiya patents, and the '701 patent was never the subject of a nexus-supported success finding. The E.D. Tex. case terminated on unenforceability (unclean hands), not on validity, so no court made an objective-indicia finding for this patent.
- Long-felt but unmet need / failure of others — the prior art (Pedersen, Nacre, Gn Danavox, Ericsson, Intel) shows the need was met before 2007.
- Licensing — the 2024–2025 portfolio-level assignments (STATON TECHIYA → ST Portfolio Holdings → ST Case1Tech → ST Awaretech) are transfers, not arm's-length royalty licenses implying validity.
7. Conclusion
Under Graham/KSR, claims 1–9 and 11–16 of US 11,057,701 are obvious under pre-AIA § 103(a) over the following combinations in the prior art of record:
- Ground A: EP 1,385,324 (Pedersen) in view of Nacre US 6,754,359 / US 7,039,195 / US 6,728,385, further in view of an adaptive echo canceller (Gn Danavox US 5,259,033, or US 5,796,819 / US 6,466,666 / US 6,570,985 / US 7,349,353), and a VAD (US 5,963,901 or US 2007/0036342) — for claim 1 and claims 2–13.
- Ground B: Victorian US 2005/0058313 in view of Kruger US 5,692,059, the Ericsson echo cancellers and Nokia VAD, with Pedersen or Alves US 2008/0037801 for the noise-dependent mixing — alternative articulation of claim 1.
- Ground C: Ericsson US 6,570,985 (adaptive filter optimization) in view of a double-talk freeze/shadow-filter technique — for claims 14–16.
The single material difference over Pedersen — that its two microphones are an ambient and an ear-canal microphone rather than two generic acoustic pickups — is a known substitution supplied by Nacre and Victorian, with no change in principle of operation. The claim-1 step of mixing the echo-suppressed internal signal is a predictable consequence of an obvious arrangement of the recited steps; no reference teaches away.
Actual adjudicated outcome (for context and consistency with the earlier sections). These conclusions align with the Board's FWD in IPR2022-01078 (Nov. 13, 2023), which held all challenged claims (1–9, 11–13) unpatentable. Two record discrepancies remain as previously flagged: (i) claim 10 was not a challenged claim (the petition covered 1–9 and 11–13), notwithstanding the Patexia summary listing claim 10 as "invalidated"; and (ii) the earlier-generated summary said claim 10 depends from claims 1, 3, and 11, whereas the claim text makes claim 10 depend from claim 2. Claim 10 (internal gain up as BNL down) is itself obvious over the same Pedersen mapping, so if it survives the FWD procedurally, it does not survive § 103 on the merits.
Generated 9/29/2026, 9:23:21 PM
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