Trials@uspto.gov
`Tel: 571-272-7822
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`
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`
`
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`Paper 8
`Entered: November 8, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`_______________
`
`Case IPR2017-01308
`Patent 8,254,621 B2
`_______________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-01308
`Patent 8,254,621 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`Freebit AS (“Petitioner”) filed a Petition to institute inter partes
`
`review of claims 1–11 of U.S. Patent No. 8,254,621 B2 (Ex. 1001, “the ’621
`
`patent”). Paper 1 (“Pet.”). Bose Corporation (“Patent Owner”) filed a
`
`Preliminary Response. Paper 6 (“Prelim. Resp.”). Pursuant to our grant of
`
`authorization, Petitioner filed a Reply (Paper 7) to Patent Owner’s
`
`Preliminary Response.1 See Ex. 3001.
`
`Having considered the Petition, the Preliminary Response, the Reply,
`
`and the evidence of record, and applying the standard set forth in 35 U.S.C.
`
`§ 314(a), which requires demonstration of a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one challenged claim; we
`
`deny Petitioner’s request and do not institute an inter partes review of any of
`
`claims 1–11 of the ’621 patent.
`
`B. Related Matters
`
`The parties are unaware of any related judicial proceedings that may
`
`affect or be affected by this proceeding. Pet. 1; Paper 4, 2. However,
`
`Petitioner has requested inter partes review of claims of related patents in
`
`IPR2017-01307 (U.S. Patent No. 8,311,253 B2) and IPR2017-01309 (U.S.
`
`Patent No. 9,036,853 B2), in each of which Petitioner applies the same
`
`references applied in this proceeding. Prelim. Resp. 1; see Paper 4, 2–3.
`
`
`1 See 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a reply to
`the preliminary response in accordance with §§ 42.23 and 42.24(c). Any
`such request must make a showing of good cause.”); see also 37 C.F.R.
`§ 42.5(a) (“The Board may determine a proper course of conduct in a
`proceeding for any situation not specifically covered by this part and may
`enter non-final orders to administer the proceeding.”).
`
`2
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`

`

`IPR2017-01308
`Patent 8,254,621 B2
`
`
`C. Overview of Human Ear Anatomy
`
`Because the challenged claims describe an earpiece with respect to its
`
`engagement of the ear, Patent Owner provides an overview of the anatomy
`
`of the human ear. Although Patent Owner acknowledges that human ears
`
`may differ in size and geometry between individuals and the features
`
`discussed below may be more or less prominent in any particular individual,
`
`it is helpful to understand the basic anatomy of the human ear when
`
`considering the recited device. Prelim. Resp. 5.
`
`A human ear is composed of three main parts: the outer
`ear, the middle ear and the inner ear. The outer ear is made up
`of the cartilaginous pinna (or auricle) which funnels airborne
`sound waves through an opening, the external auditory meatus,
`into the auditory canal. The anterior surface of the cartilaginous
`pinna is irregularly concave and presents numerous projections,
`depressions and other features.
`
`Id. at 3–4.
`
`Figure 1 of the ’621 patent, as annotated by Patent Owner, is
`
`reproduced below.
`
`Id. at 4.
`
`
`
`3
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`IPR2017-01308
`Patent 8,254,621 B2
`
`
`As illustrated, the helix is a curled rim that extends around
`the outer circumference of the rear edge of the pinnae from the
`ear lobe to the base of helix, also known as the crus of helix. The
`anti-helix is a generally ridge-like structure that curves
`generally concentric with and is positioned frontal to the helix
`on the anterior surface of the pinna. Extending from an inferior
`portion of the crus (located at its top) to the anti-helix-antitragus
`notch (at its bottom), the anti-helix includes a curve around the
`upper and rearward portions of a concave cavity, called the
`concha. The tragus is the name given to the cartilaginous and
`typically stiff flap protruding outward in front of part of the
`concha, just forward of the exterior auditory meatus (not shown
`in the figure). The antitragus is a cartilaginous protrusion formed
`at a lower end of the anti-helix opposite the tragus and separated
`from it by a notch. The antitragus is located above the ear lobe
`at the bottom of the pinnae.
`
`Id. at 4–5 (emphasis added); see, e.g., Ex. 1001, 11:25–34 (claim 1
`
`describing the positioning and retaining structure with respect to “the curve
`
`of the anti-helix of the user’s ear at the rear of the concha”)
`
`D. The ’621 Patent
`
`The application, from which the ’621 patent issued, was filed on
`
`March 7, 2012, but claims priority as a continuation from U.S. Patent
`
`Application Serial No. 12/860,531, filed August 20, 2010, which claims
`
`priority from U.S. Provisional Patent Application No. 61/374,107, filed
`
`August 16, 2010. Ex. 1001 at (22), (63), and (60). The ’621 patent
`
`describes an earpiece including an electronics module for wirelessly
`
`receiving audio signals. Views B and E of Figure 2 of the ’621 patent are
`
`reproduced below.
`
`4
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`

`IPR2017-01308
`Patent 8,254,621 B2
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`
`
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`Specifically, views B and E of Figure 2 depict in-ear earpiece 10 that
`
`includes: (1) body 12 with outlet section 15 that fits into the ear canal,
`
`(2) positioning and retaining structure 20; and (3) acoustic driver module 14
`
`that is coupled to electronics module 16. Ex. 1001, 1:20–33, 4:49–53, 5:32–
`
`34. Electronics module 16 wirelessly receives incoming audio signals from
`
`an external source, such as a cellular phone, and may include microphone 11
`
`for transducing sound into outgoing audio signals. Electronics module 16
`
`further may include circuitry for wirelessly receiving radiated electronic
`
`signals and transmitting the audio signals to acoustic driver module 14. Id.
`
`at 2:5–10, 2:62–67, 4:58–65, 10:7–8, Fig. 8.
`
`
`
`Figure 6 of the ’621 patent also is reproduced below.
`
`5
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`IPR2017-01308
`Patent 8,254,621 B2
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`
`
`
`Figure 6 depicts a cross-section of acoustic driver module 14 that is coupled
`
`to electronics module 16 for receiving incoming audio signals. Acoustic
`
`driver module 14 includes first region 102 with rear chamber 112 and front
`
`chamber 114 defined by shells 113 and 115 on either side of acoustic driver
`
`116. Id. at 7:50–54, 10:7–17, Figs. 6, 8. Lower portion 110 may include
`
`nozzle 126 for directing sound waves to outlet section 15 of body 12 of
`
`earpiece 10. Id. at 1:58–65, 7:55–60, 8:35–44.
`
`
`
`Further, views A and F of Figure 3 of the ’621 patent are reproduced
`
`below.
`
`6
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`IPR2017-01308
`Patent 8,254,621 B2
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`
`
`
`Outlet section 15 of body 12 is shaped to fit inside a user’s ear canal
`
`entrance and includes an opening that provides passageway 18 for
`
`conducting acoustic energy from acoustic driver module 14 to the user’s ear
`
`canal. Id. at 1:27–33, 3:2–7, 4:53–55, 5:22–25. Further, positioning and
`
`retaining structure 20, which together with body 12 holds earpiece 10 in
`
`position, includes at least outer leg 22 and inner leg 24 that are attached at an
`
`attachment end to body 12 and attached at joined end to each other. Id. at
`
`1:33–36. Specifically, each of two legs 22, 24 is connected to the body at
`
`one end 26 and 28, respectively. The second ends of each of the legs are
`
`joined at a point 30. Joined outer and inner legs 22, 24 then may extend past
`
`point 30 to positioning and retaining structure extremity 35. Id. at 3:17–20,
`
`3:39–42, 5:32–41. Outer leg 22 is shaped to generally follow the curve of
`
`the anti-helix at the rear of the concha of the user’s ear. Id. at 5:37–39; see
`
`supra Section I.C.
`
`7
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`

`IPR2017-01308
`Patent 8,254,621 B2
`
`
`
`Figure 4 of the ’621 patent is reproduced below.
`
`
`
`Rotating the body 12 clockwise, as shown by Figure 4 by arrow 41, causes
`
`positioning and retaining structure extremity 35 and outer leg 22 to engage
`
`the cymba concha region and to sit beneath anti-helix 42 of the user’s ear.
`
`Ex. 1001, 6:27–37, 6:43–54, 7:4–20. This placement of positioning and
`
`retaining structure 20 is intended to provide stability to in-ear earpiece 10.
`
`Id. at 7:4–20, 7:35–40.
`
`E. Illustrative Claim
`
`Claims 1 and 9 are independent and recite an earpiece having an ear
`
`interface structure and an ear interface, respectively. Id. at 11:12–34 (claim
`
`1), 12:13–36 (claim 9). Claims 2–8 depend directly or indirectly from claim
`
`1, and claims 10 and 11 depend directly or indirectly from claim 9. Id. at
`
`11:35–12:12 (claims 2–8), 12:37–41 (claims 10 and 11). Claim 9 recites
`
`substantially the same limitations of the ear interface of claim 1.
`
`Consequently, claim 1 is illustrative and is reproduced below.
`
`8
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`

`IPR2017-01308
`Patent 8,254,621 B2
`
`
`1. An earpiece comprising:
`
`communication
`including
`electronics module
`an
`electronics coupled to an acoustic driver module housing
`an acoustic driver; and
`
`an ear interface structure coupled to the acoustic driver
`module, comprising:
`
`a body shaped to fit in at least a part of the concha
`of a user's ear,
`
`the body having an outlet section shaped to
`fit at least partly into the ear canal of the user's ear,
`and
`
`a passageway shaped to conduct sound waves
`from the acoustic driver at least the outlet section to
`the ear canal of the user; and
`
`a positioning and retaining structure extending from the
`body and ending in an extremity, the positioning and
`retaining structure being curved to generally follow the
`curve of the anti-helix of the user’s ear at the rear of the
`concha;
`
`wherein, when the ear interface structure is seated in a
`user's ear, the electronics module is held outward from the
`user's head by the acoustic driver module, and the
`positioning and retaining structure is seated beneath the
`antihelix of the user's ear.
`
`Id. at 11:12–34.
`
`F. Applied References and Declaration
`
`Petitioner relies on the following references and declaration in support
`
`of its asserted grounds of unpatentability.
`
`Exhibit No.
`
`Declaration or Reference
`
`1003
`1004
`
`Declaration of Wayne J. Staab, Ph.D.
`U.S. Patent Application Publication No. 2008/0002835
`A1 to Sapiejewski et al., published Jan. 3, 2008
`(“Sapiejewski”)
`
`9
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`IPR2017-01308
`Patent 8,254,621 B2
`
`
`Exhibit No.
`
`1005
`
`1006
`
`Pet. iii, 2–5.
`
`Declaration or Reference
`
`U.S. Patent Application Publication No. 2011/0255729
`A1 to Tan et al., entered the nation stage in the United
`States of America on June 23, 2011, and published in
`English on Oct. 20, 2011 (“Tan”)
`U.S. Patent No. 7,536,008 B2 to Howes et al., issued
`on May 19, 2009 (“Howes”)
`
`G. Asserted Ground of Unpatentability
`
`Petitioner argues that claims 1–11 of the ’621 patent are unpatentable
`
`on the following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`Sapiejewski and Tan
`
`35 U.S.C. § 103(a) 1–6 and 9–11
`
`Sapiejewski, Tan, and Howes
`
`35 U.S.C. § 103(a) 7 and 8
`
`Pet. 5–6.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, “[a] claim in an unexpired patent that will
`
`not expire before a final written decision is issued shall be given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.100(b). In determining the broadest reasonable
`
`construction, we presume that claim terms carry their ordinary and
`
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007). This presumption may be rebutted when a patentee, acting
`
`as a lexicographer, sets forth an alternate definition of a term in the
`
`specification with reasonable clarity, deliberateness, and precision. In re
`
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`10
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`

`IPR2017-01308
`Patent 8,254,621 B2
`
`
`Neither Petitioner nor Patent Owner argues that any term of the
`
`challenged claims requires express construction. See Pet. 21 (“The terms of
`
`claims 1-11 of the ‘621 patent have been accorded their broadest reasonable
`
`interpretation in light of the patent specification, including their plain and
`
`ordinary meaning to the extent such a meaning could be determined by a
`
`skilled artisan.”). Only terms which are in controversy in this proceeding
`
`need to be construed, and then only to the extent necessary to resolve the
`
`controversy. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`
`(Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the
`
`extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes
`
`of this Decision, no claim terms require express construction.
`
`B. Asserted Grounds
`
`1. Overview
`
`Petitioner argues 1–11 of the ’621 patent are rendered obvious over
`
`the combined teachings of Sapiejewski and Tan, alone or in combination
`
`with those of Howes, and relies upon the Declaration of Dr. Staab
`
`(Ex. 1003) to support its arguments. Pet. 4–5, 23–69. Thus, Tan is relied
`
`upon in each of the grounds asserted by Petitioner. Id. at 4–5. Patent
`
`Owner, however, contends that the named inventors conceived of and acted
`
`diligently to actually reduce the recited devices to practice before the
`
`effective date of Tan.2 Prelim Resp. 8–13; Ex. 2001. After reviewing Patent
`
`
`2 In view of U.S. Supreme Court’s grant of the petition of certiorari in Oil
`States Energy Services LLC v. Greene’s Energy Group, LLC (Case No. 16-
`712), Patent Owner requests that we deny the Petition or at least stay this
`
`11
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`IPR2017-01308
`Patent 8,254,621 B2
`
`Owner’s arguments and evidence and Petitioner’s Reply, for the reasons set
`
`forth below, we are not persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing in showing that Tan is prior art to the
`
`challenged claims of the ’621 patent and, consequently, we deny institution
`
`of inter partes review of any challenged claim on either ground.
`
`2. Legal Principles
`
`When the issue of priority concerns the antedating of a
`reference, the applicant is required to demonstrate, with sufficient
`documentation, that the applicant was in possession of the later-
`claimed invention before the effective date of the reference.
`Demonstration of such priority requires documentary support,
`from which factual findings and inferences are drawn, in
`application of the rules and law of conception, reduction to
`practice, and diligence. The purpose is not to determine priority
`of invention—the province of the interference practice—but to
`ascertain whether the applicant was in possession of the claimed
`invention sufficiently to overcome the teachings and effect of an
`earlier publication of otherwise invalidating weight.
`
`In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see
`
`Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004,
`
`1008 (Fed. Cir. 2017) (citing Steed). “The principles are legal, but the
`
`conclusions of law focus on the evidence, for which the Board’s factual
`
`findings are reviewed for support by substantial evidence.” Steed, 802 F.3d
`
`at 1316; see NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir.
`
`2017).
`
`The determination that actual reduction to practice was achieved “is a
`
`question of law, and depends on the evidence that the invention, as
`
`
`proceeding pending disposition of the Oil States review. Prelim. Resp. 30–
`31. In view of our denial of institution, Patent Owner’s request is moot.
`
`12
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`

`IPR2017-01308
`Patent 8,254,621 B2
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`conceived, was shown to work for its intended purpose, before the date of
`
`the adverse reference.”3 Steed, 802 F.3d at 1316.
`
`The burden of showing actual reduction of practice is on the
`party seeking its benefit. In re NTP, Inc., 654 F.3d 1279, 1291
`(Fed. Cir. 2011). To demonstrate an actual reduction to practice,
`the applicant must have: (1) constructed an embodiment or
`performed a process that met all the limitations of the claim and
`(2) determined that the invention would work for its intended
`purpose. In re Omeprazole Patent Litig., 536 F.3d 1361, 1373
`(Fed. Cir. 2008).
`
`Id. at 1317–18; see Z4 Tech., Inc. v. Microsoft Corp., 507 F.3d 1340, 1352
`
`(Fed. Cir. 2007). On the issue of entitlement of a patent claim to an earlier
`
`effective filing date, the recent decision in Dynamic Drinkware LLC v.
`
`National Graphics, Inc., 800 F.3d 1375, 1380-81 (Fed. Cir. 2015), is
`
`instructive regarding the parties’ respective burdens of persuasion and
`
`production. In Dynamic Drinkware, the petitioner, challenging patentability
`
`on the basis of the Raymond reference, had the initial burden of production,
`
`and satisfied that burden by arguing that the prior art Raymond reference
`
`anticipated the challenged claims of the patent. See Dynamic Drinkware,
`
`800 F.3d at 1379. The burden of production then shifted to the patent owner
`
`to argue or produce evidence that the Raymond reference was not prior art
`
`
`3 37 C.F.R. § 42.108(c) provides that “[t]he Board’s decision will take into
`account a patent owner preliminary response where such a response is filed,
`including any testimonial evidence, but a genuine issue of material fact
`created by such testimonial evidence will be viewed in the light most
`favorable to the petitioner solely for purposes of deciding whether to
`institute an inter partes review.” (emphasis added). Because whether Patent
`Owner has antedated a reference is a question of law, not itself an issue of
`material fact, we do not view the ultimate question in the light most
`favorable to Petitioner.
`
`13
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`

`IPR2017-01308
`Patent 8,254,621 B2
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`because the challenged claims are entitled to the benefit of an earlier
`
`effective filing date, prior to the date of the Raymond reference. See id. at
`
`1380. The patent owner produced evidence concerning the date of the
`
`reduction to practice and argued that the challenged patent claims were
`
`entitled to an earlier date, thereby shifting the burden of production back to
`
`the petitioner to argue or produce evidence either that the invention was not
`
`reduced to practice as argued or that Raymond was indeed prior art, by
`
`showing that Raymond was entitled to an effective filing date earlier than
`
`the challenged patent’s earliest date. See id.
`
`The underlying principle from Dynamic Drinkware is that, although
`
`the burden of persuasion to prove unpatentability always rests with the
`
`petitioner, the burden of production for showing that a patent claim is
`
`entitled to an earlier date shifts between the party asserting the entitlement
`
`and the party asserting lack of entitlement. See Tech. Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1327–29 (Fed. Cir. 2008). Thus, Patent
`
`Owner bears the burden of production that the inventors actually reduced the
`
`recited devices to practice prior to the effective date of Tan. If successful,
`
`the burden of production that the inventors failed to actually reduce to
`
`practice, or that Tan is entitled to an earlier date shifts to Petitioner.4
`
`
`4 Although we instructed Petitioner not to introduce new evidence with its
`Reply, Petitioner was free to argue based on evidence produced with its
`Petition – its case in chief – or to argue based on alleged deficiencies in
`Patent Owner’s argument or evidence, as it did here. Further, if Petitioner
`was in possession of new evidence on the question of actual reduction to
`practice or the earliest effective date of Tan, it was free to request that we
`admit it. Except for noting the lack of opportunity to cross-examine
`Mr. Annunziato, Petitioner does not challenge our limitation on the
`introduction of new evidence with its Reply. See Reply 1–2.
`
`14
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`IPR2017-01308
`Patent 8,254,621 B2
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`
`
`Although the Manual of Patent Examining Procedure (“MPEP”) is not
`
`binding on our antedating determination in this preliminary proceeding, we
`
`find the following priority time chart from the MPEP enlightening. Initially,
`
`the MPEP explains that:
`
`For purposes of analysis under 37 CFR 1.131, the conception and
`reduction to practice of the reference to be antedated are both
`considered to be on the effective filing date of domestic patent or
`foreign patent or the date of printed publication.
`
`In the charts, C = conception, R = reduction to practice (either
`actual or constructive), Ra = actual reduction to practice, Rc =
`constructive reduction to practice, and TD = commencement of
`diligence.
`
`
`
`[Example 3 includes an image of two timelines labeled A and B.
`Timeline A depicts conception “C” followed by actual reduction
`to practice “Ra” and constructive reduction to practice “Rc.”
`Timeline B depicts conception “C” occurring after conception
`“C” in Timeline A and reduction to practice “R” occurring
`between actual reduction to practice “Ra” and constructive
`reduction to practice “Rc” in Timeline A.]
`
`A is awarded priority in an interference in the absence of
`abandonment, suppression, or concealment from Ra to Rc,
`because A conceived the invention before B, actually reduced the
`invention to practice before B reduced the invention to practice,
`and did not abandon, suppress, or conceal the invention after
`
`15
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`IPR2017-01308
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`to practice and before
`invention
`the
`actually reducing
`constructively reducing the invention to practice.
`
`A antedates B as a reference in the context of a declaration or
`affidavit filed under 37 CFR 1.131 because A conceived the
`invention before B and actually reduced the invention to practice
`before B reduced the invention to practice.
`
`MPEP 2138.01(II) (example 3, emphases added); see Sun Studs, Inc. v. ATA
`
`Equip. Leasing, Inc., 872 F.2d 978, 983 (Fed. Cir. 1989) (“When patents are
`
`not in interference, the effective date of a reference United States Patent as
`
`prior art is its filing date in the United States, as stated in § 102(e), not the
`
`date of conception or actual reduction to practice of the invention claimed or
`
`the subject matter disclosed in the reference patent.”).
`
`
`
`3. Tan’s Earliest Effective Date
`
`Petitioner asserts that Tan is prior art under 35 U.S.C. § 102(a).5
`
`Pet. 5. Nevertheless, Petitioner does not explain what facts it bases this
`
`assertion on or, more importantly, what date it asserts for this prior art status.
`
`We note that Tan claims priority to a German patent application filed
`
`September 15, 2008 (Ex. 1005 at (3)) and published in German as German
`
`Patent Application Publication DE 10 2008 047 520 A1, on April 15, 2010
`
`(Ex. 3001), and to a European PCT application filed September 15, 2009
`
`(Ex. 1005 at (22)) and published in German as International Patent
`
`Application Publication No. WO/2010/031775, on March 25, 2010
`
`(Ex. 3002).
`
`
`5 Under 35 U.S.C. § 102(a), “[a] person shall be entitled to a patent unless—
`(1) the claimed invention was patented, described in a printed publication,
`or in public use, on sale, or otherwise available to the public before the
`effective filing date of the claimed invention . . . .” (Emphasis added.)
`
`16
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`IPR2017-01308
`Patent 8,254,621 B2
`
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`Because the European PCT application was not published in English,
`
`Tan’s earliest claim to priority under 35 U.S.C. § 102(e) is June 23, 2011,
`
`the date on which the requirements of 35 U.S.C. § 371(c)(1), (2), and (4)
`
`were completed, i.e., its earliest effective U.S. filing date. Prelim. Resp. 9;
`
`see Ex. 1005 at (86); SunStuds, 872 F.2d at 983. After entry into the
`
`national stage in the United States, Tan again was published, this time in
`
`English, as U.S. Patent Application Publication No. 2011/0255729 A1 on
`
`October 20, 2011. Ex. 1005 at (43). Consequently, Tan appears to be prior
`
`art under 35 U.S.C. § 102(a) at least as early as its international publication
`
`date in German of March 25, 2010.6
`
`Petitioner argues, and Patent Owner does not dispute, that the ’621
`
`patent has an earliest effective filing date of August 16, 2010. Pet. 10–11;
`
`see Ex. 1001 at (60).
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`4. Analysis of Assertion of Actual Reduction to Practice
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`a. Conception and Diligence
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`Patent Owner does not assert formally that the persons named as
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`inventors on the ’621 patent (Ex. 1001 at (75)) are the actual inventors of the
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`devices recited in the challenged claims. Nor does Patent Owner assert that
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`the devices were conceived on a particular date. Prelim. Resp. 10–11.
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`Petitioner does not dispute the inventorship listed on the face of the ’621
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`patent. Moreover, Petitioner does not dispute that the actions discussed in
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`Patent Owner’s declarant’s, Mr. Annunziato’s, declaration or the supporting
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`6 We emphasize that this date is based on our analysis, rather than on
`Petitioner’s argument. See Pet. 5; see Reply generally.
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`exhibits inure to the benefit of the named inventors. See NFC Tech., 871
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`F.3d at 1374.
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`A patent owner may antedate a reference by either showing actual
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`reduction to practice prior to the effective date of the adverse reference or
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`conception prior to the effective date of the adverse reference plus diligence
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`to actual or constructive reduction to practice by the patent owner. Steed,
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`802 F.3d at 1316–17; see MPEP 2138.01(II) (example 3). Thus, Patent
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`Owner does not attempt here – nor was it required – to show conception
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`coupled with diligence, but only actual reduction to practice prior to the
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`effective date of Tan.7
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`b. Actual Reduction to Practice
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`As noted above, [t]o demonstrate an actual reduction to practice, the
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`applicant must have: (1) constructed an embodiment or performed a process
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`that met all the limitations of the claim and (2) determined that the invention
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`would work for its intended purpose.” Steed, 802 F.3d at 1318.
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`Mr. Annunziato testifies that, in May of 2008, about one year prior to the
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`alleged, actual reduction to practice, his employer, Patent Owner, asked him
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`to serve as “Product Architect and System Engineer to develop a new
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`product, which we nicknamed ‘Vincent.’” Ex. 2001 ¶ 6. Mr. Annunziato
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`further explains that Product “Vincent” was “an in-ear earpiece that that [sic]
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`7 In NFC Technology, LLC v. Matal, the patent owner argued that “the
`Board erred by evaluating the evidence using interference standards for
`determining priority of invention, rather than the 37 C.F.R. § 1.131 standard
`for antedating a reference.” 871 F.3d at 1371. Without deciding whether
`the Board erred in addressing the inurement issue or applying interference
`law, our reviewing court focused narrowly on the question of the sufficiency
`of corroboration. Id.
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`would orient properly in a human ear, that would be stable and not move
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`around as a user was using the earpiece, and that would be comfortable for a
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`user.” Id. Moreover, this product would combine an ear interface with
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`appropriate acoustics and electronics to make the in-ear earpiece function.
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`Id. Mr. Annunziato also explains that the work on the acoustics and
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`electronics occurred “in parallel with the design of the ear-interface, and
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`additional work was required to make the ear-interface work with the
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`electronic and acoustic technology.” Id.
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`Patent Owner contends that Mr. Annunziato’s “team put in hundreds
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`(if not thousands) of hours trying out and testing different designs for ear-
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`interfaces” corresponding to the diagrams of the ’621 patent. Id. During
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`this development process, per standard Bose practice, Mr. Annunziato and
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`his team constructed a number of “works-like” prototypes of the ear piece
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`design. Id. ¶¶ 8, 9. Mr. Annunziato testifies that a “works-like” prototype
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`“is the final design of the core functional aspects of the new product,
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`although (for marketing and other reasons) various aesthetics and other
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`aspects of the design may nevertheless be slightly adjusted as the product is
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`taken to market.” Id. ¶ 9. Mr. Annunziato further testifies how the
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`prototypes were fabricated (id. ¶¶ 13, 19) and that, at least as early as May
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`26, 2009, he and his team created five works-like prototypes of an earpiece
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`implementing the “Vincent” ear-interface design (id. ¶¶ 9, 23; see id. Ex. A).
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`Thus, in order for us to conclude that Mr. Annunziato and his team actually
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`reduced the devices recited in the challenged claims to practice by May 26,
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`2009, we must find that (1) the works-like prototypes met all of the
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`limitations of the devices recited in the challenged claims and (2) the works-
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`like prototypes worked for those devices’ intended purpose.
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`i. Works-Like Prototypes Met All Limitations of the
`Challenged Claims
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`Patent Owner contends that, at least as early as May 26, 2009,
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`Mr. Annunziato and his team created five “works-like” prototypes of an
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`earpiece implementing the “Vincent” ear-interface design. Prelim. Resp. 11
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`(citing Ex. 2001 ¶¶ 9, 23). Patent Owner further contends that these works-
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`like prototypes embodied all of the limitations of the devices recited in the
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`challenged claims. See id. (citing Ex. 2001 ¶¶ 23–24).
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`
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`Figure 1 of the ’621 patent and a depiction of one of the works-like
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`prototypes are compared below.
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`
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`Id. Each of Figure 1 and the depiction shows a housing including an
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`electronics module, an acoustic driver module, and an ear interface. Based
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`on this comparison, Patent Owner contends that the works-like prototypes
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`had a housing including an electronics module, an acoustic driver module,
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`and an ear interface, arranged as recited in independent claim 1. Id.
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`Similarly, Figure 3 of the ’621 patent and another depiction of one of the
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`works-like prototypes are compared below.
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`20
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`Id. at 12. Again, as shown in the computer-aided design (CAD) drawing, the
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`ear-interface of the works-like prototype had a body having an outlet
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`section, a passageway shaped to conduct sound waves, and a positioning and
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`retaining structure, similar to that recited in claim 1 and depicted in Figure 3
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`of the ’621 patent. Id. While we may draw inferences from these
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`comparisons, Patent Owner’s arguments comparing embodiments of the
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`recited devices to the works-like prototypes are not sufficient to show that
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`the works-like prototypes meet all of the limitations of the challenged
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`claims. See Steed, 802 F.3d at 1316.
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`
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`Mr. Annunziato, however, provides detailed claim charts mapping the
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`limitations of each of the challenged claims onto the prototypes. Id. at 14–
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`45. In particular, Mr. Annunziato shows that the three basic components of
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`the earpiece of the challenged independent claims, namely an electronics
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`module, an acoustics driver module housing an acoustics driver, and an ear
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`interface structure are taught by the prototypes. Ex. 1001, 11:13–17
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`(claim 1), 12:13–16 (claim 9). In a depiction of the prototype reproduced in
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`the claim charts, Mr. Annunziato identifies each of these limitations. The
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`depiction is reproduced below.
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`Ex. 2001, 18 (reproduced from Ex. 2001, Ex. D, 6). In this figure,
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`Mr. Annunziato has labeled each of the basic limitations of the recited
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`
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`device.
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`
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`Mr. Annunziato further testifies that the ear interface structure further
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`comprises a body shaped to fit in at least a part of the concha of the user’s
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`ear. Id. at 19–20; see supra Section I.C. A CAD depiction of the body fitted
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`into a user’s ear is reproduced below.
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`22
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`Id. at 20 (reproduced from Ex. 2001, Ex. E, 13–14). This depiction shows
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`not only the body fit into the concha of the user’s ear, but also depicts “a
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`positioning and retaining structure extending from the body and ending in an
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`extremity,” as recited in the independent claims. Id. at 25; see Ex. 1001,
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`11:18–19, 25–26 (claim 1), 12:19–20, 26–27 (claim 9). Moreover, the
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`depiction shows “the positioning and retaining structure being