`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`
`__________________
`
`Case IPR2017-______
`
`U.S. Patent No. 9,036,853
`
`__________________
`
`
`PETITION FOR INTER PARTES REVIEW OF
`CLAIMS 1-3, 5, 6, 8-11, and 13 OF U.S. PATENT NO. 9,036,853
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
`
`
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`TABLE OF CONTENTS
`
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`I. Mandatory Notices—Rule 42.8(a)(1) ................................................ 1
`II. Certification of Grounds for Standing—Rule 42.104(a)................... 2
`III. Overview of Challenge and Relief Requested—Rule
`42.104(b) ............................................................................................. 2
`A. Prior Art Patents and Printed Publications ............................ 2
`B. Grounds for Challenge ............................................................. 4
`IV. Overview of the ’853 Patent and the Prior Art ................................ 5
`A. The ’853 Patent ......................................................................... 5
`B. The Prosecution History of the ’853 Patent ............................ 9
`C.
`Summary of Select Prior Art ................................................. 10
`1.
`Sapiejewski .................................................................... 10
`2.
`Tan ................................................................................. 13
`3. Howes ............................................................................. 15
`V. Claim Construction .......................................................................... 18
`VI. Level of Ordinary Skill in the Art ................................................... 18
`VII. Identification of How the Challenged Claims Are
`Unpatentable ................................................................................... 20
`A. Ground 1: Claims 1-3, 5, 6, 8-11, and 13 are Rendered
`Obvious by Sapiejewski and Tan ........................................... 20
`B. Ground 2: Claims 1-3, 5, 6, and 8-11 are Rendered
`Obvious by Sapiejewski and Howes ...................................... 66
`VIII. CONCLUSION ................................................................................ 95
`CERTIFICATE OF SERVICE .................................................................. 96
`CERTIFICATE OF COMPLIANCE
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`TABLE OF AUTHORITIES
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`Cases
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`In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995 ................................... 18
`KSR Int’l co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................. passim
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`Statutes
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`35 U.S.C.§ 102 ......................................................................................... passim
`35 U.S.C. §§ 103 ...................................................................................... passim
`35 U.S.C. § 314 ................................................................................................. 5
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`
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`Rules
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`37 C.F.R. § 42.8 ................................................................................................ 1
`37 C.F.R. § 42.100 .......................................................................................... 18
`37 C.F.R. § 42.104 ...................................................................................... 2, 20
`37 C.F.R. § 42.15 .............................................................................................. 2
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
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`EXHIBIT LIST
`U.S. Patent No. 9,036,853 to Silvestri et al.
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`File History for U.S. Patent No. 9,036,853 to Silvestri et
`al.
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`Declaration of Dr. Wayne J. Staab, Ph.D.
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`U.S. Patent Pub. No. 2008/0002835 to Sapiejewski et al.
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`U.S. Patent Pub. No. 2011/0255729 to Tan et al.
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`U.S. Patent No. 7,536,008 to Howes et al.
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`RESERVED
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`RESERVED
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`2007 Bose® in-ear headphones Owner’s Guide
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`U.S. Patent No. D628,990
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`U.S. Patent No. D630,621
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`U.S. Patent No. D634,306
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`iii
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
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`I.
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`Mandatory Notices—Rule 42.8(a)(1)
`Freebit AS (“Freebit” or “Petitioner”) provides notice of the
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`following:
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`Real Party-In-Interest: Petitioner certifies that Freebit AS is
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`the real party-in-interest.
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`Related Matters: Petitioner is not aware of any pending
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`matters that would be affected by this proceeding.
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`Lead counsel: W. Todd Baker (Reg. No. 45,265)
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`Back-up counsel: Tia D. Fenton (Reg. No. 55,170) and
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`John F. Presper (Reg. No. 53,483)
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`Service Information: Petitioner consents to email service.
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`Email:
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`cpdocketbaker@oblon.com
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`cpdocketfenton@oblon.com
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`cpdocketpresper@oblon.com
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`Post: Oblon LLP
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`1940 Duke Street
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`Alexandria, VA 22314
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`Telephone: (703) 412-6383
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`Fax: (703) 413-2220
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`The Office is authorized to charge the fee required by 37 C.F.R.
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`§ 42.15(a) for this Petition to Deposit Account No. 15-0030. Any
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`additional fees that might be due are also authorized.
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`II. Certification of Grounds for Standing—Rule 42.104(a)
`Petitioner certifies that the ’853 patent is available for inter
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`partes review and that Petitioner is not barred or estopped from
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`requesting review on the grounds identified in this Petition.
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`III. Overview of Challenge and Relief Requested—Rule
`42.104(b)
`Petitioner requests inter partes review and cancelation of claims
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`1-3, 5, 6, 8-11, and 13 of the ’853 patent. The ’853 patent is subject to
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`pre-AIA 35 U.S.C. §§ 102 and 103.
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`A. Prior Art Patents and Printed Publications
`Review of the ’853 patent is requested in view of the following:
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`Ex. 1004 – U.S. Patent Pub. No. 2008/0002835 (“Sapiejewski”)
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`published on January 3, 2008 and is available as prior art under
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`§102(b). Notably, Sapiejewski was never disclosed by Patent Owner
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`during prosecution of the’853 patent. This is surprising since
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`Sapiejewski was assigned to Bose Corporation at the pertinent time
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`and is a cornerstone of the Bose portfolio. The examiner would have
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`wanted to know that Sapiejewski was available as 102(b) art against
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`the ’853 patent, has overlapping inventorship with the ’853 patent,
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`and substantively is closely related to the ’853 patent. See, for
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`example, FIGs. 3A and 8A-8D of Sapiejewski in comparison to FIGs. 6
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`and 7A-7D of the ’853 patent, which are nearly identical and relate to
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`the claimed subject matter in both references:
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`Sapiejewski
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`The ’853 patent
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
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`Sapiejewski
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`The ’853 Patent
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`Ex. 1005 – U.S. Patent Pub. No. 2011/0255729 (“Tan”) is a
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`national phase entry of PCT App. No. PCT/EP2009/061979, filed
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`September 15, 2009. Tan is available as prior art under §102(a).
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`Ex. 1006 – U.S. Patent No. 7,536,008 (“Howes”) issued on
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`May 19, 2009 and is available as prior art under §102(b).
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`B. Grounds for Challenge
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`Petitioner requests cancelation of the challenged claims under
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`the following statutory grounds:
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`4
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`Claims 1-3, 5, 6, 8-11, and 13 are unpatentable under 35
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`1.
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`U.S.C. § 103 as rendered obvious by Sapiejewski in view of Tan.
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`2.
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`Claims 1-3, 5, 6, and 8-11 are unpatentable under 35
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`U.S.C. § 103 as rendered obvious by Sapiejewski in view of Howes.
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`Section VII demonstrates that there is a reasonable likelihood
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`that Petitioner will prevail for each of the statutory grounds. See 35
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`U.S.C. § 314(a). Support for each ground is also provided in the
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`Declaration of Dr. Wayne J. Staab (Ex. 1003).
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`IV. Overview of the ’853 Patent and the Prior Art
`A.
` The ’853 Patent
`The ’853 patent describes an in-ear earpiece 10 including a
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`body 12 with an outlet section 15 dimensioned and arranged to fit
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`inside a user’s ear canal entrance, a passageway 18 for conducting the
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`acoustic energy from the audio module to an opening in the outlet
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`section, and a positioning and retaining structure 20. An acoustic
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`driver module 14, a cross-section of which is shown below in FIG. 6,
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`may be coupled to an electronics module 16 for receiving incoming
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`audio signals from an external source. Further, the body 12 may have
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`5
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`an outlet section 15, with a nozzle 126 arranged therein, that fits into
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`the ear canal. (Ex. 1001, 1:28-36, 4:51-55, FIG. 2 VIEW B, FIG. 6).
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`FIG. 6 depicts a cross-section of the acoustic driver module 14
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`shown in FIG. 2 VIEW B. The acoustic driver module includes a first
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`region 102 with a rear chamber 112, and a front chamber 114 defined
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`by shells 113 and 115 on either side of acoustic driver 116. (Id. at
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`7:52-56). A lower portion 110 of the body 12 includes a nozzle 126 that
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`extends from front chamber 114 into an entrance of the ear canal,
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`with an optional acoustic resistance element 118 at an end thereof.
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`Front chamber 114 may also include a pressure equalization (PEQ)
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`hole 120 for relieving pressure that could build up within the ear
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`canal when the earphone is inserted into the ear. (Id. at 7:57-8:2).
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`Further, the rear chamber 112, which may include a port or mass
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`port 122 and a resistive port 124, is sealed around the back side of the
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`acoustic driver 116 by the shell 113. (Id. at 8:2-21).
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`As shown below, the positioning and retaining structure 20,
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`which together with the body 12 holds the earpiece in position,
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`includes at least an outer leg 22 and an inner leg 24. (Id. at FIG. 3
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`VIEW A). Other embodiments may have an additional leg 23, as
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`shown by the dotted lines. (Id. at 5:28-38). The outer leg 22 is shaped
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`to generally follow the curve of the antihelix at the rear of the concha.
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`(Id. at 5:39-41). VIEW F of FIG. 3 further shows that each of the two
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`legs 22, 24 is connected to the body at ends 26 and 28, respectively.
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`The second ends of each of the legs are joined at a point 30. The
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`joined outer and inner legs 22, 24 may then extend past point 30 to a
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`positioning and retaining structure extremity 35. (Id. at 5:38-43).
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`Rotating the body 12 clockwise, as shown by arrow 41 below,
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`causes the extremity 35 and outer leg 22 to engage the cymba concha
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`region and sit beneath the antihelix 42. (Id. at 6:45-47).
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
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`B. The Prosecution History of the ’853 Patent
`The ’853 patent issued from Application No. 14/565,030 (“the
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`’030 application”) filed on December 9, 2014, with original claims 1-
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`24. (Ex. 1002 at 175-179). The ’030 application is a continuation of
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`U.S. Patent No. 8,929,582, which is a continuation of U.S. Patent No.
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`8,989,426, which is a continuation of U.S. Patent No. 8,249,287. The
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`’030 application also claims priority to provisional Application No.
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`61/374,107 filed on August 16, 2010.
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`A copy of the ’030 application file history is attached as Exhibit
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`1002. The prosecution history was brief. First, a Track One request
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`for prioritized examination filed by Patent Owner on December 9,
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`2014 with the originally filed ’030 application. (Id. at 149). The
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`Examiner then issued an Election of Species Requirement on
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`February 6, 2015, which Patent Owner responded to by electing
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`claims 6-12 and 18-24 (species II). (Id. at 102-116). Next, the
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`Examiner issued a non-final Office Action on March 2, 2015, with two
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`obviousness-type double-patenting rejections over claims in U.S.
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`Patent Nos. 8,249,287 and 8,929,582, which were overcome via
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`terminal disclaimer. (Id. at 21-44).
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`In turn, the Examiner issued a Notice of Allowance on March
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`31, 2015, without any reasons for allowance. (Id. at 10-14).
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`C. Summary of Select Prior Art
`All elements of claims 1-3, 5, 6, 8-11, and 13 of the ’853 patent
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`were known in the prior art and used for the same purpose disclosed
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`by the ’853 patent specification. Selected references are briefly
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`discussed below.
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`Sapiejewski
`1.
`Sapiejewski describes an in-ear earphone 100 having a first
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`region 102 positioned within the concha 14 of ear 10 and a second
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`region 104 designed to be located in the ear canal 12. (Ex. 1004, ¶
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`10
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`[0024], FIGs. 2A, 2B). A cushion 106 joins the acoustic components of
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`the earphone to the physical structure of a wearer’s ear. (Id.)
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`A side-by-side comparison of FIG. 3A of Sapiejewski and FIG. 6
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`of the ’853 patent reveals that both earphones are nearly identical. In
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`fact, the only notable differences, highlighted below, are the addition
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`Pettition for Inteer Partes Revview
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`ent n of elemesignationin the desa change iejewski, a4 in Sapieof elemment 104
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`106, aand the reemoval off additionnal eleme
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`nts 702 aand 704 inn the ’8533
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`patennt. Sapiejeewski refeferences aa second rregion of tthe earphhone 100
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`elemeent 104 annd describbes it as bbeing “loccated in tthe ear caanal 12.”
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`(Id. att ¶ [0024]]). Additionally, Saapiejewskki describbes elemeent 106 ass a
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`“cushion” whicch joins thhe acousttic componnents of tthe earphhone to thhe
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`physi
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`cal structture of a wwearer’s ear (id.).
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`whereas
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`the ’853
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`patent
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`12.” (Ex.
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`1001, 9:226-28).
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`The ’8553 Patennt
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`designnates thaat same sttructure aas “body
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
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`2. Tan
`Tan describes an in-ear earphone that can be comfortably
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`secured in almost any ear by means of an expansion adaptor or
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`expansion unit: “an expansion unit can be fixed to the housing of the
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`in-ear earphone, thereby permitting a secure snug fit in the ear of the
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`user, in particular at the crus inferius anthelicis, the anti-helix and
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`the concha.” (Ex. 1005, ¶¶ [0016], [0025]). As shown below in Fig. 1A,
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`the expansion adaptor has a ring 10 with a hole 11 and an expansion
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`unit 20 which secures the adaptor in the ear. (Id. at ¶ [0022]).
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`The expansion unit 20 has four legs 22-25, although more or
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`fewer legs may be implemented. (Id. at ¶ [0023]). The expansion unit
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`13
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`also includes an upper portion 26 with first and second ends 28 and
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`29, respectively, with the first end 28 connected to the first leg 22 and
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`the second end 29 connected to the fourth leg 25. (Id. at ¶¶ [0022],
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`[0027]). A curvature 27 of the upper portion 26 is selected such that it
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`fits securely into the crus inferius anthelicis, antihelix, and/or concha
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`of the ear. (Id. at ¶ [0012]). For example, “the second end 29 can bear
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`against the crus inferius anthelicis and the first end 28 can lie in the
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`concha of the user.” (Id. at ¶ [0028]). If the curvature of the antihelix
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`and the concha is great, then the curvature of upper portion 26 can be
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`adapted to such curvature by bending the flexible legs 22-25. (Id.)
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`FIGs. 2C and 2E of Tan below show the expansion adaptor as “a
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`part of the housing [50] of an in-ear earphone, for example, a
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`constituent part of the in-ear earphone. The housing 50 of the in-ear
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`earphone is connected to the expansion adaptor.” (Id. at ¶ [0027]). In
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`particular, the expansion adaptor uses ring 10 to fix expansion unit
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`20 to housing 50 of the earphone. (Id. at ¶ [0013]).
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`U.S. Patent No. 9,036,853
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`3. Howes
`Howes describes an ear mount for a headset that includes a
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`mounting portion with a loop of resilient material sized to operably
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`engage the antihelix of the wearer’s ear for comfortably and
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`detachably securing the headset in place. (Ex. 1006, Abstract, 1:24-
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`27). As illustrated in FIG. 1 of Howes below, the personal audio set 10
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`is a headset 10" with a frame 14 and a microphone 16 extending
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`longitudinally from an ear bud 18. The ear bud 18 includes a driver
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`and an audio transducer, or speaker 20. (Id. at 3:57-62). Further, a
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`compressible mounting portion 12 extends from the frame 14 and is
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`operably secured to the ear bud 18. (Id. at 4:3-5).
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
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`FIG. 2 below shows that ear bud 18 is sized to be received in the
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`wearer’s ear 92 such that speaker 20 is positioned over the ear canal
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`94. (Id. at 3:65-67).
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`As shown in FIG. 3 below, the mounting portion 12 includes an
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`ear bud mounting portion 21 and an antihelix mounting portion 23.
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`The mounting portion 12 is a loop of resilient material 26 that
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`U.S. Patent No. 9,036,853
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`compresses substantially in the direction of arrow 30 to conform with
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`the particular shape of the antihelix 90 of the wearer’s ear 92,
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`functioning essentially as a compression spring. (Id. at 4:30-37). The
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`mounting portion 12 assists in securing the personal audio set in the
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`ear and evenly distributing the pressure along a large portion of the
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`antihelix 90 and tragus 96. (Id. at 4:61-64). The ear bud mounting
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`portion 21 includes an outer portion 27 which contacts and cushions
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`the ear. with the anterior portion of the ear bud mounting portion 27
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`fitting behind the tragus, and thus assisting in the security of the
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`headset in the ear. In particular, the ear bud mounting portion
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`encircles the speaker 20 and engages the user’s concha 97 around the
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`ear canal. (Id. at 4:13-19). The antihelix mounting portion 23 extends
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`from the ear bud mounting portion 21 and engages the wearer’s
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`antihelix 90. (Id. at 4:30-32).
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`According to Howes, although personal audio sets, including in-ear
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`ear plugs or buds, were prevalent at the time, its invention solved a
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`need for optimal ear bud-type mounts that are comfortable and secure
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`in ears of different sizes, because it compresses to conform with the
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`user’s anti-helix. (Id. at 1:24-2:43).
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`V. Claim Construction
`This Petition shows that the challenged claims are
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`unpatentable when given their broadest reasonable interpretation in
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`light of the specification. See Rule 42.100(b). For purposes of this
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`proceeding only, Petitioner submits that no specific constructions are
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`necessary. All claim terms have been accorded their broadest
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`reasonable interpretation in light of the patent specification,
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`including their plain and ordinary meaning to the extent such a
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`meaning could be determined by a skilled artisan.
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`VI. Level of Ordinary Skill in the Art
`The level of ordinary skill in the art is evidenced by, among
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`other things, the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579
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`(Fed. Cir. 1995) (Board did not err in adopting the approach that level
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`of skill in the art was best determined by references of record).
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`18
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`Before the earliest priority date of the ’253 patent, in-ear
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`earphones or personal audio-sets usable with MP3 players or other
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`media players were gaining popularity. (Ex. 1003, ¶ 22). Examples of
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`such earphones included those mounted to a wearer using a
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`headband positioned over or behind the user’s head to hold an
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`earphone portion over one or both ears, headphones clipped around a
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`wearer’s ear, or ear plug-type mounts (earbud-type mounts) either
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`physically wedged into the wearer’s ear canal or hooked on the
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`intertragal notch of the ear. (Id.) Companies like Bose and Freebit
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`were developing such in-ear devices. For example, Bose offered the
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`Sapiejewski earphone as early as 2007. (See Ex. 1009; Ex. 1003 at ¶ 23). Freebit
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`likewise had filed applications for design patents directed to earpieces utilizing
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`the concha to securely fit the wearer’s ear prior to August 2010. (See Exs. 1010-
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`1012; Ex. 1003 at ¶ 23). However, in-ear earphones at the time showed a
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`tendency to fall out of the user’s concha and were deemed
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`uncomfortable since the entire weight of the assembly was supported
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`by a small portion of the ear. (Ex. 1003 at ¶ 22).
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`Accordingly, as a solution to these problems, the prior art cited
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`in the Petition demonstrates that companies such as Sennheiser
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`Electronic GmbH and Logitech Europe S.A. were already seeking
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`patent protection for in-ear earpieces or earphones having additional
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`positioning and retaining structures for engaging or conforming to
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`anatomical structures in the user’s outer ear, such as the antihelix, in
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`order to more comfortably and stably secure the earphones in the ear
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`of the user. (Ex. 1005, ¶¶ [0012], [0016], FIGs. 1A, 2B, 2C, 2E;
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`Ex. 1006, Abstract, 1:24-27, 4:30-37, 4:52-64, FIGs. 1-3; Ex. 1003,
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`¶ 22).
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`As demonstrated by the prior art discussed below, the claims of
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`the ’853 patent simply recite a combination of familiar prior art
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`elements that function predictably in their known manner.
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`VII. Identification of How the Challenged Claims Are
`Unpatentable
`Pursuant to Rule 42.104(b), this section demonstrates that the
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`challenged claims are unpatentable. Certain claim elements are
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`annotated [a], [b], etc. for ease of reference.
`
`A. Ground 1: Claims 1-3, 5, 6, 8-11, and 13 are
`Rendered Obvious by Sapiejewski and Tan
`Aside from the earphone having some type of retaining member
`
`used for stabilizing the earphone in a user’s outer ear, which was
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`Petition for Inter Partes Review
`well-known in the art at the time of filing of the ’853 patent, the
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`earphone disclosed in Sapiejewski is nearly identical to that claimed
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`in the ’853 patent. (See Exs. 1005; 1006; Ex. 1003, ¶¶ 63-64, 73). And
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`in issuing the ‘853 patent, the Examiner did not have the benefit of
`
`considering Sapiejewski.
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`Sapiejewski describes an in-ear earphone 100 having a first
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`region 102 positioned within the concha 14 of a wearer’s ear 10 and a
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`second region 104 designed to be located in the ear canal 12. (Ex.
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`1004, ¶ [0024], FIGs. 2A, 2B). A cushion 106 or body portion joins the
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`acoustic components of the earphone 100 to the physical structure of
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`a wearer’s ear. (Id.)
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`Tan teaches that an in-ear earphone can be comfortably secured
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`or retained in almost any ear by means of an expansion adaptor
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`having an expansion unit: “[A]n expansion unit can be fixed to the
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`housing of the in-ear earphone, thereby permitting a secure snug fit
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`in the ear of the user, in particular at the crus inferius anthelicis, the
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`anti-helix and the concha.” (Id. at ¶¶ [0016], [0025]). Tan highlights
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`several prior art earphones that “are often not suitable for being worn
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`in sport or when involving vigorous activities as those in-ear
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`earphones have a tendency to fall out of the concha of the ear.” (Id. at
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`¶ [0002]). Accordingly, one object of Tan is to provide “an in-ear
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`earphone which can be used when playing sport[s] or in other
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`vigorous or lively activities.” (Id. at ¶ [0010]). Tan achieves this need
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`for stability by fixing or connecting an expansion adaptor with a
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`retaining member to the body of the in-ear earphone.
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`It would have been obvious to a person of ordinary skill in the
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`art at the time of filing of the ’853 patent (“POSITA”) to modify
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`Sapiejewski to include the improvement of Tan, connecting a
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`retaining member like an expansion adaptor having an expansion
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`unit 20 with an upper portion 26 to the cushion 106 or body of
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`Sapiejewski to provide a more secure and snug fit in the user’s outer
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`ear. (Ex. 1003, ¶¶ 76-78.) This technique for improving the stability
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`and comfort of in-ear earphones, which was recognized as a general
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`problem facing the inventors at the time of the ’853 patent, was
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`within the ordinary capabilities of a POSITA, especially in view of the
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`teachings of Tan. Further, a POSITA could have applied the known
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`improvement technique disclosed by Tan in the same way to
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`Sapiejewski and the result would have been predictable. Use of a
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`technique known to improve one device to improve a similar device in
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`a similar way is an acknowledged motivation to combine. See KSR
`
`Int’l co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In other words, a
`
`POSITA in the earphone/earpiece field, trying to more stably and
`
`comfortably fit an earphone in a user’s ear, would have found it
`
`obvious to use the expansion adaptor—having an expansion unit with
`
`an upper portion or retaining member—of Tan to achieve the more
`
`secure, snug fit of the Sapiejewksi earphone in the user’s outer ear.
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`(Ex. 1003, ¶¶ 76-78).
`
`Claim 1[a]: An earphone comprising
`Sapiejewski discloses an earphone 100 including a first region
`
`102 shaped to be located in the concha 14 of a wearer’s ear, a second
`
`region 104 shaped to be located in the ear canal 12, and a cushion 106
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`that serves as an interface for coupling the acoustic components of
`
`the earphone to the physical structure of the wearer’s ear. (Ex. 1004,
`
`¶ [0024], FIG. 2B).
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`Thus, Sapiejewski teaches claim element 1[a]. (Ex. 1003, ¶ 79).
`
`Claim 1[b]: an acoustic driver that converts applied
`audio signals to acoustic energy by moving a diaphragm
`along a first axis
`FIG. 3A of Sapiejewski illustrates an acoustic driver 116
`
`wherein “the first region 102 of the earphone 100 includes a rear
`
`chamber 112 and a front chamber 114 defined by shells 113 and 115,
`
`respectively, on either side of a driver 116. In some examples, a 16
`
`mm diameter driver is used. Other sizes and types of acoustic
`
`transducers could be used depending, for example, on the desired
`
`frequency response of the earphone.” (Ex. 1004, ¶ [0025]). Driver 116
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`“ha[s] acoustic properties that may affect the performance of the
`
`
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`U.S. Patent No. 9,036,853
`Petition for Inter Partes Review
`earphone 100.” (Id. at ¶ [0026]). As would have been understood by a
`
`POSITA, the function of the acoustic driver 116 in Sapiejewski is to
`
`convert applied audio signals to acoustic energy by moving a
`
`diaphragm housed therein (not shown) along a first axis (see blue
`
`arrow in FIG. 3A below). (Ex. 1003, ¶ 80).
`
`Thus, Sapiejewski teaches claim element 1[b]. (Ex. 1003, ¶¶ 80-81).
`
`
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`Petition for Inter Partes Review
`Claim 1[c]: a housing containing the acoustic driver
`FIG. 3A of Sapiejewski also illustrates that the acoustic driver
`
`116 is contained within a housing defined by shells 113 and 115.
`
`“[T]he first region 102 of the earphone 100 includes a rear chamber
`
`112 and a front chamber 114 defined by shells 113 and 115,
`
`respectively, on either side of a driver 116.” (Ex. 1004, ¶ [0025]).
`
`Thus, Sapiejewski teaches claim element 1[c]. (Ex. 1003, ¶ 82).
`
`Claim 1[d]: the housing including a front chamber
`acoustically coupled to the acoustic driver and a nozzle
`acoustically coupled to the front chamber
`FIG. 3A of Sapiejewski shows that the housing defined by shells
`
`113 and 115 includes a front chamber 114 coupled to the driver 116
`
`and a nozzle 126 coupled to the front chamber 114. “The front
`
`chamber 114 extends (126) to the entrance to the ear canal 12 …” (Ex.
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`1004, ¶ [0025]). “To increase low frequency response and sensitivity, a
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`structure 126, sometimes referred to as a nozzle, may extend the
`
`front cavity 11[4] into the ear canal.” (Id. at ¶ [0027]). Further, cavity
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`114 “ha[s] acoustic properties that may affect the performance of the
`
`earphone 100.” (Id. at ¶ [0026]). As would have been understood by a
`
`POSITA, since each of the components contained within the earphone
`
`
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`100 has acoustic properties (and based on the arrangement of the
`
`different components with respect to one another within the housing
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`(shells 113, 115)), the front chamber 114 is acoustically coupled to the
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`driver 116, and the nozzle 126 is acoustically coupled to the front
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`chamber 114. (Ex. 1003, ¶ 84).
`
`Thus, Sapiejewski teaches claim element 1[d]. (Id. at ¶¶ 84-85).
`
` wherein the nozzle extends the front
`Claim 1[e]:
`chamber towards the user’s ear canal along a second axis
`that is not parallel to the first axis
`FIG. 3A of Sapiejewski shows that nozzle 126 extends the front
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`chamber 114 towards the user’s ear canal. “To increase low frequency
`
`response and sensitivity, a structure 126, sometimes referred to as a
`
`nozzle, may extend the front cavity 11[4] into the ear canal.” (Id. at ¶
`
`[0027]). As further shown in annotated FIG. 3A below, a red arrow
`
`represents a second axis that is not parallel to the first axis (blue
`
`arrow), where the nozzle extends the front chamber 114 towards the
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`user’s ear canal in the direction of or along the second axis. (Ex. 1003,
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`¶ 85).
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`Thus, Sapiejewski teaches claim element 1[e]. (Id.)
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`
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`Claim 1[f]: an ear interface comprising: a body portion
`that occupies the lower concha of a user’s ear when worn
`by the user
`As discussed above for claim element 1[a], cushion 106 of
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`Sapiejewski serves as an interface between the acoustic components
`
`of the earphone and the physical structure of the wearer’s ear. (Ex.
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`1004, ¶ [0024], FIG. 2B). Further, as previously discussed in Section
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`IV.C, while Sapiejewski describes element 106 as a “cushion,” the
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`’853 patent designates that same structure as “body 12.” (Ex. 1001,
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`9:26-28). Accordingly, as would have been understood by a POSITA,
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`cushion 106 of Sapiejewski is a body portion which forms a part of the
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`ear interface. (Ex. 1004, FIG. 3A; Ex. 1003, ¶ 86).
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`Moreover, Sapiejewski describes cushion/body portion 106 as
`
`being shaped to surround a portion of the housing for joining the
`
`housing to the concha and the ear canal of the user’s ear. (Ex. 1004, ¶
`
`[0006]). In particular, cushion/body portion 106 “is formed into a first
`
`region [102] and a second region [104]. The first region [102] defines
`
`an exterior surface shaped to fit the concha [14] of a human ear [10].”
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`(Id. at ¶ [0010], emphasis added).
`
`As shown below in FIGs. 2A and 2B of Sapiejewski, when
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`earphone 100 is worn by the user, the first region 102 of cushion/body
`
`portion 106 occupies the lower concha 14 of the user’s ear. (Id. at ¶
`
`[0024]; Ex. 1003, ¶ 87).
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`Thus, Sapiejewski teaches claim element 1[f]. (Ex. 1003, ¶¶ 86-
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`
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`87).
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`Claim 1[g]: an outlet extending from the body1 and into
`at least the entrance of the user’s ear canal entrance
`when worn by the user
`As discussed above for claim element 1[f], Sapiejewski describes
`
`the cushion 106 or body portion being shaped to surround a portion of
`
`the housing of the earphone 100 for joining the housing to the concha
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`and the ear canal of the user’s ear. (Ex. 1004, ¶ [0006]). As shown
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`below in FIG. 8B, cushion/body portion 106 has a lower portion 110,
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`or outlet, which extends from therefrom and is “shaped to enter the
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`ear canal 12 …. [T]he lower portion 110 is shaped to fit within but not
`
`apply significant pressure on the flesh of the ear canal 12.” (Id. at ¶
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`[0034]). Accordingly, as would have been understood by a POSITA,
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`the lower portion 110 or outlet of the ear interface is shaped to extend
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`into at least the entrance of the user’s ear canal entrance when the
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`earphone 100 of Sapiejewski is worn in the use
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