Trials@uspto.gov
`571-272-7822
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` Paper 8
`Entered: November 8, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01309
`Patent 9,036,853 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
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`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`I. INTRODUCTION
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`Freebit AS (“Petitioner”) requests inter partes review of claims 1–3,
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`5, 6, 8–11, and 13 of U.S. Patent No. 9,036,853 B2 (“the ’853 patent,” Ex.
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`1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1 (“Pet.”). Bose
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`571-272-7822
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` Paper 8
`Entered: November 8, 2017
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01309
`Patent 9,036,853 B2
`____________
`
`
`
`Before KRISTEN L. DROESCH, BRYAN F. MOORE, and
`JAMES B. ARPIN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`I. INTRODUCTION
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`Freebit AS (“Petitioner”) requests inter partes review of claims 1–3,
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`5, 6, 8–11, and 13 of U.S. Patent No. 9,036,853 B2 (“the ’853 patent,” Ex.
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`1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1 (“Pet.”). Bose
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`IPR2017-01309
`Patent 9,036,853 B2
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`Corporation (“Patent Owner”) filed a Preliminary Response. Paper 6
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`(“Prelim. Resp.”). Petitioner filed an authorized Reply to the Preliminary
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`Response. Paper 7. Institution of an inter partes review is authorized by
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`statute when “the information presented in the petition . . . and any
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`response . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration
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`of the Petition, Preliminary Response, the Reply, and the supporting
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`evidence; we conclude the information presented shows there is not a
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`reasonable likelihood that Petitioner would prevail in establishing the
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`unpatentability of claims 1–3, 5, 6, 8–11, and 13 of the ’853 patent.
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`A. Related Matters
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`IPR petitions have been filed against U.S. Patent No. 8,311,253
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`(IPR2017-01307) and U.S. Patent No. 8,254,621 (IPR2017-01308), each of
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`which share a common specification with the ’853 patent. Paper 4, 2.
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`B. Overview of the Anatomy of a Human Ear
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`Patent Owner provides an overview of the anatomy of the human ear.
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`Because the challenged claims describe an earpiece with respect to its
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`engagement of the ear. Although Patent Owner acknowledges that human
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`ears may differ in size and geometry and the features discussed below may
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`be more or less prominent in any particular individual, it is helpful to
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`understand the basic anatomy of the human ear when considering the recited
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`device. Prelim. Resp. 4.
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`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
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`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.
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`Id. at 4.
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`Figure 1 of the ’853 patent, as annotated by Patent Owner, reproduced
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`below.
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`Id. at 5.
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`
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`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
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`3
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`notch. The antitragus is located above the ear lobe at the bottom
`of the pinnae.
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`Id. at 5–6 (emphasis added).
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`B. The ’853 Patent
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`The ’853 patent “describes a positioning and retaining structure for an
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`earpiece.” Ex. 1001, 1:18–19. The ’853 patent describes in-ear earpiece 10
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`including body 12 with outlet section 15 dimensioned and arranged to fit
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`inside a user’s ear canal entrance, passageway 18 for conducting the acoustic
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`energy from the audio module to an opening in the outlet section, and
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`positioning and retaining structure 20. Ex. 1001, 1:28–36, 4:51–55, Figs. 2,
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`6. Figure 6, reproduced below, shows acoustic driver module 14 and body
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`12.
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`4
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`Figure 6 above shows a cross-section of acoustic driver module 14
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`that may be coupled to an electronics module 16 for receiving incoming
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`audio signals from an external source.
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`Figures 7C and 7D, reproduced below, show two views of the in-ear
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`earpiece body 12.
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`As shown above in Figures 7C and 7D, body 12 may have outlet
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`section 15, with nozzle 126 arranged therein, that fits into the ear canal via
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`lower portion 110.
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`The ’853 patent describes “a positioning and retaining structure 20
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`that, together with the body 12 holds the earpiece in position without the use
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`of ear hooks, or so-called ‘click lock’ tips, which may be unstable (tending
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`to fall out of the ear), uncomfortable (because they press against the ear), or
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`ill fitting (because they do not conform to the ear).” Ex. 1001, 5:28–34.
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`Figure 2, reproduced below, shows several views of the retaining structure
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`20.
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`5
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`Figure 2 above shows positioning and retaining structure 20 which
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`“follow[s] the curve of the antihelix at the rear of the concha” and was
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`designed to contact the ear of the user in a number of points so as to
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`distribute force throughout the ear, resulting in greater comfort and stability.
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`See Ex. 1001, 5:37–40, 6:43–58.
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`Figure 4, reproduced below, illustrates positioning and retaining
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`structure 20 as positioned in an ear.
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`Figure 4, above, illustrates how positioning and retaining structure 20
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`is designed to position the earpiece structure to contact the antihelix of the
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`person wearing the earpiece, as well as the rear of the concha of that
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`
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`person’s ear anatomy. Ex. 1001, 7:6–17.
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`C. Illustrative Claim
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`Of the challenged claims, claims 1 and 8 are the independent claims.
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`Independent claim 1, reproduced below, is illustrative of the claimed subject
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`matter:
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`1.
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`
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`An earphone comprising:
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`an acoustic driver that converts applied audio signals to
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`acoustic energy by moving a diaphragm along a first
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`axis;
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`a housing containing the acoustic driver, the housing
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`including a front chamber acoustically coupled to the
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`acoustic driver and a nozzle acoustically coupled to the
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`front chamber, wherein the nozzle extends the front
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`chamber towards the user's ear canal along a second axis
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`that is not parallel to the first axis; and
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`
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`an ear interface comprising:
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`a body portion that occupies the lower concha of a user's
`ear when worn by the user,
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`an outlet extending from the body and into at least the
`entrance of the user's ear canal entrance when worn by the user,
`wherein the outlet at least partially surrounds the nozzle of the
`housing, and
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`a retaining member formed of a compliant material,
`wherein the retaining member applies pressure to the antihelix of
`the user's ear along at least a portion of a length of the retaining
`member when the ear interface is worn by the user.
`
`
`Ex. 1001, 12:44–65.
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts that claims 1–3, 5, 6, 8–11, 13 are unpatentable
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`based on the following grounds:
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`References
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`Sapiejewski1 and Tan2
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`Basis
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`§ 103
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`Claims challenged
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`1–3, 5, 6, 8–11, and 13
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`
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`1 U.S. Patent Application Publication No. 2008/0002835 A1, filed, June 30
`2006; published January 3, 2008 (“Sapiejewski,” Ex. 1004).
`2 U.S. Patent Application Publication No. 2011/0255729 A1, entered into the
`national stage on June 23, 2011; published October 20, 2011 (“Tan,” Ex.
`1005).
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`Sapiejewski and Howes3
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`§ 103
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`1–3, 5, 6, and 8–11
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`Pet. 4–5, 20–95.
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`II. DISCUSSION
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`A. Claim Construction
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`In an inter partes review, we construe claim terms in an unexpired
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`patent according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
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`Consistent with the broadest reasonable construction, claim terms are
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`presumed to have their ordinary and customary meaning as understood by a
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`person of ordinary skill in the art in the context of the entire patent
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). We determine that it is not necessary to provide an express
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`interpretation of any term of the claims.
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`B. Asserted Obviousness over Sapiejewski and Tan
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`Petitioner contends claims 1–3, 5, 6, 8–11, and 13 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over Sapiejewski and Tan. Pet. 20–65.
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`
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`3 U.S. Patent No. 7,536,008 B2, issued May 19, 2009 (“Howes,” Ex. 1006).
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`We find that Petitioner has not shown sufficiently that Tan qualifies as
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`prior art for the reasons articulated in the Decision Denying Institution in
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`IPR2017-01308 entered concurrently with this decision.4
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`C. Asserted Obviousness over Sapiejewski and Howes
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`Petitioner contends claims 1–3, 5, 6, and 8–11 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over Sapiejewski and Howes. Pet. 66–95.
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`Relying on the testimony of Dr. Wayne J. Staab, Petitioner explains how
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`Sapiejewski and Howes allegedly describe all of the claim limitations. Id.
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`(citing Ex. 1003).
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`1. Sapiejewski (Ex. 1004)
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`Sapiejewski describes in-ear earphone 100 having first region 102
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`positioned within concha 14 of ear 10 and second region 104 designed to be
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`located in ear canal 12. Ex. 1004 ¶ 24, Figs. 2A, 2B. Cushion 106 joins the
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`acoustic components of the earphone to the physical structure of a wearer’s
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`ear. Id.
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`
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`4 To the extent that the claims limitations in this inter partes review are
`different than the limitations in IPR2017-01308, Patent Owner contends that,
`at least as early as May 26, 2009, Mr. Annunziato and his team created five
`“works-like” prototypes of an earpiece implementing the “Vincent” ear-
`interface design. Prelim. Resp. 19–20 (citing Ex. 2001 ¶¶ 9, 23). Patent
`Owner further contends that these works-like prototypes embodied all of the
`limitations of the devices recited in the challenged claims of the ’853 patent.
`See id. (citing Ex. 2001 ¶¶ 23–24). We agree. In its Reply, Petitioner does
`not contest the factual assertions made in Mr. Annunziato’s testimony and
`demonstrated by the supporting evidence. See Reply generally. Instead,
`Petitioner raises three arguments challenging Patent Owner’s contention that
`the inventors actually reduced the devices recited in the challenged claims to
`practice. We incorporate the discussion rejecting those arguments in the
`Decision Denying Institution in IPR2017-01308.
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`2. Howes (Ex. 1006)
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`Howes describes an ear mount for a headset that includes a mounting
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`portion with a loop of resilient material sized to operably engage the
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`antihelix of the wearer’s ear and is designed to comfortably and detachably
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`securing the headset in place. Ex. 1006, Abstract, 1:24–27. Personal audio
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`set 10 is illustrated in Figure 1, reproduced below.
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`
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`As illustrated in Figure 1 of Howes above, personal audio set 10 is
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`headset 10" with frame 14 and microphone 16 extending longitudinally from
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`ear bud 18. Ear bud 18 includes driver and audio transducer, or speaker 20.
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`Id. at 3:57–62. Further, compressible mounting portion 12 extends from
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`frame 14 and is operably secured to ear bud 18. Id. at 4:3–5. Figure 2,
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`reproduced below, shows ear bud 18 positioned in a wearer’s ear 92.
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`Figure 2, above, shows that ear bud 18 is sized to be received in
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`wearer’s ear 92, such that speaker 20 is positioned over ear canal 94. Id. at
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`3:65–67). As shown in Figure 3, below, mounting portion 12 includes ear
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`bud mounting portion 21 and antihelix mounting portion 23.
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`
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`As shown in Figure 3, above, and further described in Howes’
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`specification, “mounting portion 12 is preferably a loop of resilient material
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`26 that compresses substantially in the direction of arrow 30 [] to conform
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`with the particular shape of the antihelix 90 of the wearer’s ear 92 . . . .
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`function[ing] essentially as a compression spring.” Id. at 4:30–37.
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`Mounting portion 12 assists in “securing the personal audio set in the ear and
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`evenly distributing the pressure along a large portion [of] the wearer’s
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`antihelix 90 and tragus 96.” Id. at 4:61–64. Ear bud mounting portion 21
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`12
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`IPR2017-01309
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`engages user’s concha 97 around the ear canal and includes outer portion 27
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`which contacts and cushions the ear. Id. at 4:13–19. Antihelix mounting
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`portion 23 extends from ear bud mounting portion 21 and engages wearer’s
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`antihelix 90. Id. at 4:30–32.
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`3. Analysis
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`Claims 1 and 8 recite several limitations. We determine that
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`Petitioner has shown a reasonable likelihood that Sapiejewski teaches each
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`of those limitations except the last limitation to a “retaining member.”
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`Pet. 11–12, 23–33, 66–70 (detailing, inter alia, that the earpiece of
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`Sapiejewski is nearly identical to the earpiece disclosed in the Specification
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`except Sapiejewski lacks a “retaining member”). Petitioner relies on the
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`combination of the teachings of Sapiejewski and Howes to teach the claimed
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`“retaining member.” As explained below, we find that Petitioner has not
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`shown a reasonable likelihood of success as to combining Sapiejewski with
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`Howes to meet the limitation to a “retaining member.”
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`Claims 1 and 8 recite “a retaining member formed of a compliant
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`material,” “wherein the retaining member applies pressure to the antihelix of
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`the user’s ear along [claim 1 - at least a portion of a]/[claim 8 -substantially
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`the entire] length of the retaining member when the ear interface is worn by
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`the user.” Petitioner contends that Howes teaches this feature. Pet. 71–78.
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`Petitioner also contends it would have been obvious to a person of ordinary
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`skill in the art at the time of the ’853 patent to “modify the earphone of
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`Sapiejewski to include Howes’ retaining member, i.e., mounting portion 12
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`with earbud mounting portion 21 and antihelix mounting portion 23.” Id. at
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`68 (citing Ex. 1003 ¶¶ 153–158).
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`Petitioner further contends a person of ordinary skill
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`in the earphone/earpiece field, trying to more comfortably and
`stably fit an earphone in a user’s ear, would have found it obvious
`to use the mounting portion with the retaining member of Howes
`to achieve a more comfortable and secure fit of the earphone in
`the unique shape of each wearer’s ear.
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`Id. at 68–69.
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`In order to tie this motivation to Sapiejewski, Petitioner relies on
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`Dr. Staab, who testifies that
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`a [person of ordinary skill in the art] would have recognized that
`Sapiejewski had the same comfort and stability issues that were
`prevalent throughout the industry at the time of the ’853 patent.
`Moreover, it would have been readily apparent to a [person of
`ordinary skill in the art] that the antihelix mounting portion 23 of
`Howes, which comfortably stabilizes a headset with bulky
`components like a boom microphone, would be well-suited for
`retaining the in-ear earphone of Sapiejewski. Such a structural
`modification for improving the comfort and stability of in-ear
`earphones [] was recognized as a general problem facing
`inventors at the time of the ’853 invention.
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`Ex. 1003 ¶ 158 (emphasis added).
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`Additionally, Petitioner relies on Dr. Staab’s unsupported opinion
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`that:
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`A [person of ordinary skill in the art] would have seen that the
`weight and overall size of the Sapiejewski earphone renders
`ineffectual the manner of coupling the acoustic elements of the
`earphone to the wearer’s ear described in the reference, i.e.,
`upper portion 802 of cushion 106 “shaped to make contact with”
`the tragus and antitragus. (Ex. 1004 at ¶ [0034]). Very little would
`prevent Sapiejewski from falling out of the ear during normal use
`such as talking and chewing, let alone during any semi-rigorous
`activity. But using a loop of resilient material in the general shape
`of the concha, as taught by Howes, would have been known to a
`[person of ordinary skill in the art] for solving the problem.
`Ex. 1003 ¶¶ 163, 183 (emphasis added).
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`Finally, Petitioner argues that, because Sapiejewski states that “lower
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`portion 110 [of the cushion 106] is not relied upon to provide retention of
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`the earphone in the ear,” a person of ordinary skill would be “cognizant” of
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`the need for a retaining member structure. Pet. 37–38 (citing Ex. 1004
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`¶ 34).5
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`In sum, Petitioner points to a general concern with fitting earpieces
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`securely into a wearer’s ear (id. at 19–20) and suggests through conclusory
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`testimony that Sapiejewski’s earpiece would be particularly susceptible to
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`this problem (Ex. 1003 ¶ 163) (citing Ex. 1004 ¶ 34)). We are not persuaded
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`by this argument.
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`Although Dr. Staab cites to Sapiejewski to show the “manner of
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`coupling” used in Sapiejewski, Dr. Staab does not cite to anything to support
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`his conclusion that “the weight and overall size of the Sapiejewski
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`earphone” renders its manner of coupling “ineffectual.” Ex. 1003 ¶¶ 163,
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`183. Thus, we give little weight to his conclusory testimony on that point.
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`Id. “[T]he Board is entitled to weigh the declarations and conclude that the
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`lack of factual corroboration warrants discounting the opinions expressed in
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`the declarations.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368
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`(Fed. Cir. 2004) ((citations omitted)).
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`Additionally, Petitioner has not explained sufficiently how the general
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`concern of securing the earpiece in a wearer’s ear applies to the specific
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`
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`5 Petitioner also relates Sapiejewski’s inclusion of “an O-ring type retaining
`collar 809 for retaining the cushion on the acoustic components” (Ex. 1004 ¶
`34) to the goal of securing and earpiece in a user’s ear. We find this
`argument irrelevant as Petitioner has not explained how the O-ring example
`relates in any way to securing the ear bud in a wearer ear besides some
`general notion of retaining one object to another.
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`teachings of Sapiejewski. Although, “[i]n considering motivation in the
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`obviousness analysis, the problem examined is not the specific problem
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`solved by the invention, but the general problem that confronted the inventor
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`before the invention was made” (In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
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`2006)), “[w]hether a person of ordinary skill in the art would narrow the
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`research focus to lead to the invention depends on the facts.” Insite Vision
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`Inc. v. Sandoz, Inc., 783 F.3d 853, 860 (Fed. Cir. 2015) (emphasis added).
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`Here, Petitioner has not presented facts sufficient to suggest that a person of
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`ordinary skill at the time of the invention would have been led to combine
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`the teachings of Sapiejewski and Howes and, thereby, render the claimed
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`invention obvious.
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`For example, Patent Owner cites to the same paragraph cited by
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`Petitioner above (Prelim. Resp. 13), in which Sapiejewski states that “[t]he
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`cushion 106 is designed to comfortably couple the acoustic elements of the
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`earphone to the physical structure of the wearer’s ear.” Ex. 1004 ¶ 34.
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`Thus, Sapiejewski states that it has a mechanism for retaining or coupling
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`the earphone to the wearer’s ear – the very problem that Petitioner asserts
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`provides the reason to combine Sapiejewski’s teachings with those of
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`Howes.
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`In response to Petitioner’s contentions, Patent Owner argues that
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`Petitioner does not account for the forces introduced by the combination of
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`the teachings of the Howes retention member to those of the Sapiejewski
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`earpiece. Prelim. Rep. 16–17. Specifically, Patent Owner asserts that
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`“[b]ecause the lower portion 110 is integrally attached to the cushion 106 on
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`which Freebit proposes integration of the [] Howes retention member[] any
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`forces applied to the cushion 106 by th[e] retention member[ would]
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`translate into forces applied to the lower portion 110, and thus, this will
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`create pressures that impinge on the ear canal, which is disadvantageous to
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`the comfort objective that is stressed by Sapiejewski.” Id. at 16 (citing Pet.
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`37, 73–74; Ex. 1004 ¶ 34).
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`We are mindful that “[t]he test for obviousness is not whether the
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`features of a secondary reference may be bodily incorporated into the
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`structure of the primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA
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`1981); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing
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`In re Keller, 642 F.2d at 425), but rather whether “a skilled artisan would
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`have been motivated to combine the teachings of the prior art references to
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`achieve the claimed invention,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
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`1361 (Fed. Cir. 2007). The import of Patent Owner’s argument, however, is
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`that, as noted above, Petitioner relies on a far too general motivation to
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`combine the references and engages in impermissible hindsight as to the
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`particular combination of the teachings of Sapiejewski and Howes.
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`In sum, Petitioner fails to “explain why a person of ordinary skill in
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`the art would have combined elements from specific references in the way
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`the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Comms,
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`Inc. 694 F.3d 1312, 1328 (Fed. Cir. 2012); see also Hyundai Motor Co. v.
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`Blitzsafe Texas, LLC, Case IPR2016-01476, slip op. at 32 (PTAB Jan. 24,
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`2017) (Paper 12) (“A determination of obviousness cannot be reached where
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`the record lacks ‘explanation as to how or why the references would be
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`combined to produce the claimed invention.’”; quoting Trivascular, Inc. v.
`
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016)). Specifically, neither
`
`Petitioner nor its Declarant explains why a general need to secure an
`
`earpiece in an ear would lead to adding a retaining member in the context of
`
`17
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`Sapiejewski’s teachings when that function already is provided by the
`
`Sapiejewski device, besides seeking the benefits described in the ’853 patent
`
`– a reason tainted by hindsight. See W.L. Gore & Associates, Inc. v.
`
`Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of
`
`ordinary skill in the art with knowledge of the invention in suit, when no
`
`prior art reference or references of record convey or suggest that knowledge,
`
`is to fall victim to the insidious effect of a hindsight syndrome wherein that
`
`which only the inventor taught is used against its teacher.”)
`
`Accordingly, for the reasons stated above, Petitioner has not shown
`
`there is a reasonable likelihood of prevailing in establishing that claims 1
`
`and 8, and claims 2, 3, 5, 6, 9–11, and 13 that depend therefrom, would have
`
`been obvious over Sapiejewski and Howes.
`
`III. CONCLUSION
`
`The information presented does not show that there is a reasonable
`
`likelihood that Petitioner would prevail at trial with respect to at least one
`
`claim of the ’853 patent, based on any ground presented in the Petition. On
`
`this record, we deny the Petition for inter partes review of claims 1–3, 5, 6,
`
`8–11, and 13.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that that the Petition is denied as to all challenged claims,
`
`and no trial is instituted.
`
`
`
`
`
`18
`
`
`
`IPR2017-01309
`Patent 9,036,853 B2
`
`PETITIONER:
`
`Todd Baker
`cpdocketbaker@oblon.com
`
`John Presper
`cpdocketpresper@oblon.com
`
`Tia Fenton
`cpdocketfenton@oblon.com
`
`
`PATENT OWNER:
`
`W. Karl Renner
`Axf-ptab@fr.com
`
`David Holt
`Holt2@fr.com
`
`Andrew Kopsidas
`kopsidas@fr.com
`
`
`
`19
`
`
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