UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SHENZHEN SHUFANG INNOVATION TECHNOLOGY CO., LTD.;
`NENZ ELECTRIC TECHNOLOGY (DONGGUAN) CO., LTD.;
`SHENZHEN XINDE TECHNOLOGY CO., LTD.;
`PERFORMANCE HEALTH SYSTEMS, LLC;
`YONGKANG AIJIU INDUSTRIAL & TRADE CO., LTD.
`Petitioner,
`v.
`
`HYPER ICE, INC.
`Patent Owner.
`
`PGR2020-00089
`US Patent No. 10,561,574
`
`Filing Date: October 17, 2019
`Issue Date: February 18, 2020
`Title: Battery-powered percussive massage device
`
`

`

`Table of Contents
`
`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Page
`
`List of Exhibits ........................................................................ iii
`Introduction ............................................................................... 1
`Mandatory Notices under 37 C.F.R. § 42.8(b)(1)–(4) ............ 2
`Proof of Service on the Patent Owner .......................................... 5
`Power of Attorney ........................................................................ 5
`Standing ........................................................................................ 5
`Fees ............................................................................................... 5
`Precise Relief Requested ........................................................... 6
`The ’574 Patent.......................................................................... 6
`Prosecution History Summary ..................................................... 6
`Legal Standards.......................................................................15
`Person of Ordinary Skill in the Art (“POSA”) ...........................15
`Claim Construction ....................................................................15
`OVERVIEW OF PRIOR ART ..............................................31
`Wang ..........................................................................................31
`Smith ..........................................................................................33
`Amend ........................................................................................34
`Jun ..............................................................................................35
`Suda ............................................................................................36
`Johnson .......................................................................................37
`Schaefer ......................................................................................38
`Jung ............................................................................................39
`The Grounds Demonstrate that the Claims Are More Likely
`Than Not Unpatentable ..........................................................40
`Wang in View of Smith or Amend, and Alternatively including
`Jun, Renders Obvious 1–4, 6, and 14–15 of the ’574 Patent .....41
`Wang in Combination with Smith or Amend (and Jun), and
`Further in Combination with Jung and/or Schaefer Renders
`Obvious Claim 5 .........................................................................89
`
`i
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`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Wang, in Combination with Smith or Amend (and Jun), and
`Further in Combination with Suda Renders Obvious Claims 7
`and 8 ...........................................................................................97
`Wang, in Combination with Smith or Amend (and Jun), and
`Further in Combination with Johnson Renders Obvious Claim 9 .
`
` .................................................................................................101
`Secondary Considerations of Non-Obviousness ................104
`The Board Should Not Exercise Its Discretion to Deny
`Institution 35 USC. § 314(a)/324(a) .....................................105
`Whether a Stay Exists or Is Likely to Be Granted If a Proceeding
`Is Instituted ...............................................................................105
`Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline ....................................................................106
`Investment in the Parallel Proceeding by the Court and Parties ....
`
` .................................................................................................107
`Overlap Between Issues Raised in the Parallel Proceeding .....108
`Whether the Petitioner and the Defendant in the Parallel
`Proceeding Are the Same Party................................................109
`Other Circumstances that Impact the Board’s Exercise of
`Discretion .................................................................................109
`The Proposed Grounds Are Not Substantially the Same as
`Previously Considered art or Arguments ...........................110
`Factors (a), (b) and (d): “(a) the similarities and material
`differences between the Asserted Art and the prior art involved
`during examination; (b) the cumulative nature of the Asserted
`Art and the prior art evaluated during examination; (d) the extent
`of the overlap between the arguments made during examination
`and the manner in which Petitioner relies on the prior art.” ....110
`Factors (c), (e), and (f): “(c) the extent to which the asserted art
`was evaluated during examination, including whether the prior
`art was the basis for rejection; (e) whether petitioner has pointed
`out sufficiently how the examiner erred in its evaluation of the
`asserted prior art; (f) the extent to which additional evidence and
`facts presented in this petition warrant reconsideration of the
`prior art or arguments.” ............................................................111
`Conclusion ..............................................................................112
`
`ii
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`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`1005
`
`LIST OF EXHIBITS
`Description
`Exhibit
`1001 US Patent No. 10,561,574 “Battery-Powered Percussive Massage
`Device” (“the ’574 patent”)
`1002 Cambridge Dictionary Online, (last visited August 20, 2020)
`(defining “within”)
`1003 Cambridge Dictionary Online, (last visited August 20, 2020)
`(defining “perimeter”)
`1004 Cambridge Dictionary Online, (last visited August 20, 2020)
`(defining “inner”)
`Infringement Claim Chart for US Patent No. 10,561,574 – WEB2
`(Addaday BioZoom)
`Infringement Claim Chart for US Patent No. 10,561,574 – Shenzhen
`1006
`Qifeng Massage Gun (AM7)
`1007 Cambridge Dictionary Online, (last visited September 22, 2020)
`(defining “outer”)
`1008 Cambridge Dictionary Online, (last visited September 22, 2020)
`(defining “longitudinal”)
`1009 US Patent Publication No. 2013/0076271 to Suda et al. (“Suda”)
`1010 US Patent Publication No. 2014/0159507 to Johnson et al.
`(“Johnson”)
`1011 US Patent Publication No. 2007/0257638 to Amend et al.
`(“Amend”)
`1012 US Patent No. 4,709,201 to Schaefer et al. (“Schaefer”)
`1013 US Patent No. 9,017,355 to Smith et al. (“Smith”)
`1014 Korean Patent No. 10-1315314 to Jung, Including Certified
`Translation (“Jung”)
`Taiwan Patent No. M543692U to Wang, Including Certified
`Translation (“Wang”)
`Chinese Patent No. 2540948Y to Dong, Including Certified
`Translation
` (“Jun”)
`1017 Cambridge Dictionary Online, (last visited September 25, 2020)
`(defining “cavity”)
`1018 C.V. of Phil O’Keefe
`1019
`File History of US Patent No. 10,561,574
`1020
`File History of US Patent No. 10,492,984
`1021 Declaration of Philip O’Keefe
`
`1015
`
`1016
`
`iii
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`1022 MCP73833/4 Charge Management Controller (“Microchip”)
`1023 US Patent No. 4,858,600 (“Gross”)
`1024 Chinese Utility Model CN205268525 (“Gang”)
`1025
`Practical Electronics for Inventors, by Paul Scherz (“Scherz”)
`1026 US Patent No. 5,043,651 (“Tamura”)
`1027
`ITC schedule
`
`iv
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`INTRODUCTION
`Petitioners request post-grant review of claims 1–9 and 14–15 of US patent
`
`no. 10,561,574 (Ex-1001, the “’574 patent”) assigned to Hyper Ice, Inc.
`
`(“Hyperice” or “Patent Owner.”) The ’574 patent discloses a battery-operated
`
`handheld massaging device that is very similar to the prior art device disclosed by
`
`patent no. TW543692 to Wang.
`
`Wang, Ex-1015, FIG. 1
`’574 patent, Ex-1001, FIG. 2
`The examiner allowed the claims allegedly because the prior art failed to teach a
`
`“battery assembly receiving tray within the longitudinal cavity.”1 Ex-1019, pp. 12–
`
`16. The examiner did not have the benefit of any of the prior art used in the
`
`grounds of unpatentability proposed in this petition. For example, Jun (Ex-1016)
`
`1 Italics are used throughout the Petition to highlight claim language.
`
`1
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`FIG. 1 expressly illustrates a “battery assembly receiving tray within the
`
`longitudinal cavity.”
`
`The grounds below demonstrate that it is more likely than not that claims 1–9 and
`
`14–15 are unpatentable.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(B)(1)–(4)
`Real Parties-In-Interest
`The following list identifies groups of related entities, though some consist
`
`of a single entity.
`
`Group-1
`Shenzhen Shufang Innovation Technology Co., Ltd.
`R604, 6/F, Building 4, Youpin Wenhua ChuangYiYuan, Minzhi, Longhua,
`Shenzhen, China
`
`2
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Shenzhen Shufang E-Commerce Co., Ltd.
`6/F, Building 4, Youpin Wenhua ChuangYiYuan, Minzhi, Longhua,
`Shenzhen, China
`
`Shenzhen Fusi Technology Co., Ltd.
`621, Shangtang Office Building, Industrial Road, Minzhi, Longhua,
`Shenzhen, China
`
`Opove Inc.
`707 S. Grady Way, Suite 600
`Renton WA, 98057
`
`Group-2
`NENZ Electric Technology (Dong Guan) Co., Ltd.
`3rd Floor, Building A, Baoding Technology Park, Caotang Industrial Zone,
`Nancheng Street, Dongguan City
`
`Group3
`Shenzhen Xinde Technology Co., Ltd.
`R402, Block A, Building 1, Runchuangxing Times Apartment, Longgang Street,
`Longgang District, Shenzhen
`
`Group-4
`Performance Health Systems, LLC
`401 Huehl Rd., Suite 2A
`Northbrook, IL 60062
`
`Group-5
`Yongkang Aijiu Industrial & Trade Co., Ltd.
`3rd Floor, No. 117–1, Huaxia Road, Economic Development Zone, Yongkang
`City, Zhejiang Province
`
`Related Matters
`US patent application nos. 15/902,542, 16/865,320, and 16/931,860 are
`
`pending continuations of the ’574 patent and subject to the estoppel provisions of
`
`37 C.F.R. § 42.73(d)(3).
`
`3
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Re: In the Matter of Certain Percussive Massage Devices, Inv. No 337-TA-
`
`1206 is a related matter in the International Trade Commission involving the
`
`following current list of respondents:
`
` Opove, Ltd.
`
` Shenzhen Shufang E-Commerce Co., Ltd.
`
` Fu Si
`
` Rechar, Inc.
`
` Ning Chen
`
` Performance Health Systems, LLC
`
` Shenzhen Xinde Technology Co., Ltd.
`
` Yongkang Aijiu Industrial & Trade Co., Ltd.
`
`Lead and Backup Counsel
`Lead counsel is Kevin Greenleaf, reg. no. 64,062; phone no. 650-798-0381;
`
`e-mail: kevin.greenleaf@dentons.com. Back-up counsel are
`
` Scott W. Cummings, reg. no. 41,567; email: scott.cumming@dentons.com
`
` Roman Tsibulevskiy, reg. no. 61,827, email: roman.tsibulevskiy@dentons.com
`
` Bruce Vance, reg. no. 66,187, email: bruce.vance@dentons.com
`
` Kerisha Bowen, reg. no. 71,420, email: kerisha.bowen@dentons.com
`
` Mark Hogge, reg. no. 31,622, email: mark.hogge@dentons.com
`
` Nicholas Jackson, reg. no. 64,849, email: nicholas.jackson@dentons.com
`
`4
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`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Mailing address of all attorneys:
`
`Dentons US LLP
`1900 K St. N.W.
`Washington, DC 20006
`
`Service Information
`Petitioner consents to electronic service to lead and back-up counsel, as well
`
`as IPT-Docket@dentons.com.
`
`Proof of Service on the Patent Owner
`The attached certificate of service certifies service of a copy of this petition
`
`and its exhibits to the Patent Owner’s attorney of record at the address listed in the
`
`USPTO’s records pursuant to 37 C.F.R. § 42.6.
`
`Power of Attorney
`Powers of Attorney have been filed designating counsel pursuant to
`
`37 C.F.R. § 42.10(b).
`
`Standing
`Per 37 C.F.R. § 42.204(a), Petitioner certifies that the ’574 patent is
`
`available for post-grant review and that Petitioner is not barred or estopped from
`
`requesting post-grant review.
`
`Fees
`The undersigned authorizes the Director to charge the fees specified in 37
`
`C.F.R. § 42.15(a)(1)–(4), and any additional fees that might be due in connection
`
`with this Petition to deposit account no. 50–0911.
`
`5
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`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`PRECISE RELIEF REQUESTED
`Petitioner requests cancelation of claims 1–9 and 14–15 based on the
`
`grounds below.
`
`THE ’574 PATENT
`The ’574 patent discloses a well-known battery-powered percussive
`
`massager comprising well-known components, including “an applicator head,” “a
`
`longitudinal cavity,” “a battery assembly,” and “a battery assembly receiving
`
`tray.” ’574 patent, claims 1 and 14. The only allegedly novel feature is the
`
`rearrangement of these known components illustrated in the figures. Ex-1019,
`
`p. 18. Neither the ’574 patent nor the prosecution history discloses any importance
`
`to this known rearrangement.
`
`Prosecution History Summary
`The ’574 patent issued from US appl. no. 16/656,348 (“the ’348
`
`Application”), which is a continuation of US appl. no. 16/107,587 (“the ’587
`
`Application”) (now US patent no. 10,492,984), which itself is a continuation of US
`
`appl. no. 15/902,542. The file history for the ’348 Application is submitted
`
`herewith as Ex-1019. The file history for the ’587 Application is submitted
`
`herewith as Ex-1020.
`
`6
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`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Prosecution History of the ’348 Application
`The ’348 Application was filed on October 17, 2019, requesting prioritized
`
`examination. See Ex-1019 for the entire prosecution history.
`
`In an interview on December 4, 2019, the parties agreed to amend the claims
`
`such that the “main enclosure”/”main housing” would include a “longitudinal
`
`cavity,” and the “reciprocation assembly”/”reciprocation axis” would be within the
`
`“longitudinal cavity.” Ex-1019, p. 18. The examiner further stated, “the battery
`
`assembly receiving tray is positioned within the longitudinal bore so that the
`
`invention is distinguishable from the prior art of record.” Id.
`
`During the interview, Hyperice’s attorney and the Examiner also discussed
`
`the need for a terminal disclaimer to overcome a non-statutory double-patenting
`
`rejection regarding US patent no. 10,492,984 (the “’984 patent”), the patent that
`
`issued from the ’587 application. Id.
`
`On December 4, 2019, Hyperice filed a terminal disclaimer for the statutory
`
`term of the ’574 patent that would extend beyond the expiration of the ’984 patent.
`
`On December 19, 2019, the Examiner amended the claims as discussed in
`
`the December 4, 2019 interview, and issued a Notice of Allowance. The ’348
`
`Application issued as the ’574 patent on February 18, 2020.
`
`7
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Prosecution History of the ’587 Application
`The ’587 Application was filed on August 21, 2018that requested prioritized
`
`examination. See Ex-1020 for the complete prosecution history.
`
`On December 26, 2018, the Examiner issued a non-final rejection of all the
`
`pending claims (claims 1–17), based on various combinations of prior art
`
`references not at issue in this PGR.
`
`Replying to the non-final rejection, Hyperice filed a response on March 8,
`
`2019, Hyperice argued, inter alia, that the claimed “battery assembly” also served
`
`as a handle for the percussive massaging device, stating:
`
`Applicant’s percussive massage device is powered by rechargeable
`batteries in a battery assembly that also is the only handle of the
`percussive massage device. Prior to Applicant's battery-powered
`percussive massage device, the batteries for a typical battery-powered
`device were inserted into a battery-receiving compartment forming a
`portion of the device or were part of a battery assembly that is
`removably attachable to the device. None of the devices utilize a
`battery assembly as a handle.
`
`’587 Application File History (March 8, 2019 Office Action Response, p. 9), Ex-
`
`1020, pp. 222.
`
`Hyperice’s attorney and the Examiner participated in a telephonic interview
`
`on March 21, 2019, which the Examiner summarized in an April 1, 2019, interview
`
`summary, stating:
`
`8
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Applicant argued that the prior art of record does not dislose [sic] that
`battery assembly extends from the battery receiving enclosure as a
`handle with an outer gripping surface configured to be gripped by one
`hand, as Fuhr and Kondo disclose the body of the device configured
`to be held by a user and the battery extending from the body.
`Examiner explained that even though the prior art of record does not
`explicitly disclose that the battery extends as a handle, and discloses
`structure other than the battery that is held by the user when the
`device is in use, the battery of Fuhr and Kondo reads on the broadest
`reasonable interpretation of a “handle” as the battery is capable of
`being held by a user when the device is in use. Examiner will perform
`further search and consideration to determine whether a battery that is
`primarily used as a handle is found in the prior art. No agreement was
`reached.
`
`’587 Application File History (Examiner’s April 5, 2019 Interview Summary) Ex-
`
`1020, p. 206.
`
`Hyperice reiterated its position in an April 5, 2019 interview summary,
`
`stating:
`
`[T]he prior art discloses battery assemblies installed in a handle of a
`device or battery assemblies attached to a handle of a device. No
`reference teaches or suggests a battery assembly attached to a device
`to provide the only handle for the device.
`
`’587 Application File History (Hyperice April 5, 2019 Interview Summary) Ex-
`
`1020, p. 202.
`
`9
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`On May 24, 2019, Hyperice filed an Information Disclosure Statement (IDS)
`
`disclosing a broad range of prior art, including:
`
`Dungan (US Patent No. 6,226,042): “Chiropractic adjusting tool”
`
`Keller (US Pub. No. 2006/0293711): “Portable chiropractic adjustor”
`
`Sausen (US Pub. No. 2011/0017742): “In-groove snap fastener”
`
`Park (KR 2003/11328): “Muscle-slackening stimulator”
`
`Tsai (WO 2009/914727): “Portable chiropractic adjustor”
`
`Xiaolin Guo (CN 202536467): “Vibrating wrinkle removing beautifying pen”
`
`’587 Application File History (Hyperice IDS, May 24, 2019) Ex-1020, pp. 134,
`
`135. This disclosure of a broad range of prior art is an implicit acknowledgement
`
`by Hyperice that there is a rationale to combine prior art from a broad range of
`
`technologies when determining whether the ’587 Application (and, the ’574 patent
`
`that depends from it) is rendered obvious.
`
`On June 5, 2019, the Examiner issued a final rejection of all of the
`
`pending claims of the ’587 Application (claims 1–5, 7–9, and 11–16) under § 112
`
`and various prior art references. Specifically, with respect to the claimed “gripping
`
`surface,” the Examiner reasoned that the Fuhr reference teaches a battery with a
`
`gripping surface, stating:
`
`Applicant argues on page 13, first full paragraph-fourth full paragraph
`of Applicant’s remarks, that a person of ordinary skill in the art would
`recognize that the battery assembly (30) extending from the housing
`
`10
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`of Fuhr is not intended to be gripped while the chiropractic adjusting
`instrument is use and therefore is not a handle. However, the primary
`reference Danby discloses that the handle (106) is configured to allow
`a user to move her hand along any position on the handle (106) (para
`[0029]), and Fuhr in fig 4 discloses the battery extending from the
`bottom of the battery receiving assembly and the surface of the battery
`assembly is contiguous with the surface of the battery receiving
`assembly. Therefore, the surface of the battery is operable as a
`“handle” as recited in the claims as it is capable of being held by a
`user when in use, the surface of the battery assembly is contiguous
`with the battery receiving assembly when the battery is disposed
`within the battery receiving assembly (see fig 4 of Fuhr), and the
`surface of the battery assembly is contiguous with the battery
`receiving assembly, and the handle forming a battery receiving
`assembly in the modified Danby's device is configured to allow a user
`to move her hand along any position on the handle (Danby, para
`[0029]). Therefore, the rejection is maintained.
`
`’587 Application File History (Final Rejection, June 5, 2019) Ex-1020, pp. 115,
`
`116. The Examiner also found a motivation to combine references to render the
`
`pending claims of the ’587 Application obvious, stating, for example:
`
`[I]t would have been obvious to one of ordinary skill in the art at the
`time of the effective filing date of the invention to substitute the
`electrical cable powering means of Danby with a rechargeable battery
`power means including a battery assembly receiving enclosure
`extending from the main enclosure; and a battery assembly
`
`11
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`positionable in the battery assembly receiving enclosure and
`removably secured to the battery assembly receiving enclosure such
`that a first portion of the battery assembly is positioned within the
`battery assembly receiving enclosure and a second portion of the
`battery assembly extends from the battery assembly receiving
`enclosure, the second portion of the battery assembly having an outer
`gripping surface configured to be gripped by one hand as taught by
`Fuhr in order to allow a user to use the device with a rechargeable
`battery pack to allow use of the device when it is not plugged in.
`
`’587 Application File History (Final Rejection, June 5, 2019) (emphasis added)
`
`Ex-1020, p. 100.
`
`Replying to the final rejection, Hyperice indicated the following regarding a
`
`July 26, 2019 interview with the Examiner:
`
`[T]he Examiner and Applicant’s representative agreed that no
`reference teaches or suggests the battery assembly where a portion of
`the battery within the battery assembly extends into the main
`enclosure (housing) of the massage device.
`
`* * *
`
`Although Applicant respectfully disagrees with the Examiner’s view
`of the teachings of Fuhr, Applicant is amending independent Claims
`1, 7 and 16 herein to define the battery within the battery assembly as
`having a portion extending into the main housing. As noted in the
`Applicant-Initiated Interview Summary, this limitation is not
`disclosed or suggested by Fuhr or by any other reference of record.
`
`12
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`’587 Application File History (Response to Final Rejection, August 7, 2019, page
`
`9 of 10) Ex-1020, p. 85.
`
`The Interview Summary regarding the July 26, 2019 interview, stated:
`
`Applicant argued that Fuhr does not disclose that the gripping surface
`of the battery is configured as the only handle to hold the massage
`device, as Fuhr discloses the battery assembly (30) extending from a
`handle portion containing the triggering system (120). Applicant
`agreed that Fuhr discloses the massage device having a separate
`handle portion; however, Examiner explained that other portions of
`Applicants percussive massage device, such as the motor enclosure
`(120) or the battery receiving enclosure (130), are capable of being
`gripped by a user, and therefore, the limitation of the cylindrical outer
`gripping surface of the battery assembly “as the only handle to hold
`the percussive massage device” would raise the issue of new matter.
`After further discussion, it appears that Fuhr’s power source (30) as
`shown in fig 4 does not extend into the main enclosure, and
`Applicants battery unit (214) as shown in fig 7 extends into the main
`enclosure, however further search and consideration is required to
`determine whether this feature would be distinguishable over the prior
`art. Applicant agreed to file a formal response, and Examiner agreed
`to consider Applicants remarks.
`
`’587 Application File History (Examiner Interview Summary, August 7, 2019) Ex-
`
`1020, p. 64. Importantly, Figure 7 of the ’587 Application is the same as Figure 7
`
`13
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`of ’574 patent, and the Examiner has construed the main enclosure (longitudinal
`
`cavity) to include an offset portion.
`
`On September 3, 2019, Hyperice submitted amendments to the claims
`
`where, inter alia:
`
`The claim language “main enclosure having a cavity” was amended to “main
`
`enclosure having a cylindrical cavity” (emphasis added), with similar amendments
`
`to other claim language to specify that the “cavity” is “cylindrical”, and the claim
`
`language “as the only handle to hold the percussive massage device” was deleted,
`
`such that a portion of the battery assembly would not be claimed as the only handle
`
`to hold the device. ’587 Application File History (Applicant’s Remarks Made in
`
`Amendment, September 3, 2019) Ex-1020, pp. 55–58.
`
`On September 25, 2019, the Examiner entered an examiner’s amendment,
`
`after conferring with Hyperice’s attorney on September 4, 2019, where, inter alia,
`
`the claim phrase “main housing” was amended to “main cylindrical housing”
`
`(emphasis added) in several of the claims. ’587 Application File History
`
`(Examiner’s Amendment, September 25, 2019) Ex-1020, p. 22.
`
`On September 25, 2019, the Examiner also issued a Notice of Allowance,
`
`where he found the pending claims allowable after concluding that “neither Danby
`
`nor Fuhr, either alone or in combination, disclose at least a portion of the battery
`
`14
`
`

`

`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`extending into the cylindrical cavity of the main enclosure.” ’587 Application File
`
`History (Examiner’s Amendment, September 25, 2019) Ex-1020, p. 25.
`
`Hyperice filed an amendment to correct certain errors in the specification on
`
`October 2, 2019, and paid the issue fee on that day. The amendments were entered
`
`on November 4, 2019. The ’587 Application issued as the ’984 patent on
`
`December 3, 2019.
`
`LEGAL STANDARDS
`Person of Ordinary Skill in the Art (“POSA”)
`The ’574 patent is generally directed to a handheld battery-powered
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`electromechanical device for applying percussive massage to a person’s body. The
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`relevant field of art is handheld battery-powered electromechanical devices. A
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`POSA would likely have had a bachelor’s degree in mechanical or electrical (or
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`similar) engineering with about 5 years’ experience in the design of handheld
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`battery-powered electro-mechanical devices. Ex-1021, ¶¶14–17.
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`Claim Construction
`Per 37 C.F.R. § 42.200(b), a patent claim is to be construed “in accordance
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`with the ordinary and customary meaning of such claim as understood by one of
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`ordinary skill in the art and the prosecution history pertaining to the patent.” See
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`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005).
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
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`“Inner Perimeter”2
`“Inner perimeter” should be construed to mean “the inside of the perimeter.”
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`The ’574 patent uses the term “inner perimeter” in one place, referring to an
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`“endcap includ[ing] a plurality of protrusions 142 on an inner perimeter surface
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`144.” See 5:43–45; FIG. 4A, illustrated below with emphasis added, illustrates the
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`“inner perimeter surface 144,” which the “protrusions 142” lie “on.” Ex-1021, ¶43.
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`FIG. 9 illustrates a battery receiving tray 200 having a similar inner perimeter
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`surface, but the ’574 patent does not otherwise describe this feature. Ex-1021, ¶44.
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`2 This petition uses italics throughout to denote and highlight claim
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`language.
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`The claim term “perimeter” has no special meaning but is an abstract concept that
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`the Cambridge Dictionary defines as “the outer edge of a flat shape or area.” Ex-
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`1003. Therefore, the perimeter is just the line defining the outside edge of a two-
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`dimensional (2D) object or shape, such as a rectangle. Ex-1021, ¶45. The same
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`dictionary defines “inner” as “inside or contained within something else.” Ex-
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`1004. The “inner perimeter,” therefore means the inside of the perimeter. Patent
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`owner might attempt to import impermissibly a ring or wall extending from a top
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`surface of the battery receiving tray into the term “inner perimeter.” This would
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`describe in more detail the unlabeled structure of FIG. 9 (also FIG. 4A). Such a
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`construction is improper. See, e.g., Gart v. Logitech, Inc., 254 F.3d 1334, 1343
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`(Fed. Cir. 2001) (“it is well established that broad claims supported by the written
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`description should not be limited in their interpretation to a preferred
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`embodiment”). Indeed, the ’574 patent explains, “all the matter contained in the
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`above description or shown in the accompanying drawings shall be interpreted as
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
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`illustrative and not in a limiting sense.” 22:51–55 (emphasis added). Therefore,
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`“inner perimeter,” means the inside of the perimeter. Ex-1021, ¶¶45–46.
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` “Within the Inner Perimeter”
`The Cambridge Dictionary defines “within” as “inside or not beyond (a
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`particular area, limit, or period of time).” Ex-1002. Therefore, “within the inner
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`perimeter” means inside or not beyond the inside of the perimeter.
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`Patent Owner might attempt to narrow the scope of “within the inner
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`perimeter” to something like literally inside of the inner perimeter. This argument
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`would import improperly limitations that are not unambiguously claimed. Gart,
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`254 F.3d at 1342 (refusing to import a ledge from the figures into the claims).
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`Furthermore, Patent Owner’s infringement contentions in the parallel ITC
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`case implicitly agree with Petitioner’s construction. The contentions below
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`illustrate Patent Owner’s argument regarding a central, male coaxial connector
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`allegedly “within the inner perimeter,” used to connect a battery to. The images
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`below (note the 2D shape of the green area of the device) are inside of massagers
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`showing where the battery couples to the massagers. Ex-1021, ¶¶47–49.
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`18
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Ex-1005, p. 6.
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`19
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
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`Ex-1006, p. 7. Therefore, “within the inner perimeter” means inside or not beyond
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`the inside of the perimeter.
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`The construction would include, for example, contacts inside of the outline
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`of a relatively flat 2D surface, such that the contacts are “inside the perimeter,”
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`which Patent Owner’s infringement contentions agree with. Ex-1005, p. 6, and Ex-
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`1006, p. 7.
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`“Outer Perimeter”
`“Outer perimeter” should be construed to mean “the outside of the perimeter
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`or the surface area.”
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`The’574 patent uses the term “outer perimeter” in two places, neither of
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`which specifically applies to the use of that term as claimed. First, the ’574 patent
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`refers to “protrusions [that] are positioned to engage a corresponding plurality of
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`L-shaped notches 146 on the outer perimeters of the proximal ends of the upper
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`body portion and the lower body portion.” See 5:45–48; FIG. 4A, illustrated below
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`with emphasis added, illustrating “the outer perimeters of the proximal ends of the
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`upper body portion and the lower body portion,” that the “L-shaped notches 146”
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`are “on.” Ex-1021, ¶¶50–51.
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
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`Second, the ’574 patent refers to the “threaded radial bore [564] [that]
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`extends from the outer perimeter of the interface portion to the threaded
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`longitudinal central bore 554.” See Ex-1001, 9:27–29. FIG. 14, below with
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`emphasis added, illustrates the “interface portion 552” in which the “threaded
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`radial bore 564” is formed, where the threaded radial bore “extends from the outer
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`perimeter of the interface portion [552] to the threaded longitudinal central bore
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`554.” Ex-1001, 9:26–29; see also, Ex-1021, ¶52.
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`Petition for Post-Grant Review
`US Patent No. 10,561,574
`
`Ex-1001, FIG. 14
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`As noted above, the claim term “perimeter” has no special meaning but is an
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`abstract concept that the Cambridge Dictionary defines as “the outer edge of a flat
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`shape or area.” Ex-1003. Here, however, the patentee contextual