U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`THERABODY, INC.
`Petitioner
`
`
`v.
`
`HYPERICE IP SUBCO, LLC
`Patent Owner.
`
`
`_________________________
`
`Case No. PGR2025-00013
`U.S. Patent No. 11,938,082
`_________________________
`
`
`
`DECLARATION OF JOHN D. PRATT, PH.D.,
`IN SUPPORT OF PETITION FOR POST GRANT REVIEW
`OF U.S. PATENT NO. 11,938,082
`
`
`
`
`
`
`
`
`Petitioner Therabody Ex-1002, 0001
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`I. 
`
`II. 
`
`INTRODUCTION .......................................................................................... 1 
`A.  Qualifications and Experience ............................................................. 2 
`B.  MATERIALS CONSIDERED ............................................................. 7 
`RELEVANT LEGAL STANDARDS ............................................................ 8 
`A.  Anticipation .......................................................................................... 8 
`B. 
`Obviousness .......................................................................................... 9 
`C.  Written Description ............................................................................ 12 
`D. 
`Indefiniteness ...................................................................................... 13 
`E. 
`Level of Ordinary Skill in the Art ...................................................... 14 
`F. 
`Claim Construction ............................................................................ 15 
`SUMMARY OF GROUNDS ....................................................................... 17 
`III. 
`IV.  THE ’082 PATENT ...................................................................................... 17 
`A.  Overview of the ’082 Patent ............................................................... 17 
`B. 
`The Priority Date for the ’082 Patent ................................................. 21 
`C. 
`Prosecution History of the ’082 Patent .............................................. 21 
`D. 
`The State of the Art ............................................................................ 23 
`1. 
`Connectors ............................................................................... 23 
`2. 
`“Quick Connect System” ......................................................... 25 
`3. 
`Connectors on Percussive Massage Devices ........................... 25 
`The Challenged Claims ...................................................................... 30 
`E. 
`V.  OVERVIEW OF PRIOR ART ..................................................................... 31 
`A.  U.S. Patent No. 4,513,737 (“Mabuchi”) (Ex-1005) ........................... 31 
`B. 
`U.S. Patent 6,432,072 (“Harris”) (Ex-1006) ...................................... 34 
`C. 
`U.S. Patent No. 6,682,496 (“Pivaroff”) (Ex-1007) ............................ 35 
`D.  U.S. Published Patent App. No. 2007/0150004 (“Colloca”) (Ex-
`1009) ................................................................................................... 37 
`U.S. Patent No. 3,007,504 (“Clark”) (Ex-1014) ................................ 39 
`
`E. 
`
`i
`
`Petitioner Therabody Ex-1002, 0002
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`VI. 
`
`VII. 
`
`B. 
`
`2. 
`
`INVALIDITY OF THE ’082 PATENT CLAIMS UNDER 35 U.S.C.
`§ 112 ............................................................................................................. 40 
`A.  Ground 1: Claims 1-18 Are Unpatentable Under 35 U.S.C. § 112
`For Lack of Written Description Support in the Specification. ......... 40 
`Ground 2: Claims 13-16 Are Unpatentable Under 35 U.S.C.
`§ 112 Because They Are Indefinite. ................................................... 47 
`INVALIDITY OF THE ’082 PATENT IN VIEW OF PRIOR ART .......... 50 
`A.  Ground 3: Claims 1, 7, 9-11, 13, and 18 Are Unpatentable Under
`35 U.S.C. § 103 As Obvious Over Mabuchi in View of Colloca. ..... 50 
`1. 
`A POSITA Would Have Been Motivated to Combine
`Mabuchi’s Teachings With Colloca and Would Have Had
`a Reasonable Expectation of Success. ..................................... 50 
`Independent Claim 1 ................................................................ 52 
`a. 
`Element 1[pre]: “A percussive massager
`comprising:” .................................................................. 52 
`Element 1[a]: “a housing;” ........................................... 53 
`Element 1[b]: “a piston having a proximal end and
`a distal end, the distal end of the piston having a
`bore;” ............................................................................. 53 
`Element 1[c]: “a motor operatively connected to
`the proximal end of the piston, wherein the motor
`is configured to cause the piston to reciprocate at a
`first speed;” .................................................................... 57 
`Element 1[d]: “a drive mechanism that controls a
`predetermined stroke length of the piston; and” ........... 58 
`Element 1[e]: “a quick-connect system comprising
`the distal end of the piston and a first massaging
`head, wherein the quick-connect system is
`configured to have a proximal end of the first
`massaging head inserted into or removed from the
`bore while the piston reciprocates the
`predetermined stroke length at the first speed.” ............ 60 
`
`b. 
`c. 
`
`d. 
`
`e. 
`
`f. 
`
`ii
`
`Petitioner Therabody Ex-1002, 0003
`
`

`

`
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`Claim 7: “The percussive massager of claim 1, wherein
`the motor has an output shaft configured to rotate about a
`rotation axis, and wherein the drive mechanism comprises:
`a flywheel operatively connected to the output shaft of the
`motor to rotate about a flywheel axis, the output shaft
`extending into the flywheel along the flywheel axis; and a
`crank pin extending from the flywheel, the crank pin being
`operatively connected to the piston.” ....................................... 65 
`Claim 9: “The percussive massager of claim 7, further
`comprising a handle, wherein the motor and the handle are
`on a same side of a plane perpendicular to the flywheel
`axis that extends through the flywheel.” .................................. 67 
`Claim 10: “The percussive massager of claim 7, wherein
`an offset between the flywheel axis and an axis of the
`crank pin controls the predetermined stroke length of the
`piston.” ..................................................................................... 68 
`Claim 11: “The percussive massager of claim 7, wherein
`the motor is directly connected to the flywheel, and
`wherein the crank pin is directly connected to the
`flywheel.” ................................................................................. 69 
`Claim 13: “The percussive massager of claim 1, wherein
`the bore comprises a substantially cylindrical bore.” .............. 69 
`Independent Claim 18 .............................................................. 70 
`a. 
`Element 18 [pre]: “A method of assembling a
`percussive massager, the method comprising:” ............ 70 
`Element 18 [a]: “operatively connecting a motor
`to a proximal end of a piston, wherein the motor is
`configured to cause the piston to reciprocate at a
`first speed, wherein a distal end of the piston has a
`bore,”.............................................................................. 70 
`Element 18 [b]: “providing a drive mechanism
`configured to control a predetermined stroke
`length of the piston;” ..................................................... 71 
`
`b. 
`
`c. 
`
`iii
`
`Petitioner Therabody Ex-1002, 0004
`
`

`

`
`
`B. 
`
`C. 
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`d. 
`
`Element 18 [c]: “providing a quick-connect
`system comprising the distal end of the piston and
`a first massaging head, wherein a proximal end of
`the first massaging head is configured to be
`inserted into or removed from the bore while the
`piston reciproctes the predetermined stroke length
`at the first speed.” .......................................................... 71 
`Ground 4: Claims 2-4 are unpatentable under 35 U.S.C. § 103
`as obvious over Mabuchi and Colloca, further in view of Harris. ..... 72 
`1. 
`A POSITA Would Have Been Motivated to Combine
`Mabuchi and Colloca’s Teachings With Harris and Would
`Have Had a Reasonable Expectation of Success. .................... 72 
`Claim 2: “The percussive massager of claim 1, wherein
`the motor is configured to cause the piston to reciprocate
`at a second speed.” ................................................................... 76 
`Claim 3: “The percussive massager of claim 1, further
`comprising: a control panel positioned on an exterior of
`the housing.” ............................................................................ 77 
`Claim 4: “The percussive massager of claim 3, wherein
`the control panel is configured to display one or more
`visual indicators.”..................................................................... 78 
`Ground 5: Claims 1, 7, 9-11, 13, and 18 Are Unpatentable Under
`35 U.S.C. § 103 As Obvious Over Pivaroff In View of Clark. ......... 78 
`1. 
`A POSITA Would Have Been Motivated to Combine
`Pivaroff and Clark’s Teachings and Would Have Had a
`Reasonable Expectation of Success. ........................................ 79 
`Independent Claim 1 ................................................................ 82 
`a. 
`Element 1[pre]: “A percussive massager
`comprising:” .................................................................. 82 
`Element 1[a]: “a housing;” ........................................... 82 
`
`1. 
`
`2. 
`
`3. 
`
`2. 
`
`b. 
`
`iv
`
`Petitioner Therabody Ex-1002, 0005
`
`

`

`
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`c. 
`
`d. 
`
`Element 1[b]: “a piston in the housing having a
`proximal end and a distal end, the distal end of the
`piston having a bore;” .................................................... 82 
`Element 1[c]: “a motor operatively connected to
`the proximal end of the piston, wherein the motor
`is configured to cause the piston to reciprocate at a
`first speed;” .................................................................... 83 
`Element 1[d]: “a drive mechanism that controls a
`predetermined stroke length of the piston; and” ........... 85 
`Element 1[e]: “a quick-connect system comprising
`the distal end of the piston and a first massaging
`head, wherein the quick-connect system is
`configured to have a proximal end of the first
`massaging head inserted into or removed from the
`bore while the piston reciprocates the
`predetermined stroke length at the first speed.” ............ 86 
`Claim 7: “The percussive massager of claim 1, wherein
`the motor has an output shaft configured to rotate about a
`rotation axis, and wherein the drive mechanism comprises:
`a flywheel operatively connected to the output shaft of the
`motor to rotate about a flywheel axis, the output shaft
`extending into the flywheel along the flywheel axis; and a
`crank pin extending from the flywheel, the crank pin being
`operatively connected to the piston.” ....................................... 89 
`Claim 9: “The percussive massager of claim 7, further
`comprising a handle, wherein the motor and the handle are
`on a same side of a plane perpendicular to the flywheel
`axis that extends through the flywheel.” .................................. 91 
`Claim 10: “The percussive massager of claim 7, wherein
`an offset between the flywheel axis and an axis of the
`crank pin controls the predetermined stroke length of the
`piston.” ..................................................................................... 92 
`Claim 11: “The percussive massager of claim 7, wherein
`the motor is directly connected to the flywheel, and
`
`e. 
`
`f. 
`
`v
`
`Petitioner Therabody Ex-1002, 0006
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`7. 
`
`8. 
`
`b. 
`
`wherein the crank pin is directly connected to the
`flywheel.” ................................................................................. 93 
`Claim 13: “The percussive massager of claim 1, wherein
`the bore comprises a substantially cylindrical bore.” .............. 94 
`Independent Claim 18 .............................................................. 95 
`a. 
`Element 18 [pre]: “A method of assembling a
`percussive massager, the method comprising:” ............ 95 
`Element 18 [a]: “operatively connecting a motor
`to a proximal end of a piston, wherein the motor is
`configured to cause the piston to reciprocate at a
`first speed, wherein a distal end of the piston has a
`bore,”.............................................................................. 96 
`Element 18 [b]: “providing a drive mechanism
`configured to control a predetermined stroke
`length of the piston;” ..................................................... 96 
`Element 18 [c]: “providing a quick-connect
`system comprising the distal end of the piston and
`a first massaging head, wherein a proximal end of
`the first massaging head is configured to be
`inserted into or removed from the bore while the
`piston reciproctes the predetermined stroke length
`at the first speed.” .......................................................... 97 
`D.  Ground 6: Claims 2-4 Are Unpatentable Under 35 U.S.C. § 103
`As Obvious Over Pivaroff in View of Clark, Further In View of
`Harris. ................................................................................................. 98 
`1. 
`A POSITA Would Have Been Motivated to Combine
`Pivaroff and Clark With Harris’s Teachings and Would
`Have Had a Reasonable Expectation of Success. .................... 98 
`Claim 2: “The percussive massager of claim 1, wherein
`the motor is configured to cause the piston to reciprocate
`at a second speed.” ................................................................. 102 
`Claim 3: “The percussive massager of claim 1, further
`comprising: a control panel positioned on an exterior of
`
`c. 
`
`d. 
`
`2. 
`
`3. 
`
`vi
`
`Petitioner Therabody Ex-1002, 0007
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`4. 
`
`the housing.” .......................................................................... 103 
`Claim 4: “The percussive massager of claim 3, wherein
`the control panel is configured to display one or more
`visual indicators.”................................................................... 103 
`VIII.  CONCLUSION ........................................................................................... 103 
`
`
`vii
`
`Petitioner Therabody Ex-1002, 0008
`
`

`

`I.
`
`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`
`INTRODUCTION
`1.
`I have been retained as an expert witness by the law firm of O’Melveny
`
`& Myers LLP, counsel for Petitioner Therabody, Inc. (“Therabody” or “Petitioner”),
`
`as an independent expert in this proceeding before the Patent Trial and Appeal Board
`
`(“PTAB” or “Board”).
`
`2.
`
`I understand that Therabody is requesting that the Board institute a post
`
`grant review (“PGR”) proceeding of Claims 1-18 of U.S. Patent No. 11,938,082
`
`(“the ’082 Patent”) (Ex-1001), currently assigned to Hyperice IP Subco, LLC
`
`(“PO”).
`
`3.
`
`I am not and have never been an employee of Therabody. WIT Legal,
`
`LLC is being compensated at my usual and customary rate of $850 per hour. No
`
`part of my compensation depends on the outcome of this proceeding, and I have no
`
`other interest in this proceeding.
`
`4.
`
`I have been asked to provide my independent analysis of Claims 1-18
`
`of the ’082 Patent and whether they satisfy the requirements of 35 U.S.C. §§ 112. I
`
`have also been asked to provide my independent analysis of Claims 1-4, 7, 9-11, 13,
`
`and 18 of the ’082 Patent in light of the prior art publications cited below. I have
`
`also been asked to consider the state of the art and prior art available as of July 1,
`
`2013. It is my opinion that Claims 1-18 of the ’082 Patent are unpatentable for the
`
`reasons provided below.
`
`1
`
`Petitioner Therabody Ex-1002, 0009
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`
`A. Qualifications and Experience
`5.
`I have a Bachelor’s degree and a Master’s degree in Mechanical
`
`Engineering from California State University, Fullerton, and a Ph.D. in Civil
`
`Engineering with a field of study in Structural Mechanics from the University of
`
`California, Irvine. My doctoral dissertation focused almost exclusively on the
`
`behavior of fasteners in flush-fastened joints. A copy of my CV is attached here as
`
`Exhibit 1003.
`
`6.
`
`During my time in industry and in my subsequent consulting practice I
`
`have gained extensive experience with various manufacturing techniques, including
`
`metal forming and machining as well as molding and 3D printing of plastic parts. I
`
`have worked on the development of numerous structures, such as permanent and
`
`temporary fasteners, and their related tooling and equipment, for the aerospace,
`
`industrial and sporting goods markets from August 1969 through the present. I am
`
`the named inventor on 48 United States patents, six of which concern mechanisms
`
`for aircraft applications, and many more counterpart foreign patents. Devices made
`
`in accordance with my patents have been very successful, estimated to result in well
`
`over $400 million in sales.
`
`7.
`
`I served as the senior engineering executive for three medium-sized
`
`aerospace hardware companies from early 1979 through mid-2005. As an example,
`
`I served as Vice President for Research & Development at Cherry Textron from
`
`2
`
`Petitioner Therabody Ex-1002, 0010
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`about 1991-2000. While in that position, I had primary responsibility for research,
`
`new product development, existing product engineering, product testing, and
`
`product qualification to Industry and Government/Military specifications and
`
`agencies. The products for which I was responsible included consumer products
`
`(quick-change axles for in-line skates, threaded fasteners used to attach spikes to
`
`track and field shoes), machine screws and bolts for use in military aircraft, and a
`
`wide variety of other aerospace fasteners. I was also responsible for intellectual
`
`property matters related to the company’s research and development efforts. Further,
`
`I was responsible for analyzing competitors’ patents to avoid infringement and to
`
`determine the novelty of new engineering concepts.
`
`8.
`
`During my time in the fastener industry, I served as an active member
`
`of several fastener standards organizations, including the Aero-Mechanical
`
`Fasteners Requirements Group AMFRG (U. S. Air Force MIL-STD-1515), National
`
`Aerospace Standards Committee NASC, International Standards Organization (as
`
`International Chairman of ISO/TC20/SC4/WG8 for rivets, blind fasteners, threaded
`
`and swage pin-collar fasteners), Fastener Testing and Development Group FTDG
`
`(U.S. Navy, MIL-STD-1312), Fastener Engineering for Optimum Performance
`
`Standards FEOPS (U.S. Navy), MIL-HDBK-5 (DoD), MMPDS (DoD/FAA), and
`
`Industrial Fasteners Institute IFI (as Chairman of its Aerospace Fastener Technical
`
`Committee). While with the IFI I helped lead the development of TSO-C148 at the
`
`3
`
`Petitioner Therabody Ex-1002, 0011
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`Federal Aviation Administration (“FAA”) for fasteners used in commercial transport
`
`aircraft.
`
`9.
`
`Between 1972 and 1979 I worked on the design and development of,
`
`among other things, air-driven fastener installation tools. These included pneumatic
`
`tools such as the Olympic RV51G and air-over-hydraulic tools, such as the Olympic
`
`RV60G. These tools incorporate one or more shifting or rotatable valves used to
`
`direct the flow of fluids (air and/or hydraulic fluid) through channels in the tool’s
`
`housings and between chambers.
`
`10. Between 1979 and mid-2000 I was focused on design and product
`
`engineering of aerospace fasteners and clamping mechanisms, as well as the air-
`
`driven tools needed to install them.
`
`11. Between mid-2000 and late 2017, I worked on the development of
`
`mechanical and electro-mechanical latching and locking devices for aircraft, as well
`
`as development of fluid-driven tools for installation of aircraft assembly clamps. For
`
`example, in 2001, I co-invented and led the development of intrusion-resistant
`
`mechanical and electronic/electrical latches for flight deck doors and decompression
`
`panels. The mechanical versions of these latches have now been installed in half the
`
`world’s fleet of commercial transport aircraft after the events of September 11, 2001.
`
`During this period, I was also intimately involved in the design and development of
`
`permanent and temporary fasteners for new aircraft.
`
`4
`
`Petitioner Therabody Ex-1002, 0012
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`In summary, my entire professional career has been spent designing and
`
`12.
`
`overseeing the fabrication of mechanisms and components for mechanical devices.
`
`These parts involved kinematic and stress analysis using both conventional closed
`
`form mathematical methods and sophisticated linear and nonlinear finite element
`
`methods employing specialized codes from Lawrence Livermore National
`
`Laboratory (for whom I served as a collaborator on the software) as well as state-of-
`
`the-art commercial software. My engineering work also relied heavily on
`
`characterization of materials behavior including research and practical experience
`
`with various forming, machining, casting and compression/injection molding of
`
`various materials, including those used in the hinge components at issue in this
`
`investigation.
`
`13. During my time with the Hartwell Corporation the mechanisms over
`
`which I had engineering responsibility were flight critical aerospace mechanisms
`
`requiring certification by aircraft government certification officials, and so were in
`
`effect life-safety devices. The flightdeck door and decompression panel latch
`
`mechanisms of which I was a named inventor and had responsibility for
`
`development, were implemented on half the world’s fleet of commercial transport
`
`aircraft after extensive testing and certification by airworthiness authorities. These
`
`mechanisms comprised many dozens of precisely engineered components and after
`
`qualification and certification testing were implemented into the flightdeck doors of
`
`5
`
`Petitioner Therabody Ex-1002, 0013
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`Boeing, Embraer, Bombardier, Douglas and other manufacturer’s aircraft in the
`
`years following 9/11.
`
`14. Finally, my work on various industry and government standards and
`
`mechanism-related committees has provided above average insight into the
`
`workings of consensus standards committees.
`
`15.
`
`I have also served as an expert in recent patent litigation concerning
`
`captive panel fasteners, reversible electric strike mechanisms, magnetic door locks,
`
`reversible mortise locks, pressure responsive electrical switches, bulk scrap metal
`
`loading apparatus, shear wall reinforcement panels, keyboard support mechanisms,
`
`hurricane abatement systems, outdoor lighting fixtures, mint and toothpick
`
`dispensers, storm drain covers, box spring stapling machines, hook and loop
`
`fasteners, corded and cordless window coverings, folding lawn chairs, electrically-
`
`locked gun safes, television consoles, threaded dental implants, combat helmets, and
`
`low profile aircraft engine nacelle latches, among other devices.
`
`16.
`
`I am presently the Principal of Argos Forensic Engineering, a company
`
`I founded in June 2005 to provide product development support and litigation
`
`consulting. My focus since late 2017 has been litigation consulting on a part-time
`
`basis.
`
`6
`
`Petitioner Therabody Ex-1002, 0014
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`
`B. MATERIALS CONSIDERED
`17.
`In forming my opinions, I reviewed the following documents, in
`
`addition to others I have cited in my declaration. I also relied on my own knowledge
`
`of and experience in the field of mechanical engineering and rotating or
`
`reciprocating mechanisms.
`
`Ex. No.
`
`Description
`
`Ex-1001 U.S. Patent No. 11,938,082 (“the ’082 Patent”)
`
`Ex-1003 Curriculum Vitae of Dr. John Pratt
`
`Ex-1004 Prosecution History of the ’082 Patent (Application No. 18/515,112)
`
`Ex-1005 U.S. Patent No. 4,513,737 (“Mabuchi”)
`
`Ex-1006 U.S. Patent No. 6,432,072 (“Harris”)
`
`Ex-1007 U.S. Patent No. 6,682,496 (“Pivaroff”)
`
`Ex-1008 U.S. Patent Application Publication No. 2003/0195443 (“Miller”)
`
`Ex-1009 U.S. Patent Application Publication No. 2007/0150004 (“Colloca”)
`
`Ex-1010 Taiwanese Patent Number 9,720,7752U (“Wang”)
`
`Ex-1011 Certified English Translation of Wang
`
`Ex-1012 U.S. Patent No. 2,550,775 (“Clark ’775”)
`
`Ex-1013 Prosecution History of U.S. Patent No. 11,857,482 (Application No.
`17/681,367)
`
`Ex-1014 U.S. Patent No. 3,007,504 (“Clark”)
`
`Ex-1015 Hyperice’s P.R. 4.2 Exchange of Claim Terms for Construction and
`Extrinsic Evidence, Hyper Ice Inc. v. Joicom Corporation, No. 8:24-
`cv-00098-JWH-DFM (C.D. Cal. Nov. 25, 2024)
`
`7
`
`Petitioner Therabody Ex-1002, 0015
`
`

`

`Ex. No.
`
`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`Description
`
`Ex-1016 Defendant Therabody, Inc.’s First Amended P.R. 4-2 Identification
`of Preliminary Claim Constructions, Hyper Ice, Inc. et al v.
`Therabody, Inc., No. 8:24-cv-00390-JWH-DFM (C.D. Cal Dec. 17,
`2024)
`
`Ex-1017 Appendix B1 – Claim Mapping Chart
`
`Ex-1018 Appendix B2 – Claim Mapping Chart
`
`
`II. RELEVANT LEGAL STANDARDS
`18.
`In forming my opinions and considering the subject matter of the ’082
`
`Patent and its claims, I am relying on certain legal principles that counsel in this case
`
`explained to me. My understanding of these concepts is summarized below.
`
`A. Anticipation
`19.
`I understand that earlier publications and patents may act to render a
`
`patent unpatentable for one of two reasons: (1) anticipation, and (2) obviousness.
`
`20.
`
`It is my understanding that the claims of a patent are anticipated by a
`
`prior art reference if each and every element of the claim is found either explicitly
`
`or inherently in the reference. I understand that inherency requires a showing that
`
`the missing descriptive matter in the claim is necessarily present in the allegedly
`
`anticipating reference, and that it would have been so recognized by a person of
`
`ordinary skill in the art (“POSITA”).
`
`8
`
`Petitioner Therabody Ex-1002, 0016
`
`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`I understand that when a challenged claim covers several structures,
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`21.
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`either generically or as alternatives, the claim is deemed anticipated if any of the
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`structures within the scope of the claim is found in the prior art reference.
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`22. Although anticipation typically involves the analysis of a single prior
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`art reference, I understand that additional references may be used to show that the
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`prior art reference has enabling disclosure (i.e., allows a POSITA to make the
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`invention without undue experimentation), to explain the meaning of a term used in
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`the prior art reference, and/or to show that a characteristic is inherent in the prior art
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`reference.
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`B. Obviousness
`23.
`I understand that a claim is invalid as obvious if it would have been
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`obvious to a person of ordinary skill in the art at the time the alleged invention was
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`made. This means that even if all of the elements of the claim cannot be found in a
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`single prior art reference that would anticipate the claim, a person of ordinary skill
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`in the art who was aware of the prior art would have been able to come up with the
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`claimed invention. This may be the case, for example, where the missing element
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`represents only an insubstantial different over the prior art or a reconfiguration of a
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`known system. I understand that in an obviousness determination, the person of
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`ordinary skill in the art is presumed to have knowledge of all material prior art.
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`9
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`Petitioner Therabody Ex-1002, 0017
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`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`I understand that an obviousness analysis requires an understanding of
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`24.
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`the scope and content of the prior art, any differences between the alleged invention
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`and the prior art, and the level of ordinary skill in evaluating the pertinent art.
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`25.
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`I understand that when a product is available, design incentives and
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`other market forces can prompt variations of it, either in the same field or a different
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`one. If a person of ordinary skill in the art can implement a predictable variation,
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`obviousness likely bars its patentability. For the same reason, if a technique has been
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`used to improve one device and a person of ordinary skill in the art would recognize
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`that it would improve similar devices in the same way, using the technique would
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`have been obvious.
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`26.
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`I understand that whether a prior art reference renders a patent claim
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`unpatentable as obvious is determined from the perspective of a person of ordinary
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`skill in the art at the time of the alleged invention. I have been told that there is no
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`requirement that the prior art contain an express suggestion to combine known
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`elements to achieve the claimed invention, but a suggestion to combine known
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`elements to achieve the claimed invention may come from the prior art, as filtered
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`through the knowledge of one skilled in the art. In addition, I have been told that
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`the inferences and creative steps a person of ordinary skill in the art would employ
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`are relevant to the determination of obviousness.
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`10
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`Petitioner Therabody Ex-1002, 0018
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`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`I understand that one may consider, e.g., whether (1) the change was
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`27.
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`merely the predictable result of using prior art elements according to their known
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`functions, or whether it was the result of true inventiveness; (2) there is some
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`teaching or suggestion in the prior art to make the modification or combination of
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`elements claimed in the patent; (3) the claimed innovation applies a known technique
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`that had been used to improve a similar device or method in a similar way; (4) the
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`claimed invention would have been obvious to try, meaning that the claimed
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`innovation was one of a relatively small number of possible approaches to the
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`problem with a reasonable expectation of success by those skilled in the art; (5) the
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`invention merely substituted one known element for another known element in order
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`to obtain predictable results; (6) the invention merely applies a known technique to
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`a known device, method, or product to yield predictable results; or (7) known work
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`in one field of endeavor may have prompted variations of it for use in either the same
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`field or a different one based on design incentives or other market forces that would
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`have been predictable to a person of ordinary skill in the art.
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`28.
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`I further understand that certain factors may support or rebut the
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`obviousness of a claim. I understand that such secondary considerations include,
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`among other things, commercial success of the patented invention, skepticism of
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`those having ordinary skill in the art at the time of the invention, unexpected results
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`of the invention, any long-felt but unsolved need in the art that was satisfied by the
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`11
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`Petitioner Therabody Ex-1002, 0019
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`

`

`U.S. Patent No. 11,938,082
`Declaration of John D. Pratt, Ph.D.
`alleged invention, the failure of others to make the alleged invention, praise of the
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`alleged invention by those having ordinary skill in the art, and copying of the alleged
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`invention by others in the field. I understand that there must be a nexus—that is, a
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`connection—between any such secondary considerations and the alleged invention.
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`I also understand that contemporaneous and independent invention by others is a
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`secondary consideration tending to show obviousness.
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`29.
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`I am not aware of any allegations by the named inventors of the ’082
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`Patent or any assignee of the ’082 Patent that any secondary considerations tend to
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`rebut the obviousness of the ’082 Patent.
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`30. Additionally, I understand that in considering obviousness, it is
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`important not to use the benefit of hindsight derived from the patent under
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`consideration.
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`C. Written Description
`31.
`I understand a patent claim is invalid if the patent fails to provide
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`adequate description of the alleged inventions.