PTAB

IPR2016-00416

Smart Solutions Technologies SL v. Koninklijke Philips NV

Key Events

Petition

petition Intelligence

Title: Electrode Arrangement
Brief Description: The ’951 patent discloses a wearable electrode arrangement comprising an electrically conductive fabric. The arrangement includes a portion of material that is substantially impermeable to moisture located on the skin-facing surface to trap perspiration, thereby reducing skin-to-electrode resistance and improving signal detection.

Prior Art Relied Upon: Granek (Patent 4,729,377).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Granek discloses every limitation of claims 1-3. Granek teaches a garment for receiving electrical impulses that includes conductive cloth electrodes (e.g., electrode 24) integral with the garment and positioned on the skin-facing surface. Petitioner contended that Granek’s disclosure of a tubular cylinder (22) made of "rubber or silicone rubber" passing through the electrode, or alternatively an electrode (24) itself made of "silicone rubber," meets the limitation of a "substantially impermeable material." This impermeable material is located on the first (skin-facing) surface of the conductive fabric. For dependent claims, Petitioner asserted that Granek’s rubber components are inherently mechanically flexible (claim 3) and are located directly on the conductive fabric’s surface (claim 2).
- Key Aspects: The argument relies on interpreting common materials like rubber and silicone rubber, used as structural components in Granek, as satisfying the functional "impermeable material" limitation of the ’951 patent.

Prior Art Relied Upon: Reho (International Publication No. WO 02/071935), Muir (Patent 568,095).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Reho discloses a garment-integrated sensor with an electrically conductive fabric "contact layer" (32) and a separate "moisture...seal layer" (33) to improve conductivity by trapping moisture. However, Reho places this impermeable seal layer on the outer surface of the fabric, not the skin-facing surface. Petitioner argued that Muir, an 1896 patent, remedies this deficiency by teaching a multi-layered electrode with a pliable, impermeable layer (C) located directly on the skin-facing surface of a conductive fabric layer (B) to enable "dry" application.
- Motivation to Combine: A POSITA would combine Muir's layered structure with Reho's garment-integrated sensor to achieve the known goal of improving conductivity. Since Reho already teaches the benefit of trapping moisture with an impermeable layer, applying Muir’s specific skin-side placement was presented as a common-sense design choice to more effectively trap perspiration against the skin.
- Expectation of Success: A POSITA would have reasonably expected that placing the impermeable layer on the skin-facing side of Reho's fabric, as taught by Muir, would predictably result in enhanced moisture retention and improved electrical contact, which was the stated goal of both references.

Prior Art Relied Upon: Reho (International Publication No. WO 02/071935).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner presented an alternative theory that Reho alone anticipates claims 1-3. While Reho’s figures show the impermeable seal layer (33) on the outer side of the conductive fabric layer (32), Petitioner argued that the impermeable material is inherently present on the skin-facing surface. Because the conductive layer is a porous fabric, applying the impermeable material (such as silicone) to the outer side would cause it to "leach" through the pores of the fabric during manufacturing. This leaching would result in at least a portion of the impermeable material being "located on" the first, skin-facing surface, thereby satisfying the claim limitation.
- Key Aspects: This argument is supported by a technical declaration (Maciá Barber) detailing an experiment where an electrode was constructed per Reho’s teachings, allegedly demonstrating that a silicone layer applied to the back did, in fact, penetrate through to the front surface of the conductive fabric.
Additional Grounds: Petitioner asserted additional obviousness challenges based on Granek in view of Noguchi (to teach loading a silicone rubber component with conductive material for claim 4) and Reho in view of Greene (as an alternative combination to place an impermeable layer on the skin-facing surface).

"located on said first surface" (claim 1): Petitioner argued this term should be construed broadly to mean the material is "located directly on the first surface or is over, adjacent to, touching, in electrical communication with, or embedded in the first surface." This construction, supported by claim differentiation from dependent claim 2 (which explicitly adds "directly"), was critical for the argument that Granek's rubber cylinder anticipates this limitation.
"substantially impermeable to moisture" (claim 1): Petitioner proposed this is a broad term of degree whose meaning is informed by its stated purpose: to "promote gathering of perspiration." This construction does not require perfect impermeability and allows materials like rubber, not explicitly described for trapping moisture in the prior art, to meet the limitation.

Material Leaching in Fabric Electrodes: A central technical contention, particularly for the anticipation argument against Reho, was that applying a liquid polymer (like silicone) to one side of a porous conductive fabric inherently results in that polymer leaching through the fabric's pores. Petitioner argued this process makes the presence of the impermeable material on the skin-facing surface an inherent, undisclosed feature of the device taught by Reho, a position supported by a commissioned experiment.

Petitioner requested institution of an inter partes review and cancellation of claims 1-4 of the ’951 patent as unpatentable under 35 U.S.C. §§ 102 and 103.