Fitbit Inc v. AliPHCom

1. Case Identification

• Case #: IPR2016-00607
• Patent #: 8,529,811
• Filed: February 10, 2016
• Petitioner(s): Fitbit, Inc.
• Patent Owner(s): AliphCom, Inc. d/b/a Jawbone
• Challenged Claims: 1-26

2. Patent Overview

• Title: Method for Applying Protective Layers to Wearable Electronic Devices
• Brief Description: The ’811 patent discloses a process for manufacturing a wearable device by applying multiple protective layers over electronic elements coupled to a framework. The process generally involves applying a first protective material, one or more inner moldings, and a final outer molding to encapsulate and protect the electronics from environmental conditions such as moisture and shock.

3. Grounds for Unpatentability

Ground 1: Anticipation of Independent Claim 16 and Dependents - Claims 16-19, 23, and 26 are anticipated by Lo.

• Prior Art Relied Upon: Lo (Application # 2006/0264756).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Lo discloses every limitation of independent claim 16. Lo describes a "wrist-worn" ultrasonic monitor, which is a wearable device with sensors (ultrasonic transducers) coupled to a framework (a printed circuit board). Petitioner asserted that Lo’s three-layer protective structure directly maps to the claimed method steps:
    • Lo’s first "protective layer" that covers the transducers is the claimed "protective material."
    • Lo’s second molded "plastic housing" that encapsulates the entire monitor, including the first layer, is the claimed "inner molding."
    • Lo’s third "over-molded" outer "transmission medium," which is positioned to contact the user's skin, is the claimed "outer molding."
  • Key Aspects: Petitioner contended that Lo’s disclosure of using a room temperature vulcanizing (RTV) silicone that can be "moisture cured" or cured by "ultraviolet light" also anticipates dependent claim 26, which requires a curable coating.

Ground 2: Obviousness of Independent Claim 1 and Dependents - Claims 1, 6, and 15 are obvious over Anderson in view of Downey.

• Prior Art Relied Upon: Anderson (Application # 2009/0047797) and Downey (Application # 2009/0295596).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Anderson teaches a multi-layer encapsulation method for protecting microelectronics that maps directly to the steps of independent claim 1. Anderson discloses applying (1) an initial primer coating (the claimed "covering"), (2) a tamper-resistant coating (the "first inner molding"), (3) a filler-material inner coating (the "second inner molding"), and (4) an outer shell coating (the "outer molding"). While Anderson discloses the method, it does not explicitly apply it to a wearable device. Downey discloses a wearable exercise and swim watch with sensors and circuitry that requires protection from moisture, vibration, and impact—the exact hazards Anderson's method is designed to mitigate.
  • Motivation to Combine: A POSITA would combine these references because Downey’s wearable device presents the precise technical problem for which Anderson’s multi-layer encapsulation method provides a solution. Applying Anderson's known method to protect the sensitive components of Downey's watch was argued to be a straightforward application of a known technique to improve a known device.
  • Expectation of Success: A POSITA would have reasonably expected success in this combination, as it involved applying a known protective molding process to a device type known to require such protection, which would predictably result in a more durable and water-resistant wearable device.

Ground 3: Obviousness over Lo and a Secondary Reference - Claims 20-22 are obvious over Lo in view of Huang.

• Prior Art Relied Upon: Lo (Application # 2006/0264756) and Huang (Application # 2006/0110537).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds on the teachings of Lo as the primary reference disclosing the base multi-layer wearable device. The dependent claims at issue require the protective property of the inner molding to be hydrophobic (claim 20), oleophobic (claim 21), or anti-bacterial (claim 22). Petitioner asserted that Huang discloses applying coatings with these exact properties to the outer surfaces of electronic devices intended for skin contact.
  • Motivation to Combine: A POSITA would have been motivated to modify the plastic housing of Lo's wrist-worn monitor with the protective coatings taught by Huang. Since Lo's device is intended for use during exercise and prolonged skin contact, adding hydrophobic, oleophobic, and anti-bacterial properties would have been an obvious design choice to improve its resistance to sweat and oils and to enhance hygiene.
  • Expectation of Success: The combination was presented as the predictable application of well-known surface treatments (from Huang) to a device (from Lo) that would clearly benefit from them, yielding the expected improvements in durability and cleanliness.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges. These grounds relied on the same two primary combinations—Lo or Anderson/Downey—but added different secondary references to teach specific dependent claim limitations. For example, Petitioner argued claims were obvious over:

  • Lo in view of Handbook of Thermoplastic Elastomers (for using a medical-grade thermoplastic elastomer) and Toyoda (for adding a defect inspection and re-application step).
  • Anderson and Downey in view of Azuma (for a framework of synthetic fiber) and Brennan (for a framework using a thermoplastic elastomer).

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-26 of the ’811 patent as unpatentable.