PTAB

IPR2017-00129

Bose Corp v. Freebit As

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: EARPIECE
  • Brief Description: The ’436 patent discloses an in-ear earpiece designed for stable and removable attachment to the human ear. The invention’s point of novelty over prior art by the same inventor is a specific "curved portion" on the earpiece's contact surface, which is configured to align with and accommodate the ear's crus of helix to provide an improved and more secure fit.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 and 7-10 are obvious over Berg, Varming, and Aber

  • Prior Art Relied Upon: Berg (Patent 6,944,307), Varming (WO 2004/100508), and Aber (Patent 1,753,817).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the patent owner, during original prosecution, admitted that its own prior art, the Berg (’307 patent), taught all features of the challenged claims except for the novel "curved portion." Berg disclosed the foundational C-shaped earpiece designed to engage various surfaces within the concha for stability. The Varming reference, which discusses the same earpiece design as Berg, explicitly identified a key deficiency: the continuous C-shape interferes with the user's crus of helix, leading to discomfort and causing the device to be forced out of the ear. Varming proposed solving this by removing material at the point of interference, creating a gap. Aber was presented as teaching a well-known, alternative solution to the same general problem of fitting an earpiece around anatomical ridges. Aber disclosed using a groove or curvature on the contact surface to accommodate a "rib-like portion" of the ear, which Petitioner asserted is anatomically equivalent to the crus of helix. The combination of Berg's earpiece, Varming's identified problem and location for a solution, and Aber's known grooved solution allegedly rendered the claimed invention obvious.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) starting with the Berg ’307 earpiece would be motivated by Varming's explicit teaching that the design was flawed due to interference with the crus of helix. Varming provided a clear reason to modify the Berg design at that specific location. While Varming suggested one solution (a gap), a POSITA would recognize from Aber that using a groove was a known and interchangeable method for accommodating such anatomical features. Petitioner argued a POSITA would be motivated to substitute Aber's groove for Varming's gap to solve the identified problem while better preserving the large contact surface needed for stability and firm support, which Varming’s gapped design could compromise.
    • Expectation of Success: A POSITA would have a high expectation of success. The proposed modification was a simple substitution of one known solution (Aber's groove) for another (Varming's gap) to solve a known problem (anatomical interference) in the predictable field of earpiece design. Since both features were expressly intended to improve fit and comfort, their combination to achieve that same goal would yield predictable results.

Ground 2: Claim 6 is obvious over Berg, Varming, Aber, and Marshall

  • Prior Art Relied Upon: Berg (Patent 6,944,307), Varming (WO 2004/100508), Aber (Patent 1,753,817), and Marshall (Patent 5,625,171).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claim 6, which added the limitation that the ear unit is "operated together with at least a second ear unit to form a stereo effect." Petitioner contended that the earpiece structure, already rendered obvious by the combination of Berg, Varming, and Aber, was merely being applied in a well-known stereo configuration taught by Marshall. The Marshall (’171 patent) reference explicitly disclosed an "interchangeable earpiece for stereo listening" for use with portable music players (e.g., a Walkman), a use case also mentioned in Berg. Marshall taught that to create a stereo pair, the second earpiece should be a mirror image of the first to properly fit the user's left and right ears.
    • Motivation to Combine: A POSITA would be motivated to adapt the obvious single earpiece design from Ground 1 for stereo use to satisfy the widespread consumer demand for stereo audio from portable devices. Marshall provided a simple and direct roadmap for this modification. Petitioner argued this combination was nothing more than the application of a known technique (creating a mirror-image stereo pair) to a known device (an in-ear earpiece) to obtain the predictable result of stereo sound.

4. Key Technical Contentions (Beyond Claim Construction)

  • A central technical assertion underpinning Petitioner's obviousness argument was the anatomical equivalence of different terminologies used in the prior art. Petitioner contended that the "rib-like portion" of the ear that Aber's grooved earpiece was designed to accommodate is the same anatomical structure as the "crus of helix." This asserted equivalence was critical to establishing the rationale for a POSITA to apply Aber's solution to the specific problem identified in Varming.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review (IPR) and the cancellation of claims 1-10 of Patent 8,630,436 as unpatentable under 35 U.S.C. §103.