PTAB

IPR2017-00130

Bose Corp v. Freebit As

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: EARPIECE
  • Brief Description: The ’995 patent is directed to an earpiece for removable attachment to the ear. The invention claims a C-shaped ear unit with specific curves for stability, with its novelty focused on an additional curvature on the concha-facing surface designed to conform to the inner surface of the user's concha.

3. Grounds for Unpatentability

Ground 1: Obviousness over Berg, Varming, and Aber - Claims 1-5 and 7-13 are obvious over Berg ’307 in view of Varming and Aber.

  • Prior Art Relied Upon: Berg ’307 (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 Berg ’307, a prior patent by the same inventor, discloses all elements of the challenged independent claims except for the specific "curvature" designed to conform to the inner surface of the concha. The Patent Owner allegedly admitted as much during prosecution of a parent patent. Varming, which discusses the application that led to Berg ’307, identified a specific problem with that design: the C-shaped pad interferes with the wearer's crus of helix (a ridge in the concha), causing discomfort and instability. Varming proposed solving this by removing material to create a gap, forming a two-pad design. Aber taught an alternative, well-known solution for fitting an earpiece to the anatomical ridges of the concha by incorporating a groove or curvature into the earpiece's contact surface to accommodate the "rib-like portion" of the ear, which Petitioner contended corresponds to the crus of helix.
    • Motivation to Combine: A POSITA, starting with the Berg ’307 earpiece and recognizing the interference problem identified by Varming, would be motivated to improve its fit and comfort. Varming explicitly taught modifying the Berg ’307 design to accommodate the crus of helix. A POSITA would find it obvious to use the groove taught by Aber instead of the gap taught by Varming, as it represented a simple substitution of one known technique for another to solve the same known problem. Petitioner asserted that a POSITA would prefer Aber’s groove to Varming’s gap to maintain a larger contact surface, thereby prioritizing the "stability and firm support" that was an objective of the Berg ’307 design.
    • Expectation of Success: A POSITA would have a reasonable expectation of success because Aber explicitly taught using a groove to accommodate the exact anatomical feature that Varming identified as problematic in the Berg ’307 design. Applying Aber’s solution would predictably result in an earpiece that alleviates discomfort and improves stability.

Ground 2: Obviousness over Berg, Varming, Aber, and Marshall - Claim 6 is obvious over Berg ’307, Varming, Aber, and Marshall.

  • Prior Art Relied Upon: Berg ’307 (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 built upon the combination in Ground 1 to address 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." While Berg ’307 mentioned its earpiece could be used with devices like a "walkman," which were commonly used for stereo listening, it did not explicitly teach pairing two units. Marshall disclosed an interchangeable earpiece specifically for stereo listening with portable devices. Crucially, Marshall taught that to achieve a stereo effect, each earpiece is a mirror image of the other to fit the left and right ears, respectively.
    • Motivation to Combine: A POSITA would combine the teachings of Marshall with the improved earpiece design established in Ground 1. The motivation would be to adapt the comfortable and stable single earpiece for the common and desirable application of stereo listening. Marshall provided the well-known and straightforward method for doing so: creating a mirror-image pair of the earpiece. This modification was presented as a simple application of a known technique to an existing device to achieve a predictable result.
    • Expectation of Success: There would be a high expectation of success in creating a stereo pair from the modified Berg ’307 earpiece, as it involved applying a conventional design principle (mirror-image units for left and right ears) for a well-understood purpose (stereo sound).

4. Key Technical Contentions (Beyond Claim Construction)

  • A central technical contention was the anatomical equivalency between the structures addressed by the prior art. Petitioner argued that the "rib-like portion" of the ear that Aber’s groove was designed to accommodate is the same anatomical feature as the "crus of helix" that Varming identified as causing fit and comfort problems with the base Berg ’307 design. This asserted equivalency formed the foundation for the argument that Aber’s solution was directly applicable and obvious to try for solving Varming's identified problem.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-13 of Patent 8,976,995 as unpatentable.