PTAB

IPR2017-01307

Freebit As v. Bose Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: In-Ear Earpiece with Positioning and Retaining Structure
  • Brief Description: The ’253 patent describes an in-ear earpiece featuring an ear interface with a body configured to fit within the concha and a positioning and retaining structure that extends from the body to engage the user's antihelix for a secure fit.

3. Grounds for Unpatentability

Ground 1: Claims 1 and 2 are obvious over Sapiejewski in view of Tan.

  • Prior Art Relied Upon: Sapiejewski (Application # 2008/0002835) and Tan (Application # 2011/0255729).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sapiejewski disclosed an in-ear earphone nearly identical to that of the ’253 patent, including the acoustic driver, housing, front chamber, and nozzle. Sapiejewski's "cushion 106" was asserted to be the claimed "body" configured to fit in the concha. However, Sapiejewski lacked the claimed positioning and retaining structure that engages the antihelix. Tan was alleged to supply this missing element, teaching an "expansion adaptor" with a retaining member designed to be fixed to an earphone housing to provide a secure fit by engaging the user’s antihelix and concha. The combination of Sapiejewski's earphone with Tan's adaptor was argued to meet all limitations of claims 1 and 2.
    • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would be motivated to combine the references to solve the well-known problem of in-ear earphones lacking stability and falling out, particularly during vigorous activity. Tan explicitly addressed this problem by teaching the addition of its expansion adaptor. A POSITA would apply this known technique to improve the similar device of Sapiejewski.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the teachings, as it involved applying a known stability-enhancing component to a standard earphone, with predictable results.

Ground 2: Claims 3, 4, 6-9, 13, and 17 are obvious over Sapiejewski, Tan, and Howes.

  • Prior Art Relied Upon: Sapiejewski (Application # 2008/0002835), Tan (Application # 2011/0255729), and Howes (Patent 7,536,008).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground built upon the combination of Sapiejewski and Tan to address dependent claims requiring additional features. For claim 3, which required an electronics module for wireless communication and a microphone, Petitioner argued Sapiejewski taught wireless communication (e.g., via Bluetooth) with an external source like a cell phone. However, Sapiejewski did not explicitly disclose a microphone. Howes was cited to provide this element, as it taught a headset with a boom microphone for transducing sound into outgoing audio signals. For other dependent claims, Tan was alleged to disclose the claimed leg structures (claim 4), rotational stiffness properties (claim 4), and interaction with ear anatomy upon insertion (claim 6). Sapiejewski was argued to teach the use of harder and softer materials for different sections of the earphone body (claims 8-9).
    • Motivation to Combine: The motivation to add the microphone from Howes was to enable the full functionality of a wireless headset for use with a cell phone, which would require both listening (from Sapiejewski) and talking (from Howes). This combination was presented as an obvious design choice to create a commercially desirable product.
    • Expectation of Success: Adding a standard microphone to a wireless earphone was a simple and predictable modification with a high expectation of success.

Ground 3: Claims 1-4, 6-9, and 17 are obvious over Sapiejewski and Howes.

  • Prior Art Relied Upon: Sapiejewski (Application # 2008/0002835) and Howes (Patent 7,536,008).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative combination for the base invention. As in the other grounds, Sapiejewski provided the core earphone structure. Here, Howes, instead of Tan, was used to supply the positioning and retaining structure. Petitioner argued that the "compressible mounting portion" of Howes, which included an "antihelix mounting portion" made of a resilient material loop, met the limitations of the claimed retaining structure. This structure from Howes was designed to extend from an earbud, engage the wearer's antihelix, and apply outward pressure to secure the device.
    • Motivation to Combine: The motivation was again to solve the known problem of earphone instability and discomfort. Howes explicitly aimed to create a lightweight, comfortable, and secure ear mount that conforms to the user's antihelix. A POSITA seeking to improve the stability of the Sapiejewski earphone would have found it obvious to incorporate the known retaining structure from Howes.
    • Expectation of Success: Integrating the Howes ear mount with the Sapiejewski earphone was argued to be a straightforward combination of known elements for their intended purposes, leading to a predictable outcome.

4. Key Claim Construction Positions

  • "unitary structure": Petitioner argued this term, recited in claim 1, should be construed to mean "a plurality of components formed or connected into a single structure." This construction was central to all grounds, as Petitioner asserted that connecting the separate positioning members of Tan or Howes to the earphone body of Sapiejewski would result in the claimed "unitary structure."
  • "outward pressure": Petitioner proposed this term from claim 1 means "the exertion or application of force upon a surface of an object by another object in contact with it," with the pressure being applied away from the user's head along the Z-axis as described in the ’253 patent. This construction was used to map the forces exerted by the retaining structures of both Tan and Howes against the antihelix of the user's ear.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-4, 6-9, 13, and 17 of the ’253 patent as unpatentable.