PTAB

IPR2017-01308

Freebit As v. Bose Corp

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: In-Ear Earpiece
  • Brief Description: The ’621 patent discloses a wireless in-ear earpiece that includes an acoustic driver module, an electronics module for wireless communication, and an ear interface structure. The invention’s focus is a positioning and retaining structure with flexible outer and inner legs that extend from the earpiece body to engage anatomical features of the user's outer ear, such as the anti-helix, for a stable and secure fit.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 and 9-11 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, which was assigned to the Patent Owner but not disclosed during prosecution, teaches a nearly identical earpiece to the one claimed in the ’621 patent. Sapiejewski was asserted to disclose the core earpiece body, an acoustic driver module, an ear interface structure (cushion), and an electronics module capable of wireless communication. Petitioner contended that the only significant element missing from Sapiejewski is the specific claimed positioning and retaining structure. Tan was argued to supply this element, as it explicitly discloses an "expansion adaptor" for in-ear earphones. This adaptor features a curved member with flexible legs designed to engage the user's anti-helix and concha, solving the problem of earphones falling out during activity.
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would have been motivated to modify Sapiejewski’s earphone by adding the positioning and retaining structure from Tan. The rationale was based on addressing the well-known and widespread problem of in-ear device instability. A POSITA would have recognized Tan’s expansion adaptor as a known solution to improve the stability of a similar device like Sapiejewski, leading to a predictable result of a more secure fit.
    • Expectation of Success: A POSITA would have had a high expectation of success because Tan's adaptor was specifically designed to be affixed to the housing of an in-ear earphone to provide enhanced stability, a function directly applicable to the earphone disclosed in Sapiejewski.

Ground 2: Claims 7 and 8 are obvious over Sapiejewski in view of 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 the additional limitations of claims 7 and 8, which require a wireless transceiver and a microphone. Petitioner argued that Sapiejewski’s disclosure of wireless communication (e.g., via Bluetooth) inherently teaches or makes obvious the use of a wireless transceiver. To meet the microphone limitation, Petitioner introduced Howes, which discloses a personal audio headset that includes a microphone, typically positioned on a boom extending toward the user’s mouth, to enable two-way communication. Claim 8, which requires the microphone to be in an end of the electronics module extending towards the user's mouth, was argued to be a simple and obvious design choice taught by the principles in Howes.
    • Motivation to Combine: A POSITA would have been motivated to add a microphone, as taught by Howes, to the wireless earpiece combination of Sapiejewski and Tan. The motivation was to provide the common, desirable, and commercially significant functionality of hands-free calling with a connected mobile phone. Combining these known elements was presented as a predictable integration of standard features to create a more versatile product.
    • Expectation of Success: Petitioner argued that incorporating a microphone into a wireless earpiece was a routine and well-understood modification in the art at the time of the invention. Therefore, a POSITA would have had a high expectation of successfully integrating the microphone taught by Howes into the base earpiece.

4. Relief Requested

  • Petitioner requests institution of an inter partes review for claims 1-11 of the ’621 patent and requests that all challenged claims be found unpatentable and canceled.