Freebit As v. Bose Corp

1. Case Identification

• Case #: IPR2017-01309
• Patent #: 9,036,853
• Filed: April 21, 2017
• Petitioner(s): Freebit AS
• Patent Owner(s): Bose Corporation
• Challenged Claims: 1-3, 5, 6, 8-11, and 13

2. Patent Overview

• Title: In-ear Earpiece with Retaining Structure
• Brief Description: The ’853 patent discloses an in-ear earpiece featuring an ear interface body and a distinct positioning and retaining structure. This structure, formed of a compliant material, includes extended legs designed to engage anatomical features of a user's outer ear, such as the antihelix and concha, to provide a stable and secure fit.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5, 6, 8-11, and 13 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 cited during prosecution, discloses a nearly identical in-ear earphone that meets most limitations of independent claims 1 and 8. This includes the earphone body shaped for the concha, an acoustic driver, a housing with front and rear chambers, and a nozzle extending toward the ear canal. Petitioner contended that Sapiejewski lacks only the claimed flexible retaining member for securing the device. Tan was argued to supply this missing element, teaching an "expansion adaptor" for in-ear earphones made of a compliant material (soft rubber). This adaptor includes a retaining member with a specific curvature and flexible legs designed to engage the user's antihelix and concha to provide a secure, snug fit, thereby teaching the limitations of claims 1(i) and 1(j). Tan’s disclosure of legs supporting the retaining member and its termination point at an extremity were argued to render dependent claims 3, 6, and 10 obvious.
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would be motivated to add Tan's stability-enhancing expansion adaptor to Sapiejewski's base earphone to solve the well-known and widespread problem of in-ear earphones lacking stability and comfort during vigorous activities. The motivation was described as applying a known improvement technique (Tan's adaptor) to a similar device (Sapiejewski's earphone) to achieve the predictable result of a more secure and comfortable fit.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved the straightforward integration of a known stabilizing member onto a conventional earphone body to address a known problem. The predictable functioning of these combined elements would ensure the desired outcome of improved stability.

Ground 2: Claims 1-3, 5, 6, and 8-11 are obvious over Sapiejewski in view of Howes.

• Prior Art Relied Upon: Sapiejewski (Application # 2008/0002835) and Howes (Patent 7,536,008).
• Core Argument for this Ground:
  • Prior Art Mapping: As in the first ground, Petitioner relied on Sapiejewski to teach the fundamental earphone structure. Howes was argued to provide an alternative disclosure of the missing retaining member. Howes teaches an ear mount for a headset that includes a compressible mounting portion with an "antihelix mounting portion" (the retaining member) formed as a loop of resilient material, such as silicone rubber. This member is specifically designed to compress and conform to the wearer’s antihelix, thereby securely and comfortably positioning the headset. Petitioner argued this structure directly teaches a compliant retaining member that applies pressure to the antihelix, as required by the independent claims. The specific shape and function of the Howes ear mount were also asserted to teach the limitations of several dependent claims.
  • Motivation to Combine: The motivation to combine was presented as nearly identical to the first ground: to solve the recognized problem of earphone instability and discomfort. Howes explicitly states an objective of providing an ear mount that is lightweight, comfortable, and secure by conforming to the user's ear anatomy. A POSITA seeking to improve the stability of the Sapiejewski earphone would have looked to known solutions like the ear mount in Howes and found it obvious to integrate its retaining member design.
  • Expectation of Success: Success would be highly probable and predictable. The combination would involve adding a known type of securing mechanism from Howes to a standard earphone body from Sapiejewski, with each component performing its intended function without any unexpected results.

4. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-3, 5, 6, 8-11, and 13 of the ’853 patent as unpatentable.