PTAB

IPR2018-00142

Freebit As v. Bose Corp

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: In-Ear Earpiece Tip
  • Brief Description: The ’364 patent discloses an ear tip for an in-ear earpiece designed for improved stability and comfort. The invention comprises a body that rests in the lower concha of the ear, a nozzle for sound delivery, a flexible, frusto-conical sealing structure that occludes the ear canal entrance, and a C-shaped retaining structure that engages the antihelix to secure the device. During prosecution, the patentee distinguished the invention over prior art by emphasizing that the earpiece body prevents the nozzle and sealing structure from extending into the ear canal beyond its entrance.

3. Grounds for Unpatentability

Ground 1: Obviousness over Bruckhoff and Blanchard - Claims 1, 2, 5, and 9 are obvious over Bruckhoff in view of Blanchard.

  • Prior Art Relied Upon: Bruckhoff (WO 2009/153221) and Blanchard (Application # 2008/0187159).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Bruckhoff disclosed all major structural components of the claimed earpiece, including a shell (the body) designed to fit in the concha, a sound tube (the nozzle), and an elastic retention element that engages the user's concha and antihelix area. However, Bruckhoff disclosed a double-flange soft tip. Petitioner asserted that Blanchard supplied the specific sealing structure recited in the claims, teaching a single, hollow, frusto-conical ear tip flange made of a flexible polymer designed to seal the ear canal. For dependent claim 9, Petitioner argued Bruckhoff taught a retention element with a hardness of 60-90 Shore A, while a Person of Ordinary Skill in the Art (POSITA) would have understood that Blanchard’s flexible silicone sealing structure would be made of a softer material (less than 60 Shore A) to ensure a comfortable and effective seal.
    • Motivation to Combine: A POSITA would combine the references by substituting Blanchard’s single-flange tip for Bruckhoff’s double-flange tip. The primary motivations were to improve user comfort, as a single flange can be more comfortable than a double flange, and to provide partial rather than complete occlusion from ambient noise. The ability to choose the level of occlusion was presented as a known design trade-off, making the substitution a simple and obvious choice to achieve a desired performance characteristic.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved the simple substitution of one known type of ear tip for another within a standard earpiece design. Both components were designed for the same purpose and would function predictably together.

Ground 2: Obviousness over Cano and Bruckhoff - Claims 1, 3, 4, and 7 are obvious over Cano in view of Bruckhoff.

  • Prior Art Relied Upon: Cano (Application # 2009/0123010) and Bruckhoff (WO 2009/153221).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Cano disclosed an earpiece with nearly all claimed features, including a body shaped for the concha, a hollow frusto-conical sealing structure, a nozzle, and a retaining structure that extends toward the antihelix. Cano also explicitly taught a material hardness of about 30 Shore A (claim 3) and a linearly tapering structure (claim 7). Petitioner argued, however, that Cano did not explicitly teach the limitation that the body prevents the nozzle from extending beyond the entrance of the ear canal—the very feature the examiner relied upon for allowance. Bruckhoff was alleged to supply this missing element, as it disclosed a housing with a knee-like engagement portion intended to engage the tragus and antitragus region, thereby physically preventing over-insertion into the ear canal.
    • Motivation to Combine: A POSITA would have been motivated to modify Cano’s earpiece to include the engagement portion taught by Bruckhoff. The motivation was to improve the retention and stability of the earpiece and to prevent it from being inserted too deeply, which could cause discomfort or improper function. This was presented as an obvious design improvement, combining known features to solve a known problem in the field of in-ear devices.
    • Expectation of Success: The combination was asserted to be a predictable substitution of one known housing configuration for another to improve fit. A POSITA would have expected Bruckhoff’s engagement portion to function as intended when incorporated into Cano’s design, yielding the predictable result of a securely fitting earpiece that resists over-insertion.

4. Key Claim Construction Positions

  • “entrance to the ear canal”: Petitioner argued that while the ’364 patent provides a definition (“the portion of the ear canal near the concha where the walls of the ear canal are substantially non-parallel to the centerline”), this definition is functionally ambiguous due to wide anatomical variation among individuals. For its challenge, Petitioner contended that the limitation requiring the body to prevent the nozzle from extending "beyond the entrance" is met by any prior art body that is structured to physically limit insertion depth, regardless of the exact dimensions.
  • “thin layer of material”: Petitioner proposed this term means a layer of material thin enough to be deformable and flexible when shaped into a frusto-conical form for insertion into the ear. This construction was used to argue that the precise thickness of the material in a prior art reference is not dispositive, so long as the reference teaches a deformable or flexible material for the sealing structure, which is consistent with its intended function.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 7, and 9 of Patent 9,398,364 as unpatentable.