Freebit As v. Bose Corp

1. Case Identification

• Case #: IPR2018-00509
• Patent #: 8,737,669
• Filed: January 18, 2018
• Petitioner(s): Freebit AS
• Patent Owner(s): Bose Corporation
• Challenged Claims: 1-6, 10-16

2. Patent Overview

• Title: In-Ear Earpiece
• Brief Description: The ’669 patent relates to an in-ear earpiece with a unitary eartip designed for stable and comfortable positioning. The invention describes an eartip comprising a cushion body that rests in the concha of a user's ear, a positioning and retaining structure that engages the anti-helix, and a conical sealing structure that seals the entrance to the ear canal without being pressed too deeply.

3. Grounds for Unpatentability

Ground 1: Claims 1-6, 10-12, and 14-16 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 argued that Cano discloses the fundamental structure of the earpiece recited in independent claims 1 and 16. Specifically, Cano taught an in-ear device with a body (outer ear section 24) that rests in the concha, a positioning and retaining structure (bridge section 32) engaging the ear's anatomy for stability, an acoustic passage (sound tube 20) with a nozzle, and a conical structure (earpiece 12) for insertion into the ear canal. Petitioner asserted that Bruckhoff supplies a teaching missing from Cano: an engagement portion (48) with a bead-like ridge (60) that rests against the tragus and antitragus. This feature, petitioner contended, performs the same function as the claimed limitation of preventing the earpiece from being pressed too far into the ear canal—a limitation added during prosecution to secure allowance of the ’669 patent.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) designing an earpiece for improved stability and fit would have been motivated to combine Bruckhoff’s engagement portion with Cano’s general earpiece design. Petitioner asserted this modification represents a simple substitution of one known retention feature for another to achieve the predictable result of a more secure and comfortable fit, addressing the known problem of keeping earpieces properly positioned.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination, as it involved integrating known elements that would perform their respective, predictable functions (Cano’s earpiece for sound delivery and basic fit, Bruckhoff’s engagement portion for enhanced retention and depth control).

Ground 2: Claim 13 is obvious over Cano in view of Bruckhoff and Blanchard.

• Prior Art Relied Upon: Cano (Application # 2009/0123010), Bruckhoff (WO 2009/153221), and Blanchard (Application # 2008/0187159).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination in Ground 1 to specifically address dependent claim 13, which further requires the conical structure to have a "substantially uniform thickness." To the extent Cano and Bruckhoff do not explicitly disclose this feature, Petitioner argued that Blanchard remedies the deficiency. Blanchard was cited for its teaching of an eartip (flange 20) with a generally conical three-dimensional shape that has a "substantially uniform thickness."
  • Motivation to Combine: A POSITA would combine Blanchard's teaching of a uniform-thickness conical tip with the device of Cano and Bruckhoff. The motivation was based on known design principles: using a uniform thickness simplifies the manufacturing process and reduces production costs. Since all three references are directed to eartip designs for in-ear devices, incorporating a known manufacturing-friendly feature from one (Blanchard) into the design of another (Cano/Bruckhoff) would have been a natural and obvious design choice.
  • Expectation of Success: The proposed modification was a simple substitution of one known eartip configuration for another. Designing an eartip with uniform thickness was well within the ordinary skill of a POSITA, and the result—a more easily manufactured eartip—was entirely predictable.

4. Key Claim Construction Positions

• "unitary structure": Petitioner argued this term, which was added during prosecution to describe the eartip, lacks clear antecedent basis in the specification for the full combination of claimed elements (cushion body, acoustic passage, nozzle, etc.). Petitioner contended that under its plain meaning ("forming a single unit"), the prior art eartip of Cano could be obviously modified to be a unitary structure for well-understood reasons like ease of manufacture, reduced costs, and improved structural integrity.
• "an area of transition between the concha and ear canal": Petitioner asserted this phrase, also added during prosecution to achieve allowance, is not a term of art and is not explicitly defined in the ’669 patent. It was argued that the phrase should be construed simply as the region where the concha and ear canal meet. Under this construction, Petitioner contended the prior art discloses a conical structure that seals this "area of transition" without contacting deeper portions of the ear canal, thereby rendering the limitation obvious. The argument suggested the term was used to create an illusory distinction over the prior art.

5. Relief Requested

• Petitioner requested institution of an inter partes review of claims 1-6 and 10-16 of the 8,737,669 patent and cancellation of those claims as unpatentable under 35 U.S.C. §103.