PTAB

IPR2019-01444

EIS GmbH v. Novoluto GmbH

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1. Case Identification

2. Patent Overview

  • Title: Stimulation device
  • Brief Description: The ’851 patent discloses a handheld stimulation device that generates a "pressure field" to stimulate body parts, particularly the clitoris. The device uses a pressure field generator comprising a first chamber connected to a second chamber to create temporally modified fields of positive and negative pressure (e.g., pulsating air pressure) for massage and to promote blood circulation.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 4-6 are obvious over Guan in view of Hovland.

  • Prior Art Relied Upon: Guan (Chinese Patent No. CN 2153351) and Hovland (Patent 6,964,643).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Guan, a "gas health massager," discloses nearly all elements of independent claim 1, including a pressure field generator (air bag and rubber mouth), a drive unit (lever and magnet), a control device (electromagnet), and a housing enclosing these components. Guan's device generates "pulsating air pressure" by changing the volume of its first chamber (the air bag), which is analogous to the claimed pressure field. Hovland, which discloses electrically-operated stimulation devices for the clitoris, was argued to supply the missing elements: applying the device to the clitoris and making it a portable, battery-powered, handheld device. Hovland’s teachings on suction applicators that completely cover the vaginal labia were asserted to render the limitations of dependent claim 2 obvious.
    • Motivation to Combine: A POSITA would combine these references by applying the known stimulation technique from Guan to the known application taught by Hovland (clitoral stimulation). Hovland explicitly teaches that devices used for other body parts can also be used to stimulate the clitoris. Furthermore, a POSITA would have been motivated to incorporate a battery into Guan's portable device, as taught by Hovland, to improve its convenience and ease of use, which aligns with Guan’s stated goals.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in adapting Guan's simple mechanical device for clitoral stimulation, as taught by Hovland, to achieve predictable results in sexual satisfaction and health.

Ground 2: Claim 3 is obvious over Guan and Hovland further in view of Gloth.

  • Prior Art Relied Upon: Guan, Hovland, and Gloth (Patent 5,813,973).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addresses claim 3, which requires the first chamber, second chamber, and connection element to be designed in "one-piece." Petitioner argued that while Guan discloses these components as replaceably attached, Gloth teaches the benefits of a one-piece construction. Gloth discloses a female urinary incontinence device, formed as a unitary part from a single piece of material, that includes multiple chambers (a vacuum-producing portion and a body-contacting portion) functionally similar to Guan's air bag and mouth.
    • Motivation to Combine: A POSITA, seeking to improve the Guan/Hovland device, would look to analogous devices like Gloth. Gloth’s teaching of a one-piece construction for a similar multi-chamber device would have motivated a POSITA to modify Guan's device to be a single piece. The motivation would be to reduce manufacturing costs, simplify assembly, and improve performance by eliminating potential air leaks at the junction between the components.
    • Expectation of Success: Given that Guan's components are made of flexible rubber and Gloth teaches forming similar multi-chamber structures as a single piece, a POSITA would have had a high expectation of success in manufacturing the Guan/Hovland device as a one-piece unit.

Ground 3: Claims 5-6 are obvious over Guan and Hovland further in view of Makower.

  • Prior Art Relied Upon: Guan, Hovland, and Makower (Patent 8,579,837).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground adds Makower to address claims 5 and 6. Claim 5 requires a "sealing bearing part" to enlarge the contact surface on the skin. Makower discloses a clitoral stimulation device with a soft, flexible, and compliant sealing edge adapted to provide a substantially airtight seal against tissue. Claim 6 requires an "operating element" to modify the pressure field. Makower discloses a remote control that allows a user to select and customize variable suction patterns for a more effective and satisfying stimulation.
    • Motivation to Combine: A POSITA would combine Makower with the Guan/Hovland device to improve its functionality. Incorporating Makower's advanced sealing edge would enhance the airtight seal of Guan's device, increasing the effectiveness of the pulsating air pressure. Likewise, incorporating Makower’s user-controlled modulation features (e.g., a remote control) would address Guan's stated goal of providing a device where the "amount of stimuli" can be varied, resulting in a superior and more customizable user experience.
    • Expectation of Success: A POSITA would have reasonably expected success in incorporating Makower's known sealing and control features into the Guan/Hovland device, as it involves applying known techniques to improve a similar device for predictable results.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under §325(d) would be inappropriate because the key prior art was not substantively considered during prosecution of the ’851 patent. Although Guan was cited in an IDS, the Examiner was only provided with a machine-translated abstract that lacked sufficient technical detail. Gloth was not identified or considered at all. While Hovland and Makower were identified on the face of the patent, there was no evidence they were substantively reviewed or applied by the Examiner against the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 of the ’851 patent as unpatentable.