Samsung Electronics Co Ltd v. Oura Health Oy

1. Case Identification

• Case #: IPR2024-01078
• Patent #: 10,281,953
• Filed: June 28, 2024
• Petitioner(s): Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.
• Patent Owner(s): Ouraring Inc.
• Challenged Claims: 1-6, 11-15, 38-43

2. Patent Overview

• Title: Wearable Computing Ring Device
• Brief Description: The ’953 patent is directed to a wearable computing device configured as a finger ring. The device comprises an interior enclosure portion and an exterior enclosure structure that form a housing for a flexible printed circuit board, a curved and wirelessly chargeable battery, and various electronic components.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mestas and Asami

• Challenged Claims: 1-6 and 11-14
• Prior Art Relied Upon: Mestas (Application # 2014/0244009) and Asami (Application # 2010/0219989).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mestas teaches a wearable athletic monitoring device (e.g., wristband) containing nearly all the claimed structural elements. This included an "encasement member 24" with distinct inner and outer portions forming a housing, a "curvilinear" rechargeable battery, and a flexible "PCB member 140" supporting a controller, sensors, and LEDs. Petitioner contended that Asami, which discloses a finger ring for gesture recognition, supplies the missing limitation of being "configured as a ring for being worn around the finger." For dependent claims, Petitioner asserted Mestas teaches an accelerometer, gyroscope, and capacitive touch sensors, while Asami teaches processing accelerometer data to recognize patterns and transmitting data packets based on the recognized activity.
  • Motivation to Combine: A POSITA would combine the teachings to adapt Mestas's feature-rich device into the more compact, ergonomic, and marketable finger-ring form factor taught by Asami. Petitioner cited universal design incentives to make products smaller and more efficient. It also argued that a finger-worn device provides a tighter, more stable fit than a wristband, which would improve sensor data quality by reducing motion artifacts and shielding against ambient light—a known benefit for biometric sensors.
  • Expectation of Success: Petitioner contended a POSITA would have a high expectation of success, as both references are in the analogous art of wearable biometric sensors. The integration of well-understood electronic components like processors and accelerometers into different form factors was a routine and predictable engineering task.

Ground 2: Obviousness over Mestas and Schröder

• Challenged Claims: 1-6, 11, 14-15, 38-39, and 41-43
• Prior Art Relied Upon: Mestas (Application # 2014/0244009) and Schröder (Patent 10,303,867).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted this combination teaches all limitations, with Mestas providing key features like a curved battery and advanced sensors (gyroscope, etc.), and Schröder teaching the core finger-ring structure. Schröder discloses a biometric finger-ring made of two concentric shells (components 16 and 18) that function as the claimed interior and exterior enclosures. Schröder's "inlay 12," a flexible carrier with electronic components, was identified as the claimed flexible PCB. Petitioner argued the combination also teaches claim 15 (transparent potting) because Schröder’s inner enclosure is made of PET (a transparent polymer resin) and its vein imaging sensor requires a transparent path to the user's finger to function. Mestas's disclosure of injection molding the inner enclosure portion was argued to teach "potting" (claim 14).
  • Motivation to Combine: The motivation was to incorporate the superior features of Mestas's device (e.g., curved battery for better power density, advanced motion sensors) into the established finger-ring form factor of Schröder. This would create a more functional and commercially appealing product, leveraging market demand for compact, multi-function wearable devices. A POSITA would also be motivated to use Schröder’s transparent inner enclosure to enable additional sensing capabilities.
  • Expectation of Success: Success would be expected because both references describe modular biometric sensing devices using conventional, interchangeable electronic components, making their combination a matter of routine engineering.

Ground 3: Obviousness over Schröder, Mestas, and Wissmar

• Challenged Claims: 40-43

• Prior Art Relied Upon: Schröder (Patent 10,303,867), Mestas (Application # 2014/0244009), and Wissmar (Application # 2012/0218184).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground specifically targeted claims requiring epoxy potting. Petitioner argued the base combination of Schröder and Mestas teaches a wearable ring with a potted interior (claim 39) that forms a water-resistant seal (claim 41). Wissmar was added to supply the express teaching for claim 40's limitation that the potting "comprises an epoxy." Wissmar teaches a finger ring manufactured with an inner conformal coating that can be "silicone, epoxy, acrylic, urethane and paraxylene" to protect the internal flexible PCB and its components.
  • Motivation to Combine: A POSITA building the Schröder/Mestas device would be motivated to use the specific epoxy potting taught by Wissmar to improve the product's reliability and longevity. Wissmar explains that its conformal coating absorbs stress from forming the flexible PCB into a circular shape and provides "hermetic encapsulation," directly addressing durability concerns in a ring form factor. This provided a clear technical motivation to incorporate Wissmar’s manufacturing technique.
  • Expectation of Success: The application of known potting materials, including epoxy, to encapsulate and protect electronics in wearable devices was presented as a standard, predictable manufacturing process with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of Schröder, Mestas, and Asami, but relied on similar design modification and component combination theories.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution. Under §325(d), it contended that the primary references (Mestas, Schröder, Asami) were never presented to or considered by the USPTO during prosecution. While Wissmar was listed on an information disclosure statement, Petitioner argued it was not "meaningfully considered," and the examiner materially erred by overlooking its clear teachings on epoxy potting.
• Regarding discretionary denial under Fintiv, Petitioner stated that denial is inappropriate because there is no pending district court litigation against Petitioner involving the ’953 patent.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-6, 11-15, and 38-43 of Patent 10,281,953 as unpatentable.