Shenzhen Root Technology Co Ltd v. Chiaro Technology Ltd

1. Case Identification

• Case #: IPR2024-01296
• Patent #: 11,413,380
• Filed: August 14, 2024
• Petitioner(s): Shenzhen Root Technology Co., Ltd.
• Patent Owner(s): Chiaro Technology
• Challenged Claims: 1-46

2. Patent Overview

• Title: BREAST PUMP SYSTEM
• Brief Description: The ’380 patent relates to a self-contained, in-bra wearable breast pump device. The system comprises a pump housing containing a rechargeable battery and pump, a removable milk container, a breast shield, and a diaphragm configured to prevent milk from reaching the pump mechanism.

3. Grounds for Unpatentability

Ground 1: Claims 1-8, 11, 13-23, 25, 29-35, 37, 39-41, and 43 are obvious over Chang, Fang, and Yuen.

• Prior Art Relied Upon: Chang (Application # 2018/0333523), Fang (CN Utility Model 205913571U), and Yuen (WO 2017/190678).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chang taught a portable, in-bra wearable breast pump containing nearly all the claimed elements, including a housing, rechargeable battery, removable milk container, and breast shield. However, Chang used a peristaltic-style pump. Petitioner asserted that Fang disclosed the key missing element: a diaphragm pump where the diaphragm housing is fixed to a recessed external surface of the main pump housing. This configuration was the primary basis for the Examiner's allowance of the ’380 patent claims. Furthermore, Petitioner contended that Yuen taught a conventional power charging circuit and a micro-USB charging socket, which were obvious improvements over Chang's generic "power cord connector."
  • Motivation to Combine: A POSITA would combine Fang’s diaphragm pump with Chang’s device because diaphragm pumps were a known and suitable alternative for generating negative pressure, offering benefits of easier cleaning and maintenance. The combination amounted to a simple substitution of one known pump type for another to achieve predictable results. A POSITA would add Yuen’s USB charging circuit to Chang’s battery-powered device to provide a ubiquitous, convenient, and standardized charging method, which was a common feature in portable electronics at the time.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success, as the combination involved implementing known pump and charging components into a standard breast pump architecture to achieve their well-understood functions and benefits.

Ground 2: Claims 1-11, 13-23, 25-37, 39-41, and 43-46 are obvious over Chang, Fang, and Yuen in view of Khalil.

• Prior Art Relied Upon: Chang (Application # 2018/0333523), Fang (CN Utility Model 205913571U), Yuen (WO 2017/190678), and Khalil (Application # 2013/0023821).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground builds upon the combination of Chang, Fang, and Yuen by adding the teachings of Khalil. Petitioner argued that Khalil disclosed a wearable, in-bra breast pump with a rigid milk container attached to the lower portion of the pump housing. Khalil’s container featured a curved outer surface to conform to the breast for comfortable wear and a flat bottom to provide stability when placed on a surface. These features, Petitioner contended, directly map onto the limitations of dependent claims related to the milk container’s shape, rigidity, and attachment location (e.g., claims 8-10, 35-36, 45-46).
  • Motivation to Combine: A POSITA would combine Khalil’s teachings with the Chang-Fang-Yuen device to gain known benefits. Specifically, positioning a rigid container at the bottom of the device would enhance cleanability by promoting downward milk flow away from the pump diaphragm. It would also improve user experience by creating a more stable base and reducing the risk of spills upon removal. Chang itself suggested that its milk container could be rigid and placed in alternative locations, making Khalil’s design a suitable and predictable option.
  • Expectation of Success: Success was expected because the modification involved incorporating a known type of milk container configuration into a wearable pump design to achieve predictable ergonomic and fluid-handling advantages.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on the primary Chang-Fang-Yuen-Khalil combination. Ground 1C added Park (WO 2016/186452) to teach a specific diaphragm shape and an opening on the lower surface of the nipple tunnel. Ground 1D added Chen (Application # 2017/0080135) to teach that the second diaphragm housing could be integrally molded with the breast shield for easier assembly.

4. Key Claim Construction Positions

• Petitioner argued that most claim terms should be given their plain and ordinary meaning.
• For the term “self-contained, in-bra wearable device,” Petitioner adopted the construction used by the Examiner during prosecution: “‘complete, or having all that is needed, in itself’ and is capable of being worn in a bra.”

5. Arguments Regarding Discretionary Denial

• Fintiv Factors (§314(a)): Petitioner argued against discretionary denial, asserting that the co-pending district court litigation is in its infancy. The court recently struck the entire case schedule and has not set a trial date, ensuring the Board’s Final Written Decision (FWD) would issue long before any potential trial.
• Advanced Bionics Factors (§325(d)): Petitioner contended that institution is favored because the petition relies on prior art (notably Fang, Yuen, Park, and Chen) that was not applied during prosecution. Critically, Petitioner argued that Fang’s disclosure of a diaphragm housing fixed to a recessed pump housing surface directly teaches the feature the Examiner identified as novel and the basis for allowance, indicating a material error in the original examination.
• General Plastic Factors (Parallel Petitions): Petitioner acknowledged this is a parallel petition to an earlier-filed IPR (IPR2024-00953) but argued its filing was justified by the recent discovery of highly material prior art (Fang) and the patent owner's doubling of asserted claims in the district court case. Petitioner noted it had requested dismissal of the first petition to reduce any burden on the Board.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-46 of the ’380 patent as unpatentable.