Shenzhen Root Technology Co Ltd v. Willow BLossom Holdco Ltd

1. Case Identification

• Case #: IPR2025-00554
• Patent #: 11,806,454
• Filed: March 6, 2025
• Petitioner(s): Shenzhen Root Technology Co., Ltd.
• Challenged Claims: 17-19, 21-33

2. Patent Overview

• Title: Wearable Breast Pump System
• Brief Description: The ’454 patent describes a wearable breast pump system comprising a control unit and a wearable milk collection hub. The hub includes a breast shield with a nipple tunnel, a diaphragm that deforms to create negative pressure, an outer shell that defines a milk collection chamber, and a diaphragm cap configured to cover and seal the diaphragm at a front end of the outer shell.

3. Grounds for Unpatentability

Ground 1: Obviousness over Furrer - Claims 17-18, 21-22, 24-25, 27-28, 30-32 are obvious over Furrer

• Prior Art Relied Upon: Furrer (Patent 10,149,929).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Furrer, which describes a breastshield unit for a breast pump, discloses all elements of the challenged claims. Furrer’s “media separation membrane 9” is the claimed diaphragm, and its “main body 25” and “housing 70” form the outer shell and diaphragm cap, respectively. Critically, Petitioner asserted that Furrer’s housing 70 is positioned at the front end of the main body 25 and forms a central region on its front surface, directly teaching the limitation added during prosecution that led to allowance. Petitioner further contended that while Furrer discloses connection to an external vacuum pump, a POSITA would find it obvious to use a conventional battery-powered control unit for portability, a well-known option for commercially available breast pumps mentioned by Furrer itself.
  • Key Aspects: This ground targets the Examiner's stated reason for allowance, arguing the primary prior art from prosecution, when properly interpreted, already taught the allegedly novel feature of the diaphragm cap's location.

Ground 2: Obviousness over Furrer, Alvarez, and Pollen - Claims 17-19, 21-25, 27-32 are obvious over Furrer, Alvarez, and Pollen

• Prior Art Relied Upon: Furrer (Patent 10,149,929), Alvarez (Application # 2015/0283311), and Pollen (Application # 2015/0217035).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Furrer-Alvarez combination, where Furrer provides the wearable hub and Alvarez provides details of a conventional, portable, battery-powered pump controller. Petitioner argued for modifying this combination with teachings from Pollen. Pollen discloses a milk collection device with an integrated milk storage chamber formed between its outer shell and breast receiver, as well as a unidirectional (non-return) valve. This combination allegedly provides an explicit teaching for the chamber to receive expressed milk within the wearable hub and the non-return valve recited in claims 17e and 23.
  • Motivation to Combine: A POSITA would combine Pollen’s teachings with the Furrer-Alvarez system to create a more discreet and convenient wearable pump. Incorporating an integrated milk storage chamber would eliminate the need for separate, hanging collection bottles, which are cumbersome and ill-suited for a device designed to be "worn under a bra" like Furrer’s. This modification would improve user comfort, simplify manufacturing, and allow the user to collect milk more discreetly.
  • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success, as this combination involves applying a known technique (integrated milk storage) to a known system (a wearable breast pump) to achieve the predictable benefit of improved portability and discretion.

Ground 3: Obviousness over Park and Silver - Claims 17-19, 21, 23-24, 27-30, and 32 are obvious over Park and Silver

• Prior Art Relied Upon: Park (WO 2016/186452) and Silver (Application # 2011/0071466).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Park discloses a basic wearable breast pump with a breast shield, outer shell, diaphragm, and diaphragm cap, but the Examiner found it failed to teach the diaphragm cap forming a central region on the front surface of the outer shell. The petition introduced Silver, which was not before the Examiner, to supply this teaching. Silver explicitly teaches repositioning the diaphragm and its cap to the front of the device to substantially eliminate "dead volume" (the amount of air between the breast and the diaphragm). The combination of Park's general structure with Silver's specific diaphragm placement allegedly renders the claims obvious.
  • Motivation to Combine: A POSITA would have been motivated to modify Park’s design according to Silver's teachings to gain significant, known benefits. Repositioning the diaphragm to the front would reduce dead volume, making the pump more efficient, requiring less energy, and allowing for a smaller, lighter, and quieter pump. This would directly result in a more discreet and comfortable user experience, which is a primary goal for wearable breast pumps.
  • Expectation of Success: Success would have been expected because the modification applies a known principle (dead volume reduction) from a similar device (Silver) to achieve predictable improvements in performance and user comfort in Park's system.

• Additional Grounds: Petitioner asserted numerous additional obviousness challenges, including combinations of Furrer-Alvarez-Pollen with Weniger (for diaphragm configuration), Rigert (for air port location), and Kasting (for recessed finger grips). Similar grounds were asserted based on the Park-Silver combination with the same additional references.

4. Arguments Regarding Discretionary Denial

• §325(d) (Advanced Bionics): Petitioner argued that discretionary denial is unwarranted. For grounds based on Furrer, the primary references were submitted in an IDS but never applied in a rejection, meaning the arguments were not previously presented. For grounds based on Park, the petition introduces Silver, a new reference not before the Examiner, which directly addresses the Examiner’s stated reason for allowance. Petitioner contended this demonstrates a material error in the original examination that warrants review.
• §314(a) (Fintiv): Petitioner argued the Fintiv factors strongly favor institution. The parallel district court litigation is in its early stages, and the court recently struck the entire case schedule after the Patent Owner added the ’454 patent to the suit more than a year after it commenced. The trial date is now undefined and will not be set until after a 2025 Markman hearing, ensuring the Board’s Final Written Decision would issue well before a trial.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 17-19 and 21-33 of the ’454 patent as unpatentable.