Shenzhen Root Technology Co Ltd v. Willow Innovations Inc

1. Case Identification

• Case #: IPR2025-00560
• Patent #: 11,813,381
• Filed: February 4, 2025
• Petitioner(s): Shenzhen Root Technology Co., Ltd.
• Patent Owner(s): Chiaro Technology
• Challenged Claims: 1-29

2. Patent Overview

• Title: BREAST PUMP SYSTEM
• Brief Description: The ’381 patent discloses a self-contained, in-bra wearable breast pump. The device comprises a housing containing a battery-powered air pump, a separable breast shield with a nipple tunnel, a diaphragm to generate negative pressure while preventing milk contamination, and an attachable milk container.

3. Grounds for Unpatentability

Ground 1: Claims 1-13, 16, 17, 22, 23, 27, and 29 are obvious over Chang in view of Fang.

• Prior Art Relied Upon: Chang (Application # 2018/0333523) and Fang (CN Utility Model CN205913571U).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chang teaches all major elements of a portable, in-bra breast pump system as claimed, including a housing, a battery, a breast shield with a nipple tunnel and milk port, and a milk container. However, Chang uses a pump that acts on a flex-tube. Petitioner asserted that Fang teaches the use of an elastic diaphragm to separate the milk-collection side from the air pump side, preventing milk from reaching the pump motor. The combination of Chang's wearable system with Fang's diaphragm pump mechanism would allegedly render the limitations of claim 1 obvious.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Fang’s diaphragm pump with Chang’s device for several reasons. The primary motivations included improving cleanability and hygiene by isolating pump components from milk flow, reducing the number of parts for easier assembly and maintenance, and substituting one known pump mechanism (flex-tube) with another suitable and well-known alternative (diaphragm pump) to achieve predictable results.
  • Expectation of Success: Petitioner contended a POSITA would have a reasonable expectation of success because diaphragm pumps were widely known and commonly used in breast pumps, including wearable devices, making the integration into Chang’s system a predictable and straightforward design choice.

Ground 2: Claims 1-18, 20-23, 27, and 29 are obvious over Chang and Fang in view of Khalil.

• Prior Art Relied Upon: Chang (Application # 2018/0333523), Fang (CN Utility Model CN205913571U), and Khalil (Application # 2013/0023821).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the Chang-Fang combination by incorporating features from Khalil. Petitioner argued Khalil teaches a wearable breast pump with a rigid milk container integrated into the lower portion of the housing. To implement this, a POSITA would modify the milk port on Chang's breast shield to point downward, allowing gravity-assisted milk flow into the lower-positioned container. This arrangement addresses limitations in claims such as the container attaching to a lower part of the housing (claim 14), having a surface that continues the housing's curved shape (claim 15), and a milk port on the lower surface of the nipple tunnel (claim 21).
  • Motivation to Combine: A POSITA would be motivated to incorporate Khalil’s teachings to enhance user experience. A lower, rigid container with a flat bottom (as taught by Khalil) would provide greater stability when the device is set down, and the downward milk flow would facilitate easier removal from the breast without spilling. This configuration also further improves hygiene by ensuring the milk flow path remains below the diaphragm components.
  • Expectation of Success: Success would be expected because Chang already disclosed that its container could be rigid and placed in alternative locations. Khalil provided a well-understood and suitable example of implementing such a container in an integrated, wearable device.

Ground 3: Claims 1-13, 16, 17, 22, 23, and 26-29 are obvious over Chang and Fang in view of Kurihara.

• Prior Art Relied Upon: Chang (Application # 2018/0333523), Fang (CN Utility Model CN205913571U), and Kurihara (Application # 2016/0271305).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground modifies the Chang-Fang combination by replacing the conventional air pump with a piezo air pump system as taught by Kurihara. Petitioner asserted that Kurihara discloses a compact and silent suction device using a piezoelectric element to generate airflow. This modification would satisfy the limitation of claim 26, which explicitly recites a "piezo air pump system."
  • Motivation to Combine: A POSITA would combine Kurihara to leverage the known benefits of piezoelectric actuation. These benefits include more precise and comfortable suction control, lower energy consumption (enhancing battery life), and significantly quieter operation, making the device more discreet. These were all highly desirable features for a wearable, portable breast pump.
  • Expectation of Success: The combination was presented as a straightforward substitution of one known pump type for another to achieve predictable advantages. Given the compatibility of the components and the known benefits of piezoelectric pumps in suction devices, a POSITA would have expected success.

• Additional Grounds: Petitioner asserted additional obviousness challenges for specific dependent claims. These grounds relied on the core Chang-Fang combination while adding references to teach sensors, displays, and indicators. Key combinations included adding Yuen629 (Patent 7,641,629) for claim 19 (light emitters to detect milk flow), Makower794 (Application # 2016/0206794) for claim 24 (visual indicator of milk flow), and Guthrie002 (Patent 10,483,002) for claim 25 (indicator of correct pump operation based on milk flow rate).

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 a construction previously used by the Examiner during prosecution: “‘complete, or having all that is needed, in itself’ and is capable of being worn in a bra.” Petitioner contended this construction was not disputed by the Patent Owner and is consistent with the patent’s disclosure.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv Factors): Petitioner argued strongly against discretionary denial under Fintiv. The parallel district court litigation was asserted to be in its infancy, as the Patent Owner added the ’381 patent to the case over a year after the initial complaint. This led the court to strike the entire trial schedule, leaving the trial date undefined and likely not to occur before a Final Written Decision (FWD) in the inter partes review (IPR). Petitioner noted that no substantive discovery or Markman briefing had occurred.
• §325(d): Petitioner argued denial would be inappropriate because the petition raises new and material issues. Specifically, the Fang reference was never before the Examiner and allegedly discloses the very features the Examiner found lacking in the prior art during prosecution (a breast shield separate from a diaphragm and a milk port intermediate to the flange and closed end of the nipple tunnel). Petitioner contended the Examiner made clear errors by overlooking these features in other art that was of record, such as Chang.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-29 of the ’381 patent as unpatentable under 35 U.S.C. §103.