Bose Corp v. IngenioSpec LLC

1. Case Identification

• Case #: IPR2025-01550
• Patent #: 12,044,901
• Filed: September 19, 2025
• Petitioner(s): Bose Corporation
• Patent Owner(s): IngenioSpec, LLC
• Challenged Claims: 1-59

2. Patent Overview

• Title: Head-Worn Personal Electronic Apparatus
• Brief Description: The ’901 patent is directed to head-worn personal electronic devices, such as eyewear or headsets, that integrate electrical components including a speaker, rechargeable battery, and a charging mechanism. The claims recite a system comprising the head-worn apparatus and a separate charging apparatus.

3. Grounds for Unpatentability

Ground 1: Unpatentability Over Howell-887 Due to Ineffective Priority Claim - Claims 1-59 are anticipated by or obvious over Howell-887 and its incorporated applications.

• Prior Art Relied Upon: Howell-887 (Application # 2007/0046887), which incorporates by reference the ’283-Application (Application Serial No. 11/183,283), ’262-Application (Application Serial No. 11/183,262), ’218-Application (Application Serial No. 10/822,218), ’857-Application (Application Serial No. 11/078,857), ’798-Provisional (Provisional Application 60/562,798), ’826-Provisional (Provisional Application 60/647,826), and ’150-Provisional (Provisional Application 60/846,150).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the ’901 patent’s claim to priority is defective. Specifically, key intermediate applications in the priority chain (the ’222- and ’411-applications) lack written description support for the claimed “charging apparatus.” Petitioner contended that the attempts in those applications to incorporate this essential matter by reference from unpublished provisional and non-provisional applications were legally ineffective under 37 C.F.R. §1.57(d). This alleged break in the priority chain invalidates the claimed early priority date, making Howell-887—a publication of an application in the patent’s own family—a valid prior art reference under pre-AIA 35 U.S.C. §102(b). Petitioner then asserted that Howell-887, when properly viewed as a prior art reference (which includes the content of the applications it incorporates), discloses every limitation of challenged claims 1-59, thus anticipating or rendering them obvious.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine Howell-887 with its incorporated applications because Howell-887 explicitly identifies and incorporates them by reference. This would have prompted a skilled artisan to consult these documents for additional features and functionalities when designing or modifying the head-worn device disclosed in Howell-887.
  • Expectation of Success: A POSITA would have a high expectation of success, as the references all relate to the same field of electronic eyewear and were part of a single, albeit complex, development effort.

Ground 2: Obviousness over Griffin in view of Hollemans - Claims 1-8, 10-14, 18-21, 23-31, and 34-36 are obvious over Griffin in view of Hollemans.

• Prior Art Relied Upon: Griffin (WO 02/39600) and Hollemans (Patent 7,925,029).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Griffin disclosed a wireless headset system that met nearly all limitations of the independent claims, including a head-worn apparatus with a speaker, rechargeable battery, wireless circuitry, and a corresponding charging station with conductive elements for recharging. The only key element argued to be missing was a "touch sensitive surface." Petitioner contended Hollemans supplied this element by teaching an earbud-style headphone with a touch-sensitive surface that allows a user to control functions (e.g., volume, calls) through gestures like taps and swipes.
  • Motivation to Combine: A POSITA would combine Hollemans' touch-sensitive interface with Griffin's headset to improve the device's functionality and safety. This would allow a user to conveniently control the headset without needing to blindly locate small physical buttons, a known problem that Hollemans explicitly sought to solve. The combination represented the application of a known technique (touch controls) to a known device (wireless headset) to yield a predictable improvement.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making the combination. Hollemans' technology was designed to control remote devices like mobile phones, which is the exact type of device Griffin's headset is designed to connect with. The integration was argued to require only routine skill.

• Additional Grounds: Petitioner asserted further obviousness challenges by building upon the Griffin-Hollemans combination. These included adding Irvin for its teaching of "being worn" sensors (e.g., accelerometers, IR sensors) to enable a low-power mode (Ground 2B); adding Ritter for its teaching of a Hall effect detector for automatic power switching based on proximity to a charging station (Ground 2C); and adding Lowles for its teaching of using magnetic elements to secure a headset to a charger and facilitate electrical connection (Ground 2D).

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-59 of the ’901 patent as unpatentable.