Therabody Inc v. Hyperice IP Subco LLC

Prosecution History analysis

Examiner Search analysis

Invalidity Framework analysis

Petition

Petition analysis

## 1. Case Identification
- Case Number: [PGR2024-00053](https://ai-lab.exparte.com/case/ptab/PGR2024-00053)
- Patent #: U.S. Patent No. [11,857,482](https://ai-lab.exparte.com/patent/11857482)
- Filed: September 27, 2024
- Petitioner(s): [Therabody, Inc.](https://ai-lab.exparte.com/party/therabody-inc)
- Patent Owner(s): [Hyperice IP Subco, LLC](https://ai-lab.exparte.com/party/hyperice-ip-subco-llc)
- Challenged Claims: 34-38, 40, 41, 43-46, and 58-60

## 2. Patent Overview
- Title: Massage Device Having Variable Stroke Length
- Brief Description: The ’482 patent discloses a percussive massage device with interchangeable massage heads. While the specification primarily describes a "quick-connect system" where a shaft on the massage head inserts into a bore on the device's piston, the challenged claims recite the opposite configuration.

## 3. Grounds for Unpatentability

#### Ground 1: Lack of Written Description - Claims 34-38, 40, 41, 43-46, and 58-60 are unpatentable under 35 U.S.C. §112(a).
- **Core Argument for this Ground:** Petitioner argued that the challenged claims, which were added late in prosecution, lack adequate written description support in the specification for three key reasons.
    - **No Basis for Claimed Configuration:** The specification exclusively discloses an embodiment where the piston has a "hollow-end bore" to receive the "shaft" of a massaging head. In contrast, challenged claim 34 requires the inverse: a "first massaging head" that has a "substantially cylindrical pocket to receive the quick release connector" located on the piston. Petitioner asserted there is no disclosure of any instance of this claimed configuration.
    - **No Basis for "Substantially Cylindrical" Pocket:** The specification does not describe a pocket in the massaging head as "substantially cylindrical." Petitioner contended that while the patent describes other components as "cylindrical," the addition of "substantially" broadens the claim beyond what is disclosed and supported. This term was allegedly added to overcome prior art that required precise alignment, but the specification provides no basis for a shape that is merely "approximately" cylindrical.
    - **No Basis for Full Functional Scope of "Quick Release Connector":** The claims broadly recite a "quick release connector" that is functionally defined as securing the head during reciprocation. Petitioner argued the specification only discloses a single embodiment using magnets of a specific strength and orientation to achieve this function. This narrow disclosure allegedly fails to support the full genus of "quick release connectors" covered by the broad functional claim language.

#### Ground 2: Indefiniteness - Claims 34-38, 40, 41, 43-46, and 58-60 are unpatentable under §112.
- **Core Argument for this Ground:** Petitioner argued that the term "substantially cylindrical pocket" is indefinite. The patent provides no standard for measuring what degree of deviation from a perfect cylinder is permissible for a pocket to still be considered "substantially cylindrical." Because the specification describes other components as "cylindrical," the use of "substantially cylindrical" in the claims implies a different, but undefined, scope. This alleged lack of guidance fails to inform a person of ordinary skill in the art (POSITA) with reasonable certainty about the scope of the invention.

#### Ground 3: Obviousness over Primary Reference - Claims 34, 35, and 58-60 are obvious over Mabuchi.
- **Prior Art Relied Upon:** Patent 4,513,737 ("Mabuchi")
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner argued that Mabuchi, which discloses a "beauty treatment device," teaches all elements of independent claim 34. Mabuchi shows a percussive massager with a housing, a reciprocating piston (actuator 4), a motor-driven drive mechanism, and interchangeable heads (patter assembly 6). Crucially, Petitioner asserted Mabuchi's magnetic connection system (magnets 43 and 44) is a "quick release connector" and that the patter assembly has a pocket (in flange 15) that receives a protrusion from the actuator, meeting the "pocket to receive the quick release connector" limitation.
    - **Motivation to Combine (for §103 grounds):** Not applicable, as this is a single-reference ground.
    - **Expectation of Success (for §103 grounds):** Not applicable.
    - **Key Aspects:** Petitioner emphasized that Mabuchi's magnetic connector allows the head to be attached without precise alignment, even while the device is operating, directly teaching the functionality that the Patent Owner allegedly relied on to overcome other prior art during prosecution.

#### Ground 4: Obviousness over Alternative Combination - Claims 34, 35, and 58-60 are obvious over Pivaroff in view of Mabuchi.
- **Prior Art Relied Upon:** Patent 6,682,496 ("Pivaroff"), Mabuchi (’737 patent)
- **Core Argument for this Ground:**
    - **Prior Art Mapping:** Petitioner asserted that Pivaroff discloses a "deep muscle stimulation device" that meets most limitations of claim 34, including the housing, piston, motor, and drive mechanism. Pivaroff teaches a threaded connection for its massage head. Mabuchi was introduced to supply the "quick release connector" and the "pocket in head" configuration.
    - **Motivation to Combine (for §103 grounds):** A POSITA would combine Pivaroff with Mabuchi to replace Pivaroff's slower, threaded connection with Mabuchi's superior magnetic quick-release system. This would improve usability by allowing for faster and easier changing of massage heads, a known goal in the art.
    - **Expectation of Success (for §103 grounds):** A POSITA would have a high expectation of success, as both references describe compatible, motor-driven percussive massagers, and incorporating a known connection type (magnetic) into such a device would be a straightforward modification.

- **Additional Grounds:** Petitioner asserted additional obviousness challenges, including that claims 36-38, 40, 41, and 43-46 are obvious over Mabuchi in view of Harris (’072 patent) and that claims 37-38 are obvious over Mabuchi and Harris in further view of Pivaroff. These grounds primarily relied on Harris to add features like a multi-speed control panel and Pivaroff to teach specific operating speed ranges (e.g., 600-3600 strokes per minute).

## 4. Arguments Regarding Discretionary Denial
- Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d) for two main reasons. First, the §112 invalidity grounds (written description and indefiniteness) are new, as the challenged claims were added late in prosecution without any substantive examination of their support in the specification. Second, while some prior art was of record, the Examiner never considered the key teachings of Mabuchi regarding a magnetic quick-release connector with a pocket-in-head configuration, which Petitioner argued was the very feature the Examiner found lacking in other references. Therefore, the core arguments and prior art combinations presented in the petition were not previously before the Office.

## 5. Relief Requested
- Petitioner requests institution of Post-Grant Review (PGR) and cancellation of claims 34-38, 40, 41, 43-46, and 58-60 of the ’482 patent as unpatentable.

Therabody targets Hyperice's massage gun patent, arguing 15 claims are indefinite, lack written description, and are obvious over Mabuchi prior art.