RingConn LLC v. Ouraring Inc

1. Case Identification

• Case #: PGR2025-00018
• Patent #: 11,868,178
• Filed: January 3, 2025
• Petitioner(s): RingConn LLC
• Patent Owner(s): Ouraring, Inc.
• Challenged Claims: 1-18

2. Patent Overview

• Title: Finger-worn electronic device
• Brief Description: The ’178 patent discloses a finger-worn wearable electronic ring device designed for user convenience and extended wear. The device includes an external and internal housing that form a cavity containing a battery, a printed circuit board (PCB), and one or more sensors for monitoring the user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Schröder - Claims 1-3 and 17-18 are obvious over Schröder.

• Prior Art Relied Upon: Schröder (Patent 10,303,867).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Schröder teaches all limitations of independent claim 1. Schröder discloses a biometric "finger-ring" comprised of two ring halves that serve as the claimed internal and external housing components. These halves form a recess (the claimed cavity) for an "inlay" containing a chip module, battery, and antenna. Petitioner asserted this inlay constitutes the claimed PCB. For dependent claims 2 and 3, Petitioner argued that arranging the battery and PCB in non-overlapping or partially overlapping configurations are simple, predictable design choices that would have been obvious to a person of ordinary skill in the art (POSITA) to achieve a more compact device.
  • Motivation to Combine (for §103 grounds): This ground relied on a single reference, arguing that any missing details were within the knowledge of a POSITA. For dependent claims, the motivation was driven by universal design goals like making the device thinner, more compact, and more comfortable.
  • Expectation of Success (for §103 grounds): A POSITA would have an expectation of success in making routine design choices, such as arranging components within a cavity, based on common sense and ordinary skill.

Ground 2: Obviousness over Schröder in view of Niwa - Claims 1-3 and 13-16 are obvious over Niwa.

• Prior Art Relied Upon: Schröder (Patent 10,303,867), Niwa (Application # 2012/0016245).
• Core Argument for this Ground:
  • Prior Art Mapping: Schröder was asserted to teach the basic finger-ring structure with internal/external housings, a cavity, a battery, and sensors. Niwa, which also teaches a finger-ring sensor, was introduced to disclose specific sensor configurations and component layouts. Petitioner argued Niwa explicitly teaches arranging a battery and PCB in separate, non-overlapping portions of a ring’s cavity, rendering claim 2 obvious. Niwa was also used to teach the sensor limitations of claims 13-16, including using multiple light-emitting components (LEDs) that emit light at different wavelengths (e.g., visible and near-infrared) and are positioned at different radial locations around a central photodetector.
  • Motivation to Combine (for §103 grounds): A POSITA would combine the analogous teachings of Schröder and Niwa to improve the device. Niwa’s component layout would allow for a thinner, more comfortable ring, while its multi-wavelength, multi-position sensor configuration would enhance the accuracy of biometric data collection (e.g., pulse oximetry or vein pattern recognition) within the limited space of a ring.
  • Expectation of Success (for §103 grounds): Success would be expected because both references relate to finger-worn biometric sensors, and combining their known, routine technologies to improve performance and form factor would be a predictable endeavor.

Ground 3: Obviousness over Schröder in view of Yuen - Claims 1, 4-11, and 13-16 are obvious over Yuen.

• Prior Art Relied Upon: Schröder (Patent 10,303,867), Yuen (Patent 8,954,135).
• Core Argument for this Ground:
  • Prior Art Mapping: Schröder was again used for the foundational ring structure. Yuen, which teaches a wearable biometric monitor, was introduced to provide teachings for numerous dependent claims related to power management, charging, and intelligent sensor operation. Petitioner argued Yuen teaches using magnetic components to align a device with a charger (claim 4), enabling wireless charging (claim 5). Yuen further teaches a processor that selectively adjusts sensor parameters—such as measurement periodicity—based on acquired data like heart rate (claim 7), user activity (claim 8), sleep states (claim 9), or battery power level (claims 10-11).
  • Motivation to Combine (for §103 grounds): A POSITA would combine Schröder's ring form factor with Yuen’s advanced features to create a more user-friendly and power-efficient product. Yuen’s magnetic alignment would make wireless charging more convenient, and its adaptive sensor technology would improve accuracy while conserving battery life, both of which are significant market drivers for wearable devices.
  • Expectation of Success (for §103 grounds): A POSITA would expect success because the electronic components described in both references are similar and scalable, making their integration into a finger-ring form factor a straightforward application of known engineering principles.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 3 and 12 over Schröder in view of Mestas (for teachings of overlapping components and curved batteries). Further grounds inverted the primary and secondary references (e.g., Niwa in view of Schröder) or combined all three references. Petitioner also asserted a ground under 35 U.S.C. §112, arguing claim 11 is indefinite and claims 17-18 are invalid for improper dependency.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution.
• Regarding §325(d): Petitioner contended that the primary references of Schröder and Niwa were never before the examiner during prosecution. While Yuen was listed in an Information Disclosure Statement (IDS), it was one of 138 references cited, and the prosecution record contains no evidence that the examiner meaningfully considered its specific teachings. Therefore, the petition raised new arguments and art not previously evaluated by the Office.
• Regarding Fintiv: Petitioner argued that discretionary denial under Fintiv is inappropriate because the parallel district court litigation between Petitioner and Patent Owner has been stayed, eliminating concerns about inefficiency or duplicative efforts.

5. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-18 of the ’178 patent as unpatentable.