UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`NATUS MEDICAL INC., NATUS NEUROLOGY INC.,
`EMBLA SYSTEMS LLC AND EMBLA SYSTEMS LTD.
`Petitioners
`
`v.
`
`NOX MEDICAL EHF.
`Patent Owner
`___________
`
`IPR - unassigned
`Patent 9,059,532
`___________
`
`Mailed: September 15, 2016
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,059,532 UNDER 35 U.S.C. §§ 311-319
`
`
`
`On behalf of Natus Medical Inc., Natus Neurology Inc., Embla Systems LLC and
`
`Embla Systems Ltd. (“Petitioners”), inter partes review is respectfully requested for
`
`claims 1-9 and 13 of U.S. Patent No. 9,059,532 (“the ’532 Patent”).
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`TABLE OF CONTENTS
`
`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 ................... 1
`
`A. Real Parties-in-Interest ............................................................................ 1
`
`B. Related Matters ....................................................................................... 1
`
`C.
`
`Lead and Back-Up Counsel and Service Information ............................ 1
`
`II. GROUNDS FOR STANDING ...................................................................... 1
`
`III.
`
`INTRODUCTION ...................................................................................... 2
`
`A.
`
`B.
`
`The ’532 Patent ....................................................................................... 2
`
`The ’532 Patent Prosecution ................................................................... 4
`
`IV.
`
`STATUTORY GROUNDS FOR THE CHALLENGES ........................... 5
`
`V. CLAIM CONSTRUCTION .......................................................................... 6
`
`A.
`
`B.
`
`“flexibility” ............................................................................................. 7
`
`“passing through the receiving hole” ...................................................... 8
`
`VI. CLAIMS 1-9 AND 13 OF THE ’532 PATENT ARE UNPATENTABLE.
`……………………………………………………………………………8
`
`
`
`A. Ground 1: Claims 1-3, 6-9, and 13 Are Anticipated by Hermannsson. . 9
`
`1. Claim 1 ...............................................................................................10
`
`2. Claim 2 ...............................................................................................14
`
`3. Claim 3 ...............................................................................................14
`
`4. Claim 6 ...............................................................................................15
`
`5. Claim 7 ...............................................................................................16
`
`6. Claim 8 ...............................................................................................17
`
`7. Claim 9 ...............................................................................................17
`
`8. Claim 13 .............................................................................................18
`
`B. Ground 2: Claims 1-9 and 13 Are Obvious Based on McIntire in View
`of Hermannsson. ..................................................................................................18
`
`1. Motivation to Combine ......................................................................19
`
`2. Claim 1 ...............................................................................................21
`
`3. Claim 2 ...............................................................................................25
`
`4. Claim 3 ...............................................................................................26
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`5. Claim 4 ...............................................................................................27
`
`6. Claim 5 ...............................................................................................28
`
`7. Claims 6-9 and 13 ..............................................................................28
`
`C. Ground 3: Claims 1, 6-9, and 13 Are Obvious Based on Harhen in View
`of Hermannsson. ..................................................................................................28
`
`1. Motivation to Combine ......................................................................29
`
`2. Claim 1 ...............................................................................................31
`
`3. Claims 6-9, and 13 .............................................................................35
`
`D. Ground 4 Claims 1-5, 9 and 13 Are Obvious Based on McIntire in View
`of Kristbjarnarson or Linville; Claims 6-8 Are Obvious Based on McIntire in
`View of Kristbjarnarson. ......................................................................................35
`
`1. Motivation to Combine ......................................................................37
`
`2. Claim 1 ...............................................................................................38
`
`3. Claims 2-5 ..........................................................................................40
`
`4. Claim 9 ...............................................................................................41
`
`5. Claim 13 .............................................................................................41
`
`6. Claims 6-8 ..........................................................................................42
`
`E. Ground 5: Claims 1-3 Are Obvious Based on Gobron in View of
`Williams, Lawrence, or Sommer. ........................................................................43
`
`1. Motivation to Combine ......................................................................46
`
`2. Claim 1 ...............................................................................................47
`
`3. Claim 2 ...............................................................................................51
`
`4. Claim 3 ...............................................................................................51
`
`F. Ground 6: Claims 4 and 5 Are Obvious Based on the Claim 1 Grounds in
`View of Archer or Caldecott. ...............................................................................51
`
`1. Motivation to Combine ......................................................................53
`
`2. Claim 4 ...............................................................................................53
`
`3. Claim 5 ...............................................................................................55
`
`G. Ground 7: Claims 6-8 Are Obvious Based on the Claim 1 Grounds in
`Further View of Uehara, Abizaid, or Orewiler. ...................................................56
`
`1. Motivation to Combine ......................................................................58
`
`2. Claims 6-8 ..........................................................................................58
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`H. Ground 8: Claims 9 and 13 Are Obvious Based on Claim 1 Grounds in
`Further View of Kristbjarnarson or Linville. .......................................................61
`
`1. Motivation to Combine ......................................................................62
`
`2. Claim 9 ...............................................................................................62
`
`3. Claim 13 .............................................................................................62
`
`VII. CONCLUSION ........................................................................................63
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`
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`LIST OF EXHIBITS
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`Exhibit 1001 – U.S. Patent No. 9,059,532 B2 (“the ’532 Patent”)
`
`Exhibit 1002 – Expert Invalidity Report of Dr. Justin C. Williams and all
`attachments thereto (for the purposes of this Petition, Dr. Williams’s report and
`attachments are consecutively paginated and citation herein is made to the Exhibit
`page number).
`
`Exhibit 1003 – U.S. Patent No. 937,130 to Williams (“Williams”)
`
`Exhibit 1004 – U.S. Patent No. 1,001,054 to Lawrence (“Lawrence”)
`
`Exhibit 1005 – U.S. Patent No. 1,115,459 to Abizaid (“Abizaid”)
`
`Exhibit 1006 – U.S. Patent No. 1,193,050 to Orewiler (“Orewiler”)
`
`Exhibit 1007 – U.S. Patent No. 3,092,759 to Sommer (“Sommer”)
`
`Exhibit 1008 – U.S. Patent No. 4,671,591 to Archer (“Archer”)
`
`Exhibit 1009 – U.S. Patent No. 4,832,608 to Kroll (“Kroll”)
`
`Exhibit 1010 – U.S. Patent No. 5,326,272 to Harhen et al. (“Harhen”)
`
`Exhibit 1011 – U.S. Patent No. 6,148,486 to Uehara et al. (“Uehara”)
`
`Exhibit 1012 – U.S. Patent No. 6,461,307 to Kristbjarnarson et al.
`(“Kristbjarnarson”)
`
`Exhibit 1013 – U.S. Patent Application Publication No. 2006/0258948 to Linville
`(“Linville”)
`
`Exhibit 1014 – U.S. Patent Application Publication No. 2007/0167089 to Gobron
`et al. (“Gobron”)
`
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`Exhibit 1015 – International Patent Application Publication No. WO 2008/102140
`to Caldecott (“Caldecott”) (for the purposes of this Petition, citation to Caldecott is
`made to the original page numbers)
`
`Exhibit 1016 – U.S. Patent Application Publication No. 2010/0075527 to McIntire
`et al. (“McIntire Pub.”)
`
`Exhibit 1017 – U.S. Patent No. 8,025,539 to Hermannsson (“Hermannsson”)
`
`Exhibit 1018 – U.S. Patent No. 8,251,736 to McIntire et al. (“McIntire”)
`
`Exhibit 1019 – U.S. Provisional Application No. 61/358,472
`
`Exhibit 1020 – PCT Application No. IS/050010
`
`Exhibit 1021 – File History U.S. Application No. 13/806,834, Application as filed
`Dec. 24, 2012
`
`Exhibit 1022 – File History U.S. Application No. 13/806,834, Non-Final
`Rejection, Oct. 1, 2014
`
`Exhibit 1023 – File History U.S. Application No. 13/806,834, Applicant Remarks,
`Mar. 24, 2015
`
`Exhibit 1024 – File History U.S. Application No. 13/806,834, Request to Correct
`Inventorship (Jan. 19, 2016), Response to Request (Feb. 2, 2016) and Certificate of
`Correction (Mar. 1, 2016).
`
`Exhibit 1025 – File History European Patent No. 2584962, Response to
`Opposition, November 23, 2015
`
`Exhibit 1026 – File History U.S. Application No. 13/806,834, Applicant Summary
`of Examiner Interview (and attachments thereto), Jun. 3, 2015
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`Exhibit 1027 – European Patent No. EP 2,584,962 (European equivalent of ’532
`Patent)
`
`Exhibit 1028 – 2009 CareFusion Catalog
`
`Exhibit 1029 – U.S. Patent No. 4,430,777 to Takeda (“Takeda”)
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`
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`I. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`A. Real Parties-in-Interest
`
`Natus Medical Inc., Natus Neurology Inc., Embla Systems LLC and Embla
`
`Systems Ltd. are the Petitioners and real parties-in-interest.
`
`B. Related Matters
`
`U.S. Patent No. 9,059,532 (“the ’532 Patent”) is the subject of Nox Medical Ehf.
`
`v. Natus Neurology Inc., Civil Action No. 15-709-RGA (D. Del. 2015) (“Related
`
`Litigation”). European Patent No. EP 2,584,962, the European equivalent of the ’532
`
`Patent, is the subject of an opposition proceeding. U.S. Patent App. No. 14/733,744,
`
`which claims priority to the ’532 Patent, is pending before the U.S. PTO (“PTO”).
`
`C. Lead and Back-Up Counsel and Service Information
`
`Petitioners designate the following counsel, available at 316 N. Milwaukee St.,
`
`Suite 200, Milwaukee, WI 53202. Petitioners consent to electronic service.
`
`Lead Counsel
`Thomas S. Reynolds II
`(Reg. No. 45,262)
`treynolds@hrdclaw.com
`(414) 273-8470 (t)
`(414) 273-8476 (f)
`
`Back-Up Counsel
`Marlee A. Jansen
`(Reg. No. 64,677)
`mjansen@hrdclaw.com
`(414) 939-8387 (t)
`(414) 273-8476 (f)
`
`Back-Up Counsel
`Jeremy Adelson
`(admission to be requested)
`jadelson@hrdclaw.com
`(414) 326-4043 (t)
`(414) 273-8476 (f)
`
`II. GROUNDS FOR STANDING
`
`Petitioners certify that the ’532 Patent is available for inter partes review and that
`
`Petitioners are not barred or estopped from requesting inter partes review based on
`
`the grounds identified in this Petition.
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`III.
`
`INTRODUCTION
`
`A. The ’532 Patent
`
`The ’532 Patent describes and claims a belt connector for electrically connecting
`
`an electrode belt to a biometric device. As the patent admits, belts and belt
`
`connectors were known in the prior art and used for, among other things, respiratory
`
`inductance plethysmography (RIP), a method of monitoring respiration based on the
`
`inductive changes in a wire loop that encircles the torso of a patient. ’532 Patent,
`
`col. 1 ll. 12-18. Such belts—comprising conductive wires attached in a zig-zag
`
`pattern to elastic bandages—were known since at least the 1980s. See, e.g., U.S.
`
`Patent No. 4,308,872; Ex. 1002 at 13-15. The invention of the ’532 Patent is
`
`purportedly an “improved belt connector[] that [is] reliable and easy to use and
`
`maintain.” ’532 Patent, col. 1 ll. 16-18.
`
`Claim 1, the only independent claim at issue in this Petition, is directed to typical
`
`features of electrode belt connectors. It requires a molded plastic connector frame
`
`including a receiving hole with a slot extending from it “configured to function as a
`
`female snap button fastener for receiving and fastening the frame to a protrusion of
`
`the male portion of the snap connector electrode.” ’532 Patent, col. 5 ll. 36-60.
`
`Electrical contact between the electrode belt and a “male portion of the snap
`
`connector electrode” is made between a conductor of the belt that passes through the
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`receiving hole while being “wrapped around” an “engaging member” adjacent to the
`
`receiving hole. Figure 2A of the patent, annotated below, shows an embodiment:
`
`
`
`Snap connections for making electrical contact, of course, were well known prior
`
`to 2010, as were electrical connections in which male conductor is inserted into a
`
`hole to make electrical contact. See Ex. 1002 at 28-47. These features were also
`
`known in electrode belt connectors well before the date of the purported invention.
`
`Id. at 26-27. Although the dependent claims addressed in this Petition recite certain
`
`additional features—a shield, a cover, and a row of teeth to fasten the belt and adjust
`
`its length—all of these features were also conventional and known prior to the time
`
`of the purported invention. Id. at 27. The purported invention, therefore, does not
`
`improve upon prior art belt connectors; it is unpatentable over the prior art.
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`B.
`
`The ’532 Patent Prosecution
`
`The ’532 Patent issued from U.S. Patent App. No. 13/806,834, filed December
`
`24, 2012 (§ 371(c) date March 18, 2013), as the U.S. entry of PCT No.
`
`IS2011/050010 (filed June 24, 2011), which in turn claims priority to U.S.
`
`Provisional Patent App. No. 61/358,472, filed June 25, 2010. Thus, the earliest
`
`priority date of the ’532 Patent is June 25, 2010.
`
`All applications leading to the issuance of the ’532 Patent identify Kormakur
`
`Hlini Hermannsson as the sole named inventor. Exs. 1019, 1020, 1021. After the
`
`’532 Patent issued, however, the Patent Owner (“Nox”) filed a request to add
`
`Sveinbjorn Hoskuldsson as a named inventor. Ex. 1024. On February 2, 2016, the
`
`PTO granted Nox’s request to change the inventorship of the ’532 Patent and issued
`
`a post-issuance Certificate of Correction on March 1, 2016. Id. An earlier Nox patent
`
`(U.S. Patent No. 8,025,539 to Hermannsson) was not considered as prior art by the
`
`PTO during examination of the application that issued as the ’532 Patent because
`
`the Hermannsson ’539 Patent appeared to enjoy unity of inventorship with the
`
`application that issued as the ’532 Patent. It was not until March 1, 2016, nine
`
`months after the ’532 Patent issued and when Hoskuldsson was added as an inventor
`
`post-issuance, that unity of inventorship with the Hermannsson ’539 Patent was
`
`broken.
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`
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`IV. STATUTORY GROUNDS FOR THE CHALLENGES
`
`The ’532 Patent issued from an application filed before March 16, 2013, so pre-
`
`AIA law applies. MPEP 2159.01. This Petition provides challenges (discussed in
`
`Section VI as Grounds 1-8) under pre-AIA 35 U.S.C. §§ 102 and 103 based on the
`
`following prior art patent references:
`
`
`Reference
`(1) US 937,130 (Ex. 1003, “Williams”)
`(2) US 1,001,054 (Ex. 1004, “Lawrence”)
`(3) US 1,115,459 (Ex. 1005, “Abizaid”)
`(4) US 1,193,050 (Ex. 1006, “Orewiler”)
`(5) US 3,092,759 (Ex. 1007, “Sommer”)
`(6) US 4,671,591 (Ex. 1008, “Archer”)
`(7) US 5,326,272 (Ex. 1010, “Harhen”)
`(8) US 6,148,486 (Ex. 1011, “Uehara”)
`(9) US 6,461,307 (Ex. 1012, “Kristbjarnarson”)
`(10) US 2006/0258948 (Ex. 1013, “Linville”)
`(11) US 2007/0167089 (Ex. 1014, “Gobron”)
`(12) WO 2008/102140 (Ex. 1015, “Caldecott”)
`(13) US 8,025,539 (Ex. 1017, “Hermannsson”)
`(14) US 8,251,736 (Ex. 1018, “McIntire”)
`
`Publication Date
`Oct. 19, 1909
`Aug. 22, 1911
`Oct. 27, 1914
`Aug. 1, 1916
`Jan. 2, 1959
`Jun. 9, 1987
`Jul. 5, 1994
`Nov. 21, 2000
`Oct. 8, 2002
`Nov. 16, 2006
`Jul. 19, 2007
`Aug. 28, 2008
`Sep. 27, 2011
`Aug. 28, 2012
`
`References 1-12 all published more than one year prior to June 25, 2010; thus,
`
`they are prior art under pre-AIA 35 U.S.C. § 102(b).
`
`Hermannsson issued from an application filed on May 17, 2010—prior to the
`
`application that issued as the ’532 Patent—and lists only Kormakur Hermannsson
`
`as an inventor. Following issuance of the ’532 Patent, the PTO granted Nox’s request
`
`to add Sveinborn Hoskuldsson as an inventor to the ’532 Patent. Accordingly,
`
`Hermannsson is a previously filed application “to another” for the purposes of 35
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`U.S.C. § 102(e). See MPEP 2136.04 (“The inventive entity is different if not all
`
`inventors are the same. The fact that the application and reference have one or more
`
`inventors in common is immaterial.”). Further, Nox admits that Hermannsson is
`
`prior art to the ’532 Patent. Ex. 1025 ¶ 3.19 (identifying U.S. Patent App. Pub. No.
`
`2010/0297868, first publication of Hermannsson, as reference “D1, and admitting
`
`that an embodiment of the Hermannsson’s connector “was produced and sold by
`
`Nox prior to the invention of the present patent[.]” (Id. (emphasis added) (referring
`
`to EP 2,584,962, the European equivalent to the ’532 Patent)).
`
`McIntire is also prior art to the ’532 Patent under at least 35 U.S.C. § 102(e) (pre-
`
`AIA) because it issued from U.S. Patent App. No. 12/336,333, filed Sept. 23, 2008,
`
`naming inventors not named on the ’532 Patent. McIntire first published as U.S.
`
`Patent App. Pub. No. 2010/0075527 (“McIntire Pub.”) on March 25, 2010. Thus,
`
`McIntire Pub. is prior art to the ’532 Patent under both U.S.C. §§102(a) & (e) (pre-
`
`AIA). Because the disclosures of the patent and published application are identical,
`
`arguments based on McIntire apply equally to both references.
`
`V. CLAIM CONSTRUCTION
`
`Pursuant to 37 C.F.R. § 42.100(b), each claim at issue in this proceeding should
`
`be given its broadest reasonable construction or interpretation (“BRI”) to a person
`
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`having ordinary skill in the art (“PHOSITA”)1 in light of the specification. In re
`
`Cuozzo Speed Techs., 778 F.3d 1271, 1279-81 (Fed. Cir. 2015). Because the BRI
`
`standard of claim construction is different than the litigation standard, Petitioners
`
`reserve the right to present different claim constructions in the Related Litigation.
`
`See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
`
`A. “flexibility”
`
`Claim 1 recites a plastic frame including a “receiving hole having radial
`
`flexibility.” The specification does not discuss or define this “flexibility” other than
`
`to say that the receiving hole has “sufficient flexibility to function as a female snap
`
`fastener.” ’532 Patent, col. 5 ll. 18-20; col. 2 ll. 59-62.
`
`Petitioners propose that the BRI for the term “flexibility” is “the ability of a part
`
`(related to its geometry and material properties) to elastically deform under an
`
`applied stress.” PHOSITAs understood that most engineering materials exhibit
`
`
`
`1 Petitioners submit that the relevant field is medical device development and that a
`
`PHOSITA, at the time of the alleged invention of the ’532 Patent, would have a
`
`Master’s or Doctorate’s degree in mechanical engineering, bio-medical engineering
`
`or equivalent related field; a Bachelor’s degree and roughly one year of relevant
`
`experience; or an Associate’s degree with approximately three years of relevant
`
`design experience. Ex. 1002 at 11-12.
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`elastic properties, meaning that for applied stresses below the elastic limit (yield
`
`limit) of the material, a part made of the material will return to its original
`
`configuration (i.e., exhibit flexibility). Ex. 1002 at 24-24. PHOSITAs further
`
`understood that parts can undergo both plastic and elastic deformation if loaded
`
`above the elastic limit of their material, meaning that the applied stress causes both
`
`permanent (plastic) and temporary (elastic) deformation. Id. Parts loaded beyond the
`
`material’s elastic limit still exhibit “flexibility” consistent with a PHOSITA’s
`
`ordinary and customary understanding of the term, even if the higher applied stress
`
`also happens to lead to permanent deformation. Id.
`
`B.
`
`“passing through the receiving hole”
`
`Claim 1 also recites a conductor “passing through the receiving hole.” Petitioners
`
`propose that the BRI for the term “passing through the receiving hole” is self-evident
`
`and is without any limitation as to direction or extent. Id. at 25. The specification
`
`does not limit the ordinary and customary meaning of the term; the only requirement
`
`of the claimed conductor “passing through the receiving hole” is that it make
`
`physical (and thus electrical) contact with a male electrode inserted into the receiving
`
`hole. Id.; ’532 Patent, col. 5 ll. 49-54; col. 3 ll. 14-24.
`
`VI. CLAIMS 1-9 AND 13 OF THE ’532 PATENT ARE UNPATENTABLE.
`
`Claims 1-9 and 13 are unpatentable based on the prior art and grounds discussed
`
`herein. These grounds are supported by the declaration and opinions of Dr. Justin C.
`
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`Williams, chair of the department of Biomedical Engineering at the University of
`
`Wisconsin-Madison. Ex. 1002. Dr. William’s declaration includes further analysis
`
`and detailed claim charts demonstrating the invalidity of the claims of the ’532
`
`Patent in view of the prior art. See Ex. 1002.
`
`A.
`
`Ground 1: Claims 1-3, 6-9, and 13 Are Anticipated by
`Hermannsson.
`
`Claims 1-3, 6-9, and 13 are anticipated by Hermannsson under 35 U.S.C. §
`
`102(e) because it discloses each limitation of those claims either expressly or
`
`inherently. See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed.
`
`Cir. 2003); Verdegal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
`
`Cir. 1987) (citations omitted).
`
`Hermannsson, the Nox-owned patent not considered as prior art during
`
`prosecution of the ’532 Patent, teaches an “electrode belt and a belt connector” with
`
`a plastic frame that receives and fastens to a mating male snap protrusion to make
`
`an electrical connection with a biometric device. Like the ’532 Patent,
`
`Hermannsson’s belt connector includes a conductor from the belt that passes through
`
`the receiving hole (so it can physically and electrically connect with a male snap
`
`inserted into the hole) that wraps around structure adjacent the receiving hole.
`
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`
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`Ex. 1017, figs. 1a & 5 (annotated); col. 3 ll. 22-33.
`
`1.
`
`Claim 1
`
`An electrode belt and a belt connector for electrically connecting a
`conductor of the electrode belt to a male portion of a snap
`connector electrode connected to a biometric device, the belt
`connector comprising:
`
`Hermannsson teaches “a belt connector for electrically connecting an electrode
`
`belt to a biometric device.” Ex. 1017, col. 1 ll. 22-39. Hermannsson further teaches
`
`that the belt connector has a circular hole “of suitable dimension to form a female
`
`snap button receiver for a male snap fastener on said biometric device.” Id.
`
`a molded plastic frame including a receiving hole having radial
`flexibility, the receiving hole being configured to function as a
`female snap button fastener for receiving and fastening the frame
`to a protrusion of the male portion of the snap connector electrode,
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`Hermannsson teaches an electrode belt connector made from “plastic, such as
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`polyethylene, e.g. low density polyethylene (LDPE) or high density polyethylene
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`(HDPE), or derivatives
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`such as polyethylene
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`terephthalate
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`(PET) or
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`polyfluoroethylene (PTFE), or more preferably polypropylene.” Ex. 1017, col. 62-
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`67. Hermannsson expressly teaches a receiving hole formed in the plastic frame
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`“configured to function as a female snap button fastener for receiving and fastening”
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`to a male snap fastener, specifying that the hole in the electrode belt connector “itself
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`forms a female snap button receiver;” is “of suitable dimension to form a female
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`snap button receiver;” and is “the main connecting hole” or the “main fastener and
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`connection hole.” Ex. 1017, col. 2 ll. 29-32; col. 2 ll. 56-60; col 2 l. 65-col. 3 l. 1;
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`col. 3 ll. 12-16.
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`PHOSITAs knew the plastics taught by Hermannsson are conventionally
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`injection molded to make parts (like the disclosed belt connector) and that such
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`plastics are examples of elastic materials (i.e., materials that exhibit flexibility). Ex.
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`1002 at 30, 58. PHOSITAs further understood that a hole “of suitable dimension to
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`form a female snap button receiver” as taught by Hermannsson, bounded by such
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`elastic materials, inherently exhibits “radial flexibility”—i.e., will elastically deform
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`in response to a radially applied load (normal to the surface of a curved wall
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`bounding the hole)—and will function as a female snap button fastener. Id. at 30-31,
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`57-59.
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`a fastener configured to fasten the frame to a first end of said
`electrode belt, and
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`Hermannsson teaches a plastic frame of the belt connector with teeth 13 that
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`fasten an electrode belt to the frame—i.e., the teeth 13 are a “fastener configured to
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`fasten the frame to a first end of said electrode belt.” Ex. 1017, col. 2 ll. 14-17; col.
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`3 ll. 32-35, figs. 2-4a.
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`
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`an engaging member adjacent to said receiving hole, the engaging
`member engaging the conductor of the electrode belt by the
`conductor passing through the receiving hole while being wrapped
`around the engaging member, such that when the male portion of
`the snap connector electrode penetrates the receiving hole, the
`conductor is forced into physical contact with at least a lateral
`surface of the male portion of the snap connector electrode,
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`Hermannsson also teaches the claimed electrode belt conductor passing through
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`the receiving hole of a belt connector while being wrapped around an engaging
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`member adjacent to the receiving hole, and forced into physical (and, therefore,
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`electrical) contact with a lateral surface of a mating male snap. See, e.g., Ex. 1017,
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`fig. 1a (showing wire 5 positioned to make contact with a lateral surface of a male
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`snap electrode inserted into the main fastener and electrical connection hole 4).
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`Hermannsson’s conducting wire from the belt (wire loop 5) is “held in place” by
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`wrapping around “extending ridge 12 and small wings 19” adjacent to the receiving
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`hole. Ex. 1017, col. 3 ll. 47-48; figs. 1a & 5. The ridge and wings ensure “proper
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`placement and location of the wire loop 5,” and these members “hold the wire loop
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`in suitable proximity to the hole”—i.e., the ridge and wings are engaging members
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`adjacent the receiving hole that engage the electrode belt conductor, which wraps
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`around them. Id. col. 3 ll. 22-29; figs.1a & 5.
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`Hermannsson further teaches that the conducting wire “will be exposed and
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`visible from the outside through the [receiving] hole” and that “part of said wire loop
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`comes in contact with the male snap fastener when [the male snap fastener is]
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`inserted in the hole, forming an electrical connection.” Id. col. 2 ll. 32-35; col. 2 ll.
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`66-67 (identifying the “hole” as the “main fastener and electrical connection hole”).
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`Accordingly, the wire loop of Hermannsson necessarily “passes through” the
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`receiving hole; if it did not, electrical connection with a male snap fastener inserted
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`in the hole would not be possible. Ex. 1002 at 61.
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`wherein radial flexibility of said receiving hole is achieved by one
`or more slot extending from said hole, and wherein said receiving
`hole and one or more slot are formed by at least one elongated
`member having flexibility transverse to its longitudinal axis, thus
`imparting flexibility to the width of the hole.
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`Finally, Hermannsson teaches an electrode belt connector having a “slot”
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`extending from its receiving hole and contributing to its flexibility as required by
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`claim 1. Slot or “extended hole 10” extends from the receiving hole giving it a
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`“keyhole-like shape.” Ex. 1017, fig. 2; col. 2 ll. 56-60; col. 3 ll. 29-31. PHOSITAs
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`knew that plastics (LDPE, HDPE and polypropylene) are elastic materials that
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`exhibit flexibility in all directions, including transverse to a longitudinal axis,
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`thereby imparting “flexibility to the width of the hole.” Ex. 1002 at 30-31 & 62.
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`PHOSITAs knew that structure surrounding a hole is more amenable to elastic
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`deformation (i.e., is more flexible) if the hole is not fully bounded—i.e., a slot, or
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`the absence of structure contributes to the “radial flexibility” of the hole. Id. at 31
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`n.10.
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`2.
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`Claim 2
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`The electrode belt and the belt connector of claim 1, wherein said
`belt connector further comprises a shield member which is
`arranged on a rear side of said frame to electrically shield the
`conductor of the electrode belt from the rear side exterior of the
`belt connector.
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`As taught by Hermannsson, back element (2) of the electrode connector separates
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`the conductor of the electrode belt from a patient’s body. Ex. 1017, col. 2 ll. 14-21;
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`figs. 3a, 3b, 4a, 4b, 4c. Thus, Hermannsson’s back element (2)—made out of “non-
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`conducting materials, most preferably plastic,” like the rest of the belt connector—
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`is “a shield member which is arranged on a rear side of said frame to electrically
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`shield the conductor of the electrode belt from the rear side exterior of the belt
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`connector.” Id. col. 1 ll. 62-63.
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`3.
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`Claim 3
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`The electrode belt and the belt connector of claim 2, wherein said
`shield member is a sheet member extending from the frame, which
`sheet member is configured to be folded over onto the rear side of
`the frame to cover the back side of said receiving hole and engaged
`conductor.
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`Figure 4 of Hermannsson “shows the outside faces of a front element [3] and
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`back element [2] joined together with a hinge.” Ex. 1017, col. 1 ll. 49-50 (reference
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`Petition for Inter Partes Review of U.S. Patent No. 9,059,532
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`numerals corrected, see id. col. 4 l. 5); col. 2 ll. 14-17. Back element (2), which
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`separates the conductor of the electrode belt from a patient’s body (i.e., is the “shield
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`member” of Claim 2) that extends from and is connected to the frame (front member
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`3) by a hinge 18 so it can fold over and cover the “back side of said receiving hole
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`and engaged conductor.” Thus, Hermannsson teaches this claim.
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`Ex. 1017, Fig. 4a.
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`4.
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`Claim 6
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`
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`The electrode belt and the belt connector of claim 1, wherein said
`fastening means comprise a slot with a row of teeth, pins or hooks
`transverse to the belt direction, to engage a belt end.
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`Claim 6, which depends from Claim 1, includes a limitation directed to “said
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`fastening means.” Claim 1 do