us to. 0V
`Trials
`Tel: 571-272-7822
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`‘
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`Paper 58
`Entered: March 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NATUS MEDICAL INC., NATUS NEUROLOGY INC,
`EIVIBLA SYSTEMS LLC, and EIVIBLA SYSTEMS LTD.,
`Petitioner,
`
`V.
`
`NOX MEDICAL EHF,
`Patent Owner.
`
`Case IPR2016-01822
`
`Patent 9,059,532 B2
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`AMANDA F. WIEKER Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Inter l’artes Review
`
`35 US. C. § 318(0) and 37 CFR. § 42.73
`
`
`Trials
`Tel: 571-272-7822
`
`‘
`
`Paper 58
`Entered: March 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NATUS MEDICAL INC., NATUS NEUROLOGY INC,
`EIVIBLA SYSTEMS LLC, and EIVIBLA SYSTEMS LTD.,
`Petitioner,
`
`V.
`
`NOX MEDICAL EHF,
`Patent Owner.
`
`Case IPR2016-01822
`
`Patent 9,059,532 B2
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`AMANDA F. WIEKER Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`
`Inter l’artes Review
`
`35 US. C. § 318(0) and 37 CFR. § 42.73
`
`
`
`IPR2016-01822
`
`Patent 9,059,532 B2
`
`1. INTRODUCTION
`
`This is a final written decision in an inter partes review of claims 1—9
`
`and 13 ofU.S. Patent No. 9,059,532 B2 (Ex. 1001, “the ’532 patent”)
`
`entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
`
`reasons set forth below, we determine that Petitioner has not shown, by a
`
`preponderance of the evidence, that claims 1—9 or 13 of the ’532 patent are
`
`unpatentable under 35 U.S.C. § 103(a). See 35 U.S.C. § 316(c).
`
`A. Procedural History
`
`Petitioner Natus Medical Inc., Natus Neurology Inc., Embla
`
`Systems LLC, and Embla Systems Ltd. (collectively, “Petitioner”) filed a
`
`Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 1—9 and
`
`13 (the “challenged claims”) ofthe ’532 patent. See 35 U.S.C. §§ 311—319.
`
`Petitioner relied upon a Declaration of Dr. Justin C. Williams (Ex. 1002) in
`
`support of its Petition. See Pet. 2—63. Patent Owner Nox Medical Ehf
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim Resp”).
`
`Pursuant to 35 U.S.C. § 314(a), on March 23, 2017, we instituted an
`
`inter partes review of challenged claims 1— -9 and 13 to dctcrmine if the
`
`claims are unpatentable under 35 U.S.C. § 103 as obvious over the
`
`combination of McIntire and Kristbjarnarson or Linville in further View of
`
`Archer, Caldecott, Uehara, Abizaid, or Orewiler. Paper 9, 26 (“Dec”).
`
`Patent Owncr filed its Patent Owner Response (Paper 26,
`
`“PO ReSp.”), along with a Declaration of Mr. Alan L. Oslan (Ex. 2013) to
`
`support its positions. Petitioner filed a Reply (Paper 34, “Reply”) to the
`
`Patent Owner Response. With the Board’s authorization (see Paper 38),
`
`Patent Owner filed a Sur-Response on Objective Evidence of
`
`Nombviousness. Paper 41 (“Sm-Response”).
`
`
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`IPR2016-01822
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`Patent 9,059,532 B2
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`Both Petitioner and Patent Owner each filed three motions to seal
`
`various papers and exhibits. See Papers 23, 33, 37, 42, 49, 53. Patent
`
`Owner also filed a Motion to Exclude certain exhibits. Paper 43.
`
`An oral hearing was held on December 14, 2017. A transcript of the
`
`hearing is included in the record. Paper 57 (“TL”).
`
`B. Related Proceedings
`
`The parties indicate that the ’532 patent was asserted against
`
`Petitioner in Nox Medical Ehf. v. Natus Neurology Ina, Civ. Action No.
`
`15-709-RGA (D. Del. 2015). Pet. 1; Paper 5, 2.
`
`(7 The ’532 Patent (Ex. l00_l)
`
`The ’532 patent involves a belt connector for use on a human or
`
`animal that electrically connects an electrode belt to a biometric device for
`
`measuring biosignals, such as cardiographic measurements, or for
`
`performing respiratory inductive plethysmography. See Ex. 1001, Abst.,
`
`1:5—8, 1:22—24, 2:20—23. Such a belt connector is preferably made from one
`
`single piece of “a molded plastic frame having a front side and a rear side,
`
`the frame having a receiving hole, having radial flexibility to function as a
`
`female snap button fastener for receiving and fastening on the front side of
`
`the frame a male snap protrusion.” Id. at 1:24—32. The radial flexibility is
`
`further described as being achieved by one or more slots formed by one or
`
`more elongated members “having flexibility transverse to its longitudinal
`
`axis (e.g. by being sufficiently thin), thus imparting flexibility to the width
`
`ofthe hole.” Id. at 3:6—10.
`
`The ’532 patent further describes
`
`fastening means for fastening to the frame a belt end of said
`electrode belt, and a member adjacent to said snap fastener
`
`
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`IPR2016-01822
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`Patent 9,059,532 B2
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`receiving hole to engage an electrode wire end electrically
`connected to said belt such that said wire end is in electrical
`
`contact with said hole, either by extending into the hole or
`coming in electrical contact e.g. through a bridging conductor,
`with a conducting male snap fastener inserted in said receiving
`hole.
`
`Id. at 1:33—40, see id. at 3:16—19.
`
`Figures 1A and 2A, set forth below, and their descriptions as set forth
`
`in the ’532 patent provide further elucidation concerning the claimed
`
`electrode belt and belt connector.
`
`
`
`Figures 1A and 2A depicted above show different embodiments of the belt
`
`connector. See id. at 4:55—57, 4:64—65. Specifically, Figures 1A and 2A
`
`show the following:
`
`[A] biometric belt connector (1) is electrically connected to an
`electrode belt (2). The connector (1) may comprise a molded
`plastic frame (3) having a front side (4) and a rear side (5), a.
`shaped circular or semi-circular hole (6) with radial flexibility
`to function as a female snap button fastener, fastening means
`(7) which comprise a ridge member (12). .
`.
`. The frame (3)
`may include two members (8, 13) adjacent to said hole (6), the
`two members (8, 13) forming a slot (11) extending from the
`hole and a second slot (15) across from the first slot (11).
`
`The elongated mcmbers and slots provide the hole with
`sufficient flexibility (i.e. elasticity in the width of the hole) to
`
`
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`IPR2016-01822
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`Patent 9,059,532 B2
`
`function as a female snap fastener. The member (13) also
`functions to engage an electrode wire end (9) from the belt end
`electrically connecting the belt with the hole and which comes
`in electrical contact with a conducting male snap fastener
`inserted in said hole. The connector further comprises a belt
`slot (14) with teeth members or pins (17), through which slot a
`loop of said belt (2) can be inserted such that it is held by the
`teeth/pins when pulled back, to adjust the length of the belt.
`
`The connector further comprises a shield member (10)
`which may be molded in one piece with the frame (3) and
`joined to the frame with foldable hinges (16) such that the
`shield member can be folded over to cover the rear side of the
`
`hole and wire end.
`
`Id. at 524—33 (cmphases omitted).
`
`D. Illustrative Claims
`
`Of the challenged claims, claim 1 is the only independent claim of the
`
`’532 patent. The remaining challenged claims 2—9 and 13 depend directly or
`
`indirectly from claim 1. Claim 1 is illustrative of the challenged claims and
`
`recites (with pertinent portions emphasized):
`
`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:
`
`a molded plastic frame including a receiving holc 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,
`
`a fastener configured to fasten the frame to a first end of said
`electrode belt, and
`
`an engaging member adjacent to said receiving hole, the
`
`
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`IPR2016-01822
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`Patent 9,059,532 BZ
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`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,
`
`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.
`
`Ex. 1001, 5:36—60 (emphases added).
`
`E. Ground of Unpatentability
`
`We instituted the instant trial based on the following ground of
`
`unpatentability: Claims 1—9 and 13 as unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over the combination of McIntire1 and Kristbjarnarson2
`
`or Linville3 in further View of Archer, 4 Caldecott, 5 Uehara, 6 Abizaid, 7 or
`
`' James F. McIntire and Brian Erik Haug, US. Patent No. 8,251,736 B2
`(Aug. 28, 2012) (Ex. 1018) (“McIntire”).
`2 Helgi Kristbjarnarson et al., US. Patent No. 6,461,307 B1 (Oct. 8, 2002)
`(Ex. 1012) (“Kristbjarnarson”).
`3 David James Linville, Pub, No. US 2006/0258948 A1 (Nov. 16, 2006)
`(Ex. 1013) (“Linville”).
`4 Michael F. Archer, US. Patent No. 4,671,591 (June 9, 1987) (Ex. 1008)
`(“Archer”).
`5 Steven Culdccott, Pub. No. WO 2008/102140 Al (Aug. 28, 2008)
`(EX. 1015) (“Caldecott”).
`6 Ryoichiro Uehara and Yoshinobu Takahashi, US. Patent No. 6,148,486
`(Nov. 21, 2000) (Ex. 1011) (“Uehara”).
`7 AlkOUI‘y A. Abizaid, US. Patent No. 1,115,459 (Oct. 27, 1914) (Ex. 1005)
`(“Abizaid”).
`
`
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`Patent 9,059,532 B2
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`Orewiler.8
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144—46 (2016). Under the broadest
`
`reasonable interpretation approach, claim terms are given their ordinary and
`
`customary meaning as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. In re Translogic Tech, Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007). An inventor may assign a different
`
`meaning to a term other than its ordinary and customary meaning by
`
`providing a definition of the term in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`
`1994). In the absence of such a definition, limitations are not to be read
`
`from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993).
`
`In its Petition, Petitioner offers an express construction of two claim
`
`terms, “flexibility” and “passing through the receiving hole.” Pet. 7—8.
`
`Petitioner states that “flexibility” is “the ability of a part (related to its
`
`gcometry and material properties) to elastically deform under an applied
`
`stress.” Pet. 7 (citing Ex. 1002 11 24). Patent Owner does not dispute this
`
`interpretation of “flexibility.” PO Resp. 5. As we found in our institution
`
`8 Benjamin F. Orewiler, US. Patent No. 1,193,050 (Aug. 1, 1916)
`(Ex. 1006) (“Orewiler”).
`
`
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`Patent 9,059,532 B2
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`decision, we also find here that we need not provide an express construction
`
`of “flexibility” for purposes of this Decision. See Vivid Techs., Inc. v. Am.
`
`Sci. & Eng ’g, Inc, 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that claim
`
`terms only need to be construed to the extent necessary to resolve the case).
`
`There is a dispute among the parties regarding the proper
`
`interpretation of the claim terms “wrapped around” and “passing through the
`
`receiving hole.” Compare PO Resp. 9—1 1, with Reply 5—6 (regarding
`
`“wrapped around”); compare Pet. 8, with P0 Resp. 5—9 (regarding “passing
`
`through the receiving hole”). We find it necessary to resolve these disputes
`
`regarding the proper interpretation of these two claim terms to determine
`
`whether the challenged claims are unpatentable as obvious over the asserted
`
`references.
`
`1. “wrapped around”
`
`Petitioner did not propose a construction for the term “wrapped
`
`around” in the Petition. Patent Owner proposed a construction for this term
`
`in its Patent Owner Response to address statements Dr. Williams made in
`
`related litigation. See PO Resp. 9—11 (citing Ex. 2019, 101:20—108z8). In
`
`particular, Patent Owner asserts that Dr. Williams testified in that related
`
`litigation that the minimum boundary for a conductor to travel around an
`
`engaging member to be considered “wrapped around” is depicted in the
`
`figure below where the conductor touches only one side.9
`
`9 We agree with Petitioner that Dr. Williams addressed an incomplete
`hypothetical when answering what is meant by “wrapped around.” For
`instance, Dr. Williams was told repeatedly to ignore the additional claim
`limitations of the challenged claims of the ’522 patent when drawing his
`deplction of the minimum requirement for a conductor to be considered
`“wrapped around” the engaging member. See Ex. 2019, 102:6—10 (“It does
`
`8
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`
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`
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`PO Resp. 9 (Ex. 2059).
`
`In responSe to that testimony, Patent Owner submits the opinion of
`
`Mr. Oslan, Patent Owner’s declarant. Mr. Oslan testifies that a person of
`
`ordinary skill in the- art would have understood the broadest reasonable
`
`interpretation of “wrapped around,” as used in the ”532 patent, to mean
`
`“following a path that substantially surrounds and encloses.” PO Resp. 10
`
`(citing Ex. 2013 11 38). Mr. Oslan bases his interpretation upon dictionary
`
`definitions. Id. at 10—1 1; Ex. 2013 1] 38.
`
`In Petitioner’s Reply, Petitioner asserts the broadest reasonable
`
`interpretation of “‘wrapped around’ simply requires that the conductor make
`
`physical contact with the lateral surface of a male snap inserted into a
`
`not have to meet any other claim limitation other than wrapped around. It
`doesn’t have to be forced into contact with the male snap”); 10327—11
`(“There’s no snap. It does not need to meet the requirement of being forced
`into physical contact with the male electrode. It does not need to meet that
`requirement. It only needs to meet the requirement of being wrapped
`around”); 105222—23 (“Just wrapped around. It doesn’t have to do anything
`but wrap around”); 106: 19 (“Does not need to pass through a receiving
`hole?”).
`
`
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`Patent 9,059,532 B2
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`receiving hole, with no minimum requirement on the extent to which it must
`
`‘wrap around’ an adjacent engaging member.” Reply 6. Petitioner asserts
`
`that Mr. Oslan’s reliance on dictionary definitions does not support an
`
`interpretation that something “wrapped around” must be “surrounded and
`
`enclosed.”10 Id. Petitioner does not support its interpretation with any
`
`citation to dictionary definitions, the ’532 patent Specification, or testimony
`
`from Dr. Williams. See Reply 5—6.
`
`The term “wrapped around” is not defined explicitly in the
`
`Specification of the ’532 patent, but the Specification provides figures
`
`illustrating a conductor “wrapped around” an engaging member. See
`
`Ex. 1001, Figures 2A, 2B, 2C. For instance, Figure 2B shows a bottom View
`
`of one embodiment of the ’532 patent, and Figure 2A (shown above, see
`
`supra Section IC) and Figure 2C show top views of the same embodiment.
`
`Id. at 4:66—5z2. Figures 2B and 2C, as annotated to include designations for
`
`the elongated members, are depicted below.
`
`‘0 Petitioner also notes testimony of Dr. Oslan from the related district court
`litigation that it asserts shows how Dr. Oslan’s interpretation of “wrapped
`around” does not comport with the ordinary meaning of this term. Reply 6
`(citing Ex. 1059, 16124-165215, 16826—13, 162: 20—163214).
`
`10
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`
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`WIS. 28
`
`FIG. 2C
`
`11
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`Patent 9,059,532 B2
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`The semi-circular hole shown in Figures 2B and 2C set forth above is
`
`formed by two elongated members 8 and 13. See Ex. 1001, 3:10—13, 5:13—
`
`17. The Specification of the ’532 patent states that elongated member 13
`
`“functions to engage an electrode wire end (9) from the belt end electrically
`
`connecting the belt with the hole and which comes in electrical contact with
`
`a conducting male snap fastener inserted in said hole.” Id. at 5:20—24.
`
`In all three figures, electrical wire 9 is depicted as completely
`encircling or enclosing a portion of elongated member 13, as. shown by
`
`electrical wire 9 appearing to be doubled around elongated member 13,
`
`showing it was “wrapped around” and looped around the engaging member
`
`at least one complete time. Although the Specification describes electrically
`
`connecting the electrical wire with the belt in terms of making electrical
`
`contact with the male snap fastener when inserted into the female snap
`
`fastener hole, see, e.g., Ex. 1001, Abst., 1:32—40, 1:56—60, 4:44—48, none of
`
`these portions of the Specification describes specifically how such electrical
`
`contact is made when the electrical wire is “wrapped around” an elongated
`
`member, as claimed. Petitioner’s definition of “wrapped around” relies
`
`upon additional claim language directed to electrical engagement of the
`
`conductor with the male portion of the snap connector electrode, and is not
`
`the broadest reasonable interpretation of the claim term “wrapped around”
`
`itself, as evidenced by the Specification of the ’532 patent or the ordinary
`and customary meaning of the term “wrapped around,” as reflected in the
`
`dictionary definitions submitted as evidence in this proceeding.
`
`In defining the ordinary and customary meaning of “wrapped,” the
`
`dictionary definition provided by Patent Owner that appears the most apt
`
`when defining how the electrical wire or conductor engages the elongated
`
`12
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`member as described in the Specification of the ’532 patent is “[t]o coil or
`
`twist about or around something.” See PO Resp. 10—11 (quoting Ex. 2018
`
`(The American Heritage Dictionary of the English Language)); see also Exs.
`
`2016—2018. “Around” means “on all sides; about.” See Dictionarycom,
`
`available at www.dictionarycom/browse/around?s=t (last accessed March
`
`16, 2018).
`
`In light of the teachings of the Specification of the ’532 patent and the
`
`referenced dictionary definitions of the terms “wrapped” and “around,” we
`
`interpret the claim phrase “wrapped around” to mean “following a path that
`
`substantially surrounds and encloses.”
`
`2.
`
`”passing through the receiving hole”
`
`Petitioner characterizes the meaning of the claim phrase “passing
`
`through the receiving hole” as “self-evident” and “without any limitation as
`
`to direction or extent.” Pet. 8 (citing Ex. 1002 11 59). Petitioner asserts that
`
`the only requirement for the conductor “passing through the receiving hole”
`
`is for it to “make physical (and thus electrical) contact with a male electrode
`
`inserted into the receiving hole.” Pet. 8 (citing Ex. 1002 11 59; Ex. 1001,
`
`5:49—54, 3:14—24). In this manner, Petitioner construes this phrase
`
`commensurate with its interpretation of the “wrapped around” language,
`
`discussed above.
`
`During the pre-institution phase of this proceeding, Patent Owner
`
`asserted that Petitioner’s construction is too broad, not taking into account
`
`that the wire must pass through the receiving hole. Prelim. Resp. 33—35.
`
`Patent Owner asserted that the ordinary meaning of “passing through the
`
`receiving hole” requires “the wire conductor to enter the receiving hole and
`
`then exit the receiving hole.” Id. at 33. Patent Owncr concludcd that a
`
`13
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`“conductor wire that comes into contact with a male electrode inserted into
`
`the receiving hole but that does not pass ‘through’ the receiving hole does
`
`not meet the language of claim 1.” Id. at 35.
`
`In our Decision on Institution, we agreed with Patent Owner that
`
`Petitioner’s construction is too broad, finding that “the claim language itself
`
`requires that the conductor penetrate the receiving hole so that it at least can
`
`come into physical contact with the side of the male portion of the snap
`
`connector electrode.” Dec. 9 (citing Ex. 1001, 5:49—54). We determined
`
`that “passing through the receiving hole” requires “at least the wire
`
`conductor to penetrate the receiving hole to a degree to have physical
`
`contact with the lateral surface of the male snap fastener,” but declined to
`
`require that the conductor exit the receiving hole. Id. We reached this
`
`determination based on the disclosure in the Specification of the ’532 patent
`
`that the conductor may be in electrical contact when “the wire end is
`
`crimped onto [the engaging] member” or when the conductor comes into
`
`electrical contact with the receiving hole “either by extending into the hole
`
`or coming in electrical contact e.g. through a bridging conductor, with a
`
`conducting male snap fastener inserted in said receiving hole.” 1d. at 9—10
`(quoting Ex. 1001, 3:14—24) (emphasis added).
`
`Patent Owner reiterates in its post-institution Response that the claim
`
`phrase “passing through the receiving hole” requires “entering and exiting
`
`the receiving hole.” PO Resp. 5—7. Patent Owner asserts that the
`
`prosecution history of the ’532 patent informs the construction of “passing
`
`through the receiving hole,” as claim 1 was narrowed to include this
`
`limitation in response to a prior art rejection. Id. at 6. Patent Owner also
`
`specifically relies on Figures 2A through 2C and the accompanying
`
`14
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`description of these drawings to support the contention that when “a
`
`conductor wire from the belt passes through the receiving hole while being
`
`wrapped around the engaging member,” the wire conductor exits the
`
`receiving hole. Id. at 4 (citing Ex. 1001, 5:18—24, Figs. 2A—2C), 7 (citing
`
`Ex. 1001, Figs. 2A—2C). Patent Owner also relies on dictionary definitions
`
`of “through,” and a district court interpretation of “through the receiving
`
`hole” as recited in the claims of the ’532 patent to mean “entering the hole,
`
`passing through the hole, and exiting the hole.” Id. at 7—8; Ex. 2056, 6—8
`
`(district court memorandum considering dictionary definition and the
`
`embodiments disclosed in the ’532 patent); Ex. 2058, 1. Finally, Patent
`
`owner cites to an expert report of Dr. Williams in the related litigation in
`
`which, Patent Owner asserts, Dr. Williams agreed with the district court’s
`
`construction. PO Resp. 8.
`
`Petitioner responds that Patent Owner “did not distinguish the prior art
`
`on the basis of the conductor ‘exiting’ the receiving hole,” and that “[Patent
`
`Owner’s] amendment is not a ‘clear and unmistakable disavowal’ of claim
`
`scope that limits the BRI of ‘passing through.”’ Reply 4. Petitioner does
`
`not respond to the additional evidence that Patent Owner asserts supports its
`
`position. See id. at 3—5. Petitioner asserts that our initial claim construction
`
`is correct, and that “passing through the hole” does not necessarily mean that
`
`the conductor exits the hole. Id. at. 5.
`
`In reviewing the complete record now before us, we are persuaded
`
`that Patent Owner’s construction of “passing through the receiving hole” is
`
`the correct interpretation of this limitation. Although we remain convinced
`
`that the dictionary definitions of “through” evidencing the ordinary meaning
`
`of this term do not necessarily require “exiting,” see Tr. 27—29, review of the
`
`15
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`Specification, the prosecution history, and the claim language of the ’532
`
`patent convinces us that in the context of the challenged claims of the ’532
`
`patent, when the conductor is “passing through the receiving hole” it must
`
`exit it as well. In other words, the conductor must be passing completely
`
`through and not merely into the receiving hole, when read in context of the
`
`claim as a whole, which also requires that the conductor be “wrapped
`
`around” the engaging member.
`
`First, in reviewing the claim language regarding the conductor, it not
`
`only must pass through the receiving hole, but must also be wrapped around
`
`the engaging member so that the conductor is forced into physical contact
`
`with at least a lateral surface of the male portion of the snap when it
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`penetrates the receiving hole. See Ex. 1001, 5:46—54. When the conductor
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`is passing through the receiving hole while being wrapped around the
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`engaging member, i.e., while substantially surrounding and enclosing it, the
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`conductor must enter and exit the receiving hole. See id. at Figs. 2A—2C.
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`Patent Owner added this claim language requiring the conductor to be
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`“passing through the receiving hole while being wrapped around the
`
`engaging member” to overcome a rejection based on the Gobron11 reference,
`
`thus narrowing the scope of the claim from only requiring the conductor to
`
`be in contact with the receiving hole and to come into electrical contact with
`
`the male snap fastener inserted into the receiving hole. See Ex. 1023, S, 11—
`
`13.12
`
`“ Stephane Gobron et al., Pub. No. US 2007/0167089 A1 (July 19, 2007)
`(Ex. 1014) (“Gobron”).
`‘2 Although Mr. Oslan agrees that Gobron has a conductor that contacts, but
`does not enter, a receiving hole, see Reply 4 (citing Ex. 1060, 132:4—
`134:10); see also Tr. 21—24 (discussing the amendment during prosecution
`
`16
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`IPR2016-01822
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`Patent 9,059,532 B2
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`The district court’s construction, although rendered under a different
`
`claim construction standard, is in accord with our reading of “passing
`
`through the receiving hole” in combination with the additional requirement
`
`that the conductor be “wrapped around the engaging member.” The district
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`court’s construction also requires the conductor to exit the hole, recognizing
`
`that the “conductor must still pass through the receiving hole while being
`
`wrapped around the engaging member.” Ex. 2052, 7—8, 8 n.2.
`
`Upon a review of all of the information provided in this proceeding,
`
`we conclude that “passing through the receiving hole” requires that the
`
`conductor enters the receiving hole so that it can come into physical contact
`
`with the lateral side of the male portion of the snap connector electrode and
`
`then exits the. receiving hole.
`
`B. Principles ofLaw
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int ’1 Co. v. Teleflex Inc., 550 US. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and, when presented, (4) objective
`
`based on the Gobron referend), we find that the additional language added
`by Patent Owner requiring that the conductor be “passing through” the
`receiving hole, while. being “wrapped around” the engaging member does
`require the conductor to enter and exit the receiving hole.
`
`17
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`IPR2016-01822
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`Patent 9,059,532 B2
`
`evidence of nonobviousness. Graham v. John Deere C0., 383 US. 1, 17—18
`
`(1966).
`
`We analyze the asserted grounds of unpatentability in accordance with
`
`the above-stated principles.
`
`C. Level ofSkill in the Art
`
`Dr. Williams provided three alternative descriptions of the level of
`
`skill of an ordinary artisan. Ex. 1002 {l 31. These alternatives are (1) a
`
`Bachelor’s degree in mechanical engineering, bio-medical engineering, or an
`
`equivalent field from an accredited university, and about one year of
`
`relevant experience in industry or academia, (2) an associate’s degree in
`mechanical design or an equivalent field from an accredited university, and
`
`about three years of relevant experience in designing medical devices, or (3)
`
`a master’s or doctorate degree in mechanical engineering, bio-medical
`
`engineering, or an equivalent field from an accreditcd university. Id. Mr.
`
`Oslan accepted this description with the caveat that an equivalent field is
`electrical engineering and that someone who holds a \doctorate degree has
`
`more experience than the other two alternatives or someone with a master’s
`
`degree.
`
`, The level of skill in the art is a factual determination that provides a
`
`primary guarantee of objectivity in an obviousness analysis. Al—Site Corp. v.
`VSI Int ’I Inc, 174 F.3d 1308, 1324 (Fed. Cir. 1999). Based upon our review
`
`of the record, we adopt Dr. Williams’ description of the level of skill in the
`
`art for an ordinary artisan, including Dr. Oslan’s caveat recognizing
`
`electrical engineering as an equivalent field. The level of ordinary skill in
`
`the art also is reflected by the prior art of record. See Okajima v. Bourdeau,
`
`261 F.3d 1350, 1355 (Fed. Cir. 2001).
`
`18
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`IPR2016-01822
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`Patent 9,059,532 B2
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`D. Obviousness over McIntire in Combination with Kristbjarnarson
`or Linville in Further View ofArcher, Caldecott, Uehara, Abizaid,
`or Orewiler
`
`Petitioner asserts that claims 1-5, 9, and 13 are unpatentable under 35
`
`U.S.C. § 103 as obvious over McIntire in combination with either
`
`Kristbjarnarson or Linville. Pet. 35. Petitioner also asserts that claims 6—8
`
`are unpatentable under 35 U.S.C. § 103 as obvious over the combination of
`
`McIntire and Kristbjarnarson. Id. Petitioner also asserts that Archer or
`
`Caldecott, which teach well-known technology related to protective coatings
`
`and insulating films, when added to this challenge individually, also render
`
`claims 4 and 5 unpatentable as obvious. Pet. 51455. Petitioner further
`
`asserts that Uehara, Abizaid, or Orewiler, which all teach well-known
`
`methods of belt fastening and adjusting, when added to this challenge
`
`individually, also render claims 6—8 unpatentable as obvious. Id. at 56-61.
`
`In our Decision on Institution, we considered the proposed grounds
`
`and instituted trial on one combined ground for all the challenged claims 1—9
`
`and 13 as follows: Whether the challenged claims are obvious over the
`
`combination of McIntire and Kristbjarnarson or Linville in further "view of
`
`Archer, Caldecott, Uehara, Abizaid, or Orewiler.
`
`As support, Petitioner provides detailed explanations as to how each
`
`claim limitation is met by the references and rationales for combining the
`
`references, as well as the declaration of Dr. Williams. Pet. ‘35—42; Ex. 1002,
`
`Attachment A (claim charts).
`
`Patent Owner does not dispute Petitioner’s characterization of the
`
`teachings of Kristbjarnarson, Linville, Uehara, Archer, Caldecott, Abizaid,
`
`l9
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`
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`IPR2016-01822
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`Patent 9,059,532 B2
`
`or Orewiler. See PO Resp. 43—46. ‘3 However, Patent Owner focuses on the
`
`teachings of McIntire and asserts that Petitioner fails to show that any
`
`embodiment of McIntire discloses all of the features of the challenged
`
`claims, and Petitioner fails to provide a rationale as to why one of skill in the
`
`art would combine any feature of one embodiment of McIntire with another.
`
`PO Resp. 17—46.
`
`We have reviewed the complete record before us, including the
`
`parties’ explanations and supporting evidence presented during this trial.‘
`
`We determine that given the evidence on this record, Petitioner has failed to
`
`show by a preponderance of the evidence that claims 1—9 and 13 are
`
`unpatentable as obvious over the combination of McIntire and
`
`Kristbjamarson or Linville in further View of Archer, Caldecott, Uehara,
`
`Abizaid, or Orewiler.
`
`1. McIntire (Ex. 1018)
`
`McIntire describes several embodiments of a connector assembly for
`
`connecting an electrical lead to the electrical contact of an electrode for
`
`taking, for example, electrocardiograph measurements. Ex. 1018, Abst.,
`
`125—47. Petitioner focuses on two such embodiments shown in Figures 13
`
`and 14 that it asserts teaches “a conductor that wraps around structure
`
`adjacent a receiving hole in the connector, wherein the conductor passes
`
`through the receiving hole to make electrical contact with a lateral surface of
`
`‘3 Patent Owner does dispute whether one of skill in the art would have a
`reason to combine the teachings of McIntire concerning the connector with
`the belts of Kristbjarnarson, Linville, or Uehara (especially when Uehara has
`no conductor at all). See PO Resp. 43—46. Because we find that features of
`the claims are not taught by any reference, we need not reach this issue.
`
`20
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`IPR2016-01822
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`Patent 9,059,532 B2
`
`a male snap electrode inserted in the hole.” Pet. 23; see id. at 22—24.
`
`Therefore, we will focus our discussion on Figures 13 and 14 of McIntire set
`
`forth below.
`
`
`
`FIG- 1 3
`
`Figure 13, shown above, depicts electrode lead assembly 512 that
`
`includes electrical lead 514, electrode 520, and connector assembly 528.
`
`Ex. 1001, 11:3 8—40. Electrode 520 is described as including electrical
`
`contact 530, and electrical lead 514 is described as including electrical
`
`conductor 522. Id. at 11:40—42. Connector assembly 528 includes retention
`
`plate 544 that further includes “a body 548 having an opening 550 extending
`
`thercthrough. The Opening 550 has a size and shape that enables the
`
`opening 550 to receive an end portion 536 of the electrical contact 530
`
`therethrough,” in other words a male/female snap connection. Id. at 11: 42—
`
`47.
`
`21
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`IPR2016-01822
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