Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: March 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NATUS IVIEDICAL INC., NATUS NEUROLOGY INC.,
`EMBLA SYSTEMS LLC, and EMBLA 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.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: March 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NATUS IVIEDICAL INC., NATUS NEUROLOGY INC.,
`EMBLA SYSTEMS LLC, and EMBLA 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.
`
`DECISION
`
`Institution of Inter Partes Review
`
`37 C.F.R. § 42.108
`
`
`
`lPR2016-01822
`
`Patent 9,059,532 B2
`
`A. Background
`
`1. INTRODUCTION
`
`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 l—9 and 13 (the
`
`“challenged claims”) of US. Patent No. 9,059,532 B2 (Exhibit 1001, “the
`
`’532 patent”). See 35 U.S.C. §§ 311—319. Patent Owner Nox Medical Ehf
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp”).
`
`We have authority to determine whether to institute an inter partes
`
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). To institute an inter
`
`partes review, we must determine that the information presented in the
`
`Petition shows “a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). For the reasons set forth below, we conclude that Petitioner has
`
`established a reasonable likelihood that it would prevail in showing the
`
`unpatentability of the challenged claims of the ’532 patent. Therefore, we
`
`institute an inter partes review for claims 1—9 and 13 of the ’532 patent on
`
`the ground identified in the Order section of this Decision.
`
`B. Related Proceedings
`
`The parties indicate that the ’532 patent was asserted against
`
`Petitioner in Nox Medical Ehf v. Natus Neurlogy Inc. , Civ. Action No.
`
`15—709—RGA (D. Del. 2015). Pet. 1; Paper 5, 2.
`
`C. The ’532 Patent (Ex. 1001)
`
`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
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`performing respiratory inductive plethysmography. See Ex. 1001, Abst,
`
`1:5—8, 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 a front side of the
`
`frame a male snap protrusion.” Id. at 1:24—32. The radial flexibility is
`
`further described as 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 of the
`
`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
`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.
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`
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`Figures 1A and 2A depicted above show different embodiments of the belt
`
`connector. See id. at 4:55—57, 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 members and slots provide the hole with
`sufficient flexibility (i.e. elasticity in the width of the hole) to
`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
`
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`shield member can be folded over to cover the rear side of the
`
`hole and wire end.
`
`Id at 524—33 (emphases 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 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,
`
`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
`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 ofthe snap
`connector electrode penetrates the receiving hole, the
`conductor is forced into physical contact with at least a
`lateral surface ofthe 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
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`flexibility transverse to its longitudinal axis, thus
`imparting flexibility to the width of the hole.
`
`Ex. 1001, 5:36—60 (emphases added).
`
`E. The Assertea’ Grounds of Unpatentabilily
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following grounds. Pet. 9, 18, 28, 35, 43.
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`
`
`§10261—3 a9 and 13
`
`McIntire2 and Kristbarnarson3 or Linville4
`McIntire and Hermannsson
`
`McIntire and Kristb amarson
`
`§103 a
`§ 103 a
`
`§ 103 a
`
`1—5, 9, End 13
`1—9an8d 13
`
`Harhen5 and Hermannsson
`Gobron6 and Williams,7 Lawrence, or
`Sommer9
`
`1, 6—9, and 13
`§ 103(a)1—3
`
`1 Kormakur Hermannsson, US. Patent No. 8,025,539 B2 (Sept. 27, 2011)
`(Ex. 1017) (“Hermannsson”).
`2 James F. McIntire and Brian Erik Haug, US. Patent No. 8,251,736 B2
`(Aug. 28, 2012) (Ex. 1018) (“McIntire”).
`3 Helgi Kristbjarnarson et al., US. Patent No. 6,461,307 B1 (Oct. 8, 2002)
`(Ex. 1012) (“Kristbjarnarson”).
`4 David James LinVille, Pub. No. US 2006/0258948 A1 (Nov. 16, 2006)
`(Ex. 1013) (“Linville”).
`5 Robert P. Harhen et al., US. Patent No. 5,326,272 (July 5, 1994)
`(EX. 1010) (“Harhen”).
`
`6 Stephane Gobron et al., Pub. No. US 2007/0167089 A1 (July 19, 2007)
`(Ex. 1014) (“Gobron”).
`7 Paul F. Williams, US. Patent No. 937,130 (Oct. 19, 1909) (Ex. 1003)
`(“Williams”).
`8 Milton H. Lawrence, US. Patent No. 1,001,054 (Aug. 22, 1911)
`(Ex. 1004) (“Lawrence”).
`9 Friedrich Sommer, US. Patent No. 3,092,759 (June 4, 1963) (Ex. 1007)
`(“Sommer”).
`
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`Petitioner also asserts additional art in further combination with each
`
`challenge set forth in the table above challenging claim 1. Specifically,
`
`(1) claims 4 and 5 are unpatentable as obvious in further
`Petitioner asserts:
`View of Archerlo or Caldecott;‘1 (2) claims 6 through 8 are unpatentable as
`
`obvious in further View of Uehara,12 Abizaid,13 or Orewiler;14 and (3) claims
`
`9 and 13 are unpatentable as obvious in further View of Kristbjamarson or
`
`Linville. Pet. 51, 56, 61.
`
`Petitioner also relies also on the Declaration of Dr. Justin C. Williams
`
`(Ex. 1002). Pet. 243.
`
`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 CPR. § 42.100(b); Cuozzo Speed Techs,
`
`LLC v. Lee, 1368. 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
`
`‘0 Michael F. Archer, US. Patent No. 4,671,591 (June 9, 1987) (Ex. 1008)
`(“Archer”).
`11 Steven Caldecott, Pub. No. wo 2008/102140 A1 (Aug. 28, 2008)
`(EX. 1015) (“Caldecott”).
`‘2 Ryoichiro Uehara and Yoshinobu Takahashi, US. Patent No. 6,148,486
`(Nov. 21, 2000) (Ex. 1011) (“Uehara”).
`13 Alkoury A. Abizaid, US. Patent No. 1,115,459 (Oct. 27, 1914) (Ex. 1005)
`(“Abizaid”).
`14 Benjamin F. Orewiler, US. Patent No. 1,193,050 (Aug. 1, 1916)
`(Ex. 1006) (“Orewiler”).
`
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`art in the context of the entire disclosure. In re Translogic Tech, Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007).
`
`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 geometry and
`
`material properties) to elastically deform under an applied stress.” Pet. 7
`
`(citing Ex. 1002 1] 24). Patent Owner does not dispute this interpretation at
`
`this stage of the proceeding. Prelim. Resp. 5. We find, however, 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).15
`
`Petitioner characterizes the claim term “passing through the receiving
`
`hole” as “self-evident” and “without any limitation as to direction or extent.”
`
`Pet. 8 (citing Ex. 1002 fl 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).
`
`Patent Owner disagrees with Petitioner’s construction. Prelim. Resp. 5.
`
`Patent Owner asserts that Petitioner’s construction is too broad, not
`
`taking into account that the wire must pass through the receiving hole. Id. at
`
`33—35. Patent Owner asserts that the ordinary meaning of “passing through
`
`‘5 Although not providing an express construction, Patent Owner also
`addresses the meaning of “elongated member” in its discussion of Figure 14
`of McIntire. See Prelim. Resp. 5, 47—48. We discuss this claim term when
`we address the teachings of McIntire. See infra Section II.D.4.
`
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`the receiving hole” requires “the wire conductor to enter the receiving hole
`
`and then exit the receiving hole.” Id. at 33. Patent Owner concludes that a
`“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.
`
`On the record before us, we agree with Patent Owner that Petitioner’s
`
`construction is too broad. The claim language itself requires the conductor
`
`to pass 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.” Ex. 1001, 5:49—54 (emphases added). Therefore, 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.
`
`The Specification of the ’532 patent also supports this View. The ’532
`
`patent describes an engaging member, such as member 13 in Figures 1A and
`
`2A, adjacent to the receiving hole where a wire, such as 9 in Figure 1A and
`
`2A, “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.” Ex. 1001,
`
`1:36—40, 3:14—19 (emphasis added). The ’532 patent also describes an
`
`embodiment where the wire end is crimped onto the engaging member. Id.
`
`at 3:19—24.
`
`Thus, we conclude on this record that “passing through the receiving
`
`hole” requires at least the wire conductor to penetrate the receiving hole to a
`
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`degree to have physical contact with the lateral surface of the male snap
`
`fastener. On the record before us, we do not adopt Patent Owner’s
`
`construction requiring the wire conductor to “exit the receiving hole.”
`
`B. Principles ofLaw
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference. Net
`
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`
`Karsten Mfg. Corp. v. Cleveland Golf C0., 242 F.3d 1376, 1383 (Fed. Cir.
`
`2001). “Alreference anticipates a claim if it discloses the claimed invention
`
`such that a skilled artisan could take its teachings in combination with his
`
`own knowledge of the particular art and be in possession of the invention.”
`
`In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (internal citation and
`
`emphasis omitted). Moreover, “it is proper to take into account not only
`
`specific teachings of the reference but also the inferences which one skilled
`
`in the art would reasonably be expected to draw therefrom.” In re Preda,
`
`401 F.2d 825, 826 (CCPA 1968).
`
`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
`
`10
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`evidence of nonobviousness. Graham v. John Deere Ca, 383 US. 1, 17—18
`
`(1966)
`
`We are mindful that the level of ordinary skill in the art also is
`
`reflected by the prior art of record. See Okajz'ma v. Bourdeau, 261 F.3d
`
`1350, 1355 (Fed. Cir. 2001).
`
`We analyze the asserted grounds of unpatentability in accordance with
`
`the above-stated principles.
`
`C. Anticipation by Hermannsson
`
`Petitioner contends that claims 1—3, 6—9, and 13 of the ’532 patent are
`
`unpatentable under 35 U.S.C. § 102(e) as anticipated by Hermannsson. See
`
`Pet. 9—18. Patent Owner responds that Petitioner’s challenge fails because
`
`Hermannsson does not teach an “elongated member” with “flexibility
`
`transverse to its longitudinal axis” by which the “receiving hole” and “slot”
`are formed. Prelim. Resp. 20—2‘1. Patent Owner also asserts that Petitioner
`
`has failed to show how Hermannsson teaches a conductor that “passes
`
`through the receiving hole.” Prelim. Resp. 21—23.
`
`We agree with Patent Owner that Petitioner has failed to show that it
`
`is likely to prevail in its challenge that claims 1—3, 6—9, and 13 are
`
`anticipated by Hermannsson.
`
`1. Hermannsson (Ex. 1017)
`
`Hermannsson describes a biometric belt connector for electrically
`
`connecting an electrode belt to a biometric device. Ex. 1017, Abst.
`
`Figure 1a of Hermannsson, shown below, illustrates the front element of the
`
`belt connector before assembly. Id. at 1:43—44.
`
`11
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`10
`
`Figure la depicted above shows a conductor or wire loop 5, where
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`“[p]roper placement and location of the wire 100p 5 is guided by an
`
`extending ridge 12 molded in the element piece.” Id. at 3:21—25.
`
`Specifically, Figure 1a shows
`
`extending ridge 12 comprises two small wings 19 (shown in
`FIGS. 3a, 3b and 5) that hold the wire loop [5] in suitable
`proximity to the hole. The loop is shaped such that two parallel
`pieces thereof lie over the hole 4, such that these loop sections
`will be exposed and visible from the outside through the hole,
`as shown in FIG. 2. An extended hole 10 extends from the
`
`main hole 4, forming a keyhole-like shape.
`
`Id. at 3:24—31 (emphasis omitted).
`
`Hermannsson also states that the male part of the fastener is a
`
`circular protrusion that “presses against the wire loop, ensuring that
`
`the parallel wire legs forming the female snap fastener, are held
`
`12
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`substantially in the same plane within the assembled belt connector.”
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`Id. at 3 :49—53.
`
`2. Analysis
`Petitioner asserts that the described ridge and wings of Hermannsson
`
`are “engaging members adjacent the receiving hole that engage the electrode
`
`belt conductor, which wraps around them.” Pet. 12—13 (citing Ex. 1017,
`
`3:22—29, Figs. 1a, 5). Petitioner also refers to Hermannsson’s description
`
`that the conducting wire will be “exposed and visible” through the receiving
`
`hole, and that part of the wire loop will come into contact with the male part
`
`of the fastener when it is inserted into the receiving hole, forming an
`
`electrical connection. Id. at 13. Petitioner concludes, based on the
`
`testimony of Dr. Williams, that “[a]ccordingly, the wire loop of
`
`Hermannsson necessarily ‘passes through’ the receiving hole; if it did not,
`
`electrical connection with the male snap fastener inserted in the hole would
`
`not be possible.” Id. (citing Ex. 1002, 61) (quoting App. 5).16
`
`Dr. Williams testifies that
`
`Hermannsson teaches a conductor in the same “hole” that
`
`the male snap fastener is inserted into—i.e., a conductor
`passing through the same hole that receives the male snap
`electrode. A PHOSITA knew and understood that the device of
`
`Hermannsson would not serve its intended function if the
`
`conductor of the belt was not in physical, and therefore
`electrical contact, with a male snap electrode connected to the
`belt connector. Thus, as Hermannsson teaches, the conductor
`
`‘6 Petitioner has numbered Dr. Williams’ Declaration and attached
`
`appendices that include detailed claim charts with consecutive numbers. We
`will follow Petitioner’s numbering convention.
`
`13
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`of Hermannsson passes through the same hole that receives a
`male snap electrode.
`
`Ex. 1002, 61.
`
`Patent Owner responds that the conductor in Hermannsson does not
`
`pass through the receiving hole. Prelim. ReSp. 21—23. Patent Owner
`
`explains that “Hermannsson clearly teaches that wire loop 5 lies ‘in
`
`proximity to’ and ‘over’ the hole 4 such that it is ‘exposed and visible from
`
`outside’ the hole.” Id. at 23. Therefore, Patent Owner concludes that
`
`“Hermannsson actually teaches that the wire loop 5 lies in a plane parallel
`
`to front element 3 and does not pass through the hole 4 .
`
`.
`
`. .” Id. at 22.
`
`We agree with Patent Owner and find that Hermannsson does not
`
`teach the limitation of the conductor passing through the receiving hole
`
`because the wire conductor does not appear to penetrate the receiving hole,
`
`much less to a degree to have physical contact with the lateral surface of the
`
`male snap fastener as required by all challenged claims. See Ex. 1001, 5 :47—
`
`54. Hermannsson describes a loop of wire that lies over the receiving hole,
`
`and remains in substantially the same plane of the belt connector, when
`
`engaged with the male part of the fastener. See Ex. 1017, 3:25—30, 49—53.
`
`Hermannsson does not indicate that the wire loop ever penetrates the
`
`receiving hole or comes into physical contact with a lateral surface of the
`
`male portion of the snap connector electrode to any degree. Petitioner’s
`
`reliance on an established electrical connection is not sufficient to
`
`demonstrate the required “passing through.”
`
`14
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`Therefore, we find that Petitioner has not shown a reasonable
`
`likelihood that it will prevail in showing that claims 1—3, 6—9, or 13 are
`
`anticipated by Hermannsson.l7
`
`D. Obviousness over McIntire in Combination with Kristbjarnarson
`0r 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
`
`Kristbjamarson 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 Kristbj amarson. 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. 51—55. 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.
`
`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 a declaration of Dr. Williams (Ex. 1002). Pet. 35—42.
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`'7 Patent Owner also questions whether Petitioner has shown sufficiently
`that Hermannsson teaches the claimed “elongated member,” a “longitudinal
`axis” of the “elongated member,” how the receiving hole and slot arc
`“formed by” that “elongated member,” or how flexibility transverse to the
`longitudinal axis of that elongated member “impart[s] flexibility to the
`hole.” Prelim. Resp. 20—21. As we find that Hermannsson does not teach a
`conductor “passing through the receiving hole,” we need not reach these
`issues.
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`15
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`IPR2016-01822
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`Patent 9,059,532 B2
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`Patent Owner asserts that Petitioner fails to show a reasonable
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`likelihood of success that these claims are unpatentable as obvious over
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`these combinations. Prelim. Resp. 36—5 1.
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`We have reviewed the parties’ contentions and supporting evidence.
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`Given the evidence on this record, we determine that Petitioner has shown a
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`reasonable likelihood of prevailing on its assertion that claims 1—9 and 13
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`are unpatentable as obvious over the combination of McIntire and
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`Kristbj amarson or Linville in further view of Archer, Caldecott, Uehara,
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`Abizaid, or Orewiler. Our analysis focuses on the deficiencies alleged by
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`Patent Owner as to the claims.18
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`1. McIntire (Ex. 1018)
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`McIntire describes several embodiments of a connector assembly for
`
`connecting an electrical lead to the electrical contact of an electrode for
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`taking, for example, electrocardiograph measurements. Ex. 1018, Abst.,
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`1:5—47. One such embodiment is set forth in Figure 14 of McIntire depicted
`
`below.
`
`18 Patent Owner does not dispute at this time Petitioner’s characterization of
`the teachings of Kristbjarnarson or Linville in combination with the
`teachings of McIntire, see Prelim. Resp. 1—3, see generally Pet. 36—51, or
`the teachings of the additional references to Archer, Caldecott, Uehara,
`Abizaid, or Orewiler. See Prelim. Resp. 54 (stating none of grounds 6—8 are
`likely to succeed based on reasoning for ground 1—5).
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`16
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`678
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`
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`FIG. 14
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`Electrode assembly 612 shown in Figure 14 above includes retention
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`plate 644 with body 648 having opening 650 extending therethrough and
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`optional cover sheet 678. Id. at 12:16—19. Melntire further describes this
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`embodiment as follows.
`
`The opening 650 has a size and shape that enables the opening
`650 to receive an end portion 636 of the electrical contact 630
`therethrough. In the exemplary embodiment, the opening 650
`is sized smaller than an enlarged-diameter portion 652 of the
`electrical contact 630. The portion of the retention plate body
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`17
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`648 adjacent the opening 650 is sufficiently resilient such that
`the size of the opening 650 may deform to allow the enlarged—
`diameter portion 652 of the electrical contact 630 to be forced
`through the opening 650. For example, in the exemplary
`embodiment a portion of the retention plate body 648 that
`defines a portion of the opening 650 is provided as a flexible
`beam 627. Once the enlarged-diameter portion 652 has passed
`through the opening 650, the beam 627, and thereby the
`opening 650, returns toward the undeformed size to engage a
`reduced—diameter portion 653 of the electrical contact 630, such
`that in the exemplary embodiment the body 648 of the retention
`plate 644 connects to the electrical contact 630 in a snap—fit
`connection.
`
`The body 648 of the retention plate 644 includes a
`channel 663 that holds an end portion 642 of the electrical
`conductor 622 therein. A portion of the end portion 642 is held
`between, and in engagement with, the electrical contact 630 and
`a wall 665 of the retention plate body 648 that defines the
`opening 650.
`
`Id. at 12:19—43 (emphases omitted).
`
`2. Kristbjarnarson (Ex. 1012)
`
`Kristbjarnarson describes a disposable sensor for monitoring and
`
`measuring the respiration of a patient. Ex. 1012, Abst, 3:17—19.
`
`Kristbjamarson also states that “[t]he disposable sensor includes at least one
`
`flexible band adapted to encircle a portion (e. g., the chest or abdomen) of the
`
`patient. A conductor strip is secured to the ribbon” in a zig-zag or other
`
`predetermined pattern. Id. at 3:19—24. Kristbjamarson’s disposable sensor
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`also has a connector assembly to connect and secure the free ends of the
`
`ribbon, and is “operatively coupled to the conductor strip, and is further
`
`adapted to be connected to a monitoring device.” Id. at 3:37—41.
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`18
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`3. Linville (Ex. 1013)
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`Linville describes a reusable transducer made of a woven fabric
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`“providing a substantially flat extensible belt for encircling a portion of a
`
`patient for a wide range of patient sizes.” Ex. 1013, Abst. Linville also
`
`teaches an electrical conductor is woven directly into the fabric and has “a
`
`number and orientation of inductive turns that improves the transducer
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`expandability and the electrical performance .
`
`.
`
`. .” Id. at Abst., 1] l. Linville
`
`also describes releasable connectors to attach the ends of the belt to secure
`
`the belt around the body of a patient and electrical connectors conductively
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`attached to conductor ends at each end of the belt “to facilitate electrical
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`interfacing of the transducer with inductance measurement circuitry.” Id.
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`1[28.
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`4. Analysis
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`Patent Owner asserts that Petitioner improperly uses parts of three
`
`different embodiments set forth in McIntire to establish how each limitation
`
`of the challenged claims is met without identifying how these different
`
`embodiments should be combined or providing any rational basis or reason
`
`why a person of ordinary skill would have made those combinations.
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`Prelim. Resp. 37—42. Patent Owner concludes “[b]ecause Petitioner has
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`failed to explain which embodiment a PHOSITA would have used as its
`
`starting point and which modifications would have been made to that
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`embodiment in light of the other embodiments, Petitioner has failed to
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`adequately explain its theory of obviousness.” Id. at 38.
`
`Petitioner points to statements in McIntire, Kristbj arnarson, and
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`Linville that a person of ordinary skill would be motivated to combine and
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`reasonably expect success in combining elements of the biometric electrical
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`l9
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`connector taught by McIntire with Kristbjarnarson’s or Linville’s electrode
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`belt. Id. at 37. For instance, Petitioner notes that McIntire states that its
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`teachings can be used in “any system for measuring any physiologic
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`information,” id. at 37 (quoting EX. 1018, 12:66—67); that Linville states that
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`it is “readily apparent to those skilled in the art that [Linville’s device] can
`
`be adapted to other uses including .
`
`.
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`. other fields in the life sciences and
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`related research industries,” id. (quoting EX. 1013 11 57); and that
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`Kristbjarnarson states that variations and modifications of belts and belt
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`connectors are “apparent to those skilled in the art,” id. (quoting Ex. 1012,
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`8:29—30).
`
`Petitioner also notes testimony of Dr. Williams concerning the
`
`rationale to combine the teachings of McIntire with Kristbj amarson or
`
`Linville. Id. (citing Ex. 1002, 81—82, 89—90). Dr. Williams states “[c]laim 1
`
`merely combines elements of biometric electrical connectors taught by
`
`McIntire .
`
`.
`
`. with the belt taught by Kristbj arnarson into a single entity
`
`without producing new or different functions than those separately
`
`performed by the elements.” Ex. 1002, 82. Dr. Williams concludes
`
`[a]ccordingly, it would be obvious to a PHOSITA to combine
`the complementary (and in no way incompatible) features of
`McIntire .
`.
`. with Kristbj arnarson according to known methods
`to result in the device meeting all the limitations of claim 1.
`Being no more than a combination of familiar elements
`according to known methods with predictable results, the claim
`is obvious under KSR. 127 S. Ct. at 1739 (2007) (“The
`combination of familiar elements according to known methods
`is likely to be obvious when it does no more than yield
`predictable results”).
`
`Id.; see id. at 89—90 (similar statements in relation to Linville).
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`20
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`On this record, we agree with Petitioner and credit Dr. Williams’
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`testimony that a person of ordinary skill would have reason to combine the
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`known elements of McIntire with Kristbjarnarson or Linville to arrive at the
`
`challenged claims because such a combination of familiar elements was
`
`according to known methods with predictable results. Petitioner also points
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`to market demands for low-cost, mass-producible electrode belts that can
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`adjust to a variety of patient sizes, which McIntire seeks to meet, and a
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`statement in McIntire that features of different embodiments of McIntire
`
`may be combined. See Pet. 20; Ex. 1018, 1:44—47. Specifically, McIntire
`
`states:
`
`The embodiments are not limited to the specific embodiments
`described herein, but rather, components and/or steps of each
`embodiment may be utilized independently and separately from
`other components and/or steps described herein. Each
`component, and/or each step of one embodiment, can also be
`used in combination with other components and/or steps of
`other embodiments.
`
`Ex. 1018, 13:10—16. Therefore, on this record, we are persuaded that
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`Petitioner has shown sufficiently a reasonable likelihood of establishing that
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`it would have been obvious to combine different elements of embodiments
`
`of McIntire.
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`Patent Owner addresses separately each embodiment of McIntire upon
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`which Petitioner relies to establish the unpatentability of the challenged
`
`claims. Prelim. Resp. 42—5 1. Specifically, Patent Owner asserts that
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`Figure 12 of McIntire is not shown to have the claimed “engaging member”
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`or “conductor passing through the receiving hole,” Figure 13 is not shown to
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`have the claimed “slot extending from said hole” or an “elongated member,”
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`and Figure 14 is not shown to have an “elongated member” forming part of
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`21
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`the slot, a conductor “passing through the hole,” or an “engaging member”
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`that engages the conductor. See Prelim.
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