No Rehearing Because of Hindsight Declaring
by Brock F. Wilson, Matthew George Hartman & Rubén H. Muñoz, Akin Gump
The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its finding that the supporting declaration of Petitioner’s expert relied on “a far too general reason” to combine prior art, was conclusory, and engaged in impermissible hindsight.
Petitioner argued that certain patent claims directed to an in-ear earpiece were invalid in view of prior art references Howes and Sapiejewski. In its supporting declaration, Petitioner’s expert opined that Howes discloses a “known, retention problem with in-ear earpieces” that, because of their “weight and overall size,” in-ear earpieces have a tendency to fall out of the ear. Petitioner’s expert also opined that Sapiejewski’s in-ear earpiece would have had this same retention problem because of its weight and overall size, and, thus, a person of ordinary skill in the art (POSA) would have been motivated to combine the disclosures of Sapiejewski with those of Howes.
The PTAB, however, found that, apart from conclusory statements, Petitioner’s expert did not explain how a POSA would even know the weight and overall size of Sapiejewski’s earpiece or that it would result in a retention problem. To the contrary, the PTAB found that disclosures in Sapiejewski—stating that its earpiece “is designed to comfortably couple the acoustic elements of the earpiece to the physical structure of the wearer’s ear”—indicate that its earpiece did not actually suffer from the retention problem. Moreover, the PTAB found that Petitioner’s expert also failed to explain “why a general need to secure an earpiece . . . would lead to [the combination]” when “that function already is provided by the Sapiejewski device.” Thus, the PTAB agreed with Patent Owner and concluded, “Petitioner relies on a far too general reason to combine the references and engages in impermissible hindsight as to the particular combination of the teaching of Sapiejewski and Howes.” Because Petitioner failed to point out any factors that the PTAB misapprehended or overlooked in its decision denying institution, Petitioner’s request for rehearing was denied.
Notably, Petitioner also failed to convince the PTAB that it misapprehended or overlooked that the Patent Owner suppressed or concealed its invention by waiting an unreasonably long time to file its patent application. In denying rehearing, the PTAB explained that it considered and credited evidence submitted by Patent Owner that it tried and tested many different designs in order to perfect the claimed invention. Thus, the PTAB upheld its determination that Patent Owner successfully antedated a third prior art reference.
FreeBit AS v Bose Corporation, IPR2017-01309, Paper 10 (PTAB Jan. 23, 2018).