throbber
Paper No. _____
`Filed: May 13, 2015
`
`
`Filed on behalf of: Mayfonk Athletic, LLC
`
`By: Edward J. Benz III
`
`Naveen Modi
`
`Paul Hastings
`
`1170 Peachtree Street, N.E.
`
`Suite 100
`
`Atlanta, GA 30309
`
`Telephone: 404-815-2329
`
`Facsimile: 404-685-5329
`
`Email: joebenz@paulhastings.com
`
`
` naveenmodi@paulhastings.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NIKE. INC.
`Petitioner
`
`v.
`
`MAYFONK ATHLETIC, LLC
`Patent Owner
`
`
`Case IPR2015-00656
`Patent 8,860,584
`
`
`Patent Owner’s Preliminary Response
`to Petition for Inter Partes Review
`of U.S. Patent No. 8,860,584
`
`
`
`

`

`
`
`
`
`I.
`
`II.
`
`Table of Contents
`
`Case No. IPR2015-00656
`
`Page
`
`Introduction ...................................................................................................... 1
`
`The Board Should Not Institute Based on the Petitioner's Redundant
`Grounds ............................................................................................................ 2
`
`III. Petitioner Advances Flawed Claim Constructions That the Board Should
`Reject ............................................................................................................... 6
`
`A. Overview of the ’584 Patent .................................................................. 7
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Person of Ordinary Skill in the Art ..................................................... 11
`
`“specifically paired, defined by at least one of a wired serial
`connection and wireless bonding which enables the computing unit to
`authenticate the identity of the external computing device prior to
`communicating electrical signals therewith” (Claims 3 and 12) ........ 12
`
`“Real Time Conditioning of Signals" (Claims 4, 6, 13 and 15) ......... 17
`
`“Peak Performance Quantity" (Claims 4, 6, 13, and 15) .................... 20
`
`“Activity Programs" (Claims 21 and 23) ............................................ 25
`
`IV. Petitioner Advances Legally Improper Inherency Arguments ...................... 29
`
`V.
`
`Conclusion ..................................................................................................... 31
`
`
`
`
`
`
`
`
`
`
`
`i
`
`

`

`
`
`FEDERAL CASES
`
`Table of Authorities
`
`Case No. IPR2015-00656
`
` Page(s)
`
`C.R. Bard, Inc. v. U.S. Surgical Corp.,
`388 F.3d 858 (Fed. Cir. 2004) ............................................................................ 21
`
`In re Cuozzo Speed Techs., LLC,
`778 F.3d 1271 (Fed. Cir. 2015) ...................................................................... 6, 21
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ...................................................... 7, 21
`
`In re Robertson,
`169 F.3d 743 (Fed. Cir. 1999) ............................................................................ 30
`
`SRI Int’l v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed. Cir. 1985) .......................................................................... 21
`
`Unique Concepts v Brown,
`939 F.2d 1558 (Fed. Cir. 1991) .......................................................................... 13
`
`In re Zletz,
`893 F.2d 319 (Fed. Cir. 1989) .............................................................................. 7
`
`ADMINISTRATIVE PROCEEDINGS
`EMC Corp. v. Personal Web Techs. LLC,
`IPR2013-00087, Paper No. 25 (June 5, 2013) ...................................................... 3
`
`Idle Free Sys., Inc. v. Bergstrom, Inc.,
`IPR2012-00027, Paper No. 26 (June 11, 2013) .................................................... 2
`
`LaRose Indus., LLC v. Capriola Corp.,
`IPR2013-00120, Paper No. 20 (July 22, 2013) .................................................... 2
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper No. 7 (Oct. 25, 2012) ............................................ 2, 3, 5
`
`ScentAir Techs., Inc. v. Prolitec, Inc.,
`IPR2013-00180, Paper No. 18 (Aug. 26, 2013) ................................................... 3
`
`ii
`
`

`

`
`Taiwan Semiconductor Mfg. Co. v. Ziptronix, Inc.,
`IPR2013-00154, Paper No. 19 (Nov. 6, 2013) ................................................... 31
`
`Case No. IPR2015-00656
`
`STATUTES
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100(b)(2014) ...................................................................................... 6
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`
`
`
`
`iii
`
`

`

`Case No. IPR2015-00656
`
`Introduction
`
`Patent Owner Mayfonk Athletic, LLC (“Mayfonk” or “Patent Owner”)
`
`
`I.
`
`
`respectfully submits this Preliminary Response in accordance with 35 U.S.C. § 313
`
`and 37 C.F.R. § 42.107, responding to the Petition for Inter Partes Review of
`
`Mayfonk’s U.S. Patent No. 8,860,584 (“the ’584 patent”) filed by Nike, Inc.
`
`(“Nike” or “Petitioner”). Mayfonk requests that the Board not institute inter partes
`
`review for at least three reasons.
`
`
`
`First, the Petition fails to comply with the rules and regulations regarding
`
`content of petitions. Specifically, the Petition proposes horizontally and vertically
`
`redundant grounds without identifying how any one ground improves on any other,
`
`violating Board precedent requiring petitioners to identify differences in the
`
`proposed rejections. Second, Nike proposes unreasonable claim constructions.
`
`Because its patentability challenges are premised on incorrect claim constructions
`
`and terms that it failed to construe, Nike has not met its burden of demonstrating a
`
`reasonable likelihood of prevailing in proving unpatentability of any ’584 patent
`
`claim. Finally, Petitioner advances legally improper inherency arguments.
`
`
`
`For these reasons, the Board should reject Nike’s Petition and not institute
`
`inter partes review.
`
`1
`
`

`

`
`II. The Board Should Not Institute Based on the Petitioner's Redundant
`Grounds
`
`Case No. IPR2015-00656
`
`
`
`The Board should reject the Petition because it raises grounds of rejection
`
`that are both internally redundant and also redundant in view of the proposed
`
`grounds in Nike’s additional petition on the ’584 patent in IPR2015-00655 (“the
`
`’655 Petition”). The Board has held that it will not consider redundant grounds of
`
`rejection because the Board must issue a final written decision in inter partes
`
`review proceedings within one year of institution (or 18 months for good cause).
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper No. 7
`
`(Oct. 25, 2012).1 Redundant grounds place a significant burden on the Board and
`
`the patent owner, and they cause unnecessary delay that jeopardizes completing the
`
`inter partes review by the statutory deadline. Id.
`
`
`
`Because “[t]he Board seeks to streamline and converge issues at all phases
`
`of the proceeding . . . at [the] time of institution the Board analyzes the petition on
`
`a claim-by-claim, ground-by-ground basis, to eliminate redundant grounds.” Idle
`
`
`1 Although Liberty Mutual is a decision in a covered business method review, the
`
`Board has applied its reasoning to inter partes reviews based on the similar
`
`considerations that apply in both types of proceedings. (See, e.g., LaRose Indus.,
`
`LLC v. Capriola Corp., IPR2013-00120, Paper No. 20 at 4 (July 22, 2013) (citing
`
`Liberty Mutual, CBM2012-00003, Paper No. 7 at 2-12).)
`
`2
`
`

`

`
`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 4-5 (June 11,
`
`Case No. IPR2015-00656
`
`2013). The redundancy inquiry does not focus on “whether the applied prior art
`
`disclosures have differences, for it is rarely the case that the disclosures of different
`
`prior art references, will be literally identical.” EMC Corp. v. Personal Web
`
`Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June 5, 2013). Instead, the
`
`redundancy inquiry focuses on “whether the petitioner articulated a meaningful
`
`distinction in terms of relative strengths and weaknesses with respect to application
`
`of the prior art disclosures to one or more claim limitations.” Id. at 3-4. The
`
`burden is on the petitioner to articulate such a “meaningful distinction.” (See
`
`ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00180, Paper No. 18 at 3 (Aug. 26,
`
`2013) (“To avoid a determination that a requested ground of review is redundant of
`
`another requested ground, a petitioner must articulate a meaningful distinction . . .
`
`.”).)
`
`
`
`In Liberty Mutual, the Board identified two types of redundant rejections:
`
`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
`
`Liberty Mut., CBM2012-00003, Paper No. 7 at 3. The Board explained that
`
`horizontally redundant rejections apply “a plurality of prior art references . . . not
`
`in combination to complement each other but as distinct and separate alternatives.”
`
`Id. In this type of redundancy, the references “provide essentially the same
`
`teaching to meet the same claim limitation, and the associated arguments do not
`
`3
`
`

`

`
`explain why one reference more closely satisfies the claim limitation at issue in
`
`Case No. IPR2015-00656
`
`some respects than another reference and vice versa.” Id.
`
`
`
`Vertical redundancy “exists when there is assertion of an additional prior art
`
`reference to support another ground of unpatentability when a base ground already
`
`has been asserted against the same claim without the additional reference and the
`
`Petitioner has not explained what are the relative strength and weakness of each
`
`ground.” Id. at 12. Thus, an example of vertical redundancy is when a proposed
`
`rejection is based on one reference alone while another proposed rejection against
`
`the same claim is based on that same reference plus another reference. Nike’s
`
`petitions contain both types of redundancy.
`
`
`
`In the ’655 Petition, Nike proposes seven grounds of rejection against the
`
`’584 patent claims including the following:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`P1-1. Teller allegedly anticipates claims 3-7, 9, 11-16, 18 and 20;
`
`P1-2. Teller in view of Molyneux alleged renders obvious claims 3-7, 9,
`
` 11-16, 18 and 20;
`
`P1-3. Teller in view of Shum allegedly renders obvious claims 6 and 15;
`
`P1-4. Teller in view of Molyneux and Case allegedly renders obvious
`
` claims 7, 8, 10, 16, 17 and 19;
`
`
`
`P1-5. Gardner in view of Molyneux allegedly renders obvious claims 3-6,
`
` 9, 11-15, 18 and 20;
`
`P1-6. Gardner in view of Molyneux and Case allegedly renders obvious
`
` claims 10 and 19; and
`
`P1-7. Root allegedly renders obvious claims 21-27.
`
`4
`
`

`

`
`
`
`
`
`Case No. IPR2015-00656
`
`Here, Nike proposes two grounds of rejection, including the following:
`
`
`
`
`
`
`
`P2-1. Molyneux allegedly renders obvious claims 3-4, 6-13, 15-20 and
`
` 21-27; and
`
`
`
`P2-2. Gardner in view of Teller allegedly renders obvious claims 21-27.
`
`These grounds demonstrate horizontal redundancy as Nike proposes parallel
`
`obviousness grounds for overlapping claims (e.g., P1-2, P1-3, P1-4, P1-5, P1-6,
`
`P1-7, P2-1 and P2-2). Nike's petitions never explain which obviousness
`
`combination is better in any respect compared to the others for any challenged
`
`claim. The ’655 Petition also demonstrates vertical redundancy by proposing an
`
`anticipation rejection based on Teller (P1-1) while simultaneously challenging
`
`common claims as obvious using Teller as the lead reference (P1-2, P1-3 and P1--
`
`4). Nike does not explain how these proposed obviousness rejections are any
`
`better or different from the proposed anticipation rejections based on Teller alone.
`
`And neither of Nike's petitions explains how any of the proposed obviousness
`
`combinations improves on any other combinations.
`
`
`
`As in Liberty Mutual, Nike simply proposes different references or different
`
`combinations that “provide essentially the same teaching to meet the same claim
`
`limitation, and the associated arguments do not explain why one reference [or
`
`combination] more closely satisfies the claim limitation at issue in some respects
`
`than another reference [or reference combination] and vice versa.” Liberty Mut.,
`
`5
`
`

`

`
`CBM2012-00003, Paper No. 7 at 2. Although “the focus of redundancy is on
`
`Case No. IPR2015-00656
`
`whether a petitioner articulated a meaningful distinction in terms of the relative
`
`strengths and weaknesses with respect to [the] application of the prior art reference
`
`disclosures to one or more claim limitations,” Nike has identified no distinctions
`
`whatsoever. LaRose, IPR2013-00120, Paper No. 20 at 4 (“Petitioner has not
`
`explained any such strengths and weaknesses . . . .”). Accordingly, the Board
`
`should deny the Petition because it presents internally redundant grounds and
`
`grounds redundant to those in the ’655 Petition.
`
`III. Petitioner Advances Flawed Claim Constructions That the Board
`Should Reject
`
`The Board should deny institution for the reasons provided above.
`
`Moreover, Patent Owner respectfully submits that the Board need not construe the
`
`terms proposed by Petitioner for purposes of its institution decision. However, if
`
`the Board does consider claim construction in its institution decision, the
`
`constructions proposed by Petitioner are flawed for at least the reasons provided
`
`below.
`
`
`
`In IPR proceedings, claims are given their “broadest reasonable construction
`
`in light of the specification.” See 37 C.F.R. § 42.100(b)(2014); see also In re
`
`Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1280 (Fed. Cir. 2015) (“It can . . . be
`
`inferred that Congress impliedly adopted the existing rule of adopting the broadest
`
`reasonable construction”). In applying the “broadest reasonable construction” or
`
`6
`
`

`

`
`interpretation (“BRI”) standard, the words of the claim must be given their plain
`
`Case No. IPR2015-00656
`
`and ordinary meaning unless the plain meaning is inconsistent with the
`
`specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The ordinary
`
`meaning of a term may be evidenced by a variety of sources, including “the words
`
`of the claims themselves, the remainder of the specification, the prosecution
`
`history, and extrinsic evidence concerning relevant scientific principles, the
`
`meaning of technical terms, and the state of the art.” Phillips v. AWH Corp., 415
`
`F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (citation omitted).
`
`A. Overview of the ’584 Patent
`The technology of the ’584 patent concerns the use of sensors embedded in
`
`
`
`an article of clothing (e.g. a shoes or a glove) to measure athletic performance
`
`parameters – such as jump height, distance, speed, etc. – during a sporting activity
`
`and the real time delivery of such measurement statistics to personal computing
`
`devices or non-personal devices for real time viewing by athletes, coaches, fans,
`
`and sporting spectators. Ex. 1001 at 9:49-53 (“The system is a means of
`
`providing real time data and information, in the heat of performance and athletic
`
`competition, to the athlete, teammates and competitors as well as fans, television
`
`viewers and consumers via wireless or wired networks”); 5:48-53 (“The instant
`
`invention . . . is designed to track one or more of an athlete's performance in any
`
`sport and deliver real-time data on personal computing devices such as a generic
`
`7
`
`

`

`
`Personal Processing Units (PPUs), PDAs, mp3 players or other audio players, cell
`
`Case No. IPR2015-00656
`
`phones, pagers, beepers, radios, portable televisions, portable DVD players.”).
`
`
`
`More specifically, during a sporting event such as a basketball or football
`
`game, an athlete’s clothing-embedded sensor measures a parameter of the athlete’s
`
`performance, such as speed, and communicates that measurement to a computing
`
`unit that is loaded with software (activity program) that controls sensor data
`
`acquisition. Id. at 17:17-19. The computing unit processes the measured data and
`
`obtains desirable quantities, such as peak performance. Id. at 6:33-37 (“The
`
`computing unit 100 having sensed some real time data has the capability to process
`
`that data in real time as well as to process the data to obtain desirable quantities,
`
`for example, peak performance data such as the maximum height having been
`
`jumped by an athlete.”). The computing unit transmits the activity data either to a
`
`personal computing device or to devices such as an arena’s jumbotron or a
`
`television network. Id. at 5:57-62 (the “technology requires data measuring one or
`
`more athletic performance parameters to be uploaded or transmitted from the
`
`onboard sensor system to the generic PPUs, PDAs, mp3 players, cell phone
`
`etcetera, and or non-personal computing devices such as a networked computer,
`
`broadcast TV or a social website”); 7:41-43 (“This computing unit 430 transmits
`
`the sensor data to a personal computing device PPU 410”); 10:59-61 (“The fan can
`
`monitor performance on their cell phones, electronic device, interactive television
`
`8
`
`

`

`
`or monitor, and/or via jumbotrons”). The personal computing device is either a
`
`Case No. IPR2015-00656
`
`device dedicated to the inventive system or a device such as a smart phone on
`
`which software can be loaded to allow in-play viewing of activity data by, e.g.,
`
`coaches, athletes, fans, or parents. Id. at 5:48-54; 6:4-9; and 16:32-35. Similarly,
`
`transmission of activity data to a jumbotron or to network television allows
`
`spectators of live or televised sporting events to view an athlete’s activity data
`
`during play. Id. at 9:57-61 (“the fan, reporter, coach or corporate officer can watch
`
`the athletic contests and their favorite player, view the players statistics in real time
`
`and monitor an athlete’s performance on their smart phone on a television
`
`broadcast or via a jumbotron at the event”).
`
`
`
`In addition, the inventive system allows for interactive communication
`
`among those who have subscribed to use the system. Specifically, subscribers can
`
`use their personal computing devices to upload their activity data to and download
`
`the activity data of others from an internet webservice. Id. at 15:31-36 (“The
`
`Mayfunk.com WebService . . . provides interactive subscriber communication
`
`including the loading, storage and retrieval of athletic statistics to and from the
`
`hardware and software supporting the webservice 1000”); 15:40-41(“the
`
`Mayfunk.com webservice 1000 makes it possible to share stats by uploading and
`
`downloading stats during live athletic competition . . .”). In so doing, subscribers
`
`are able to share, compare, socialize and compete using athletic activity data. Id. at
`
`9
`
`

`

`
`15:36-39 (“Subscribers are thereby able to share their performance parameters as
`
`Case No. IPR2015-00656
`
`well as the performance statistics of famous athletes with friends on a real-time and
`
`after hours basis”); 7:20-22 (“amateur or professional athletes in one or more
`
`sports are enabled to share, compare, socialize, or compete utilizing specific details
`
`about their sports”); 9:6-9 (“PPU data is transmitted or uploaded to Mayfunk.com
`
`social website for athletes. The athlete can compete with peers, socialize, analyze
`
`his/her performance ‘bar’ data, and compare data results from previous
`
`performances and peers”).
`
`
`
`The subscribers’ ability to upload and download activity performance
`
`statistics to and from their personal computing devices is enabled through software
`
`that is loaded onto the personal computing device and is “capable of receiving and
`
`processing the sensor data sent by the computing unit.” Id. at 6:8-9; 16:19-22
`
`(“The aforementioned functionalities are made possible through the use of
`
`Personal Computing Client Software loaded onto a subscriber's Personal
`
`Processing Unit 1010 (PPU)”); 7:33-38 (“In order to accomplish all of this,
`
`Mayfunk software 420 loaded into a personal computing device 410 (otherwise
`
`known as a personal processing unit PPU elsewhere in this disclosure) is
`
`10
`
`

`

`
`programmed to collect and transmit data to the website where the information is
`
`Case No. IPR2015-00656
`
`digested and visually presented on the website.”)2
`
`Person of Ordinary Skill in the Art
`
`B.
`Petitioner has taken the position in its Petition that a “person of ordinary
`
`
`
`skill in the art for the ’584 patent in 2009 (when the earlier application for the
`
`parent of the ’584 patent was filed) would have had at least a Bachelor's degree in
`
`Electrical Engineering or an equivalent and one or more years of experience
`
`working with sensor devices and communication mechanisms.” Pet. at 10 (quoting
`
`Ex. 1004 at ¶ 46).
`
`
`
`Because it does not appear to affect the “reasonable likelihood” analysis,
`
`Patent Owner will use Petitioner’s proposed definition of a POSITA for purposes
`
`of this Preliminary Response. Patent Owner does not, however, waive any
`
`arguments regarding the ultimate definition for a POSITA in this proceeding or
`
`any Federal Court action.
`
`2 Petitioner alleges that certain parts of the disclosure of the ’584 patent constitute
`
`“admitted prior art.” Pet. at 6-7. Patent Owner respectfully disagrees. Petitioner
`
`does not appear to rely on the alleged “admitted prior art,” and thus it does not
`
`appear to be relevant to whether this proceeding should be instituted. However,
`
`Patent Owner reserves the right to challenge all of the Petitioner’s characterizations
`
`of the ’584 patent in its Patent Owner’s Response, if necessary.
`
`11
`
`

`

`
`
`C.
`
`Case No. IPR2015-00656
`
`“specifically paired, defined by at least one of a wired serial
`connection and wireless bonding which enables the computing
`unit to authenticate the identity of the external computing device
`prior to communicating electrical signals therewith” (Claims 3
`and 12)
`
`Patent Owner’s Proposed
`Construction
`
`Petitioner’s Proposed Construction
`
`No construction necessary
`
`specifically paired, defined by at least
`
`one of (A) an authenticated wireless
`
`bonding which enables the computing
`
`unit to authenticate the identity of the
`
`external computing device prior to
`
`communicating electrical signals
`
`therewith, and (B) a wired serial
`
`connection
`
`
`
`
`
`Claims 3 and 12 of the ’584 patent recite this claim term (phrase) as follows:
`
`“at least one external computing device configured to
`
`communicate electrical signals relating to athletic performance
`
`parameters with said computing unit, wherein said at least one
`
`external computing device and said computing unit are
`
`specifically paired, defined by at least one of a wired serial
`
`connection and wireless bonding which enables the computing
`
`12
`
`

`

`
`
`Case No. IPR2015-00656
`
`unit to authenticate the identity of the external computing
`
`device prior to communicating electrical signals therewith”
`
`Ex. 1001 at 19:5-13; 20:8-16 (emphasis added).
`
`
`
`This phrase does not require construction as a definition is provided as part
`
`of the phrase. That is, based on the words “defined by” in the phrase itself, there is
`
`no ambiguity or need to go beyond the definition provided in the claim. The
`
`language of Claims 3 and 12 provides a clear, two-part definition of “specifically
`
`paired.” First, the nature of the “specifically paired” connection is defined – it is
`
`either a “wired serial” or a “wireless bonding” connection. Second, the connection
`
`must allow for the “computing unit” to “authenticate” the “external computing
`
`unit” before “communicating electrical signals therewith.” There is thus no reason
`
`for the Board to construe this claim.
`
`
`
`Petitioner posits that the claim limitation “present [sic] two options that
`
`could be interpreted in different ways.” Pet. at 11. To the contrary, there is only
`
`one correct option, which is the interpretation that is consistent with the text of the
`
`claims, and thus construction is not required. Motivated by an effort to invalidate
`
`the claims, Petitioner requests that the Board read-out the element of
`
`“authentication” with regard to a “wired” connection, applying it only to a
`
`“wireless” connection. That construction, however, belies the cannons of claim
`
`construction. See e.g., Unique Concepts v Brown, 939 F.2d 1558, 1562 (Fed. Cir.
`
`13
`
`

`

`
`1991) (citing Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528,
`
`Case No. IPR2015-00656
`
`1532-33 (Fed. Cir. 1987) (“All limitations of a claim must be considered
`
`meaningful.”).
`
`
`
`In fact, the only way for Petitioner to argue its construction is to rewrite the
`
`claims. Compare as follows:
`
`Claims 3 and 12 (as allowed)
`
`Petitioner’s Re-write of Claims 3 and
`
`12
`
`specifically paired, defined by at least
`
`specifically paired, defined by at least
`
`one of a wired serial connection and
`
`one of (A) an authenticated wireless
`
`wireless bonding which enables the
`
`bonding which enables the computing
`
`computing unit to authenticate the
`
`unit to authenticate the identity of the
`
`identity of the external computing
`
`external computing device prior to
`
`device prior to communicating electrical
`
`communicating electrical signals
`
`signals therewith
`
`therewith, and (B) a wired serial
`
`connection
`
`
`
`To make its construction work, Petitioner first reorders the types of connections,
`
`placing wireless bonding before the wired serial connection. Then, Petitioner
`
`enumerates the two types of connections to create a distinction that is not otherwise
`
`present. Lastly, Petitioner rearranges the text so that authentication requirement
`
`14
`
`

`

`
`modifies only the wireless connection instead of both types of connections as
`
`Case No. IPR2015-00656
`
`written. Rather than construing the phrase, Petitioner re-writes the explicit
`
`definition in an improper attempt to invalidate claims 3 and 12.
`
`
`
`Prior to amendment during prosecution to include the “specifically paired”
`
`language, Claims 3 and 12 disclosed an “external computing device configured to
`
`receive electrical signals relating to athletic performance parameters from the
`
`physical movement of the at least one measurement apparatus.”3 Ex. 1002 at 101.
`
`The claims did not recite the type of connection involved (i.e., “wired” vs
`
`“wireless”) and did not disclose the nature of the connection (i.e., “authenticated”
`
`vs “broadcast”). The Examiner rejected these claims in view of Vock (U.S. Patent
`
`App. Pub. No. 2008/0306707), stating that at Fig. 1B, Vock “receives signals thru
`
`the receiver 78.” Id. at 78. What Fig 1B of Vock in fact discloses is that the
`
`sensing unit 10 broadcasts RF signals 45 from the remote data transmit section 22
`
`via antenna 25 to data unit 50, which receives the broadcast RF signals 45 in the
`
`data receive section 56 via antenna 58. Ex. 2001 at 2-3, 63. Alternatively, sensing
`
`unit 10 broadcasts RF signals 45 directly to base station 70 where it is received into
`
`data receive unit 72 via antenna 78. Id.
`
`
`3 For clarification, during prosecution “measurement apparatus” was replaced with
`
`“sensor.” Ex. 1002 at 58.
`
`15
`
`

`

`Importantly, however, Vock does not disclose an authenticated connection.
`
`Case No. IPR2015-00656
`
`
`
`
`Each Vock transmission disclosed is a “broadcast” type connection. In other
`
`words, information transmitted by the unit 10 is broadcast and capable of being
`
`received by any data unit 50 or base station 70 with an antenna. As Nike’s expert
`
`notes, this type of communication is susceptible to “eavesdrop[ping]” whereby an
`
`unintended party could intercept the “data being exchanged.” Ex. 1004 at ¶58.
`
`
`
`Applicant added the “specifically paired” language during prosecution to
`
`distinguish the claimed invention over the Vock reference which disclosed
`
`transmission or communication to unauthenticated devices. In other words, unlike
`
`the invention disclosed in Vock, Applicant’s invention requires that the
`
`“computing unit” authenticate (or verify) the identity of the “external computing
`
`device” before transmission of athletic performance data. The concept of
`
`“authentication,” regardless of the mode of transmission, was not present in Vock.
`
`
`
`Thus, in an amendment dated July 2, 2014, applicant clarified (1) the
`
`existence of a connection between the “external computing device” and the
`
`“computing unit” and (2) the nature of that connection being “authenticated” rather
`
`than the unauthenticated or “broadcast” transmission used in Vock. Applicant
`
`distinguished Vock stating “[w]hile Vock may arguably make reference to a
`
`connection between a sensor connected computing device and an external
`
`computing device, its disclosed structure would clearly be inadequate to
`
`16
`
`

`

`
`accomplish Applicant’s specifically pairing of the computing unit and external
`
`Case No. IPR2015-00656
`
`computer.”4 Ex. 1002 at 68. In other words, Vock does not disclose a
`
`“specifically paired” connection, which is a connection “defined by at least one of
`
`a wired serial connection and wireless bonding which enables the computing unit
`
`to authenticate the identity of the external computing device prior to
`
`communicating electrical signals therewith.”
`
`
`
`Petitioner’s interpretation of the language of Claims 3 and 12 reads out the
`
`“authentication” limitation for a “wired” connection. Without “authentication,” the
`
`“computing unit” and “external computing device” can be “paired” but not
`
`“specifically paired” as required by the clear language of the claims.
`
`D.
`
`“Real Time Conditioning of Signals" (Claims 4, 6, 13 and 15)
`
` Patent Owner’s Proposed
`Construction
`
`Petitioner’s Proposed Construction
`
`No construction required
`
`Unable to provide a construction
`
`
`
`
`
`
`
`Claims 4, 6, 13 and 15 of the ’584 patent recite the term “real time
`
`conditioning of signals.” The meaning of “real time conditioning of signals” is
`
`
`4 Tellingly, each time it addresses the prosecution history of the ’584 patent, either
`
`in the Petition or in its Expert’s Declaration, Petitioner truncates the Patent
`
`Owner’s (Applicants) remarks prior to this key language.
`
`17
`
`

`

`
`apparent to one skilled in the art without construction. Petitioner Nike contends
`
`Case No. IPR2015-00656
`
`that it “cannot offer a construction to reconcile the mismatch between claim 15
`
`(and claim 6) and the disclosure in the ’584 patent.” Pet. at 12 (citing Ex. 1004 at ¶
`
`52). Specifically, Petitioner argues that it cannot offer a construction of this term
`
`because “[c]laim 15 depends from claim 13, but contemplates that those same
`
`signals are conditioned in real time by the ‘external computing device’ by the same
`
`visual user interface.” Id.
`
`
`
`Claim 13 depends from claim 12 and includes the step of “providing at least
`
`one visual user interface.” Ex. 1001 at 20:38. Claim 13 also includes the step of
`
`“conditioning by said computing unit in real time electrical signals relating to one
`
`or more athletic performance parameters generated by said sensors into data
`
`corresponding to units of measurement for physical movement which is useable by
`
`said visual user interface.” Id. at 20:39-45. Claim 15 depends from claim 13 and
`
`includes the additional step of “conditioning by said external computing device in
`
`real time electrical signals relating to one or more athletic performance parameters
`
`generated by said sensors into data corresponding to units of measurement for
`
`physical movement which is useable by said visual user interface.”5 Id. at 20:49-
`
`55. Importantly, the claims recite that the data is “useable” by the visual user
`
`interface, but there is no requirement in the claims that the visual user interface
`
`
`5 The antecedent basis for “visual user interface” in claim 15 is found in claim 13.
`
`18
`
`

`

`
`actually “use” or otherwise display the data. Similarly, there is no requirement that
`
`Case No. IPR2015-00656
`
`the data resulting from the conditioning by the computing unit and the data
`
`resulting from the conditioning by the external computing device be usable by the
`
`visual user interface concurrently. The claims simply require that both types of
`
`data be useable by the visual user interface. Furthermore, there is no requirement
`
`that the computing unit and external computing device condition the same
`
`electrical signals. In other words, the computing unit could condition certain
`
`electr

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket