`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
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`Telephone: 404-815-2329
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`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
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`Case No. IPR2015-00656
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`Page
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`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.
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`Person of Ordinary Skill in the Art ..................................................... 11
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`“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
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`“Real Time Conditioning of Signals" (Claims 4, 6, 13 and 15) ......... 17
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`“Peak Performance Quantity" (Claims 4, 6, 13, and 15) .................... 20
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`“Activity Programs" (Claims 21 and 23) ............................................ 25
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`IV. Petitioner Advances Legally Improper Inherency Arguments ...................... 29
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`V.
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`Conclusion ..................................................................................................... 31
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`i
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`FEDERAL CASES
`
`Table of Authorities
`
`Case No. IPR2015-00656
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` 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
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`Case No. IPR2015-00656
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`Introduction
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`Patent Owner Mayfonk Athletic, LLC (“Mayfonk” or “Patent Owner”)
`
`
`I.
`
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`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
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`Mayfonk’s U.S. Patent No. 8,860,584 (“the ’584 patent”) filed by Nike, Inc.
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`(“Nike” or “Petitioner”). Mayfonk requests that the Board not institute inter partes
`
`review for at least three reasons.
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`
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`First, the Petition fails to comply with the rules and regulations regarding
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`content of petitions. Specifically, the Petition proposes horizontally and vertically
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`redundant grounds without identifying how any one ground improves on any other,
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`violating Board precedent requiring petitioners to identify differences in the
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`proposed rejections. Second, Nike proposes unreasonable claim constructions.
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`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
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`reasonable likelihood of prevailing in proving unpatentability of any ’584 patent
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`claim. Finally, Petitioner advances legally improper inherency arguments.
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`
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`For these reasons, the Board should reject Nike’s Petition and not institute
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`inter partes review.
`
`1
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`
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`II. The Board Should Not Institute Based on the Petitioner's Redundant
`Grounds
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`Case No. IPR2015-00656
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`
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`The Board should reject the Petition because it raises grounds of rejection
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`that are both internally redundant and also redundant in view of the proposed
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`grounds in Nike’s additional petition on the ’584 patent in IPR2015-00655 (“the
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`’655 Petition”). The Board has held that it will not consider redundant grounds of
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`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
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`(Oct. 25, 2012).1 Redundant grounds place a significant burden on the Board and
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`the patent owner, and they cause unnecessary delay that jeopardizes completing the
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`inter partes review by the statutory deadline. Id.
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`
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`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
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`a claim-by-claim, ground-by-ground basis, to eliminate redundant grounds.” Idle
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`
`1 Although Liberty Mutual is a decision in a covered business method review, the
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`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.,
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`LLC v. Capriola Corp., IPR2013-00120, Paper No. 20 at 4 (July 22, 2013) (citing
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`Liberty Mutual, CBM2012-00003, Paper No. 7 at 2-12).)
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`2
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`
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`Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper No. 26 at 4-5 (June 11,
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`Case No. IPR2015-00656
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`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
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`prior art references, will be literally identical.” EMC Corp. v. Personal Web
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`Techs., LLC, IPR2013-00087, Paper No. 25 at 3 (June 5, 2013). Instead, the
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`redundancy inquiry focuses on “whether the petitioner articulated a meaningful
`
`distinction in terms of relative strengths and weaknesses with respect to application
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`of the prior art disclosures to one or more claim limitations.” Id. at 3-4. The
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`burden is on the petitioner to articulate such a “meaningful distinction.” (See
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`ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00180, Paper No. 18 at 3 (Aug. 26,
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`2013) (“To avoid a determination that a requested ground of review is redundant of
`
`another requested ground, a petitioner must articulate a meaningful distinction . . .
`
`.”).)
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`
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`In Liberty Mutual, the Board identified two types of redundant rejections:
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`(1) “horizontally” redundant rejections and (2) “vertically” redundant rejections.
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`Liberty Mut., CBM2012-00003, Paper No. 7 at 3. The Board explained that
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`horizontally redundant rejections apply “a plurality of prior art references . . . not
`
`in combination to complement each other but as distinct and separate alternatives.”
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`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
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`3
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`explain why one reference more closely satisfies the claim limitation at issue in
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`Case No. IPR2015-00656
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`some respects than another reference and vice versa.” Id.
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`
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`Vertical redundancy “exists when there is assertion of an additional prior art
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`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
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`Petitioner has not explained what are the relative strength and weakness of each
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`ground.” Id. at 12. Thus, an example of vertical redundancy is when a proposed
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`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
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`petitions contain both types of redundancy.
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`
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`In the ’655 Petition, Nike proposes seven grounds of rejection against the
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`’584 patent claims including the following:
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`P1-1. Teller allegedly anticipates claims 3-7, 9, 11-16, 18 and 20;
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`P1-2. Teller in view of Molyneux alleged renders obvious claims 3-7, 9,
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` 11-16, 18 and 20;
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`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
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` claims 7, 8, 10, 16, 17 and 19;
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`
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`P1-5. Gardner in view of Molyneux allegedly renders obvious claims 3-6,
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` 9, 11-15, 18 and 20;
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`P1-6. Gardner in view of Molyneux and Case allegedly renders obvious
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` claims 10 and 19; and
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`P1-7. Root allegedly renders obvious claims 21-27.
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`4
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`Case No. IPR2015-00656
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`Here, Nike proposes two grounds of rejection, including the following:
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`P2-1. Molyneux allegedly renders obvious claims 3-4, 6-13, 15-20 and
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` 21-27; and
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`
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`P2-2. Gardner in view of Teller allegedly renders obvious claims 21-27.
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`These grounds demonstrate horizontal redundancy as Nike proposes parallel
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`obviousness grounds for overlapping claims (e.g., P1-2, P1-3, P1-4, P1-5, P1-6,
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`P1-7, P2-1 and P2-2). Nike's petitions never explain which obviousness
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`combination is better in any respect compared to the others for any challenged
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`claim. The ’655 Petition also demonstrates vertical redundancy by proposing an
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`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--
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`4). Nike does not explain how these proposed obviousness rejections are any
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`better or different from the proposed anticipation rejections based on Teller alone.
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`And neither of Nike's petitions explains how any of the proposed obviousness
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`combinations improves on any other combinations.
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`
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`As in Liberty Mutual, Nike simply proposes different references or different
`
`combinations that “provide essentially the same teaching to meet the same claim
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`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.,
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`5
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`
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`CBM2012-00003, Paper No. 7 at 2. Although “the focus of redundancy is on
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`Case No. IPR2015-00656
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`whether a petitioner articulated a meaningful distinction in terms of the relative
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`strengths and weaknesses with respect to [the] application of the prior art reference
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`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
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`grounds redundant to those in the ’655 Petition.
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`III. Petitioner Advances Flawed Claim Constructions That the Board
`Should Reject
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`The Board should deny institution for the reasons provided above.
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`Moreover, Patent Owner respectfully submits that the Board need not construe the
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`terms proposed by Petitioner for purposes of its institution decision. However, if
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`the Board does consider claim construction in its institution decision, the
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`constructions proposed by Petitioner are flawed for at least the reasons provided
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`below.
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`
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`In IPR proceedings, claims are given their “broadest reasonable construction
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`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
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`6
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`
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`interpretation (“BRI”) standard, the words of the claim must be given their plain
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`Case No. IPR2015-00656
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`and ordinary meaning unless the plain meaning is inconsistent with the
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`specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The ordinary
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`meaning of a term may be evidenced by a variety of sources, including “the words
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`of the claims themselves, the remainder of the specification, the prosecution
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`history, and extrinsic evidence concerning relevant scientific principles, the
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`meaning of technical terms, and the state of the art.” Phillips v. AWH Corp., 415
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`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
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`
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`an article of clothing (e.g. a shoes or a glove) to measure athletic performance
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`parameters – such as jump height, distance, speed, etc. – during a sporting activity
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`and the real time delivery of such measurement statistics to personal computing
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`devices or non-personal devices for real time viewing by athletes, coaches, fans,
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`and sporting spectators. Ex. 1001 at 9:49-53 (“The system is a means of
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`providing real time data and information, in the heat of performance and athletic
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`competition, to the athlete, teammates and competitors as well as fans, television
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`viewers and consumers via wireless or wired networks”); 5:48-53 (“The instant
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`invention . . . is designed to track one or more of an athlete's performance in any
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`sport and deliver real-time data on personal computing devices such as a generic
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`7
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`Personal Processing Units (PPUs), PDAs, mp3 players or other audio players, cell
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`Case No. IPR2015-00656
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`phones, pagers, beepers, radios, portable televisions, portable DVD players.”).
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`
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`More specifically, during a sporting event such as a basketball or football
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`game, an athlete’s clothing-embedded sensor measures a parameter of the athlete’s
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`performance, such as speed, and communicates that measurement to a computing
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`unit that is loaded with software (activity program) that controls sensor data
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`acquisition. Id. at 17:17-19. The computing unit processes the measured data and
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`obtains desirable quantities, such as peak performance. Id. at 6:33-37 (“The
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`computing unit 100 having sensed some real time data has the capability to process
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`that data in real time as well as to process the data to obtain desirable quantities,
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`for example, peak performance data such as the maximum height having been
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`jumped by an athlete.”). The computing unit transmits the activity data either to a
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`personal computing device or to devices such as an arena’s jumbotron or a
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`television network. Id. at 5:57-62 (the “technology requires data measuring one or
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`more athletic performance parameters to be uploaded or transmitted from the
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`onboard sensor system to the generic PPUs, PDAs, mp3 players, cell phone
`
`etcetera, and or non-personal computing devices such as a networked computer,
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`broadcast TV or a social website”); 7:41-43 (“This computing unit 430 transmits
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`the sensor data to a personal computing device PPU 410”); 10:59-61 (“The fan can
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`monitor performance on their cell phones, electronic device, interactive television
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`8
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`or monitor, and/or via jumbotrons”). The personal computing device is either a
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`device dedicated to the inventive system or a device such as a smart phone on
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`which software can be loaded to allow in-play viewing of activity data by, e.g.,
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`coaches, athletes, fans, or parents. Id. at 5:48-54; 6:4-9; and 16:32-35. Similarly,
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`transmission of activity data to a jumbotron or to network television allows
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`spectators of live or televised sporting events to view an athlete’s activity data
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`during play. Id. at 9:57-61 (“the fan, reporter, coach or corporate officer can watch
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`the athletic contests and their favorite player, view the players statistics in real time
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`and monitor an athlete’s performance on their smart phone on a television
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`broadcast or via a jumbotron at the event”).
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`In addition, the inventive system allows for interactive communication
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`among those who have subscribed to use the system. Specifically, subscribers can
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`use their personal computing devices to upload their activity data to and download
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`the activity data of others from an internet webservice. Id. at 15:31-36 (“The
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`Mayfunk.com WebService . . . provides interactive subscriber communication
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`including the loading, storage and retrieval of athletic statistics to and from the
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`hardware and software supporting the webservice 1000”); 15:40-41(“the
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`Mayfunk.com webservice 1000 makes it possible to share stats by uploading and
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`downloading stats during live athletic competition . . .”). In so doing, subscribers
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`are able to share, compare, socialize and compete using athletic activity data. Id. at
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`9
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`15:36-39 (“Subscribers are thereby able to share their performance parameters as
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`well as the performance statistics of famous athletes with friends on a real-time and
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`after hours basis”); 7:20-22 (“amateur or professional athletes in one or more
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`sports are enabled to share, compare, socialize, or compete utilizing specific details
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`about their sports”); 9:6-9 (“PPU data is transmitted or uploaded to Mayfunk.com
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`social website for athletes. The athlete can compete with peers, socialize, analyze
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`his/her performance ‘bar’ data, and compare data results from previous
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`performances and peers”).
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`The subscribers’ ability to upload and download activity performance
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`statistics to and from their personal computing devices is enabled through software
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`that is loaded onto the personal computing device and is “capable of receiving and
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`processing the sensor data sent by the computing unit.” Id. at 6:8-9; 16:19-22
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`(“The aforementioned functionalities are made possible through the use of
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`Personal Computing Client Software loaded onto a subscriber's Personal
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`Processing Unit 1010 (PPU)”); 7:33-38 (“In order to accomplish all of this,
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`Mayfunk software 420 loaded into a personal computing device 410 (otherwise
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`known as a personal processing unit PPU elsewhere in this disclosure) is
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`10
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`programmed to collect and transmit data to the website where the information is
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`digested and visually presented on the website.”)2
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`Person of Ordinary Skill in the Art
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`B.
`Petitioner has taken the position in its Petition that a “person of ordinary
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`
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`skill in the art for the ’584 patent in 2009 (when the earlier application for the
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`parent of the ’584 patent was filed) would have had at least a Bachelor's degree in
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`Electrical Engineering or an equivalent and one or more years of experience
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`working with sensor devices and communication mechanisms.” Pet. at 10 (quoting
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`Ex. 1004 at ¶ 46).
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`
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`Because it does not appear to affect the “reasonable likelihood” analysis,
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`Patent Owner will use Petitioner’s proposed definition of a POSITA for purposes
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`of this Preliminary Response. Patent Owner does not, however, waive any
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`arguments regarding the ultimate definition for a POSITA in this proceeding or
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`any Federal Court action.
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`2 Petitioner alleges that certain parts of the disclosure of the ’584 patent constitute
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`“admitted prior art.” Pet. at 6-7. Patent Owner respectfully disagrees. Petitioner
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`does not appear to rely on the alleged “admitted prior art,” and thus it does not
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`appear to be relevant to whether this proceeding should be instituted. However,
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`Patent Owner reserves the right to challenge all of the Petitioner’s characterizations
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`of the ’584 patent in its Patent Owner’s Response, if necessary.
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`11
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`C.
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`Case No. IPR2015-00656
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`“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
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`No construction necessary
`
`specifically paired, defined by at least
`
`one of (A) an authenticated wireless
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`bonding which enables the computing
`
`unit to authenticate the identity of the
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`external computing device prior to
`
`communicating electrical signals
`
`therewith, and (B) a wired serial
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`connection
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`
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`Claims 3 and 12 of the ’584 patent recite this claim term (phrase) as follows:
`
`“at least one external computing device configured to
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`communicate electrical signals relating to athletic performance
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`parameters with said computing unit, wherein said at least one
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`external computing device and said computing unit are
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`specifically paired, defined by at least one of a wired serial
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`connection and wireless bonding which enables the computing
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`12
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`unit to authenticate the identity of the external computing
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`device prior to communicating electrical signals therewith”
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`Ex. 1001 at 19:5-13; 20:8-16 (emphasis added).
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`
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`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
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`no ambiguity or need to go beyond the definition provided in the claim. The
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`language of Claims 3 and 12 provides a clear, two-part definition of “specifically
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`paired.” First, the nature of the “specifically paired” connection is defined – it is
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`either a “wired serial” or a “wireless bonding” connection. Second, the connection
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`must allow for the “computing unit” to “authenticate” the “external computing
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`unit” before “communicating electrical signals therewith.” There is thus no reason
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`for the Board to construe this claim.
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`
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`Petitioner posits that the claim limitation “present [sic] two options that
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`could be interpreted in different ways.” Pet. at 11. To the contrary, there is only
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`one correct option, which is the interpretation that is consistent with the text of the
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`claims, and thus construction is not required. Motivated by an effort to invalidate
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`the claims, Petitioner requests that the Board read-out the element of
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`“authentication” with regard to a “wired” connection, applying it only to a
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`“wireless” connection. That construction, however, belies the cannons of claim
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`construction. See e.g., Unique Concepts v Brown, 939 F.2d 1558, 1562 (Fed. Cir.
`
`13
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`1991) (citing Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528,
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`Case No. IPR2015-00656
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`1532-33 (Fed. Cir. 1987) (“All limitations of a claim must be considered
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`meaningful.”).
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`
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`In fact, the only way for Petitioner to argue its construction is to rewrite the
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`claims. Compare as follows:
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`Claims 3 and 12 (as allowed)
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`Petitioner’s Re-write of Claims 3 and
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`12
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`specifically paired, defined by at least
`
`specifically paired, defined by at least
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`one of a wired serial connection and
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`one of (A) an authenticated wireless
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`wireless bonding which enables the
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`bonding which enables the computing
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`computing unit to authenticate the
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`unit to authenticate the identity of the
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`identity of the external computing
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`external computing device prior to
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`device prior to communicating electrical
`
`communicating electrical signals
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`signals therewith
`
`therewith, and (B) a wired serial
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`connection
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`
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`To make its construction work, Petitioner first reorders the types of connections,
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`placing wireless bonding before the wired serial connection. Then, Petitioner
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`enumerates the two types of connections to create a distinction that is not otherwise
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`present. Lastly, Petitioner rearranges the text so that authentication requirement
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`modifies only the wireless connection instead of both types of connections as
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`written. Rather than construing the phrase, Petitioner re-writes the explicit
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`definition in an improper attempt to invalidate claims 3 and 12.
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`Prior to amendment during prosecution to include the “specifically paired”
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`language, Claims 3 and 12 disclosed an “external computing device configured to
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`receive electrical signals relating to athletic performance parameters from the
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`physical movement of the at least one measurement apparatus.”3 Ex. 1002 at 101.
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`The claims did not recite the type of connection involved (i.e., “wired” vs
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`“wireless”) and did not disclose the nature of the connection (i.e., “authenticated”
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`vs “broadcast”). The Examiner rejected these claims in view of Vock (U.S. Patent
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`App. Pub. No. 2008/0306707), stating that at Fig. 1B, Vock “receives signals thru
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`the receiver 78.” Id. at 78. What Fig 1B of Vock in fact discloses is that the
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`sensing unit 10 broadcasts RF signals 45 from the remote data transmit section 22
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`via antenna 25 to data unit 50, which receives the broadcast RF signals 45 in the
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`data receive section 56 via antenna 58. Ex. 2001 at 2-3, 63. Alternatively, sensing
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`unit 10 broadcasts RF signals 45 directly to base station 70 where it is received into
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`data receive unit 72 via antenna 78. Id.
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`3 For clarification, during prosecution “measurement apparatus” was replaced with
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`“sensor.” Ex. 1002 at 58.
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`Importantly, however, Vock does not disclose an authenticated connection.
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`Each Vock transmission disclosed is a “broadcast” type connection. In other
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`words, information transmitted by the unit 10 is broadcast and capable of being
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`received by any data unit 50 or base station 70 with an antenna. As Nike’s expert
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`notes, this type of communication is susceptible to “eavesdrop[ping]” whereby an
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`unintended party could intercept the “data being exchanged.” Ex. 1004 at ¶58.
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`Applicant added the “specifically paired” language during prosecution to
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`distinguish the claimed invention over the Vock reference which disclosed
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`transmission or communication to unauthenticated devices. In other words, unlike
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`the invention disclosed in Vock, Applicant’s invention requires that the
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`“computing unit” authenticate (or verify) the identity of the “external computing
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`device” before transmission of athletic performance data. The concept of
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`“authentication,” regardless of the mode of transmission, was not present in Vock.
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`Thus, in an amendment dated July 2, 2014, applicant clarified (1) the
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`existence of a connection between the “external computing device” and the
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`“computing unit” and (2) the nature of that connection being “authenticated” rather
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`than the unauthenticated or “broadcast” transmission used in Vock. Applicant
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`distinguished Vock stating “[w]hile Vock may arguably make reference to a
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`connection between a sensor connected computing device and an external
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`computing device, its disclosed structure would clearly be inadequate to
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`accomplish Applicant’s specifically pairing of the computing unit and external
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`computer.”4 Ex. 1002 at 68. In other words, Vock does not disclose a
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`“specifically paired” connection, which is a connection “defined by at least one of
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`a wired serial connection and wireless bonding which enables the computing unit
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`to authenticate the identity of the external computing device prior to
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`communicating electrical signals therewith.”
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`Petitioner’s interpretation of the language of Claims 3 and 12 reads out the
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`“authentication” limitation for a “wired” connection. Without “authentication,” the
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`“computing unit” and “external computing device” can be “paired” but not
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`“specifically paired” as required by the clear language of the claims.
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`D.
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`“Real Time Conditioning of Signals" (Claims 4, 6, 13 and 15)
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` Patent Owner’s Proposed
`Construction
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`Petitioner’s Proposed Construction
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`No construction required
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`Unable to provide a construction
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`Claims 4, 6, 13 and 15 of the ’584 patent recite the term “real time
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`conditioning of signals.” The meaning of “real time conditioning of signals” is
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`4 Tellingly, each time it addresses the prosecution history of the ’584 patent, either
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`in the Petition or in its Expert’s Declaration, Petitioner truncates the Patent
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`Owner’s (Applicants) remarks prior to this key language.
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`apparent to one skilled in the art without construction. Petitioner Nike contends
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`that it “cannot offer a construction to reconcile the mismatch between claim 15
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`(and claim 6) and the disclosure in the ’584 patent.” Pet. at 12 (citing Ex. 1004 at ¶
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`52). Specifically, Petitioner argues that it cannot offer a construction of this term
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`because “[c]laim 15 depends from claim 13, but contemplates that those same
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`signals are conditioned in real time by the ‘external computing device’ by the same
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`visual user interface.” Id.
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`Claim 13 depends from claim 12 and includes the step of “providing at least
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`one visual user interface.” Ex. 1001 at 20:38. Claim 13 also includes the step of
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`“conditioning by said computing unit in real time electrical signals relating to one
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`or more athletic performance parameters generated by said sensors into data
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`corresponding to units of measurement for physical movement which is useable by
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`said visual user interface.” Id. at 20:39-45. Claim 15 depends from claim 13 and
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`includes the additional step of “conditioning by said external computing device in
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`real time electrical signals relating to one or more athletic performance parameters
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`generated by said sensors into data corresponding to units of measurement for
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`physical movement which is useable by said visual user interface.”5 Id. at 20:49-
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`55. Importantly, the claims recite that the data is “useable” by the visual user
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`interface, but there is no requirement in the claims that the visual user interface
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`5 The antecedent basis for “visual user interface” in claim 15 is found in claim 13.
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`actually “use” or otherwise display the data. Similarly, there is no requirement that
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`the data resulting from the conditioning by the computing unit and the data
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`resulting from the conditioning by the external computing device be usable by the
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`visual user interface concurrently. The claims simply require that both types of
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`data be useable by the visual user interface. Furthermore, there is no requirement
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`that the computing unit and external computing device condition the same
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`electrical signals. In other words, the computing unit could condition certain
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`electr