Trials@uspto.gov
`571-272-7822
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`
`
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`Paper 8
`Entered: August 10, 2015
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`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 B1
`____________
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM,
`and JASON J. CHUNG, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
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`IPR2015-00656
`Patent 8,860,584 B1
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`I. INTRODUCTION
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`Petitioner filed a Petition requesting an inter partes review of claims
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`3, 4, 6–13, and 15–27 of U.S. Patent No. 8,860,584 B1 (Ex. 1001, “’584
`
`patent”). Paper 1 (“Pet.”). Patent Owner filed a Preliminary Response.
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`Paper 6 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
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`Under 35 U.S.C. § 314(a) (“Threshold”), “the Director may not
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`authorize an inter partes review . . . unless the Director determines . . . there
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`is a reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challenged in the petition.” Considering the Petition
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`and Preliminary Response, we determine that Petitioner has met the
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`threshold by establishing a reasonable likelihood of prevailing in showing
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`the unpatentability of challenged claims. Accordingly, we institute inter
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`partes review of claims 3, 4, 6–13, and 15–27.
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`A. Related Proceedings
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`According to Petitioner, Patent Owner asserts infringement by
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`Petitioner of claims in the ’584 patent and a related parent patent, U.S.
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`Patent No. 8,253,486 B2, in Mayfonk, Inc. v. Nike, Inc., No. 3:14–cv–
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`00423–MO (D. Ore.). See Pet. 1. Petitioner also filed a petition seeking
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`inter partes review of claims 3–27 of the ’584 patent in Case IPR2015-
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`00655, a decision for which issues concurrently herewith.
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`B. The ’584 Patent
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`The ’584 patent describes network systems for tracking and sharing
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`athletic data. Ex. 1001, Abstract. In one embodiment, the system involves
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`the following major components: sensor 440 and computing unit 430 that an
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`athlete may wear for gathering and transmitting athletic data, an external
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`personal computing device 410 communicating with sensor 440 and
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`computing unit 430, and Mayfunk website 400 communicating with multiple
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`external personal computing devices for sharing data from athletes. See id.
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`at Fig. 4, 7:17–47.
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`
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`Figure 4 of the ’584 patent follows:
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`
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`Figure 4 depicts sensor 440, computing unit 430, external computing
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`unit 430, and Mayfunk website 400. Figure 4 depicts sensor 440, computing
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`unit 430, external computing unit 430, and Mayfunk website 400.
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`In a general reading of some elements of claim 3 (listed below) on
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`Figure 4, “computing unit” 430 is “configured to transmit and receive
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`electrical signals relating to athletic performance parameters” that “at least
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`one sensor” 440 is “configured to generate.” “[C]omputing unit” 430 is
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`“specifically paired” with “external computing device” 410. Finally,
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`“remote server” 400 connects to “external computing device” 410 and stores
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`“activity data” uploaded therefrom.
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`C. Challenged Claims 3 and 21
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`3. A system for tracking athletic movements comprising:
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`computing unit configured to transmit and receive
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`electrical signals relating to athletic performance parameters;
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`at least one sensor configured to generate electrical
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`signals relating to athletic performance parameters from
`physical movement, wherein said at least one sensor and said
`computing unit are communicatively connected to enable the
`computing unit to receive electrical signals generated by said at
`least one sensor in real time;
`
`at least one external computing device configured to
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`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
`unit to authenticate the identity of the external computing
`device prior to communicating electrical signals therewith; and
`
`a remote server communicatively connected to said
`
`external computing device through a computer network,
`wherein said external computing device is operable to
`automatically upload activity data, defined as data generated
`from electrical signals relating to athletic performance
`parameters from the physical movement of the at least one
`sensors, over said network and said server stores said activity
`data, enabling interactive subscriber communication whereby
`uploaded activity data can be retrieved over the computer
`network.
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`21. A social networking system for the sharing of athletic
`statistics comprising:
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`a plurality of measurement apparatus, each a having
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`computing unit which is associated with one or more sensors,
`wherein said computing unit is configured to control the
`operation of associated sensors and acquire athletic statistic data
`defined as electrical signals relating to the physical movement
`or orientation of associated sensors;
`
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`a server connected to a computer network, wherein said
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`service is configured to provide for real time automated storage
`of athletic statistic data acquired by a plurality of computing
`units and retrieval;
`
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`at least one personal processing unit configured to
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`receive athletic statistic data relating to a plurality of
`measurement apparatus from the server over the computer
`network, wherein the at least one personal processing unit is
`configured to receive stored athletic statistic data through a
`personal computing client software application; and
`
`
`wherein the personal computing client software
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`application additionally enables the at least one personal
`processing unit to be operable to configure at least one of said
`computing units to control the operation of associated sensors
`and acquire athletic statistic data through the uploading of
`activity programs to said computing units.
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`
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`D. Claim Challenges––35 U.S.C. § 103(a)
`
`Petitioner challenges the claims of the ’584 patent on the grounds that
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`1) Molyneux1 renders obvious claims 3, 4, 6–13, and 15–27, and 2) Gardner2
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`and Teller3 renders obvious claims 21–27.
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`
`
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`1 U.S. Patent No. 8,172,722 B2 (Ex. 1008).
`2 U.S. Patent No. 7,454,002 B1 (Ex. 1006).
`3 U.S. Patent No. 7,689,437 B1 (Ex. 1005).
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`II. ANALYSIS
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`A. Claim Construction
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`The Board interprets unexpired claims using the “broadest reasonable
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`construction in light of the specification of the patent in which [they]
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`appear[].” 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC,
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`No. 2014-1301, 2015 WL 4097949, at *6 (Fed. Cir. July 8, 2015); Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
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`1) “specifically paired”
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`
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`Claims 3 and 12 recite “wherein said at least one external computing
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`device and said computing unit are specifically paired, defined by at least
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`one of a wired serial connection and wireless bonding which enables the
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`computing unit to authenticate the identity of the external computing device
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`prior to communicating electrical signals therewith.” (Emphasis added).
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`Petitioner contends that “specifically paired” means either “a wired
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`serial connection” or “wireless bonding which enables the computing unit to
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`authenticate the identity of the external computing device prior to
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`communicating electrical signals therewith.” See Pet. 11–12. Petitioner
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`contends the prosecution history of the ’584 patent supports this broadest
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`reasonable construction. See Pet. 9 (discussing Ex. 1002, 67–68). For
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`example, Petitioner points out that Patent Owner argued during prosecution
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`that “‘the claims have been amended to specify the nature of the pairing
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`between the computing unit and the external computing device as either a
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`wired serial connection or an authenticated wireless bond (such as a
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`Bluetooth connection).’” Pet. 9 (quoting Ex. 1002, 67–68 (emphasis
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`added)).
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`Although Patent Owner argues that the clause does not require a
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`construction, Patent Owner disagrees with Petitioner’s construction. Prelim.
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`Resp. 13. Patent Owner contends that Petitioner’s construction reads out the
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`“‘authentication’ limitation for a ‘wired’ connection.” Id. at 17. To support
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`a requirement for authentication of a wired connection, Patent Owner argues
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`that its amendments to claims 3 and 12 during prosecution distinguished a
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`prior art reference to Vock.4 Id. at 15–17. Patent Owner describes Vock as
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`disclosing two types of “broadcast[] RF signals” that were at issue during
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`prosecution. See id. at 15 (citing Ex. 2001).
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`On this record, the prosecution history is consistent with Petitioner’s
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`construction. Patent Owner did not argue that Vock failed to disclose an
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`authenticated wired connection and argued instead that the claims require
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`“either a wired serial connection or an authenticated wireless bond (such as
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`
`4 Recently, the Federal Circuit indicated that even for non-expired patents
`that return to the PTO, prosecution history may be an important component
`of intrinsic evidence in construing claims (notwithstanding that Patent
`Owner may amend the claims and a broadest reasonable construction
`standard applies). See Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973,
`977 (Fed. Cir. 2014) (“In claim construction, this court gives primacy to the
`language of the claims, followed by the specification. Additionally, the
`prosecution history, while not literally within the patent document, serves as
`intrinsic evidence for purposes of claim construction. This remains true in
`construing patent claims before the PTO.”) (citing In re Morris, 127 F.3d
`1048, 1056 (Fed. Cir. 1997)); Microsoft Corp. v. Proxyconn, Inc., No. 2014-
`1542, 2015 WL 3747257, at *3 (Fed. Cir. June 16, 2015) (“The PTO
`should also consult the patent’s prosecution history in proceedings in which
`the patent has been brought back to the agency for a second review.”)
`(citing Tempo Lighting, 742 F.3d at 977). On the other hand, in Tempo
`Lighting, 742 F.3d at 978, the “court also observes that the PTO is under no
`obligation to accept a claim construction proffered as a prosecution history
`disclaimer, which generally only binds the patent owner.”
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`a Bluetooth connection).” Ex. 1002, 68 (emphasis added). Patent Owner
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`generally argued that Vock could not “accomplish Applicant’s specific[]
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`pairing of the computing unit and the external computer.” Id. The
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`prosecution history tracks the plain and ordinary reading of claims 3 and 12.
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`The disputed clause does not have a comma directly before “which,”
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`indicating that that the phrase that follows “which” and imposes an
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`authentication requirement only imposes that requirement on the “wireless
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`bonding” term that it immediately follows.
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`Further, during prosecution, Patent Owner pointed to Figure 10 of the
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`’584 patent for support of the amendment at issue here––i.e., the “wherein”
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`clause. See Ex. 1002, 67. Figure 10 supports Petitioner’s construction and
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`tracks Patent Owner’s arguments during prosecution, because it describes
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`using “USB or Bluetooth.” Ex. 1001, Fig. 10.
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`Therefore, for purposes of this Institution Decision and on this record,
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`according to the plain language of the claims in light of the Specification,
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`and the prosecution history, “specifically paired, [is] defined by . . . a wired
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`serial connection,” or “by . . . wireless bonding which enables the computing
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`unit to authenticate the identity of the external computing device prior to
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`communicating electrical signals therewith.”
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`2) “conditions 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 a display component”
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`Claims 4, 6, 13, and 15 recite the above phrase or an immaterial
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`variation of it. Claims 4 and 13 require a “computing unit” (i.e., connected
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`to the sensors) to condition the signals. Claims 6 and 13 require the
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`“external computing device” (i.e., a device more remote from the sensors
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`than the “computing unit”) to condition the signals. Neither party offers a
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`construction of the phrase, but Patent Owner states that “real time
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`conditioning of signals” does not require a construction. See Prelim. Resp.
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`17.
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`According to the ’584 patent Specification, data from sensors in the
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`“computing unit” [i.e., not the external computing device], “can include a
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`local display such as an led read out, a data logging device such as a micro-
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`SD card which is later read by a personal computer, or one of many wired or
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`wireless communication options for near-real time transmission to another
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`[i.e., external] computing device.” Ex. 1001, 13:34–39 (emphases added).
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`In other words, after transmission of the sensor data, that data may later be
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`transmitted in “near-real time,” according to this passage. A paragraph that
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`discusses “real-time broadcasts” (id. at 10:39–40) describes how a processor
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`collects data from a sensor in an article of clothing, and then sends it to
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`another “processing unit . . . for the local display of the athletic statistics or
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`for forwarding of the sensor data onto another communication media such as
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`the internet, interactive television or some other network.” See id. at 10:46–
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`52.
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`On this record, the passages reveal that the term “real time” is a
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`relative term that does not preclude processing and transmission delays.
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`Therefore, for purposes of this Institution Decision and on this record, the
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`phrase “conditions in real time electrical signals . . . generated by said
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`sensors into data . . .useable for display” means processing signals into
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`useable display data nearly contemporaneously after transmitting the
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`parameters from the sensors and receiving the corresponding signals (related
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`to the parameters).
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`B. Molyneux
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`
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`Molyneux discloses an athletic monitoring system for monitoring
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`performance during the course of games, practices, training sessions,
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`workouts, drills, etc. Ex. 1009 ¶ 1; Ex. 1008, Abstract.5 Team players wear
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`one or more foot mounted or shoe sensor devices 106 that gather and
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`transmit data to portable receiver 108 also worn by the player. Ex. 1009
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`¶¶ 43, 48; Figs. 2E, 3, 4; Ex. 1008, 8:31–41, 9:36–52, 10:41–45; Figs. 2E, 3,
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`4. Receiver 108 may transmit data to remote system 120 and vice versa.
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`Ex. 1009 ¶¶ 50, 51; Ex. 1008, 11:10–19. Remote system 120 may be any
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`type of computer controlled device, optionally with a display or interface,
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`including a laptop computer, desktop computer, or server. Ex. 1009 ¶ 51;
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`Ex. 1008, 11:20–31.
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`
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`5 To antedate the ’584 patent (effectively filed Apr. 24, 2009), Petitioner
`relies on a provisional application that Molyneux incorporates by reference,
`Prov. Pat. App. No. 61/200,953 (filed Dec. 5, 2008) (Ex. 1009). See Ex.
`1008, 1:7–15 (incorporating by reference Prov. Pat. App. No. 61/200,953);
`Pet. 13 (relying on Exs. 1008 & 1009).
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`Figures 3 and 4 of Molyneux follow:
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`
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`Figures 3 and 4 portray Molyneux’s basic system, including sensors
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`106, receiver device 108, and remote computer 120. See Exs. 1008 & 1009,
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`Figs. 3, 4.
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`C. Molyneux, Obviousness
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`
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`Relying on its declarant, Dr. Darrin Young (Ex. 1004), Petitioner
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`contends that Molyneux renders obvious claims 3, 4, 6–13, and 15–27. Pet.
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`13–36. Addressing the preamble of claims 3 and 12, Petitioner contends that
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`Molyneux discloses tracking player performance during athletic activities.
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`Pet. 15 (citing Ex. 1009 ¶ 35; Ex. 1008, 7:57–61). As an example,
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`Molyneux discloses monitoring a “player’s maximum movement velocity
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`during a desired time period” and “a number of times” that “movement
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`velocity exceeded a predetermined threshold value during a desired time
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`period.” Ex. 1009 ¶ 29; Ex. 1008, 6:4–16.
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`Petitioner reads “the computing unit” recited in claims 3 and 12 on
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`Molyneux’s sensor devices 106, which include accelerometers, pressure
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`sensors, and other force sensors. Pet. 15–16 (citing Ex. 1009 ¶¶ 39, 43, 44,
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`56, 92, 93; Figs. 3, 4; Ex. 1008, 9:41–42, 9:53–67, 12:30–34, Figs. 3, 4).
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`Petitioner contends that sensing units 106 inherently include, or obviously
`
`would have included, a processor for receiving data in real time from at least
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`one sensor. See Pet. 15–17 (arguing that such a processor would be
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`necessary or obvious in order to process signals exchanged through TX/RX
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`110 in sensor units 106, for providing real time comparisons to data, citing
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`Ex. 1004 ¶¶ 92–93); Pet. 29 (arguing processors required to calibrate sensors
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`and set protocols, citing Ex. 1004 ¶ 106).
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`Patent Owner contends that “Petitioner has failed to establish that
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`Molyneux necessarily operates in the way it describes.” Prelim. Resp. 30.
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`At cited Figure 3, Molyneux specifically discloses processors connected to a
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`similar TX/RX unit on portable computer 108, which similarly includes
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`sensor 118. Exs. 1008 & 109, Fig. 3. Molyneux generally discloses that “at
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`least some examples of this invention further may include: a processor
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`system for receiving and processing data stored in the data storage system.”
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`Ex. 1009 ¶ 29; Ex. 1008, 5:57–59. Molyneux also discloses that “sensor
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`106b could have its own data storage and/or transmission system for storing
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`data and/or transmitting it to the receiver 108 (or to another remote system,
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`such as remote system 120).” Ex. 1009 ¶ 45; Ex. 1008, 10:5–10. Molyneux
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`further discloses “the use of any desired wired or wireless data transmission
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`format or protocol, including . . . NIKE+TM . . . monitoring systems.” Ex.
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`1009 ¶ 38; Ex. 1008, 8:38–41.
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`Petitioner contends that because computer 108 provides real time data
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`and feedback from accelerometers, force sensors, and pressure sensors,
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`processors 106 would receive such real time data from sensors. See Pet. 16–
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`17; Ex. 1008, 10:41–49; Ex. 1009 ¶ 48. Given the disclosures in Molyneux
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`and the knowledge of skilled artisans regarding the transmission of data, on
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`this record, Molyneux at least suggests using a processor with sensors 106 to
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`receive data in real time to provide immediate feedback to an athlete, as
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`Petitioner generally contends. See Pet. 15–16; Ex. 1004 ¶¶ 95–96, 106.
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`Petitioner reads “the external computing device” recited in claims 3
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`and 12 on Teller’s computer 108. Pet. 17 (citing Ex. 1009, Fig. 3, ¶ 39; Ex.
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`1008, 8:33–34, Fig. 3). Petitioner cites Molyneux’s disclosed uploading of
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`activity data from external computer device 108 to remote computer system
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`120, upon which Petitioner reads the “server” and uploading activity as
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`recited in claims 3 and 12. Pet. 19–20 (citing Ex. 1009 ¶¶ 46, 93, 94; Ex.
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`1008, 10:13–20, 23:32–34, 23:51–54). Petitioner reads Molyneux’s
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`disclosure of real time evaluation with data transmitted to remote computer
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`system 120 from players on both teams onto the function recited in claims 3
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`and 12 of “enabling interactive subscriber communication whereby uploaded
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`activity data can be retrieved over the computer network.” Pet. 20 (citing
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`Ex. 1009 ¶¶ 93–94; Ex. 1008, 23:32–34, 51–54).
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`Claims 3 and 12 also recite “wherein said at least one external
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`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 unit to authenticate the identity of the external computing
`
`device prior to communicating electrical signals therewith.” Petitioner
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`contends that Molyneux’s wireless connection as depicted in Figure 1
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`satisfies the “wireless bonding” clause. Pet. 17. Regarding the
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`authentication aspect of the clause, Petitioner reasons that
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`many team players using Molyneux’s devices share an athletic
`field at the same time, motivating those of ordinary skill to use
`Bluetooth to specifically pair the sensor unit 106 and receiver
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`108; a Bluetooth connection authenticates the two devices
`before information or data is actually exchanged. Bluetooth is
`also among wireless systems recommended by Molyneux.
`
`Pet. 18 (citing Ex. 1009 ¶ 51; Ex. 1008, 11:36; Ex. 1004, ¶¶ 94–95).
`
`
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`Similar to its argument noted above, Patent Owner argues that
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`Petitioner does not support the “purported inherency” that the sensor and
`
`processor in unit 106 communicate in real time “‘given that the data is
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`furnished to portable receiver 108 in real time.’” Prelim. Resp. 30 (quoting
`
`Pet. 16–17). Patent Owner’s arguments are not persuasive. Molyneux
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`discloses that “receiver 108 receives the data from one or more shoe
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`mounted sensors 106 and stores this data and/or transmits it to an input
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`system 122 provided in remote computer system 120. This can be
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`accomplished in real time, during the athletic performance.” Ex. 1009 ¶ 39;
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`Ex. 1008, 8:42–46. On this record, ordinarily skilled artisans would have
`
`recognized that Molyneux at least suggests that portable receiver 108 and
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`sensors 106 process data in real time.
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`Based on the foregoing discussion, we determine that Petitioner
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`demonstrates a reasonable likelihood of prevailing on the ground that
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`Molyneux renders obvious claims 3 and 12.
`
`Claims 4 and 13 depend respectively from claims 3 and 12 and require
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`the computing unit to condition electrical signals related to parameters
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`generated by sensors in real time to be “useable” by a display component or
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`visible user interface, wherein said conditioning includes at least obtaining a
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`peak performance quantity. Petitioner identifies a display in external
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`computing unit 108 that displays “top” quantities. Pet. 21 (citing Ex. 1009
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`¶¶ 59–63, Figs. 15–17; Ex. 1008, 13:8–14:7). In addition to the above-
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`discussed showing regarding real time, Petitioner also notes that Molyneux
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`provides real time display feedback for real time evaluation by coaches. Id.
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`at 20–21 (citing Ex. 1009 ¶¶ 48, 93; Ex. 1008, 10:41–45, 23:32–34). On this
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`record, Petitioner shows that Molyneux renders obvious using a processor in
`
`sensor unit 106 to condition real time signals related to parameters useable
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`for display. See Pet. 22–23.
`
`Claims 6 and 14 respectively depend from claims 3 and 13 and are
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`similar in scope. Claim 6 recites
`
`wherein said external computing device conditions 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 a display component and said conditioning includes at least
`obtaining a peak performance quantity.
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`Claim 14, by virtue of its dependency on claim 13, requires the external
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`computing device and the computing unit to condition electrical signals. In
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`addition to the showing regarding real time above, Petitioner cites to, for
`
`example, top speeds as displayed by Molyneux’s external computing unit
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`108, which provides real time feedback. See Pet. 21 (citing Ex. 1009 ¶¶ 48,
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`59–63; Ex. 1008, 10:41–45, 13:8–14:7, 14:27–56).
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`According to Molyneux, “receiver 108 may include an output device
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`that provides feedback to the athlete 102 in real time.” Ex. 1009 ¶ 48; Ex.
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`1008, 10:41–43. On this record, Petitioner establishes a reasonable
`
`likelihood of showing that Molyneux renders obvious real time signal
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`conditioning by external computing unit 108 and a processor in sensing unit
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`106 in order to provide peak and other signals useable for display, to satisfy
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`Molyneux’s disclosure of providing real time feedback to athletes wearing
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`sensors. See Pet. 22 (citing Ex. 1004 ¶¶ 95–96; Ex. Ex. 1009 ¶¶ 48, 56–58,
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`93; Ex. 1008, 10:41–46, 11:64–12:4 (“real-time performance feedback”),
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`12:19–13:7, 23:51–55).
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`Claims 8 and 17 respectively depend from claims 7 and 16 and require
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`sensors integrated with a shoe and electrical signals generated by vertical
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`displacement of said shoe. Petitioner cites Molyneux’s integrated shoe
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`sensor in shoe 104, depicted at Figures 2A and 2B, and including
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`accelerometers, force sensors, and pressure sensors. See Pet. 23 (citing Ex.
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`1009 ¶ 44; Ex. 1008, 9:53–67). Movement of shoe 104 correlates with
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`“detection of foot acceleration,” for example. See Ex. 1009 ¶ 44; Ex. 1008,
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`9:57–58.
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`Claims 9 and 18 respectively depend from claims 3 and 12 and recite
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`an antenna unit. Petitioner cites Molyneux’s disclosure of TX/RX 110 in
`
`Figure 3 as corresponding to or connected antenna units as claimed. See Pet.
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`23. On this record, Petitioner establishes a reasonable likelihood of showing
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`that Molyneux renders obvious claims 8, 9, 17, and 18.
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`Claims 10 and 19 respectively depend from claims 3 and 12 and recite
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`“wherein said external computing device” “includes a client software
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`application containing instructions which enables the external computing
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`device to configure the . . . computing unit to control the at least one sensor
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`connected thereto.” Petitioner generally relies on software downloads as
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`disclosed in Molyneux’s system from remote sensor 120 to receiver 108 to
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`control aspects of sensors, including turning different sensors on or off,
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`depending on the type of drill or practice operation to be monitored. See
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`Pet. 24–25 (citing Ex. 1009 ¶¶ 104, 108, 109; Ex. 1008, 28:14, 28:22,
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`28:65–29:2; Ex. 1004 ¶¶ 96–97). On this record, Petitioner establishes a
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`reasonable likelihood of showing that Molyneux renders obvious claims 10
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`and 19.
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`Claims 11 and 20 respectively depend from claims 3 and 12 and
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`require the external computing device to include software to enable that
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`device to access uploaded activity data on the server. Petitioner relies on
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`Molyneux’s disclosure of providing display feedback of data uploaded to the
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`server so that athletes may share information and foster competition. See
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`Pet. 25–26 (citing Ex. 1009 ¶¶ 48, 59, 93, 94; Ex. 1008, 10:41–45, 13:26–29,
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`23:42, 23:32–34, 23:52–54; Ex. 1004 ¶¶ 93–94). On this record, Petitioner
`
`establishes a reasonable likelihood of showing that Molyneux renders
`
`obvious claims 11 and 20.
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`
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`Regarding claim 21, Petitioner maps similar claim elements to those
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`recited in claims 3 and 12 to Molyneux’s disclosure. See Pet. 26–33. Claim
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`21 also recites the “computing unit is configured to control the operation of
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`associated sensors.” On this record, Petitioner establishes a reasonable
`
`likelihood of showing that Molyneux suggests a processor with sensor 106
`
`in a computing unit that turns on and off selected sensors 106 in order to
`
`control the selected sensors during different desired practice sessions that
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`may use different sensors. See Ex. 1009 ¶¶ 50, 108; Ex. 1008, 11:13–19
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`(disclosing remote control of sensors and devices), 28:53–60 (similar),
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`28:65–29:2 (practice drill downloads); see also Pet. 29, 31–32 (similar
`
`showing and asserting that different sensors require calibration, gain
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`adjustment, start and stop, citing Ex. 1004 ¶¶ 1004, 106, 116).
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`Petitioner sets forth detailed showings for the remaining elements of
`
`claim 21 and claims 22–27. Pet. 27–36. On this record, Petitioner
`
`establishes a reasonable likelihood of showing that Molyneux renders claims
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`21–27 obvious.
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`D. Discretion
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`Patent Owner argues that the instant Petition and the petition in
`
`related Case IPR2015-00655 present redundant grounds that place a
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`significant burden on the Board and Patent Owner requiring the Board to
`
`dismiss the petitions. Prelim. Resp. 2–6. Petitioner argues that the grounds
`
`are not redundant and that all should be instituted based on of the effective
`
`filing date of Molyneux being close to the effective filing date of the ’584
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`patent. See Pet. 44.
`
`Pursuant to 35 U.S.C. § 316(b), rules for inter partes proceedings
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`were promulgated to take into account the “regulation on the economy, the
`
`integrity of the patent system, the efficient administration of the Office, and
`
`the ability of the Office to timely complete proceedings.” The promulgated
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`rules provide that they are to “be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). As a
`
`result, and in determining whether to institute an inter partes review of a
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`patent, the Board, in its discretion, may “deny some or all grounds for
`
`unpatentability for some or all of the challenged claims.” 37 C.F.R.
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`§ 42.108(b).
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`To a certain extent, Patent Owner’s arguments are moot, as we
`
`exercise our discretion and institute review only on the grounds identified
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`below. We do not deem any of the remaining asserted grounds in Case
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`IPR2015-00655, alleged to be redundant, to be sufficient on this record to
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`deny institution, for reasons explained in that decision to institute, including
`
`the fact that Case IPR2015-00655 involves challenges to claims 5 and 14,
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`which are not challenged here. The Board has the discretion to institute on a
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`requisite number of grounds in the interests of justice and to expedite the
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`proceeding, where for example, challenged claims have varying scope with a
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`number of functional limitations that may be construed differently.
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`III. CONCLUSION
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`For the foregoing reasons, we determine that the information
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`presented in the Petition and Preliminary Response establishes that there is a
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`reasonable likelihood that Petitioner would prevail with respect to the
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`challenged claims, claims 3, 4, 6–13, and 15–27 of the ’584 patent. At this
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`stage of the proceeding, the Board has not made a final determination as to
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`the patentability of any challenged claim.
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`Accordingly, it is
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`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted as to claims 3, 4, 6–13, and 15–27 of the ’584 patent on the
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`ground of obviousness under 35 U.S.C. § 103 based on Molyneux;
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`FURTHER ORDERED that no other ground of unpatentability
`
`alleged in the Petition for any claim is authorized for this inter partes
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`review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
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`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
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`commencing on the entry date of this Decision.
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`PETITIONER
`
`Edward Sikorski
`James Heintz
`DLA PIPER LLP
`ed.sikorski@dlapiper.com
`Nike-Mayfonk-IPR@dlapiper.com
`
`
`
`PATENT OWNER
`
`Edward J. Benz
`Naveen Modi
`Paul Hastings LLP
`joebenz@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`20