Paper No. __
`Filed: February 15, 2017
`
`
`
`Filed on behalf of: Fitbit, Inc.
`
`By: Naveen Modi (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Yar R. Chaikovsky (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Michael C. Hendershot (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`David T. Okano (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`FITBIT, INC.
`
`Petitioner
`
`v.
`
`BODYMEDIA, INC.
`
`Patent Owner
`
`____________________
`
`Case IPR2016-00545
`Patent No. 8,073,707
`____________________
`
`PETITIONER’S REPLY
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction ..................................................................................................... 1
`The Board’s determination that claims 1–18 and 20–22 of the ’707
`patent are invalid as anticipated by Amano ’342 has been affirmed by
`the Federal Circuit .......................................................................................... 1
`III. The declaration supporting Patent Owner’s response has been
`expunged and the testimony of Petitioner’s proffered expert stands
`uncontradicted ................................................................................................. 3
`IV. Level of ordinary skill in the art ..................................................................... 3
`V. Ground 1: Claims 19, 23, and 24 are anticipated by Amano ’342 ................ 4
`A.
`Claim 19: Amano ’342 discloses that indicators of the
`individual’s derived calorie expenditure may be tactile ...................... 4
`Claim 23: Amano ’342 discloses the comparison of indicators
`of a variety of parameters to baseline parameters of an
`individual .............................................................................................. 6
`1.
`Patent Owner fails to address, let alone rebut, one
`baseline parameter in Amano ’342 pointed to by
`Petitioner .................................................................................... 7
`Patent Owner’s arguments as to the other comparisons in
`Amano ’342 cited by Petitioner lack merit ................................ 7
`Claim 24: Amano ’342 discloses the providing of suggestions
`based on the relation of a derived parameter to indicators of a
`physiological parameter ..................................................................... 11
`VI. Ground 2: Claims 19, 23, and 24 are rendered obvious by the
`combination of Amano ’837 and Goodman ................................................. 13
`A. A POSITA would have combined Amano ’837 and Goodman ......... 13
`B.
`Claim 19: The combination of Amano ’837 and Goodman
`teaches or suggests that indicators of the individual’s derived
`calorie expenditure may be tactile ...................................................... 16
`Claim 23: The combination of Amano ’837 and Goodman
`teaches or suggests the comparison of indicators of a variety of
`parameters to baseline parameters of an individual ........................... 17
`
`B.
`
`C.
`
`2.
`
`C.
`
`i
`
`

`

`
`
`D.
`
`Claim 24: The combination of Amano ’837 and Goodman
`teaches or suggests the providing of suggestions based on the
`relation of a derived parameter to indicators of a physiological
`parameter ............................................................................................ 21
`Patent Owner’s alleged evidence of objective indicia of
`nonobviousness should be accorded no weight ................................. 23
`VII. Conclusion .................................................................................................... 25
`
`
`E.
`
`
`
`
`
`-ii-
`
`
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ............................................................................ 16
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 14
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................ 16
`
`35 U.S.C. § 316(a) ..................................................................................................... 2
`
`
`
`
`
`iii
`
`

`

`LIST OF EXHIBITS
`
`Description
`
`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`
`Previously
`Submitted
`
`Exhibit
`No.
`
`1001 U.S. Patent No. 8,073,707 to Teller et al.
`
`1002 Declaration of Dr. Mark A. Musen
`
`1003
`
`Prosecution history of U.S. Application No. 11/247,049
`
`1004 U.S. Patent No. 6,030,342 to Amano et al.
`
`1005 U.S. Patent No. 7,689,437 to Teller et al.
`
`1006 U.S. Patent No. 5,941,837 to Amano et al.
`
`1007 U.S. Patent No. 6,616,613 to Goodman
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Reserved
`
`Inter partes reexamination control no. 95/002,371
`
`Inter partes reexamination control no. 95/002,376
`
`Corrected Appellant’s Opening Brief in BodyMedia, Inc.
`v. BASIS Sci., Inc., No. 2015-1788 (Fed. Cir.)
`
`1016 Gilad J. Kuperman, Reed M. Gardner, and T. Allan Pryor,
`HELP: A Dynamic Hospital Information System (1991)
`
`1017 Norman J. Holter, New Method for Heart Studies:
`Continuous Electrocardiography of Active Subjects Over
`Long Periods is Now Practical, 134 Science 1214 (1961)
`
`iv
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`

`

`Description
`
`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`Previously
`Submitted
`
`X
`
`X
`
`X
`
`
`
`
`
`Exhibit
`No.
`
`1018
`
`Jan van Bemmel and Mark A. Musen, Handbook of
`Medical Informatics (1997)
`
`1019
`
`Curriculum Vitae of Dr. Mark A. Musen
`
`1020 Declaration of Michael C. Hendershot
`
`1021
`
`Rule 36 judgment in Appeal No. 2015-1788
`
`1022 Mandate in Appeal No. 2015-1788
`
`
`
`v
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`
`I.
`
`Introduction
`
`Petitioner Fitbit Inc. (Petitioner) replies to Patent Owner’s Response (Paper
`
`No. 12, Response) filed by BodyMedia, Inc. (Patent Owner) and the Board’s
`
`decision to institute inter partes review (Paper No. 8, Institution Decision) of U.S.
`
`Patent No. 8,073,707 (the ’707 patent). After the Board’s institution decision, the
`
`Federal Circuit affirmed the Board’s finding in a prior inter partes reexamination
`
`that claims 1–18 and 20–22 of the ’707 patent are invalid as anticipated. Those
`
`claims are finally invalid, leaving only claims 19, 23, and 24 (which were not at
`
`issue in the prior challenge). Thereafter, in this proceeding, Patent Owner declined
`
`to present its proffered expert for deposition and agreed to the Board’s expunging
`
`his declaration from the record.
`
`The petition demonstrates the remaining claims of the ’707 patent (19, 23,
`
`and 24) are unpatentable—including arguments based on the same art and analysis
`
`previously applied by the Board and affirmed by the Federal Circuit. The petition
`
`was supported by testimony from Dr. Musen, which stands unrebutted. For at least
`
`the reasons discussed below, Patent Owner’s unsupported arguments should be
`
`rejected and the remaining claims of the ’707 patent found unpatentable.
`
`II. The Board’s determination that claims 1–18 and 20–22 of the ’707
`patent are invalid as anticipated by Amano ’342 has been affirmed by
`the Federal Circuit
`When this petition was filed, the Board’s determination in inter partes
`
`1
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`reexamination no. 95/002,376 that claims 1–18 and 20–22 of the ’707 patent are
`
`invalid as anticipated by U.S. Patent No. 6,030,342 (Amano ’342) was pending
`
`appeal to the Federal Circuit. See Exs. 1014–15. The Federal Circuit affirmed the
`
`Board’s determination on July 12, 2016, and the mandate issued on August 18,
`
`2016 (Exs. 1021–22). As a result, the challenges presented in the petition with
`
`respect to those claims are moot.1 Although independent claim 1 and all other
`
`claims at issue in the reexamination were found to be anticipated, claims 19, 23,
`
`and 24—which depend from claim 1—were not challenged and remain at issue in
`
`this proceeding. Thus—as does Patent Owner’s response—Petitioner’s Reply
`
`focuses on claims 19, 23, and 24.2
`
`
`1 The claim construction dispute regarding “life activities data,” which is
`
`recited in dependent claims 5, 6, and 10, is also moot.
`
`2 Patent Owner did not raise any arguments with respect to claims 1–18 and
`
`20–22 in its response. And, as the Board recognized, these claims are to be
`
`cancelled by the Director under 35 U.S.C. § 316(a) (pre-AIA). Institution Decision
`
`at 17. Petitioner has provided evidence of and detailed how every limitation of
`
`independent claim 1 is disclosed in the cited references. Petition at 17–23, 32–40;
`
`Ex. 1002 ¶¶ 41, 45. Because Patent Owner does not challenge such disclosures,
`
`Petitioner does not repeat them here.
`
`2
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`III. The declaration supporting Patent Owner’s response has been
`expunged and the testimony of Petitioner’s proffered expert stands
`uncontradicted
`
`Patent Owner declined to produce its declarant Thomas Blackadar for cross-
`
`examination and Mr. Blackadar’s first and second declarations (Exs. 2001, 2005)
`
`and his resume (Ex. 2002) have been expunged from the record. Paper No. 17. As
`
`a result, the testimony of Petitioner’s declarant Dr. Mark Musen stands unrebutted
`
`by contrary evidence. Dr. Musen’s qualifications as an expert are extensive and
`
`unchallenged. Dr. Musen’s detailed analysis and testimony amply support
`
`Petitioner’s showing by a preponderance of the evidence that claims 19, 23, and 24
`
`of the ’707 patent are unpatentable.
`
`IV. Level of ordinary skill in the art
`Mr. Blackadar’s expunged declaration provided the support for Patent
`
`Owner’s definition of a person of ordinary skill in the art (POSITA). Response at
`
`7. But even if Patent Owner’s definition were adopted, it would not render claim
`
`19, 23, or 24 unpatentable. Although Petitioner’s and Patent Owner’s definitions of
`
`the POSITA are similar, Patent Owner’s definition could require the POSITA to
`
`have more experience (2–3 years as opposed to 1–2 years). Id.; Petition at 11. This
`
`could result in a more skilled POSITA, which would, inter alia, strengthen the
`
`Petitioner’s invalidity arguments.
`
`3
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`V. Ground 1: Claims 19, 23, and 24 are anticipated by Amano ’342
`The Board’s previous finding that Amano ’342 anticipates claim 1 of the
`
`’707 patent has now been affirmed by the Federal Circuit. Claims 19, 23, and 24
`
`each depend from and add a single limitation to claim 1. The petition and Dr.
`
`Musen explain how Amano ’342 discloses each of these additional limitations.
`
`Patent Owner has offered no rebuttal to Dr. Musen’s testimony. For this reason and
`
`the reasons below, the Board should find Petitioner has shown by a preponderance
`
`of evidence that claims 19, 23, and 24 are anticipated by Amano ’342.
`
`A. Claim 19: Amano ’342 discloses that indicators of the individual’s
`derived calorie expenditure may be tactile
`
`Claim 19 adds a single limitation to anticipated claim 1: that an indicator
`
`presented to a user described in claim 1 is “tactile.” The petition and Dr. Musen’s
`
`testimony details how Amano ’342 also discloses this limitation and anticipates
`
`claim 19. Petition at 24; Ex. 1002 ¶¶ 41–42. Dr. Musen’s testimony is unrebutted
`
`by contrary evidence. Indeed, Patent Owner does not dispute that Amano ’342
`
`expressly discloses providing “tactile” notifications to a user. It simply suggests
`
`that Amano ’342 is “unclear.” This suggestion lacks merit and is at odds with the
`
`Board’s prior, now-affirmed analysis of Amano ’342.
`
`It is undisputed that Amano ’342 discloses the calculation of parameters and
`
`visual display of notifications that satisfy every limitation of claim 1 of the ’707
`
`patent. Moreover, Amano ’342 further instructs that while such “preceding
`
`4
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`embodiments employed a design in which the calculated results were all displayed
`
`on display 205,” a “notification in the present invention means a method which
`
`relies on any one of the five senses” and “a design is also possible which relies on
`
`the tactile sense by employing vibration in the notification.” Petition at 24; Ex.
`
`1002 ¶ 42; Ex. 1004 at 34:20–32 (emphasis added).
`
`As the petition explains, Amano ’342 discloses that these “calculated
`
`results” that are the subject of its notifications include derived parameters such as
`
`calorie expenditure. Petition at 15–16, 20, 24; Ex. 1002 ¶ 33; Ex. 1004 at 18:6–50
`
`(“Calculation of calorie expenditure”), 18:43–45 (“CPU 201 provides notice of the
`
`calculated calorie expenditure on display 205”), 11:9–12, 22:60–63. These
`
`“calculated results” also include physiological parameters such as the pulse rate
`
`and body temperature, which the petition identifies (and Patent Owner does not
`
`contest) as data indicative of a first and a second physiological parameter,
`
`respectively. Petition at 25–26; Ex. 1002 ¶¶ 34, 41; Ex. 1004 at 7:13–18, 27:13–37,
`
`27:56–60, 28:1–10, 25:24–28, 12:21–30.
`
`Thus, Amano ’342 clearly discloses that the calculated results that may be
`
`conveyed by a “tactile” notification encompass not only the derived parameter of
`
`calorie expenditure, but also indicators of body temperature and pulse rate
`
`physiological parameters, any one of which is sufficient to satisfy the disjunctive
`
`requirement of claim 19. Patent Owner’s assertion that this is “unclear” is refuted
`
`5
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`by the language of Amano ’342 itself and by Dr. Musen’s unrebutted testimony as
`
`to how a POSITA would understand it.
`
`Indeed, Patent Owner’s argument is dispelled by the Board’s prior analysis
`
`of claim 18 that was affirmed by the Federal Circuit. Claim 18 is identical to claim
`
`19 but for the requirement of presentation in “audio”—rather than “tactile”—form.
`
`The disclosure of Amano ’342 that Patent Owner contends is unclear was found by
`
`the Board (and upheld by Federal Circuit) to “connect” the calculated results to a
`
`“sound” of a “synthesized voice” and anticipate the “audio form” presentation of
`
`claim 18. See Ex. 1014 at 719–21; Institution Decision at 2 n.1. As such, Patent
`
`Owner’s arguments that the same disclosure does not teach presenting the claimed
`
`indicators via a tactile notification should be rejected.
`
`B. Claim 23: Amano ’342 discloses the comparison of indicators of a
`variety of parameters to baseline parameters of an individual
`
`Claim 23 adds a single limitation to independent claim 1: that at least one
`
`indicator is compared to a “baseline parameter.” The petition and Dr. Musen’s
`
`testimony explain three examples of how Amano ’342 discloses this limitation and
`
`anticipates claim 23. Ex. 1002 ¶¶ 41, 43. Patent Owner has not offered any
`
`evidence rebutting this testimony. Instead, Patent Owner disputes that two
`
`examples teach the claimed feature and is silent with respect to the third example.
`
`For at least the reasons below, all three cited examples disclose the claimed
`
`feature.
`
`6
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`Patent Owner fails to address, let alone rebut, one baseline
`parameter in Amano ’342 pointed to by Petitioner
`
`1.
`
`Patent Owner responds to only two of the three comparisons disclosed by
`
`Amano ’342 in the petition, and thus apparently concedes that at least one
`
`identified comparison discloses the feature recited in claim 23. In particular,
`
`Amano ’342 describes a visual comparison of an individual’s body temperature
`
`and pulse rate (first and second physiological parameters) to recent baseline values
`
`of those parameters. Petition at 25–26; Ex. 1002 ¶ 23; Ex. 1004 at 27:13–37,
`
`27:57–28:10. Patent Owner does not address this comparison (the third identified
`
`in the petition) and it alone warrants a finding that claim 23 is anticipated.
`
`2.
`
`Patent Owner’s arguments as to the other comparisons in
`Amano ’342 cited by Petitioner lack merit
`
`The arguments Patent Owner does advance as to the remaining two
`
`comparisons identified by Petitioner are either irrelevant or belied by the claim
`
`language and the ’707 patent’s teachings.
`
`First, Petitioner and Dr. Musen explain how Amano ’342 discloses a
`
`comparison of the individual’s body motion parameter to a baseline threshold to
`
`determine whether an individual is active or at rest. Petition at 25; Ex. 1002 ¶ 43.
`
`Patent Owner’s assertion that this comparison “do[es] not appear to be related” to
`
`the individual’s physiological or derived parameters is unsupported. Response at
`
`10. In particular, the disclosed Amano ’342 system compares indicators of the
`
`7
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`individual’s body motion (first physiological parameter) to a baseline “threshold”
`
`value for body motion to determine if that individual is active or at rest/in deep
`
`sleep. Id.; Ex. 1004 at 6:64–7:7, 11:31–33, 17:13–19. Contrary to Patent Owner’s
`
`assertion, this threshold or “baseline” for body motion is plainly related to a
`
`physiological parameter.
`
`To the extent Patent Owner is suggesting that the claimed “baseline
`
`parameter of the individual” must be a “measurement” of a physiological
`
`parameter or “derived” from such a measurement, such an interpretation is
`
`inconsistent with the language of claim 23. Claim 23 does not recite a “baseline
`
`parameter of a said indicator,” which would link the baseline to a measurement of
`
`a physiological parameter or a derived parameter, but rather merely “a baseline
`
`parameter,” which indicates that the baseline parameter is not limited to a
`
`measured or derived value of a parameter referenced earlier in the claim. In short,
`
`Patent Owner provides no basis for its assertion that the threshold “body motion”
`
`value is not a recited “baseline parameter of the individual.”
`
`Second, the petition and Dr. Musen explain how Amano ’342 discloses a
`
`comparison of a basal metabolic rate to derived calorie expenditure. In particular,
`
`Figures 10A and 10B disclose the comparison of the individual’s basal metabolic
`
`rate (the baseline parameter) to the individual’s caloric expenditure when resting
`
`8
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`and active (an indicator of a derived parameter). Petition at 25, Ex. 1002 ¶ 43, Ex.
`
`1004 at 6:18–47.
`
`
`
`
`
`
`
`Figures 10A and 10B show different linear regression formulas based on the
`
`individual’s basal metabolic state when the “subject [is] active” or “subject [is] at
`
`rest.” Amano ’342 explains that the individual’s physiological state (resting or
`
`active) is measured, and then the individual’s basal metabolic state at the measured
`
`state is compared to their calorie expenditure. See Ex. 1004 at 22:60–65. This
`
`comparison is utilized to determine a “corrected” caloric expenditure. Id. at 22:65–
`
`23:3. Thus, Amano ’342 discloses the comparison of an indicator of a derived
`
`parameter (calorie expenditure) to a baseline parameter (basal metabolic pulse rate)
`
`to improve the accuracy of the individual’s derived calorie expenditure. Petition at
`
`25; Ex. 1004 at 22:60–65.
`
`9
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`Patent Owner argues that Petitioner “conflates the term compare with
`
`calculate.” Response at 9, 16. But Patent Owner ignores that the ’707 patent
`
`teaches the comparison of parameters to a baseline by means of a calculation.
`
`As a threshold matter, a comparison of two numbers is often expressed using
`
`a ratio or other type of calculation. As a simple illustration, if comparing the
`
`number “5” to the number “4,” the number 5 represents a 25% increase over the
`
`number 4, as illustrated by the following calculation:
`
`5−44 =0.25.
`
`Consistent with this, the specification of the ’707 patent describes a
`
`graphical “Health Index” comparison to a baseline that is based on a calculation of
`
`a number of indicators of data indicative of an individual’s physiological
`
`parameters. As part of the ’707 patent’s disclosed health monitoring system, the
`
`individual completes a survey which allows the system to gather baseline data used
`
`for calculation of certain graphical data outputs. See Ex. 1001 at 13:55–63 (“The
`
`purposes of the survey are to . . . gather baseline data which will be used to set
`
`initial goals for the individual user and facilitate the calculation and display of
`
`certain graphical data output such as the Health Index pistons . . . .”). The graphical
`
`data outputs presented to a user as a result of this calculation include a calculated
`
`“piston level” that utilizes the relationship of various physiological parameters
`
`compared to a baseline. Id. at 17:29–35 (“Parameters utilized in the calculation of
`
`10
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`the relevant piston level include . . . heart rate, respiration rate, heat flow or GSR as
`
`sensed by sensor device 10 compared to a baseline which is an indication of the
`
`depth or quality of the mind centering activity.”).
`
`Thus, the ’707 patent describes a comparison of physiological parameters
`
`such as heart rate to a baseline “mind centering activity” parameter through a
`
`calculation of a “piston level” from the physiological parameters. Like the ’707
`
`patent, Amano ’342 discloses a comparison of an individual’s basal metabolic rate
`
`(baseline) to their caloric expenditure (physiological parameter) through a
`
`calculation. Patent Owner’s arguments should be rejected.
`
`C. Claim 24: Amano ’342 discloses the providing of suggestions
`based on the relation of a derived parameter to indicators of a
`physiological parameter
`
`As discussed above, the Board has concluded—and Patent Owner does not
`
`dispute—that Amano ’342 anticipates independent claim 1. Claim 24 depends
`
`from claim 1, adding a single limitation: providing a suggestion based on the
`
`relation of a derived parameter to indicators of a physiological parameter. The
`
`petition and Dr. Musen explain how Amano ’342 teaches this limitation. Petition at
`
`26–27; Ex. 1002 ¶¶ 41, 44. Dr. Musen’s testimony stands unrebutted.
`
`Patent Owner’s arguments do not address Petitioner’s showing. In particular,
`
`Petitioner explains that in Amano ’342: (1) the display of a face (smiling or
`
`frowning) constitutes the “suggestion,” (2) calorie expenditure constitutes the
`
`11
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`“derived parameter,” and (3) body movement, body temperature, or pulse
`
`waveform data constitutes the “indicator” of a physiological parameter recited by
`
`claim 23. Petition at 26–27. In formulating its argument, Patent Owner misstates
`
`two of these three items—erroneously asserting that Petitioner relies on
`
`“achievement rate” as the derived parameter and total calorie expenditure as the
`
`claimed physiological parameter. Response at 12. As a result, Patent Owner’s
`
`argument fails to address and is irrelevant to Petitioner’s actual showing and
`
`position.
`
`As the petition explains, Amano ’342 teaches providing a suggestion, in the
`
`form of a face indicating whether a user needs to engage in more activity to meet a
`
`goal, which is based on an individual’s calorie expenditure (a derived parameter),
`
`which is in turn determined in relation to data from the disclosed Amano ’342
`
`system’s body motion, body temperature, and pulse wave sensors (data indicative
`
`of first and second physiological parameters). Petition at 27 (citing Amano ’342 at
`
`19:34–61, 8:62–9:44, Fig. 22). Dr. Musen’s uncontradicted testimony supports a
`
`conclusion that these disclosures teach the additional limitation of claim 24. Ex.
`
`1002 ¶ 44.
`
`Patent Owner does not address this showing but instead asserts that Amano
`
`’342 does not use the word “suggestion.” Response at 11. Regardless of whether
`
`this word appears, a POSITA would understand that Amano ’342 discloses the
`
`12
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`claimed suggestion. For example, the petition and Dr. Musen explain that a smiling
`
`face suggests the individual has met their activity goals for the day, while a
`
`frowning face suggests the individual should engage in additional activity during
`
`the day. Petition at 26–27; Ex. 1002 ¶ 44; Ex. 1004 at 19:34–61, Fig. 22.
`
`VI. Ground 2: Claims 19, 23, and 24 are rendered obvious by the
`combination of Amano ’837 and Goodman
`A. A POSITA would have combined Amano ’837 and Goodman
`The petition and Dr. Musen explain how and why a POSITA would have
`
`combined the Amano ’837 and Goodman references to teach the features of claims
`
`19, 23, and 24. Ex. 1002 ¶¶ 45, 63, 67–68. That testimony stands unrebutted by
`
`contrary evidence. Patent Owner’s two unsupported arguments against such
`
`combination lack merit.
`
`First, Patent Owner erroneously contends that Petitioner’s rationale for
`
`combining Amano ’837 and Goodman is limited to the fact the references “relate
`
`to the same subject matter.” Response at 13. Patent Owner further contends that
`
`Goodman is directed to a system that transfers data to health professionals while
`
`Amano ’837 is directed to a system without the presence of a physician or nurse,
`
`and because “the design of the systems of Amano ’837 and Goodman are different
`
`. . . a person of skill in the art would not combine these two disparate systems.” Id.
`
`at 13–14.
`
`13
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`Instead of responding to the petition, Patent Owner constructs an irrelevant
`
`straw man. Petitioner’s support for combining Amano ’837 and Goodman is not
`
`limited to the fact the references relate to the same subject matter. Rather,
`
`Petitioner emphasizes that it would have been obvious to a POSITA to adapt
`
`complementary portions of the Goodman and Amano ’837 systems—including
`
`based on the teachings of the references themselves—to arrive at the claims of the
`
`’707 patent.
`
`As explained in the petition, Amano ’837 teaches the collection of an
`
`individual’s physiological data with a wearable sensor device, and that Goodman
`
`teaches the use of known computing techniques according to their established
`
`functions—the “simple matter” of transferring physiological sensor data over the
`
`Internet—to predictably improve similar wearable devices by permitting the
`
`sharing of the collected data with health professionals “authorized by the user” to
`
`allow “more sophisticated analysis” of the data. Petition at 30–31; Ex. 1002 ¶ 45;
`
`Ex. 1007 at 3:59–61, 34:35–38. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`
`417 (2007).
`
`Indeed, Amano ’837 acknowledges there would be benefits of sharing of this
`
`physiological data collected by the wearable device with physicians to assist with
`
`rehabilitation plans and to help improve physical health. Petition at 31; Ex. 1002
`
`¶ 45; Ex. 1006 at 15:17–23, 48:8–12. In view of this acknowledgment and
`
`14
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`suggestion, Dr. Musen explains that “one of ordinary skill in the art would have
`
`naturally combined the remote computer and database of Goodman with Amano
`
`’837 to permit the sharing of an individual’s physiological data with others who
`
`may be remote to the individual.” Petition at 31; Ex. 1002 ¶ 45.
`
`In short, the petition does not rely solely on the fact that Amano ’837 and
`
`Goodman relate to the same subject matter and does not contend that a POSITA
`
`would have combined the two disclosed systems wholesale. Instead, Petitioner
`
`explains that a POSITA would have taken the complementary portion of the
`
`Goodman system in order to predictably improve the Amano ’837 wristwatch in a
`
`way suggested by the references by sharing of locally-collected data with health
`
`professionals remote to the individual. Petition at 29–31; Ex. 1002 ¶ 45.
`
`Second, Patent Owner’s contention that a POSITA would not have combined
`
`the references because Goodman describes a “highly specialized PPG” and
`
`disparages earlier PPG sensors (Response at 14) is misplaced. The rationale to
`
`combine Amano ’837 and Goodman does not depend on what specific
`
`physiological sensor is disclosed in Goodman, but rather that those of skill in the
`
`art knew how to collect data using wearable physiological sensors and transfer that
`
`data for further analysis by health professionals—facts confirmed by the references
`
`themselves. See Petition at 31; Ex. 1002 ¶ 45.
`
`15
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`The fact that both Goodman and Amano ’837 disclose wearable PPG sensors
`
`for physiological monitoring merely provides additional evidence that a POSITA
`
`would have looked to existing technology such as Goodman when addressing the
`
`need to make an individual’s collected physiological data available to a physician
`
`for further analysis. Id. Indeed, Goodman and Amano ’837 are analogous art to
`
`each other and to the claims of the ’707 patent in that they both disclose the use of
`
`PPG sensors tied to a wristwatch and are “from the same field of endeavor” and
`
`“reasonably pertinent to the particular problem with which the inventor is
`
`involved”—improving an individual’s health. See In re Clay, 966 F.2d 656, 658–
`
`59 (Fed. Cir. 1992). This “substantial commonality between the purposes and
`
`technology used by the Goodman and Amano ’837 systems” alone supports the
`
`combination of the references under 35 U.S.C. § 103. Petition at 31.
`
`B. Claim 19: The combination of Amano ’837 and Goodman teaches
`or suggests that indicators of the individual’s derived calorie
`expenditure may be tactile
`
`The petition and Dr. Musen’s testimony detail how the combination of
`
`Amano ’837 and Goodman teach every limitation of claim 19, including the
`
`presentation of indicators in a “tactile” form. Ex. 1002 ¶ 63. Dr. Musen’s testimony
`
`is unrebutted by contrary evidence. Moreover, Patent Owner’s unsupported
`
`argument that Amano ’837 “fails to connect the notification of a variety of states to
`
`a [derived or physiological parameter]” (Response at 15) lacks merit.
`
`16
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`Amano ’837 explains that “preceding embodiments [of the disclosed
`
`wristwatch] . . . designed to provide a variety of notices to the user by means of a
`
`message display” can be modified to instead provide a “sensation” or “vibration”
`
`(i.e. the indicators presented to the user are tactile). Petition at 54–55; Ex. 1002
`
`¶ 63; Ex. 1006 at 46:2–21. Contrary to Patent Owner’s contention, the notices in
`
`the “preceding embodiments” referenced by Amano ’837 include indicators of
`
`derived parameters (resting pulse rate) and physiological parameters (pulse
`
`waveform data). See Petition at 38–40; Ex. 1002 ¶ 45. Thus, Amano ’837 teaches
`
`that the disclosed wristwatch can be modified so that indicators of derived and
`
`physiological parameters presented to the user (as described in “preceding
`
`embodiments”) are tactile.
`
`C. Claim 23: The combination of Amano ’837 and Goodman teaches
`or suggests the comparison of indicators of a variety of
`parameters to baseline parameters of an individual
`
`The Petition and Dr. Musen’s testimony detail how the combination of
`
`Amano ’837 and Goodman teach every limitation of claim 23, including the
`
`comparison of a variety of indicators to baseline parameters. Ex. 1002 ¶ 67. Dr.
`
`Musen’s testimony is unrebutted by contrary evidence. Moreover, similar to
`
`Ground 1, Patent Owner’s arguments ignore one of the three comparisons
`
`identified as teaching this limitation and do not rebut Petitioner’s evidence more
`
`generally.
`
`17
`
`

`

`Case IPR2016-00545
`U.S. Patent No. 8,073,707
`First, like Ground 1, Patent Owner responds to only two of the three
`
`comparisons taught by Amano ’837 and Goodman, and thus apparently concedes
`
`that at least one renders claim 23 obvious: a visual comparison of certain target
`
`values for derived parameters before exercise (exercise amount, intensity, and
`
`pulse rate) to values for those parameters during exercise. Petition at 58; Ex. 1002
`
`¶ 67; Ex. 1006 at 20:17–35, 21:27–34.
`
`Second, Patent Owner’s response to Amano ’837’s comparison of an
`
`individual’s exercising pulse rate to a baseline, resting pulse rate ignores the claims
`
`and teachings of the ’707 patent as addressed in connection with Ground 1. See
`
`supra section V.B.2.
`
`Moreover, Patent Owner’s argument that Amano ’837 teaches the use of an
`
`individual’s resting pulse rate to calculate t