UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN ACTIVITY TRACKING
`DEVICES, SYSTEMS, AND
`COMPONENTS THEREOF
`
`‘
`
`ORDER N0. 31:
`
`MARIGVIANORDER
`
`I11“ N0- 337-TA-963
`
`(February 17, 2016)
`
`A Markman hearing was held in this Investigation on December 18, 2015. Counsel for
`
`the parties appeared at the hearing representing Complainants AliphCom d/b/a Jawbone and
`
`'
`
`BodyMedia, Inc. (collectively, “Complainants”); Respondents Fitbit, Inc., Flextronics
`
`International Ltd., and Flextronics Sales and Marketing (A-P) Ltd. (collectively, “Respondents”)
`
`and the Commission Investigative Staff (“Staff”). In advance of the hearing, Complainants and
`
`Respondents filed initial claim construction briefs on November 17, 2015.1 Staff filed a brief on
`
`November 20, 2015.2 Complainants and Respondents filed rebuttal briefs on December 4,
`
`2015.3 The parties submitted an updated joint claim construction chart on December 23, 2015.
`
`1Complainants’ and Respondents’ initial briefs are referenced herein as “CIB” and “R113,”
`respectively.
`2 Staff’s Brief is referenced herein as “SB.”
`
`‘'
`
`3 Complainants’ and Respondents’ rebuttal briefs are referenced herein as “CRB” and _“RRB,”
`respectively.
`
`Page i of ii
`
`FITBIT EXHIBIT 1021
`
`

`
`Table of Contents
`
`I.
`
`II.
`
`PROCEDURAL HISTORY ................................................................................................. .. 1
`
`LEGAL STANDARD ..........................................................................................................
`
`.. 1
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ................................................................. .. 4
`
`IV. U.S. PATENT NO. 8,793,522 ............................................................................................. .. 4
`A.
`Overview ........................................................................................................................ .. 4
`
`B.
`C.
`D.
`
`Prosecution History of the ’522 Patent .......................................................................... .. 5
`Asserted Claim ............................................................................................................... .. 6
`Claim Construction: “band” ........................................................................................... .. 8
`
`V. U.S. PATENT NO. 8,398,546 ........................................................................................... .. 13
`A.
`Overview ...................................................................................................................... .. 13
`
`B.
`C.
`
`D.
`
`Prosecution History of the ’546 Patent ........................................................................ .. 14
`Assened Claims ........................................................................................................... .. 16
`
`Claim Construction: “contextual data of the individual” .......................................
`
`17
`
`22
`VI. U.S. PATENT NO. 8,529,811
`A.
`Overview ...................................................................................................................... .. 22
`
`B.
`C.
`
`D.
`
`Prosecution History of the ’811 Patent ........................................................................ .. 23
`Asserted Claims ........................................................................................................... .. 24
`
`Claim Construction: “forming a molding”/“forming an outer molding” /“forming
`one or more inner moldings” .................................................................................... .. 26
`
`VII. CONCLUSION .............
`
`................................................................................................... .. 33
`
`ii
`
`Page ii of ii
`
`

`
`I.
`
`PROCEDURAL HISTORY
`
`On August 18, 2015, the Commission issued a Notice of Investigation in this matter upon
`
`a complaint alleging violations of section 337 the Tariff Act of 1930, as amended, by reason of
`
`infringement of certain claims of U.S. Patent No. 8,073,707 (“the ’707 patent”); U.S. Patent No.
`
`8,398,546 (“the ’546 patent”); U.S. Patent No. 8,446,275 (“the ’275 patent”); U.S. Patent No.
`
`8,529,811 (“the ’8l1 patent”); U.S. Patent No. 8,793,522 (“the ’522 patent”); and U.S. Patent
`
`No. 8,961,413 (“the ’413 patent”), and misappropriation of trade secrets. Notice of
`
`Investigation at 2; 80 Fed. Reg. 36,576-77 (2015). The Notice of Investigation named three
`
`respondents: Fitbit, Inc., Flextronics International Ltd., and Flextronics Sales and Marketing (A­
`
`P) Ltd. Id. Complainants assert claims 19, 23, and 24 of the ’707 patent; claims 1-18 and 20-28
`
`ofthe ’546 patent; claims 1, 2, 4, 5, 8-10, 13-15, 18, and 19 ofthe ’275 patent; claims 1, 5-7, 16,
`
`and 17 ofthe ’8ll patent; claim 2 ofthe ’522 patent; and claims 1-3, 5, 7-9, 11, and 12 ofthe
`
`’4l3 patent. Id. The parties identified and briefed terms fiom the ’522, ’546, and ’8ll patents
`
`for construction. 4
`
`II.
`
`LEGAL STANDARD
`
`»
`
`'
`
`“[T]he construction of claims is simply a way of elaborating the normally terse claim
`
`language[] in order to understand and explain, but not to change, the scope of the claims.”
`
`Embrex, Inc. v. Serv. Eng ’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (alterations in original)
`
`4 In many instances, the parties did not apprehend the claim construction positions taken by
`opposing parties until after the submission of initial briefs, and, in some instances, after the
`submission of rebuttal briefs. See, e.g., SB at 6, fn. 2; Markman Hrg. Tr. at 93:24-94:12. As a
`result many of the arguments presented in the briefs relate to issues that are either undisputed or,
`if disputed, would not affect claim construction. Moreover, as they began to apprehend the
`opposing positions, the parties made new arguments, which were presented for the first time in
`the Complainants’ and Respondents’ rebuttal briefs or at the Markman hearing. To the extent it
`is necessary and appropriate to do so, this order addresses these new arguments.
`
`l
`
`Page 1 of 34
`
`

`
`(quoting Scripps Clinic v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991). “[O]nly those
`
`1
`
`[claim] terms need be construed that are in controversy, and only to the extent necessary to
`
`resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inca, 200 F.3d 795, 803 (Fed.
`
`Cir. 1999).
`
`Claim construction focuses mainly on the intrinsic evidence, which consists of the claims
`
`themselves, the specification, and the prosecution history. See generally Phillips v. AWHCorp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en bane): The Federal Circuit in Phillips explained that, in
`
`construing terms, courts must analyze each of these components to determine the “ordinary and
`
`customary meaning of a claim term,” which is “the meaning that the term would have to a person
`
`of ordinary skill in the art in question at the time of the invention.” Id. at 1313.
`
`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
`
`to which the patentee is entitled the right to exclude.”’ Id. at 1312 (quoting Innova/Pure Water,
`
`Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). “Quite apart
`
`from the Writtendescription and the prosecution history, the claims themselves provide
`
`substantial guidance as to the meaning of particular claim terms.” Id. at 1314. For example, “the
`
`context in which a term is used in the asserted claim can be highly instructive,” and “[o]ther
`
`claims of the patent in question, both asserted and unasserted, can also be valuable sources of
`
`enlightenment as to the meaning of a claim term.” Id.
`
`“[T]he specification ‘is always highly relevant to the claim construction analysis.
`
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”’ Id. at
`
`1315 (quoting -Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “The
`
`longstanding difficulty is the contrasting nature of the axioms that (a) a claim must be read in
`
`view of the specification and (b) a court may not read a limitation into a claim from the
`
`2
`
`Page 2 of 34
`
`

`
`specification.” Innava/Pure Water, Inc., 381 F.3d at 1117. The Federal Circuit has explained
`
`that there are certain instances when the specification may limit the meaning of the claim
`
`language. For example, “the specification may reveal a special definition given to a claim term
`
`by the patentee that differs fi'om the meaning it would otherwise possess. In such cases, the
`
`inventor’s lexicography governs.” Phillips, 415 F.3d at 1316. The specification also “may
`
`reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id. In such
`
`cases, “the inventor has dictated the correct claim scope, and the inventor’s intention, as
`
`expressed in the specification, is regarded as dispositive.” Id.
`
`In addition to the claims and the specification, the prosecution history should be
`
`examined if in evidence. “The prosecution history . . . consists of the complete record of the
`
`proceedings before the PTO and includes the prior art cited during the examination of the patent.
`
`Like the specification, the prosecution history provides evidence of how the PTO and the
`
`inventor understood the patent.” Id. at 1317 (intemal citations omitted). “[T]he prosecution
`
`history can often inform the meaning of the claim language by demonstrating how the inventor
`
`understood the invention and whether the inventor limited the invention in the course of
`
`prosecution, making the claim scope narrower than it would otherwise be.” Id.
`
`\
`
`If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence
`
`may be considered. “[E]xt1insic evidence[] consists of all evidence external to the patent and
`
`prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.”
`
`Id. at 1317 (internal quotation marks and citations omitted). Extrinsic evidence is generally
`
`viewed “as less reliable than the patent and its prosecution history in determining how to read
`
`claim terms.” Id. at 1318. “The court may receive extrinsic evidence to educate itself about the
`
`invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a
`
`3
`
`Page 3 of 34
`
`

`
`claim construction that is clearly at odds with the construction mandated by the intrinsic
`
`evidence.” Elkay Mfg. C0. V.Ebco Mfg. C0., 192 ma 973, 977 (Fed. Cir. 1999).
`
`III.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`A
`
`The issue of the appropriate level of ordinary skill in the art was not fully addressed in
`
`the briefing or at the hearing. Complainants did not address the issue in their initial brief and, in
`
`their rebuttal brief, take the position that the issue does not need to be resolved at this juncture,
`
`because “any dispute regarding the appropriate level of ordinary skill in the art is immaterial for
`
`purposes of claim construction of the terms at issue.” CRB at 2. Although Respondents address
`
`the issue in their initial briefing, they do so in passing, acknowledging Complainants’ and
`
`Respondents’ competing positions, and note that they do not believe that the parties’ dispute
`
`regarding the level of ordinary skill is material to claim construction. RIB at 2-3. Staff—
`
`relying on Respondents’ articulation of Complainants’ position~indicates that it agrees ‘with
`
`Complainants’ position with respect to the ’522 and ’546 patents, but disagrees with
`
`Complainants’ position with respect to the ’811 patent. SB at 2. Staff does not provide its
`
`fonnulation of the appropriate level of ordinary skill in the art with respect to the ’8ll patent.
`
`Given that the level of ordinary skill in the art does not affect the construction of any disputed
`
`tenn, it is not addressed in this order.
`
`IV.
`
`U.S. PATENT NO. 8,793,522
`
`The ’522 patent, entitled “Power Management in a Data-Capable Strapband,” issued on
`
`July 29, 2014, naming as inventors Hosain Sadequr Rahman, Richard Lee Drysdale, Michael
`
`1
`
`Edward Smith Luna, Scott Fullam, Travis Austin Bogard, Jeremiah Robison, Max Everett Utter
`
`II, and Thomas Alan Donaldson. RIB, Ex. 4 (’522 patent).
`
`A. Overview
`
`The ’522 patent is directed to a power management method for a data-capable band. ’522
`
`4
`
`Page 4 of 34
`
`

`
`patent, col. 1:22-29. The band has sensors to gather information about the user, such as the
`
`user’s vital signs (e.g., heart rate, pulse), movement (e.g., direction, speed), surrounding
`
`environment (e.g., altitude), and location. Id. at 12:47-64. The gathered infonnation can be
`
`analyzed by the band’s processor to detenninc the user’s physical, emotional, and mental states.
`
`Id. at col 4:61-5:10. So that a user is able to “purchase a charged device . . . unencumbered by a
`
`requirement to charge the device when . . . the package is first opened,” the band is shipped from
`
`the manufacturer to the retailer with a charged battery. Id. at col. 8:38-61; 23:39-42.
`
`A “transitory power manager” is used to prevent the battery from being depleted while it
`
`is being shipped. Id. at col. 22:61-66. While the band is being shipped, the transitory power
`
`manager places the band in a power mode in which the band’s components are placed in
`
`hibernation and “little (i.e., negligible) or no current is drawn.” Id. at col. 22:43-49. After it
`
`detects a signal indicating that the user is using the band (e.g., an input button being activated,
`
`the band being connected to a power source, etc.), the transitory power manager switches the
`
`device to a second power mode, such as the operational mode. Id. at col. 23:23-28; 23:35-38;
`
`25:42-44. Once in the operational mode, the “components of a strapband can receive power in
`
`response to requests or implementations by a user.” Id. at col. 23:43-49; 25:53-55.
`
`B. Prosecution History of the ’522 Patents
`
`_
`
`Application No. 13/180,320 matured into the ’522 patent and was filed on July 11, 2011.
`
`The ’522 patent claims priority to Provisional Application Nos. 61/495,994, 61/495,995,
`
`61/495,997, and 61/495,996, all four of which were filed on June 11, 2011. The application
`
`contained 28 claims including application claim 5, which depended from independent application
`
`5A certified copy of the prosecution history of the ’522 patent was filed as Appendix E to the
`Complaint.
`
`5
`
`­
`Page 5 of 34
`
`

`
`claim 1 through intervening application claims 2 and 3. In the first and only office action, the
`
`examiner rejected application claims 1, 2, and 3 as being unpatentable over U.S. Patent No.
`
`5,795,301 to Yasukawa et al. (“Yasukawa”) in view of U.S. Patent N0. 7,260,732 to Bittner
`
`(“Bittner”).
`
`’522 Patent Office Action (Sep. 12, 2013) at 2-5. The examiner objected to
`
`application claim 5, but indicated that it would be allowable if amended and rewritten into
`
`independent form. Id. at 8. Application claim 5 was amended and rewritten into independent
`
`form to include the limitations of application claims 1, 2, and 3 and issued as independent claim
`
`2, the sole claim asserted fiom the ’522 patent.
`
`’522 Patent File History, Amendment (Mar. 13,
`
`2014) at 3, sf‘
`
`C. Asserted Claim
`
`.
`
`Complainants assert independent claim 2 against Respondents. Complaint, 1[6.
`
`Independent claim 2 reads:
`
`2. A band comprising:
`
`.a subset of sensors;
`
`"
`
`a controller coupled to the subset of sensors;
`
`an energy storage device;
`
`6Although the examiner also indicated that application claim 4 would be allowable if rewritten
`into independent form to incorporate the limitations of the claims from which it depended, in the
`same office action, the examiner expressly found that the claim was obvious in light of the cited
`prior art. ’522 Patent File History, Office Action (Sep. 12, 2013) at 4-5, 8. Like application
`claim 5, application claim 4 depended from independent application claim 1 through intervening
`application claims 2 and 3. As discussed above, the examiner rejected application claims 1, 2,
`and 3 as being unpatentable over Yasukawa in view of Bittner. Id. at 4-5. The examiner also
`found that the sole limitation of application claim 4 was disclosed in Yasukawa. Id. at 4-5. The
`applicants did not contest the examiner’s findings that the limitations of application claims 1, 2,
`3, and 4 were disclosed in the cited prior art, but amended application claim 4 into independent
`form. ’522 Patent File History, Amendment (Feb. 13, 2014) at 3, 8. As amended, application
`claim 4 was allowed and issued as independent claim 1. ’522 File History, Notice of
`Allowability (Mar. 24, 2014) at 1.
`
`6
`
`Page 6 of 34
`
`

`
`a connector configured to receive power and control signals, the
`connector coupled to the energy storage device;
`
`a power manager compnsmg:
`
`a transitory power manager configured to manage power oonsmnption
`of the band during a first power mode in which no power is applied
`to the subset of sensors; and
`
`a power clock controller configured to modify a clock rate of a clock
`signal for application to the controller as a function of a mode of
`operationof the band
`
`wherein the transitory power manager is configured further to manage
`the power consumption of the band during a second power mode in
`which power is applied to the subset of sensors, the second power
`mode being subsequent to the first power mode,
`
`wherein the transitory power manager is configured to detect an
`application of power to the connector, and, responsive to the l
`application of power, the transitory power manager switches the band
`fi'om the first power mode to the second power mode;
`
`wherein the first power mode and the second power mode coincide
`with a first interval of time and a second interval of time, respectively;
`and
`,
`
`wherein the first interval of time comprises,an amount of time during
`which the band is shipped from a first geographic location to a
`second geographic location with the subset of sensors in an inoperable
`state and the second interval of time comprises another amount of
`time during which the subset of sensors in an operable state.
`
`522 patent col. 30:41-31 :7 (disputed tenn in bold).
`
`7
`
`Page 7 of 34
`
`

`
`i D. Claim Construction: “band”
`
`,
`
`I
`
`J
`. :
`“band”
`
`'
`
`t~~iQ.I1,§L.i¢.: 512
`data-capable device
`plain and ordinary
`that may be worn as a meaning
`strap or band around
`an arm, leg, ankle, or
`other bodily
`appendage or feature
`
`i
`
`i
`
`'
`
`J '­
`
`- _
`
`no construction
`necessary; plain and
`ordinary meaning. If
`construed: a
`substantially flat
`encircling strip
`
`The term “band” appears in the preamble and body of claim 2 of the ’522 patent.
`
`Complainants argue that thespecification expressly defines “band” to mean a “data-capable
`
`device that may be wom as a strap or band around an ann, leg, ankle, or other bodily appendage
`
`or feature.” CIB at 8. Respondents and Staff dispute Complainants’ contention that the
`
`specification defines “band” and argue that “band” should be given its plain and ordinary
`
`meaning and that no construction is necessary. SB at 7-9; RIB at 10-11. In the alternative, Staff
`
`argues that if a construction of the tenn’s plain and ordinary meaning is needed, the term should
`
`be construed to mean “a substantially flat encircling strip.” SB at 9.
`
`‘
`
`’
`
`\
`
`No party disputes that the claimed “band” is a data-capable device, although the parties
`
`arrive at their conclusions differently. Complainants rely upon Whatthey contend to be the
`
`applicants’ express definition of the tenn in the specification, whereas Respondents and Staff
`
`rely upon claim language requiring the claimed “band” to have sensors and a controller. CIB at
`
`8; SB at 9; Markman Hrg. Tr. at 25:2-20. Thus, the parties’ sole dispute is whether the
`
`applicants acted as their own lexicographers and limited the claimed “band” toionly those data­
`
`capable bands “that may be worn as a strap or band around an ann, leg, ankle, orother bodily
`
`appendage or feature.” For the reasonsset forth below, I find that the applicants did not so limit
`
`the term “band” and that “band” should be accordedits plain and ordinary meaning, which does '
`
`not require a construction.
`
`8
`
`\WI"Ԥ
`
`mi?
`_fl’“‘:sat..
`
`n=‘r3
`
`­
`Page 8 of 34
`
`

`
`1. The claim language does not limit “band” to only bandsthat may be
`worn as a strap or band around a bodily appendage or feature.
`
`Claim 2’s preamble recites “A band comprising” and the body sets forth the required
`
`elements of the “band”: a subset of sensors, a controller, an energy storage device, a connector,
`
`and a power manager.
`
`’522 patent, col. 30:41-31 :7. The claim lists a number of elements of the
`
`claimed power manager and, in so doing, makes reference to “the band”: “a transitory power
`
`manager configured to manage power consumption of the bandgf’“a mode of operation of the
`
`band; "the power consumption of the band;” “the transitory power manager switches the band
`
`fromthe first power mode to the second power mode;” and “the first interval of time comprises
`
`an amount of time during which the band is shipped fi'om a first geographic location to a second
`
`geographic location.” Id. at col. 30:48-31:3 (emphasis added). As acknowledged by
`
`Respondents and Staff, by requiring that the band have sensors and a controller, the claim
`
`language requires a band that is a data-capable device. SB at 9; Markman Hrg. Tr. at 25:2-20.
`
`The claim language, however, does not require the claimed device to be anything other than a
`
`“band” with the listed claim elements. Complainants do not contend otherwise, but instead argue
`
`that the specification provides an express definition of “band.” CIB at 8-9.
`
`2. The specification does not define “band” with the requisite clarity,
`deliberateness, and precision.
`
`Although claim terms are generally “construed consistently with their ordinary and
`
`customary meanings, as determined by those of ordinary skill in the art,” patentees can act as
`
`their own lexicographers and give a claim term a special definition that is different from the plain
`
`and ordinary meaning. Merck & C0., Inc. v. Teva Pharmaceuticals USA,Inc., 395'F.3d 1364,
`
`1370 (Fed. Cir. 2005); see also Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
`
`Cir. 2014). If a patentee elects to act as his or her own lexicographer, the patentee’s definition
`
`governs. Phillips, 415 F.3d at 1316. Complainants argue that the ’522 patent expressly defines
`
`9
`
`.
`
`Page 9 of 34
`
`

`
`“band” in the following sentence: “Although used interchangeably, ‘strapband’ and ‘band’ may
`
`be used to refer to the same or substantially similar data-capable device that may be Wornas a
`
`strap or band around an arm, leg, ankle, or other bodily appendage or feature.” ’522 patent, col.
`
`4:17-21.
`
`The standards for lexicography are “exacting” and require a patentee to “clearly” indicate
`
`that the term has been assigned a special meaning. Hill-Rom, 755 F.3d at 1371. In order to
`
`determine whether a patentee has acted as his or her own lexicographer, the entire specification,
`
`not just the statement constituting the alleged definition, must be examined. Abbott Labs. v.
`
`Synlron Bioresearch, Ina, 334 F.3d 1343, 1355 (Fed. Cir. 2003) (“We hold that the passage cited
`
`by Syntron, taken in context, does not provide reasonable clarity, deliberateness, and precision
`
`sufficient to narrow the definition of the claim tenn in the manner urged.” (emphasis added)).
`
`The sentence in question occurs in a discussion of Figure 1, which depicts an “exemplary data­
`
`capable strapband system” with “strapbands (hereafter ‘bands’) 104-112.” ’522 patent, col.
`
`4: 13-24. While the specification states that ‘“band’ may be used to refer to the same or
`
`substantially similar data-capable device that may be Womas a strap or band around an ann, leg,
`
`ankle, or other bodily appendage or feature,” it also states that “bands” are not limited to such
`
`devices, “but may be used differently.” Id. at col. 4:17-24. For instance, instead of being Wom
`
`around a bodily appendage, the bands can be “affixed to clothing, or otherwise disposed at a
`
`relatively predetermined distance fiom a user’s person.” Id. at col. 4:28-31. Accordingly, when
`
`examined in context, the sentence that Complainants rely upon is not a definition, but one
`
`example of a possible implementation. See also id. at col. 4:25-28 (“As described above, bands
`
`104-112 may be implemented as wearable personal data or data capture devices (e.g., data­
`
`10
`
`Page 10 of 34
`
`

`
`capable devices) that are womiby a user around a wrist, ankle, arm, ear, or other appendage.”
`
`(emphasis added)).
`
`_ l
`
`The Federal Circuit’s holding in Abbott Laboratories is particularly instructive. In
`
`Abbott Laboratories, the accused infringer argued that the patent at issue defined the term
`
`“analyte” to require quantitative analysis by stating that “‘analyte’ refers to any chemical moiety
`
`which is to be measured quantitatively.” 334 F.3d. at 1354-55 (internal citations and quotation
`
`marks omitted). The sentence relied upon by the accused infiinger, however, was the last
`
`sentence of a four-sentence paragaph, the first sentence of which set forth a broader definition of
`
`“analyte” not requiring quantitative analysis: “As used herein, ‘analyte’ refers not only to the
`
`particular chemical moiety for which analysis is desired, but also to chemical moieties that are
`
`reaction products of the moiety to be determined with another chemical moiety.” Id. (internal
`
`citations and quotation marks omitted). By presenting competing definitions for the same term,
`
`the patent failed to define “analyte” with “reasonable clarity, deliberateness, and precision.” Ia’.
`
`In the absence of a clear definition set forth in the specification, the Federal Circuit held that
`
`“analyte” should be given its ordinary meaning.
`
`Ia’. at 1355.
`
`_
`
`The ’522 patent similarly fails to provide a definition of “band”~withthe requisite
`
`“clarity, deliberateness, and precision.” After stating that “band” may be used to refer to bands
`
`that may be Wornaround a bodily appendage and feature, the specification immediately states
`
`that bands may be used differently, including by being affixed to clothing. ’522 patent, col.
`
`4: 17-31. Moreover, Complainants’ argument that the ’522 patent’s specification provides a
`
`special definition for the tenn “band” is weaker than the argument rejected in Abbott
`
`Laboratories. First, the statement at issue in Abbott Laboratories stated without qualificatic/>n
`
`that the term “analyte” “refers to any chemical moiety which is to be measured quantitatively.”
`
`1 l
`
`Page 11 of 34
`
`

`
`334 F.3d at 1355 (emphasis added). In contrast, the statement at issue in this investigation states
`
`only that “band” “may be used to refer to the same or substantially similar data-capable device
`
`that may be worn as a strap or band around an arm, leg, ankle, or other bodily appendage or
`
`feature.” ’522 patent, col. 4: 17-21 (emphasis added). Second, the statement in Abbott
`
`Laboratories occurred in the “Summary of the Invention” section of the patent, whereas the
`
`sentence that Complainants rely upon in this investigation occurs in a discussion of an
`
`embodiment. Thus, while it was clear that the statement in Abbott Laboratories was intended to
`
`apply to the invention as a whole, it is not clear that the sentence relied upon by Complainants is
`
`so intended. See, e.g., Shell Global Solutions (US) Inc. v. RMS Eng ’g., 782 F.Supp. 2d 317, 338­
`
`40 (S.D. Tex. 2011) (finding that statement did not limit the scope of the claim term, because the
`
`statement described a preferred embodiment, not the invention).
`
`.,
`
`For the foregoing reasons, I find that the patentees did not define the term “band” with
`
`the clarity, deliberateness, and precision needed. Accordingly, “band” should be given its plain
`
`and ordinary meaning. Abbott Laboratories, 334 F.3d at 1354-55.
`
`3. The plain and ordinary meaning of “band” does not require a
`construction.
`
`No party contends that the plain and ordinary meaning of “band” requires a construction.
`
`Although Staff proposes a construction for “band,” it docs so only “[i]n the event the
`
`[Administrative Law Judge] determines that a construction of ‘band’ is necessary.” SB at 9.
`
`Otherwise, Staff s position is that the term “requires no construction because it is used with its
`
`plain and ordinary meaning.” Id. at 2-3. Respondents also take the position that the plain and
`
`ordinary meaning of “band” does not need a construction. RIB at 10-11. While Complainants
`
`propose a construction for the claim tenn “band,” the proposed construction uses the term
`
`“band”: “data-capable device that may be worn as a strap or band around an arm, leg, ankle, or
`
`12
`
`Page 12 of 34
`
`

`
`other bodily appendage or feature.” CIB at 7 (emphasis added). Presumably, “band,” as used in
`
`Complainants’ proposed construction, is being used in accordance with its plain and ordinary
`
`meaning. By incorporating the term “band” in their proposed construction, Complainants tacitly
`
`acknowledge that the plain and ordinary meaning of “band” does not require a construction.
`
`Accordingly, because only claim terms in controversy need to be construed, in the
`
`absence of any dispute as to the plain and ordinary meaning of “band,” I find that no construction
`
`of the term is necessary. VividTechs., 200 F.3d at 803; see also O2 Micro Int ’lLtd. v. Beyond
`
`Innovation Tech. C0., 521 F.3d 1351, 1362 (Fed.Cir.2008) (“[C]ourts are not (and should not be)
`
`required to construe every limitation present in a patent’s asserted clairns.”) (emphasis in
`
`original); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.l997)
`
`(“Claim
`
`construction is a matter of resolution of disputed meanings and teclmical scope, to clarify and
`
`when necessary to explain what thepatentee covered by the claims.”) (emphasis added).
`
`V.
`
`U.S. PATENT NO. 8,398,546
`
`The ’546 patent, entitled “System for Monitoring and Managing Body Weight and Other
`
`Physiological Conditions Including Iterative and Personalized Planning, Intervention and
`
`Reporting Capability)!’issued on March 19, 2013, naming as inventors Christopher Pacione,
`
`Steve Menke, Eric Teller, Scott Safier, Raymond Pelletier, Mark Handel, Johnathan Farringdon,
`
`Eric Hsiung, Suresh Vishnubhatia, James Hanlon, Iohn M. Stivoric, Neal Spruce, and Steve
`
`Shassberger. RIB, Ex. 5 (’546ipatent).
`
`A. Overview
`
`The ’546 patent is directed to a monitoring and management system for helping
`
`individuals achieve weight loss goals. ’546 patent, col. 4:15-21. An individual should
`
`experience Weightloss by consuming fewer calories than the number of calories bumed. Id. at
`
`col. 4:1-3. While conventional systems offered a number of ways to count consumed calories, in
`
`l3
`
`Page 13 of 34
`
`

`
`order to determine calories burned, they relied on users to manually enter their physical
`
`activities. Id. at col. 4:3-11. In contrast to the conventional systems, the system disclosed in the
`
`’546 patent calculates the user’s caloric expenditure by automatically tracking data relating to the
`
`user’s “physiological and contextual parameters.” Id. at col. 4:33-55; 9:41-10:18. Physiological
`
`parameters include such parameters as the user’s heart rate, pulse rate, respiration rate, skin
`
`temperature, core body temperature, and blood pressure, while contextual parameters relate to
`
`the user’s activity state, environment, surroundings, and location. Id. at col. 10:5-9; 10:22-30. In
`
`order to assist the user in attaining his or her weight-loss goal, the system can suggest various
`
`activities and use the tracked data to detcnnine whether the user complied with the suggestions.
`
`Id. at col. 35:50-55; 36:1-21. The system can make a follow-up suggestion based on its
`
`determination of whether the user complied with the first suggestion. Id.
`
`.
`
`B. Prosecution History of the ’546 Patent7
`
`Application No. 10/940,214, which matured into the ’546 patent, was filed on September
`
`13, 2004 as a continuation in part to Application No. 10/638,588 filed on August 11, 2003.
`
`Application No. 10/638,588 was filed as a continuation of Application No. 09/602,537, which in
`
`tum was filed on June 23, 2000 as a continuation in part to Application No. 09/595,660 filed on
`
`June 16, 2000. The ’546 patent also claims priority to Provisional Application Nos. 60/502,764
`
`and 60/555,280 filed on September 13, 2003 and March 22, 2004, respectively.
`
`Although the original application that matured into the ’546 patent contained 278 claims,
`
`in response to an election requirement, the applicants withdrew all of the claims other than
`
`application claims 89, 119-122, 151-155, and 179-192. ’546 Patent File History, Response (Jul.
`
`7A certified copy of the prosecution history of the ’546 patent was filed as Appendix K to the
`Complaint.
`
`14
`
`Page 14 of 34
`
`

`
`31, 2006) at 46. This subset of claims consisted of one independent claim (application claim 89)
`
`from which the remaining claims depended. Through a series of amendments, application claim
`
`89 was cancelled and replaced with application claim 279, Whichin tum was cancelled and
`
`replaced with applic