Petitioner’s Trial Demonstratives
`IPR2016-00675, -00676 and -00677
`U.S. Patent Nos. 8,941,723, 8,905,855 and 8,944,928
`
`
`IPR2016-00675, -00676 and -00677
`U.S. Patent Nos. 8,941,723, 8,905,855 and 8,944,928
`
`
`
`Roadmap
` Technology of the Challenged Patents
`
` Description of Prior Art
`
` Claim Construction
`
` Why the Disputed Claim Limitations are Unpatentable
`
`2
`
`
`
`Roadmap
` Technology of the Challenged Patents
`
` Description of Prior Art
`
` Claim Construction
`
` Why the Disputed Claim Limitations are Unpatentable
`
`3
`
`
`
`The Challenged Patents
` U.S. Pat. Nos. 8,941,723, 8,905,855, and 9,944,928
`
`IPR2016-00675 (“675”) Petition at 4-8; IPR2016-00676 (“676) Petition at 4-8; IPR2016-
`00677 (“677”) Petition at 4-7.
`
`4
`
`
`
`Challenged Patents’ CIP Family
`
`AUG 26, 2010
`
`AUG 26, 2011
`
`PRIORITY
`
`FILED
`
`OCT 6, 2011
`
`NOV 16, 2011
`
`CIP
`
`FILED
`
`NOV 16, 2012
`
`PRIORITY
`
`FILED
`
`’723
`PATENT
`
`’855
`PATENT
`
`’928
`PATENT
`
`675 Petition at 8; 676 Petition at 8; 677 Petition at 7.
`
`5
`
`
`
`Technology of the Challenged Patents
`
`Collect
`Sensor Data
`
`Analyze and
`Display Data
`
`Motion Capture
`Element
`
`User
`
`Mobile
`Device
`
`675 Petition at 4-8; 676 Petition at 4-8; 677 Petition at 4-7.
`
`6
`
`
`
`Motion Capture Element
`
`“sensor
`”
`
`’723 patent, FIG. 8
`
`675 Petition at 4-8; 676 Petition at 4-8; 677 Petition at 4-7.
`
`“microcontroller”
`(including memory – not shown)
`“radio
`”
`
`’723 patent, FIG. 38
`
`7
`
`
`
`Challenged Claims
`
`’723 patent, claim 1:
`
`675 Petition at 4-7.
`
`8
`
`
`
`Roadmap
` Technology of the Challenged Patents
`
` Description of Prior Art
`
` Claim Construction
`
` Why the Disputed Claim Limitations are Unpatentable
`
`9
`
`
`
`Mahajan
` U.S. Pat. Pub. No. 2006/0025229
` Filed May 19, 2005
` Pub. Feb. 2, 2006
`
`675 Petition at 9-14; 676 Petition at 9-13; 677 Petition at 9-14.
`
`10
`
`
`
`Mahajan
`
`675 Petition at 9-14; 676 Petition at 9-13; 677 Petition at 9-14.
`
`11
`
`
`
`Grounds for Institution
`
`’723 Patent:
`
`Claims
`1, 7, 21, 22, 32
`13, 14, 19, 20
`
`Basis
`§ 103(a)
`§ 103(a)
`
`References
`Mahajan, Otto, Lee
`Mahajan, Otto, Edis
`
`’855 Patent:
`
`Basis
`Claims
`1, 5, 8, 9, 12, 13, 15 § 103(a)
`6
`§ 103(a)
`7 and 14
`§ 103(a)
`
`References
`Mahajan
`Mahajan, Oleson, Gobush
`Mahajan, Dugan
`
`’928 Patent:
`
`Claims
`1, 4, 7, 8
`2
`
`Basis
`§ 103(a)
`§ 103(a)
`
`References
`Mahajan
`Mahajan, Dugan
`
`675 Inst. Dec. at 26; 676 Inst. Dec. at 28; 677 Inst. Dec. at 17-18.
`
`12
`
`
`
`Roadmap
` Technology of the Challenged Patents
`
` Description of Prior Art
`
` Claim Construction
`
` Why the Disputed Claim Limitations are Unpatentable
`
`13
`
`
`
`Claim Construction: “a microcontroller coupled with
`said memory”
` Patent Owner contends that the BRC requires “a memory that is
`separate and distinct from the microcontroller”
`
` According to Patent Owner, “a memory that is integral to a
`microcontroller would be considered part of the microcontroller
`itself, rather than coupled to it”
`
` Patent Owner’s construction is inconsistent with the claim
`language and specifications
`
`675 POR at 6-7; 676 POR at 5-7; 677 POR at 5-6.
`
`14
`
`
`
`The Term “couple” Used Repeatedly and Must Be
`Interpreted Consistently
`
`’723 patent, claim 1
`
`675 Reply at 1-2; 676 Reply at 1-2; 677 Reply at 1-2.
`
`15
`
`
`
`The Term “couple” Describes a Wireless Communication
`Interface Integral to a Computer
`
`’723 patent, FIG. 1A
`
`’723 patent, 10:37-43
`
`675 Reply at 2-4; 676 Reply at 2-4; 677 Reply at 2-4.
`
`16
`
`
`
`The Term “couple” Describes a Motion Capture Element
`Integral to a Piece of Equipment
`
`’723 patent, FIG. 12
`
`’723 patent, 17:55-57
`
`675 Reply at 4-5; 676 Reply at 4-5; 677 Reply at 4-5.
`
`17
`
`
`
`Patent Owner’s Extrinsic Evidence Does Not Compel Its
`Narrow Construction
`
`Webster’s New College Dictionary, p. 3
`
`675 POR at 7, Reply at 5-6; 676 POR at 7, Reply at 5-6; 677 POR at 6, Reply at 5-7.
`
`18
`
`
`
`Proper Construction of “a microcontroller coupled with
`said memory”
` The term is properly understood without construction
`
` If the Board determines construction is necessary, the “couple”
`must be construed consistently: the BRC is “a microcontroller
`joined with said memory”
`
`675 Reply at 5-6; 676 Reply at 5-6; 677 Reply at 5-6.
`
`19
`
`
`
`Roadmap
` Technology of the Challenged Patents
`
` Description of Prior Art
`
` Claim Construction
`
` Why the Disputed Claim Limitations are Unpatentable
`
`20
`
`
`
`Memory
`
`’723 patent, claim 1
`
`675 Petition at 21-22; 676 Petition at 20-21; 677 Petition at 16-17.
`
`21
`
`
`
`Mahajan Discloses the Claimed Memory
`
`Mahajan, ¶ 42
`
`Mahajan, ¶ 127
`
`675 Petition at 21-22; 676 Petition at 20-21; 677 Petition at 16-17.
`
`22
`
`
`
`The Board Correctly Acknowledged that Mahajan
`Discloses the Claimed Memory
`
`675 Inst. Dec. at 10-11; 676 Inst. Dec. at 11-12; 677 Inst. Dec. at 10-11.
`
`23
`
`
`
`Patent Owner Inappropriately Attempts to Limit
`Mahajan’s Disclosure of a Motion Capture Element
`
`675 POR, p. 10:
`
`675 POR, p. 29:
`
`675 POR at 10, 29; 676 POR at 10, 29; 677 POR at 9, 26-27.
`
`24
`
`
`
`Sensor Device 110 Is Used in the Second Embodiment
`
`Mahajan, ¶ 127
`
`Mahajan, FIG. 4
`
`675 Reply at 6-7; 676 Reply at 6-7; 677 Reply at 6-7.
`
`25
`
`
`
`Mahajan Discloses its Sensor Device 110 Used in the
`Third Embodiment
`
`Mahajan, FIG. 2:
`
`Mahajan, ¶ 38:
`
`Mahajan, ¶ 75:
`
`675 Reply at 6-7; 676 Reply at 6-7; 677 Reply at 6-7.
`
`26
`
`
`
`Mahajan Expressly Discloses the Claimed Memory
` Patent Owner argues that Mahajan does not expressly disclose
`the claimed memory
`
`Mahajan, ¶ 42:
`
`Mahajan, ¶ 127:
`
`675 Reply at 7; 676 Reply at 7; 677 Reply at 7.
`
`27
`
`
`
`Patent Owner’s Expert Confirms that Mahajan
`Inherently Discloses Memory
`
`Jafari Decl., ¶ 33:
`
`Jafari Depo. Tr., 66:6-10:
`
`675 Reply at 7-8; 676 Reply at 7-8; 677 Reply at 8-9.
`
`28
`
`
`
`Patent Owner’s Expert Confirms that Mahajan
`Inherently Discloses Memory
`
`Mahajan, ¶ 37:
`
`Jafari Depo. Tr., 57:14-16:
`
`Jafari Depo. Tr., 9:18-23:
`
`675 Reply at 8-10; 676 Reply at 8-9; 677 Reply at 9-10.
`
`29
`
`
`
`A Microcontroller Coupled with a Memory Would Have
`Been Obvious in View of Lee
`
`Lee, Abstract
`
`Lee, 2:51-53
`
`675 Petition at 22; 676 Petition at 21; 677 Petition at 17.
`
`30
`
`
`
`A Microcontroller Coupled with a Memory Would Have
`Been Obvious in View of Lee
`
`Jafari Depo. Tr., 37:1-21
`
`675 Reply at 10-11; 676 Reply at 10; 677 Reply at 11.
`
`31
`
`
`
`Patent Owner Inaccurately Argues that Mahajan Only
`Discloses a One-Way Communication System
`
`Mahajan, ¶ 85:
`
`Mahajan, ¶ 126:
`
`675 Reply at 11; 676 Reply at 10-11; 677 Reply at 11-12.
`
`32
`
`
`
`Patent Owner’s “design principles” Argument Fails
`
` Microcontroller
` Flash memory
` SD cards
` USB connection
` JTAG interface
` Sensors
`
`Jafari Depo. Tr., 34:4-7
`
`Jafari Depo. Tr., 36:1-4
`
`675 Reply at 12; 676 Reply at 11-12; 677 Reply at 12.
`
`33
`
`
`
`Remote Database
`
`’855 patent, claim 5
`
`’723 patent, claim 1
`
`675 Petition at 27; 676 Petition at 32.
`
`34
`
`
`
`Mahajan Discloses the Remote Database
`
`Mahajan, ¶ 57:
`
`675 Petition at 27; 676 Petition at 32.
`
`35
`
`
`
`The Board Agreed that Mahajan Discloses the Remote
`Database
`
`675 Inst. Dec., p. 12:
`
`675 Inst. Dec. at 12.
`
`36
`
`
`
`Mahajan Discloses a Database as an Available Storage
`Medium
`
`Mahajan, ¶ 116:
`
`Mahajan, ¶ 127:
`
`675 Reply at 14; 676 Reply at 14.
`
`37
`
`
`
`Patent Owner’s Argument Ignores Mahajan’s
`Disclosures
` Patent Owner argues “Mahajan’s disclosure of a remote server
`does not satisfy the claim requirement for a remote database”
`because “it does not follow that disclosure of a server necessarily
`teaches or suggests the claimed database”
`
` Patent Owner ignores Mahajan’s disclosure of storage at “an
`available storage medium,” such as a remote server and/or
`database
`
` Patent Owner’s expert: “a person of ordinary skill in the art would
`understand that [] a remote database may be located on a remote
`server” (Ex. 2001 at ¶ 59)
`
`675 POR at 45, 48; 676 POR 43, 47.
`
`38
`
`
`
`Mobile Device Camera – ’723 Patent
`
`’723 patent, claims 13 and 14
`
`675 Petition at 53-57.
`
`39
`
`
`
`Mahajan Contemplates a Mobile Device Camera
`
`Mahajan, ¶ 73:
`
`Mahajan, ¶ 38:
`
`Mahajan, ¶ 131:
`
`675 Petition at 53-57.
`
`40
`
`
`
`Edis Contemplates a Mobile Device Camera
`
`Edis, ¶ 76
`
`Edis, ¶ 86
`
`675 Petition at 53-57.
`
`41
`
`
`
`Patent Owner’s Arguments Fail
` Patent Owner argues that the cameras disclosed in Mahajan and
`Edis are not a part of a mobile device
`
` The disclosures described in previous slides show that the
`combination of Mahajan and Edis discloses a mobile device
`camera
`
`675 POR at 49-50.
`
`42
`
`
`
`Orientation – ’723 Patent
`
`’723 patent, claim 19
`
`675 Petition at 57-58.
`
`43
`
`
`
`Orientation was Obvious in View of the Combination of
`Mahajan and Edis
` As explained previous, the combination discloses the claimed
`mobile device camera
` Additionally, Edis discloses positioning the camera to capture
`sports motion data
`
`Edis, ¶ 80:
`
`675 Petition at 57-58; 675 Reply at 16-17.
`
`44
`
`
`
`Assigned Locations – ’723 Patent
`
`’723 patent, claim 1:
`
`675 Petition at 28-30.
`
`45
`
`
`
`Mahajan Discloses Motion Capture Elements that can
`be Positioned on a User
`
`Mahajan, ¶ 127
`
`Mahajan, ¶ 129
`
`Mahajan, FIG. 4
`
`675 Petition at 28-30; 675 Reply at 12.
`
`46
`
`
`
`Otto Identifies the Location of Sensors on User
`
`Otto, p. 16:
`
`675 Petition at 28-30; 675 Reply at 12-13.
`
`47
`
`
`
`Patent Owner’s Argument Fails
` Patent Owner concedes that Mahajan itself discloses the
`“assigned locations” limitations
`• 675 POR at 38: Mahajan has its “own method of determining the
`location of sensors on a user or piece of equipment”
`
` Patent Owner’s argument that the Mahajan cannot be combined
`with Otto because Mahajan only describes a one-way
`communication system is incorrect
`• Mahajan ¶¶ 85, 126
`
` The motivation to combine Otto with Mahajan is to incorporate
`Otto’s “easy to follow instruction” in Mahajan’s system
`
`675 POR at 37-39; 675 Reply at 13.
`
`48
`
`
`
`Display Information Based on Current and Previous
`Swings – ’855 and ’928 Patents
`
`’855 patent, claim 1:
`
`676 Petition at 29-32; 677 Petition at 26-28.
`
`49
`
`
`
`Mahajan Discloses Displaying the Claimed Information
`
`Mahajan, ¶ 57
`
`Mahajan, ¶ 125
`
`Mahajan, ¶ 66
`
`676 Petition at 29-32, Reply at 12-14; 677 Petition at 26-28, 677 Reply at 13-15.
`
`50
`
`
`
`The Board Agreed with Petitioner
`
`676 Inst. Dec., p. 14:
`
`676 Inst. Dec. at 14; 677 Inst. Dec. at 13.
`
`51
`
`
`
`Patent Owner’s Argument Fails
` Patent Owner argues that Mahajan’s Catcher and Host are distinct
`and neither performs the functions of the claimed mobile device
`
` Patent Owner concedes that the Catcher receives sensor data
`wirelessly, but argues that it does not display the claimed
`information
`
` Patent Owner does not dispute that the Host displays the claimed
`information, but argues that it does not receive sensor data
`wirelessly
`
`676 POR at 39-40; 677 POR at 37-39.
`
`52
`
`
`
`Mahajan’s Catcher and Host are Physically Linked and
`Operate as a Single Unit
`
`Mahajan, ¶ 89
`
`Mahajan, ¶ 84
`
`676 Reply at 13; 677 Reply at 13-14.
`
`53
`
`
`
`Mahajan’s Host Includes Wireless Devices
`
`Mahajan, ¶ 33
`
`Mahajan, ¶ 75
`
`676 Reply at 13-14; 677 Reply at 14-15.
`
`54
`
`
`
`Transmission to a Display – ’855 and ’928 Patents
`
`’855 patent, claims 12 and 13:
`
`676 Petition at 35-37; 677 Petition at 29-30.
`
`55
`
`
`
`Mahajan’s Mobile Device Analyzes Sensor Data at a
`Computer and Transmits Data to a Display
`
`Mahajan, ¶ 38
`
`Mahajan, ¶ 77
`
`676 Petition at 35-37; 677 Petition at 29-30.
`
`56
`
`
`
`Patent Owner’s Argument Fails
` Patent Owner mistakenly reads the claim limitation to require the
`mobile device to transmit to an external display
`
` The claim requires transmission from a computer internal to a
`mobile device to a display, which includes the display of the
`mobile device
`
`’855 patent, claims 12 and 13
`
`676 POR at 47-49; 677 POR at 39-41.
`
`57
`
`
`
`Information Related to User that Data Mines a
`Database – ’855 Patent
`
`’855 patent, claim 6:
`
`676 Petition at 50-53.
`
`58
`
`
`
`Mahajan Discloses Storing User Data in a Database
`
`Mahajan, ¶ 57
`
`Mahajan, ¶ 127
`
`Mahajan, ¶ 116
`
`676 Petition at 50-53.
`
`59
`
`
`
`Oleson Discloses Storing a User’s Personal Data
`
`Mahajan, ¶ 252:
`
`676 Petition at 50-53.
`
`60
`
`
`
`The Board Agreed with Petitioner
`
`’676 Inst. Dec., p. 23:
`
`676 Inst. Dec. at 23.
`
`61
`
`
`
`Patent Owner’s Argument Fails
` Patent Owner argues that “data mining” refers to “the process of
`collecting, searching through and analyzing a large amount of data
`in a database, as to discover patterns or relationships”
`
` Patent Owner: “Nothing in Oleson describes how the personal
`data in stored data fields may be used to generate patterns or
`understand relationships between the individual metrics
`displayed.”
`
` Patent Owner improperly imports limitations into the claims
`
`676 POR at 49-51.
`
`62
`
`
`
`Nevertheless, the Prior Art Meets Patent Owner’s
`Narrow Construction
`
`Mahajan, ¶ 59
`
`Mahajan, ¶ 116
`
`676 Reply at 19.
`
`63
`
`
`
`Text or Email – ’855 Patent
`
`’855 patent, claim 14:
`
`676 Petition at 57-58.
`
`64
`
`
`
`The Combination of Mahajan and Dugan Discloses the
`Claimed Text or Email Transmission
`
`Mahajan, ¶ 64:
`
`Dugan, ¶ 33:
`
`676 Petition at 57-58.
`
`65
`
`
`
`The Board Agreed with Petitioner
`
`676 Inst. Dec., p. 24:
`
`Inst. Dec. at 24.
`
`66
`
`
`
`Patent Owner’s Argument Fails
` Patent Owner analyzes Mahajan and Dugan individually in arguing
`that neither discloses the claimed transmission
`
` But, the combination of Mahajan and Dugan discloses the claimed
`limitation
`
`676 POR at 52.
`
`67
`
`
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