UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of M
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`CERTAIN ACTIVITY TRACKING
`
`DEVICES, SYSTEMS, AND
`COMPONENTS THEREOF
`
`
`
`ORDER NO. 31:
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`MARKMAN ORDER
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`(February 17, 2016)
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`1nv- N0- 337-TA-963
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`A Markman hearing was held in this Investigation on December 18, 2015. Counsel for
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`the parties appeared at the hearing representing Complainants AliphCom d/b/a Jawbone and
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`BodyMedia, Inc. (collectively, “Complainants”); Respondents Fitbit, Inc., Flextronics
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`International Ltd., and Flextronics Sales and Marketing (A-P) Ltd. (collectively, “Respondents”);
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`and the Commission Investigative Staff (“Staff”).
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`In advance ofthe hearing‘, Complainants and
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`Respondents filed initial claim construction briefs on November 17, 2015.1 Staff filed a brief on
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`November 20, 2015.2 Complainants and Respondents filed rebuttal briefs on December 4,
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`2015.3 The parties submitted an updated joint claim construction chart on December 23, 2015.
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`1 Complainants’ and Respondents’ initial briefs are referenced herein as “CIB” and “RIB,”
`respectively.
`I
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`2 Staffs Brief is referenced herein as “SB.”
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`3 Complainants’ and Respondents’ rebuttal briefs are referenced herein as “CRB” and “RRB,”
`respectively.
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`FITBIT EXHIBIT 101 5
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`Table of Contents
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`PROCEDURAL HISTORY ................................................................................................. .. 1
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`LEGAL STANDARD.....'..................................................................................................... .. 1
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`III.
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`LEVEL OF ORDINARY SKILL IN THE ART ................................................................. .. 4
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`U.S. PATENT NO. 8,793,522 ............................................................................................. .. 4
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`Overview ........................................................................................................................ .. 4
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`Prosecution History of the ’522 Patent .......................................................................... .. 5
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`Asserted Claim ............................................................................................................... .. 6
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`Claim Construction: “band” ........................................................................................... .. 8
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`U.S. PATENT NO. 8,398,546 ........................................................................................... .. 13
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`Overview ..................................................................................................................
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`13
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`Prosecution History of the ’546 Patent ........................................................................ .. 14
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`Asserted Claims ................... .; ...................................................................................... .. 16
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`Claim Construction: “contextual data ofthe individual” .... ..-. ..................................... .. 17
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`U.S. PATENT NO. 8,529,811 ........................................................................................... .. 22
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`' Overview ...................................................................................................................... .. 22
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`Prosecution History of the ’811 Patent ........................................................................ .. 23
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`Asserted Claims ........................................................................................................... .. 24
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`Claim Construction: “forming a molding”/“forming an outer molding” /“forming
`one or more inner moldings” .................................................................................... .. 26
`
`
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`POW?.9099?’
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`VI.
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`9095?’
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`VII.
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`CONCLUSION .................................................................................................................. .. 33
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`I.
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`PROCEDURAL HISTORY
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`On August 18, 2015, the Commission issued a Notice of Investigation in this matter upon
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`a complaint alleging violations of section 337 the Tariff Act of 1930, as amended, by reason of
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`infringement of certain claims of U.S. Patent No. 8,073,707 (“the ’707 patent”); U.S. Patent No.
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`8,398,546 (“the ’546 patent”); U.S. Patent No. 8,446,275 (“the ’275 patent”); U.S. Patent No.
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`8,529,811 (“the ’8ll patent”); U.S. Patent No. 8,793,522 (“the ’522 patent”); and U.S. Patent
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`No. 8,961,413 (“the ’413 patent”), and misappropriation of trade secrets. Notice of
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`Investigation at 2; 80 Fed. Reg. 36,576-77 (2015). The Notice of Investigation named three
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`respondents: Fitbit, Inc., Flextronics International Ltd., and Flextronics Sales and Marketing (A-
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`P) Ltd. Id. Complainants assert claims 19, 23, and 24 of the ’707 patent; claims 1-18 and 20-28
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`ofthe ‘S46 patent; claims 1, 2, 4, 5, 8-10, 13-15, 18, and 19 ofthe ’275 patent; claims 1, 5-7, 16,
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`and 17 ofthe ’811 patent; claim 2 ofthe ’522 patent; and claims 1-3, 5, 7-9, 11, and 12 ofthe
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`’413 patent. Id. The parties identified and briefed terms from the ’522, ’546, and ’81l patents
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`for construction. 4
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`H.
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`LEGAL STANDARD
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`“[T]he construction of claims is simply a way of elaborating the normally terse claim
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`language[] in order to understand and explain, but not to change, the scope of the claims.”
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`Embrex, Inc. v. Serv. _Eng’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000) (alterations in original)
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`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, afier 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.
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`(quoting Scripps Clinic v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991). “[O]nly those
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`[claim] terms need ‘be construed that are in controversy, and only to the extent necessary to
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`resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng ’g, Inc., 200 F.3d 795, 803 (Fed.
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`Cir. 1999).
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`Claim construction focuses mainly on the intrinsic evidence, which consists of the claims
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`themselves, the specification, and the prosecution history. See generally Phillips v. A WH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005) (en banc): The Federal Circuit in Phillips explained that, in
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`construing terms, courts must analyze each of these components to determine the “ordinary and
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`' customary meaning of a claim term,” which is “the meaning that the term would have to a person
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`of ordinaiy skill in the art in question at the time of the invention.” Id. at 1313.
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`“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention
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`to which the patentee is entitled the right to exclude.”’ Id. at 1312 (quoting Innova/Pure Water,
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`Inc. v. Safari Water Filtration Sys., Inc.,T381 F.3d 1111, 1115 (Fed. Cir. 2004). “Quite apart
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`from the written description and the prosecution history, the claims themselves provide
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`substantial guidance as to the meaning of particular claim terms.” Id. at 1314. For example, “the
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`context in which a term is used in the asserted claim can be highly instructive,” and “[o]ther
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`claims of the patent in question, both asserted and unasserted, can also be valuable sources of
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`enlightenment as to the meaning of a claim term.” Id.
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`“[T]he specification ‘is always highly relevant to the claim construction analysis.
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`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.”’ Id. at
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`1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “The
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`longstanding difficulty is the contrasting nature of the axioms that (a) a claim must be read in
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`view of the specification and (b) a court may not‘ read a limitation into a claim from the
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`specification.” Innova/Pure Water, Inc., 381 F.3d at 1117. The Federal Circuit has explained
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`that there are certain instances when the specification may limit the meaning of the claim
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`language. For example, “the specification may reveal a special definition given to a claim term
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`by the patentee that differs from the meaning it would otherwise possess.
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`In such cases, the
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`inventor’s lexicography governs.” Phillips, 415 F .3d at 1316. The specification also “may
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`reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.” Id.
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`In such
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`cases, “the inventor has dictated the correct claim scope, and the inventor’s intention, as
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`expressed in the specification, is regarded as dispositive.” Id.
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`In addition to the claims and the specification, the prosecution history should be
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`examined if in evidence. “The prosecution history .
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`.
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`. consists of the complete record of the
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`proceedings before the PTO and includes the prior art cited during the examination of the patent.
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`Like the specification, the prosecution history provides evidence of how the PTO and the
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`inventor understood the patent.”
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`at 1317 (internal citations omitted). “[T]he prosecution
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`history can often inform the meaning of the claim language by demonstrating how the inventor
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`understood the invention and whether the inventor limited the invention in the course of
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`prosecution, making the claim scope narrower than it would otherwise be.” Id.
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`If the intrinsic evidence does not establish the meaning of a claim, then extrinsic evidence
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`may be considered. “[E]xtrinsic evidence[] consists of all evidence external to the patent and
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`prosecution history, including expert and inventor testimony, dictionaries, and learned treatises."’”.
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`Id. at 1317 (internal quotation marks and citations omitted). Extrinsic evidence is generally _
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`viewed “as less reliable than the patent and its prosecution history in determining how to read
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`claim terms.” Id. at 1318. “The court may receive extrinsic evidence to educate itself about the
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`invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a
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`claim construction that is clearly at odds with the construction mandated by the intrinsic
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`evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999).
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`III.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`The issue of the appropriate level of ordinary skill in the art was not fully addressed in
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`the briefing or at the hearing. Complainants did not address the issue in their initial brief and, in
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`their rebuttal brief, take the position that the issue does not need to be resolved at this juncture,
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`because “any dispute regarding the appropriate level of ordinary skill in the art is immaterial for
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`purposes of claim construction of the terms at issue.” CRB at 2. Although Respondents address
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`the issue in their initial briefing, they do so in passing, acknowledging Complainants’ and
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`Respondents’ competing positions, and note that they do not believe that the parties’ dispute
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`regarding the level of ordinary skill is material to claim construction. RIB at 2-3. Staff-
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`relying on Respondents’ articulation of Complainants’ position—indicates that it agrees ‘with
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`Complainants’ position with respect to the ’522 and ’546 patents, but disagrees with
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`Complainants’ position with respect to the ’811 patent. SB at 2. Staff does not provide its
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`formulation of the appropriate level of ordinary skill in the art with respect to the ’8l1 patent.
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`Given that the level of ordinary skill in the art does not affect the construction of any disputed
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`term, it is not addressed in this order.
`
`IV.
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`U.S. PATENT NO. 8,793,522
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`The ’522 patent, entitled “Power Management in a Data-Capable Strapband,” issued on
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`July 29, 2014, naming as inventors Hosain ‘Sadequr Rahman, Richard Lee Drysdale, Michael
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`Edward Smith Luna, Scott Fullam, Travis Austin Bogard, Jeremiah Robison, Max Everett Utter
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`II, and Thomas Alan Donaldson. RIB, Ex. 4 (’522 patent).
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`A. Overview
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`The ’522 patent is directed to a powermanagement method for a data-capable band.
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`’522
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`patent, col. 1:22-29. The band has sensors to gather information about the user, such as the
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`user’s vital signs (e.g., heart rate, pulse), movement (e.g., direction, speed), surrounding
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`environment (e.g., altitude), and location. Id. at 12:47-64. The gathered information can be
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`analyzed by the band’s processor to determine the user’s physical, emotional, and mental states.
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`Id. at col 4:61-5:10. So that a user is able to “purchase a charged device .
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`_.
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`. unencumbered by a
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`requirement to charge the device when .
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`.
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`. the package is first opened,” the band is shipped from
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`the manufacturer to the retailer with a charged battery. Id. at col. 8:38-61; 23:39-42.
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`A “transitory power manager” is used to prevent the battery from being depleted while it
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`is being shipped. Id. at col. 22:61-66. While the band is being shipped, the transitory power
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`manager places the band in a power mode in which the band’s components are placed in
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`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,
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`the band being connected to a power source, etc.), the transitory power manager switches the
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`device to a second power mode, such as the operational mode. Id. at col. 23:23-28; 23:35-38;
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`25:42-44. Once in the operational mode, the “components of a strapband can receive power in
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`response to requests or implementations by a user.” Id. at col. 23:43-49; 25:53-55.
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`B. Prosecution History of the ’522 Patents
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`Application No. 13/180,320 matured into the ’522 patent and was filed on July 11, 2011.
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`The ’522 patent claims priority to Provisional Application Nos. 61/495,994, 61/495,995,
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`61/495,997, and 61/495,996, all four of which were filed on June 11, 2011. The application
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`contained 28 claims including application claim 5, which depended from independent application
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`5 A certified copy of the prosecution history of the ’522 patent was filed as Appendix E to the
`Complaint.
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`claim 1 through intervening application claims 2 and 3. In the first and only office action, the
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`examiner rejected application claims 1, 2, and 3 as being unpatentable over U.S. Patent No.
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`5,795,301 to Yasukawa et al. (“Yasukawa”) in view of U.S. Patent No. 7,260,732 to Bittner
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`(“Bittner”).
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`’522 Patent Office Action (Sep. 12, 2013) at 2-5. The examiner objected to
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`application claim 5, but indicated that it would be allowable if amended and rewritten into
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`independent form. Id. at 8. Application claim 5 was amended and rewritten into independent
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`form to include the limitations of application claims 1, 2, and 3 and issued as independent claim
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`2, the sole claim asserted from the ’522 patent.
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`’522 Patent File History, Amendment (Mar. 13,
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`2014) at 3, 8.‘
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`C. Asserted Claim
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`Complainants assert independent claim 2 against Respondents. Complaint, fi[6.
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`Independent claim 2 reads:
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`2. A band comprising:
`
`.a subset of sensors;
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`a controller coupled to the subset of sensors;
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`an energy storage device;
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`6 Although 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.
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`a connector configured to receive power and control signals, the
`connector coupled to the energy storage device;
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`a power manager comprising:
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`a transitory power manager configured to manage power consumption
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`of the band during a first power mode in which no power is applied
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`to the subset of sensors; and
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`'
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`a power clock controller configured to modify a clock rate of a clock
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`signal for application to the controller as a function of a mode of
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`operation of the band
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`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
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`mode being subsequent to the first power mode,
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`wherein the transitory power manager is configured to detect an
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`application of power to the connector, and, responsive to the
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`application of power, the transitory power manager switches the band
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`from the first power mode to the second power mode;
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`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
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`wherein the first interval of time comprises an amount of time during
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`which the band is shipped from a first geographic location to a
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`second geographic location with the subset of sensors in an inoperable
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`state and the second interval of time comprises another amount of
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`time during which the subset of sensors in an operable state.
`
`’522 patent, col. 30:41-3 1 :7 (disputed term in bold).
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`l D. Claim Construction: “band”
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`plan ordinaaz
`data-eaale
`that may be worn as a meaning
`strap or band around
`an arm, leg, ankle, or
`other bodily
`a enda e or feature
`
`»
`
`encircling strip
`
`»
`
`necessary; plain and
`ordinary meaning. If
`construed: a
`substantially flat
`
`The term “band” appears in the preamble and body of claim 2 of the ’522 patent.
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`Complainants argue that the specification expressly defines “band” to mean a “data-capable
`
`device that may be worn as a strap or band around an arm, leg, ankle, or other bodily appendage
`
`or feature.” CIB at 8. Respondents and Staffdispute Complainants’ contentionthat the
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`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
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`argues that if a construction ofthe term’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 what they contend to be the
`
`applicants’ express definition ofthe term in the specification, whereas Respondents and Staff
`rely upon claim language requiring the claimed “band” to have sensors and a controller. CIB at
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`8; SB at 9; Markman Hrg. Tr. at 25:2-20. Thus, the parties’ sole dispute is whether the
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`applicants acted as their own lexicographers and limited the claimed “band” toonly those data-
`capable bands "‘that may be worn as a strap or band around an arm, leg, ankle, orother bodily
`
`appendage or feature.” For the reasons set forth below, I find that the applicants did not so limit
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`the term “band” and that “band” should be accordedits plain and ordinary meaning, which does '
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`not require a construction.
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`1. The claim language does not limit “band” to only bandsithat may be
`worn as a strap or band around a bodily appendage or feature.
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`Claim 2’s preamble recites “A band comprising” and the body sets forth the required
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`elements of the “band”: a subset of sensors, a controller, an energy storage device, a connector,
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`and a power manager.
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`’522 patent, col. 30:41-31 :7. The claim lists a number of elements of the
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`claimed power manager and, in so doing, makes reference to “the band”: “a transitory power
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`manager configured to manage power consumption of the band;” “a mode of operation of the
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`band; " the power consumption ofthe band;”. “the transitory power manager switches the band
`from the first power mode to the second power mode;” and “the first interval oftime comprises
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`an amount of time during which the band is shipped from a first geographic location to a second
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`geographic location.” Id. at col. 30:48-31 :3 (emphasis added). As acknowledged by
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`Respondents and Staff, by requiring that the band have sensors and a controller, the claim
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`language requires a band that is a data—capab1e device. SB at 9; Markman Hrg. Tr. at 2522-20.
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`‘The claim language, however, does not require the claimed device to be anything other than a
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`“band” with the listed claim elements. Complainants do not contend otherwise, but instead argue
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`that the specification provides an express definition of “band.” ClB at 8-9.
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`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 & Co., Inc. v. Teva Pharmaceuticals USA, Inc., 395'F.3d 1364,
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`1370 (Fed. Cir. 2005); see also Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed.
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`Cir. 2014). If a patentee elects to act as his or her own lexicographer, the patentee’s definition,
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`governs. Phillips, 415 F.3d at 1316. Complainants argue that the ’522 patent expressly defines
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`“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 worn as a
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`strap or band around an arm, leg, ankle, or other bodily appendage or feature.” ’522 patent, col.
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`4:17-21.
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`The standards for lexicography are “exacting” and require a patentee to “clearly” indicate
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`that the term has been assigned a special meaning. Hill-Rom, 755 F.3d at 1371. In order to
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`determine whether a patentee has acted as his or her own lexicographer, the entire specification,
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`not just the statement constituting the alleged definition, must be examined. Abbott Labs. v.
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`Syntron Bioresearch, Inc., 334 F.3d 1343, 1355 (Fed. Cir. 2003) (“We hold that the passage cited
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`by Syntron, taken in context, does not provide reasonable clarity, deliberateness, and precision
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`sufficient to narrow the definition of the claim term in the manner urged.” (emphasis added)).
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`The sentence in question occurs in a discussion of Figure 1, which depicts an “exemplary data-
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`capable strapband system” with “strapbands (hereafier ‘bands’) 104-ll2.” ’522 patent, col.
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`4: 13-24. While the specification states that ‘“band’ may be used to refer to the same or
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`substantially similar data-capable device that may be worn as a strap or band around an arm, leg,
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`ankle, or other bodily appendage or feature,” it also states that “bands” are not limited to such
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`devices, “but may be used differently.” Id. at col. 4:17-24. For instance, instead of being worn
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`around a bodily" appendage, the bands can be “affixed to clothing, or otherwise disposed at a
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`relatively predetermined distance from a user’s person.” Id. at col. 4:28-31. Accordingly, when
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`examined in context, the sentence that Complainants rely upon is not a definition, but one
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`example of a possible implementation. See also id. at col. 4:25-28 (“As described above, hands A
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`104-112 may be implemented as wearable personal data or data capture devices (e. g., data-
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`capable devices) that are worn by a user around a wrist, ankle, arm, ear, or other appendage.”
`
`(emphasis added)).
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`The Federal Circuit’s holding in Abbott Laboratories is particularly instructive. In
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`Abbott Laboratories, the accused infiinger argued that the patent at issue defined the term
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`“analyte” to require quantitative analysis by stating that “‘analyte’ refers to any chemical moiety
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`which is to be measured quantitatively.” 334 F.3d. at 1354-55 (internal citations and quotation
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`marks omitted). The sentence relied upon by the accused infringer, however, was the last
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`sentence of a four-sentence paragraph, the first sentence of which set forth a broader definition of
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`‘‘analyte” not requiring quantitative analysis: “As used herein, ‘analyte’ refers not only to the
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`particular chemical moiety for which analysis is desired, but also to chemical moieties that are
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`reaction products of the moiety to be determined with another chemical moiety.” Id. (internal
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`citations and quotation marks omitted). By presenting competing definitions for the same term,
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`the patent failed to define “analyte” with “reasonable clarity, deliberateness, and precision.” Id.
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`In the absence of a clear definition set forth in the specification, the Federal Circuit held that
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`“analyte” should be given its ordinary meaning. Id. at 1355.
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`The ’522 patent similarly fails to provide a definition of “band” with the requisite
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`“clarity, deliberateness, and precision.” After stating that “band” may be used to refer to bands
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`that may be worn around a bodily appendage and feature, the specification immediately states
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`that bands may be used differently, including by being affixed to clothing.
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`’522 patent, col.
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`4: 17-31. Moreover, Complainants’ argument that the ’522 patent’s specification provides a
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`special definition for the term “band” is weaker than the argument rejected in Abbott
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`Laboratories. First, the statement at issue in Abbott Laboratories stated without qualificatidn
`
`that the term “analyte” “refers to any chemical moiety which is to be measured quantitatively.”
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`334 F.3d at 1355 (emphasis added). In contrast, the statement at issue in this investigation states
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`only that “band” “may be used to refer to the same or substantially similar data-capable device
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`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
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`Laboratories occurred in the “Summary of the Invention” section of the patent, whereas the
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`sentence that Complainants rely upon in this investigation occurs in a discussion of an
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`embodiment. Thus, while it was clear that the statement in Abbott Laboratories was intended to
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`apply to the invention as a whole, it is not clear that the sentence relied upon by Complainants is
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`so intended. See, e.g., Shell Global Solutions (US) Inc. v. RMS Eng ’g., 782 F .Supp. 2d 317, 338-
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`40 (S.D. Tex. 2011) (finding that statement did not limit the scope of the claim term, because the
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`statement described a preferred embodiment, not the invention).
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`For the foregoing reasons, I find that the patentees did not define the term “band” with
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`the clarity, deliberateness, and precision needed. Accordingly, “band” should be given its plain
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`and ordinary meaning. Abbott Laboratories, 334 F.3d at 1354-55.
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`3. The plain and ordinary meaning of “band” does not require a
`construction.
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`No party contends that the plain and ordinary meaning of “band” requires a construction.
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`Although Staff proposes a construction for “band,” it does so only “[i]n the event the
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`[Administrative Law Judge] determines that a construction of ‘band’ is necessary.” SB at 9.
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`Otherwise, Staffs position is that the term “requires no construction because it is used with its
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`plain and ordinary meaning.” Id. at 2-3. Respondents also take the position that the plain and
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`ordinary meaning of “band” does not need a construction. RIB at 10-11. While Complainants
`propose a construction for the claim term “band,” the proposed construction uses the term
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`“band”: “data-capable device that may be worn as a strap or band around an arm, leg, ankle, or
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`other bodily appendage or feature.” CIB at 7 (emphasis added). Presumably, “band,” as used in
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`Complainants’ proposed construction, is being used in accordance with its plain and ordinary
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`meaning. By incorporating the term “band” in their proposed construction, Complainants tacitly
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`acknowledge that the plain and ordinary meaning of “band” does not require a construction.
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`Accordingly, because only claim terms in controversy need to be construed, in the
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`absence of any dispute as to the plain and ordinary meaning of “band,” I find that no construction
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`of the term is necessary. Vivid Techs., 200 F.3d at 803; see also 02 Micro Int ’l Ltd. v. Beyond
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`Innovation Tech. C0,, 521 F.3d 1351, 1362 (Fed.Cir.2008) (“[C]ourts are not (and should not be)
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`required to construe every limitation present in a patent’s asserted c1aims.”) (emphasis in
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`original); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.l997) (“Claim
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`construction is a matter of resolution of disputed meanings and technical scope, to clarify and
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`when necessary to explain what the patentee covered by the claims.”) (emphasis added).
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`V.
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`U.S. PATENT N0. 8,398,546
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`The ’546 patent, entitled “System for Monitoring and Managing Body Weight and Other
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`Physiological Conditions Including Iterative and Personalized Planning, Intervention and
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`Reporting Capability,” issued on March 19, 2013, naming as inventors Christopher Pacione,
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`Steve Menke, Eric Teller, Scott Safier, Raymond Pelletier, Mark Handel, Johnathan Farringdon,_
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`Eric Hsiung, Suresh Vishnubhatia, James Hanlon, John M. Stivoric, Neal Spruce, and Steve
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`Shassberger. RIB, Ex. 5 (’546'patent).
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`A. Overview
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`The ’546 patent is directed to a monitoring and management system for helping
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`individuals achieve weight loss goals.
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`’546 patent, col. 4:15-21. An individual should
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`experience weight loss by consuming fewer calories than the number of calories burned. Id. at
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`col. 4: 1 While conventional systems offered a number of ways to count consumed calories, in
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`order to determine calories burned, they relied on users to manually enter their physical
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`activities. Id. at col. 4:3-1 1’.
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`In contrast to the conventional systems, the system disclosed in the
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`’546 patent calculates the user’s caloric expenditure by automatically tracking data relating to the
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`user’s “physiological and contextual parameters.” Id. at col. 4:33-55; 9:41-10:18. Physiological
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`parameters include such parameters as the user’s heart rate, pulse rate, respiration rate, skin
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`temperature, core body temperature, and blood pressure, while contextual parameters relate to
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`the user’s activity state, environment, surroundings, and location. Id. at col. 10:5-9; 10:22-30. In
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`order to assist the user in attaining his or her weight-loss goal, the system can suggest various
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`activities and use the tracked data to determine whether the user complied with the suggestions.
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`Id. at col. 35:50-55; 36:1-21. The system can make a follow-up suggestion based on its
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`determination of whether the user complied with the first suggestion. Id.
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`B. Prosecution History of the ’546 Patent7
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`Application No. 10/940,214, which matured into the ’546 patent, was filed on September
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`13, 2004 as a continuation in part to Application No. 10/638,588 filed on August 11, 2003.
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`Application No. 10/638,588 was filed as aicontinuation ofApplication No. 09/602,537, which in
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`turn was filed on June 23, 2000 as a continuation in part to Application No. 09/595,660 filed on
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`June 16, 2000. The ’546 patent also claims priority to Provisional Application Nos. 60/502,764
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`and 60/555,280 filed on September 13, 2003 and March 22, 2004, respectively.
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`Although the original application that matured into the ’546 patent contained 278 claims,
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`in response to an election requirement, the applicants withdrew all of the claims other than
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`application claims 89, 119-122, 151-155, and 179-192.
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`’546 Patent File History, Response (Jul.
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`7 A certified copy of the prosecution history of the ’546 patent was filed as Appendix K to the
`Complaint.
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`31, 2006) at 46. This subset of claims consisted of one independent claim (application claim 89)
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`from which the remaining claims depended. Through a series of amendments, application claim
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`89 was cancelled and replaced with application claim 279, which in turn was cancelled and
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`replaced with application claim 286. Ultimately, application claim 286 would be amended