`
`
`Petition for Inter Partes Review
`
`Attorney Docket No.: 51539.3
`Customer No.:
`27683
`
`Real Party in Interest:
`Fitbit, Inc.
`
`
`
`
`
`In re patent of Brann
`
`U.S. Patent No. 6,059,576
`
`Issued: May 9, 2000
`
`Title: Training and Safety Device,
`System and Method to Aid in Proper
`Movement During Physical Activity
`
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`
`
`Declaration of Joseph Paradiso, Ph.D.
`Under 37 C.F.R. § 1.68
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`- 1 -
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`FITBIT, INC. v. LOGANTREE LP
`Ex. 1005 / IPR1 / Page 1 of 202
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`
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`Table of Contents
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`Introduction ..................................................................................................... - 4 -
`I.
`II. Qualifications and Professional Experience ................................................... - 5 -
`III. Level of Ordinary Skill in the Art .................................................................. - 8 -
`IV. Relevant Legal Standards ............................................................................. - 10 -
`V. The ’576 Patent ............................................................................................. - 12 -
`A. Overview of the ’576 Patent ................................................................... - 12 -
`
`B. History of the ’576 Patent ....................................................................... - 16 -
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`VI. Claim Construction ....................................................................................... - 17 -
`A. “a movement sensor” .............................................................................. - 18 -
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`B. “self-contained” ...................................................................................... - 21 -
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`C. “a computer” .......................................................................................... - 27 -
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`D. “velocity” ................................................................................................ - 31 -
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`VII. Challenges ............................................................................................... - 32 -
`A. Challenge # 1: Claims 1, 13, and 17 are invalid under 35 U.S.C. § 103
`over Allum in view of Dougherty and Conlan ....................................... - 33 -
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`a) Overview of Allum ........................................................................... - 33 -
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`b) Overview of Dougherty .................................................................... - 39 -
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`c) Reasons to Combine Allum and Dougherty ..................................... - 42 -
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`d) Overview of Conlan ......................................................................... - 48 -
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`e) Reasons to Combine Allum and Conlan .......................................... - 49 -
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`f) Detailed Analysis ............................................................................. - 53 -
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`B. Challenge #2: Claims 20, 104, 108, 110, 118-123, 134 are invalid under
`35 U.S.C § 103 over Allum in view of Dougherty............................... - 110 -
`- 2 -
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`Ex. 1005 / IPR1 / Page 2 of 202
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`a) Detailed Analysis ........................................................................... - 110 -
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`C. Challenge #3: Claims 129, 132, and 133 are invalid under 35 U.S.C §
`103 over Allum in view of Dougherty and Bernard ............................. - 157 -
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`a) Overview of Allum ......................................................................... - 158 -
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`b) Overview of Dougherty .................................................................. - 158 -
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`c) Overview of Bernard ...................................................................... - 159 -
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`d) Reasons to Combine Allum and Bernard ....................................... - 161 -
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`e) Detailed Analysis ........................................................................... - 165 -
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`D. Challenge #4: Claims 139-142 are invalid under 35 U.S.C § 103 over
`Allum in view of Dougherty, Bernard, and Conlan ............................. - 178 -
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`a) Additional Reasons to Combine Allum and Conlan ...................... - 179 -
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`b) Detailed Analysis ........................................................................... - 182 -
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`VIII. Declaration ............................................................................................ - 202 -
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`- 3 -
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`Ex. 1005 / IPR1 / Page 3 of 202
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`I.
`
`Introduction
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`I, Joseph Paradiso, Ph.D., declare:
`
`1.
`
`I am making this declaration at the request of Fitbit, Inc. in the matter
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`of the Inter Partes Review of U.S. Patent No. 6,059,576 (“the ’576 Patent”) to
`
`Brann.
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate. I am also being reimbursed for reasonable and customary expenses
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`associated with my work and testimony in this matter. My compensation is not
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`contingent on the outcome of this matter or the specifics of my testimony.
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`3.
`
`In the preparation of this declaration, I have studied:
`
`(1) The ’576 Patent, Exhibit FTBT-1001;
`
`(2) The prosecution history of the ’576 Patent, Exhibit FTBT-1002;
`
`(3) The Ex Parte Reexamination Certificate of the ’576 Patent, Exhibit
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`FTBT-1003;
`
`(4) The reexamination file history of the ’576 Patent (Reexam No.
`
`90/013,201); Exhibit FTBT-1004;
`
`(5) U.S. Patent No. 5,919,149 (“Allum”), Exhibit FTBT-1007;
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`(6) U.S. Patent No. 5,027,824 (“Dougherty”), Exhibit FTBT-1008;
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`- 4 -
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`Ex. 1005 / IPR1 / Page 4 of 202
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`(7) U.S. Patent No. 5,573,013 (“Conlan”), Exhibit FTBT-1009;
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`(8) U.S. Patent No. 4,883,063 (“Bernard”), Exhibit FTBT-1010;
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`(9) U.S. Patent No. 5,293,879 (“Vonk”), Exhibit FTBT-1011;
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`(10) Third Edition of the American Heritage Dictionary of the English
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`Language (1996), Exhibit FTBT-1015; and
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`(11) U.S. Patent No. 6,018,705 (“Gaudet”), Exhibit FTBT-1016.
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`4.
`
`In forming the opinions expressed below, I have considered:
`
`(1) The documents listed above, and
`
`(2) My own knowledge and experience, including my work experience in
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`the sensor and wireless communication fields, as described below.
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`II. Qualifications and Professional Experience
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`5. My complete qualifications and professional experience are described
`
`in my curriculum vitae, a copy of which can be found in FTBT-1006. The
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`following is a brief summary of my relevant qualifications and professional
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`experience.
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`6.
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`I am the Alexander W. Dreyfoos (1954) Professor of Media Arts and
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`Sciences at the Massachusetts Institute of Technology (MIT). My academic
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`credentials include a Ph.D in Physics from MIT in 1981 and a Bachelor of Science
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`- 5 -
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`Ex. 1005 / IPR1 / Page 5 of 202
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`Degree in Electrical Engineering and Physics, summa cum laude, from Tufts
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`University, in 1977. I conducted my post-doctoral research at the Swiss Federal
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`Institute of Technology (ETH) in Zurich, where I developed sensor and precision
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`detector technology for high-energy particle physics.
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`7.
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`I joined the MIT Media Laboratory in 1994, where I now direct the
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`Responsive Environments Group’s research into using sensor networks to augment
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`human experience, interaction, and perception. I have also co-directed the Things
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`That Think Consortium, which is a group of MIT Media Lab researchers and
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`industrial partners that examines the future of embedded computation and sensing.
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`8. My work at the MIT Media Laboratory has influenced transformative
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`products and industries that have blossomed in recent years. For example, the
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`sensor-laden wireless shoe I developed for interactive dance in 1997 is recognized
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`as a watershed in the field of wearable wireless sensing and was an inspiration for
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`the Nike+, one of the very first activity trackers and the first commercial product to
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`integrate dynamic music with monitored exercise. My team went on to pioneer
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`clinical gait analysis with wearable wireless sensors in collaboration with the
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`Massachusetts General Hospital (MGH) in 2002. We then broke new ground in
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`sports medicine with another MGH collaboration that developed an ultra-wide-
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`range wireless inertial measurement unit system for evaluating professional
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`Ex. 1005 / IPR1 / Page 6 of 202
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`baseball pitchers in 2007. My team and I have also been leaders on wearable
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`sensing for Human-Computer Interfaces, recently fielding, for example, wristbands
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`to measure finger position, activity-tracking wristbands that enable pointing
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`interaction and control of heating and lighting, and even a wireless touchpad
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`mounted on a fingernail.
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`9. My work prior to joining the MIT Media Laboratory includes
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`directing the development of precision alignment sensors for the GEM muon
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`detector at the Superconducting Supercollider (1992-1994). From 1984-1994, I
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`was a physicist at the Draper Laboratory in Cambridge, Massachusetts and a
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`member of the NASA Systems and Advanced Sensors and Signal Processing
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`Directorates. My research at the Draper Laboratory includes developing spacecraft
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`control systems and sensor technology for both sonar systems and high-energy
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`physics.
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`10.
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`I have consulted and written extensively on topics involving
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`embedded sensing and wireless sensor networks. My research has become the
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`basis for widely established curricula and has led to over 250 publications, at least
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`15 issued patents, and a string of awards in the Pervasive Computing, Human
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`Computer Interaction, and sensor network communities. I have been invited to
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`keynote on the sensor revolution for prestigious venues ranging from the Sensors
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`Ex. 1005 / IPR1 / Page 7 of 202
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`Expo to the World Economic Forum.
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`11.
`
`In summary, I have extensive familiarity with fields of embedded
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`sensing, including wearable and wireless sensors, and, as I am recognized as a
`
`pioneer in these fields dating from the mid-90s, I am familiar with what the state of
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`this field was at the relevant time of the ’576 Patent and before.
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`III. Level of Ordinary Skill in the Art
`
`12.
`
`I understand that the level of ordinary skill may be reflected by the
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`prior art of record, and that a person of ordinary skill in the art to which the
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`claimed subject matter pertains would have the capability of understanding the
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`scientific and engineering principles applicable to the pertinent art. I understand
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`that one of ordinary skill in the art has ordinary creativity, and is not an automaton.
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`13.
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`I understand there are multiple factors relevant to determining the
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`level of ordinary skill in the pertinent art, including (1) the levels of education and
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`experience of persons working in the field at the time of the invention; (2) the
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`sophistication of the technology; (3) the types of problems encountered in the field;
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`and (4) the prior art solutions to those problems. There are likely a wide range of
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`educational backgrounds in the technology field pertinent to the ’576 Patent.
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`14.
`
`I am familiar with the knowledge and capabilities that a person of
`
`ordinary skill in the embedded sensing arts would have possessed in the period
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`Ex. 1005 / IPR1 / Page 8 of 202
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`around 1997. For example, my work in academia with projects in my group
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`focused around these areas during the relevant period allowed me to become
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`personally familiar with the level of skill of practicing individuals and the general
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`state of the art. Unless otherwise stated, my testimony below refers to the
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`knowledge of one of ordinary skill in the embedded sensing arts in the period
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`around 1997, the period that includes the earliest claimed priority date of the ’576
`
`Patent.
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`15.
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`In my opinion, the level of ordinary skill in the art needed to have the
`
`capability of understanding the scientific and engineering principles applicable to
`
`the ’576 Patent is a bachelor’s degree in Electrical Engineering, Computer
`
`Engineering, or Computer Science, or equivalent training, as well as at least three
`
`years of technical experience in the field of sensing, signaling, embedded and/or
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`mobile systems. Lack of work experience can be remedied by additional education
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`or training, and vice versa. Such academic and/or industry experience would be
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`necessary to appreciate what was obvious and/or anticipated in the industry and
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`what a person of ordinary skill in the art would have thought and understood at the
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`time.
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`16. For purposes of this Declaration, in general, and unless otherwise
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`noted, my statements and opinions, such as those regarding my experience and the
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`Ex. 1005 / IPR1 / Page 9 of 202
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`understanding of a person of ordinary skill in the art generally (and specifically
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`related to the references I consulted herein), reflect the knowledge that existed in
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`the field as of 1997.
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`IV. Relevant Legal Standards
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`17.
`
`I have been asked to provide my opinions regarding whether claims 1,
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`13, 17, 20, 104, 108, 110, 118-123, 129, 132, 133, and 139-142 of the ’576 Patent
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`are anticipated or would have been obvious to a person having ordinary skill in the
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`art at the time of the alleged invention, in light of the prior art.
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`18.
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`I am not an attorney. In preparing and expressing my opinions and
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`considering the subject matter of the ’576 Patent, I am relying on certain basic
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`legal principles that counsel have explained to me. These principles are discussed
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`below.
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`19.
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`I have been informed by counsel that a patent claim is invalid as
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`anticipated under 35 U.S.C. § 102 if each element of that claim is present either
`
`explicitly or inherently in a single prior art reference. I have also been informed
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`that, to be an inherent disclosure, the prior art reference must necessarily disclose
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`the limitation, and the fact that the reference might possibly practice or contain a
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`claimed limitation is insufficient to establish that the reference inherently teaches
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`the limitation.
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`Ex. 1005 / IPR1 / Page 10 of 202
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`20.
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`I have been informed that a claimed invention is unpatentable under
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`35 U.S.C. § 103, if the differences between the invention and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
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`takes into account factual inquiries including the level of ordinary skill in the art,
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`the scope and content of the prior art, and the differences between the prior art and
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`the claimed subject matter.
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`21.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
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`show obviousness of claimed subject matter. Some of these rationales include the
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`following: (a) combining prior art elements according to known methods to yield
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`predictable results; (b) simple substitution of one known element for another to
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`obtain predictable results; (c) use of a known technique to improve a similar device
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`(method, or product) in the same way; (d) applying a known technique to a known
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`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`- 11 -
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`Ex. 1005 / IPR1 / Page 11 of 202
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`invention.
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`V. The ’576 Patent
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`A. Overview of the ’576 Patent
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`22. The ’576 Patent is generally directed to an “electronic device, system
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`and method to monitor and train an individual on proper motion during physical
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`movement.” FTBT-1001, Abstract. The background section of the ’576 Patent
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`notes that devices such as the one described in the claims are needed because
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`“improper physical movement, especially when repeated, can result in injury to a
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`person.” Id. at 1:14-15. Because this is a well-known and much-studied problem of
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`the human condition, the ’576 Patent correctly recognizes that “a variety of
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`sensing, monitoring, and notification devices” were previously created “[i]n order
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`to study and better understand safe human movement.” Id. at 1:18-21. My personal
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`experience confirms this, as I personally designed and built devices (including
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`wireless wearables) to monitor human motion in 1997 and before. Researchers
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`were already mounting multiple accelerometers on limbs for biomechanics analysis
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`by 1973 (e.g., Morris I. Biomechtmics, 1973, Vol. 6, pp. 729-736). The ’576 Patent
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`acknowledges that such known devices could “quantitatively determine a range of
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`motion of a human joint in angular degrees” and “provide a warning to the wearer
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`through an audible alarm or flashing light . . . when a predetermined angle of
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`Ex. 1005 / IPR1 / Page 12 of 202
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`flexion or extension has been exceeded.” Id. at 1:30-41.
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`23. The ’576 Patent instead focuses on secondary features of motion
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`sensing devices, noting that “[t]he primary import of the present invention lies in
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`its compact size, ease of use, and detailed information gathering and reporting
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`features.” FTBT-1001, 11:19-21. As I show in this declaration, however, these
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`secondary features were also already well-known in the art.
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`24.
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`I have been asked to analyze independent claims 1, 13, 20, along with
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`a number of dependent claims. Each of these independent claims generally
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`includes similar subject matter but in different forms. Independent claim 1 recites a
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`“portable, self-contained device for monitoring movement of body parts during
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`physical activity,” claim 13 recites a system including the portable device, and
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`claim 20 recites a method of using the portable device.
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`25. The specification of the ’576 Patent describes the portable, self-
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`contained device in association with Figs. 1-3, which illustrate a “self-contained
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`movement measuring device 12” with a “movement sensor 13.” FTBT-1001, 3:32-
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`50. I note that the movement sensor 13 is illustrated as being both together with the
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`other components of the device (Figs. 2A, 2B) and also as being “separate from the
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`remaining components 15 of the device 12” (Fig. 2C). Id. Specifically, the
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`specification notes that “the movement sensor 13 can be placed anywhere on the
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`- 13 -
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`Ex. 1005 / IPR1 / Page 13 of 202
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`individual’s body” because doing so “gives additional flexibility in the use of the
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`device 12.” Id. at 3:52-62. I have annotated Figs. 2B and 2C below based on the
`
`description in the specification:
`
`Self-contained
`movement
`measuring device 12
`
`Self-contained
`movement
`measuring device 12
`including chest
`sensor
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`FTBT-1001, Figs. 2B, 2C
`(annotated)
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`
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`26. According to the specification, the movement sensor “detects
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`movement and measures associated data such as angle, speed, and distance” and in
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`one embodiment is an “accelerometer which is capable of detecting angles of
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`movement in multiple planes as well as the velocity at which the movement
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`occurs.” FTBT-1001, 4:38-45. In particular, the movement sensor measures
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`“angular velocity of physical movement for subsequent interpretation.” Id. at 2:40-
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`- 14 -
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`Ex. 1005 / IPR1 / Page 14 of 202
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`41. For example, the “device 12 can monitor the forward and backward bending of
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`the spine as well as lateral bending of the spine to aid in correct bending and lifting
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`tasks.” Id. at 3:42-45. Additionally, “multiple accelerometers, each capable of
`
`measuring angles of movement in only one plane, may be oriented within the
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`device 12 so that movement in multiple planes may be detected.” Id. at 4:45-48.
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`The ’576 Patent further explains that the “movement sensor 30 is electronically
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`connected to a microprocessor 32 which receives the signals generated by the
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`movement sensor 30 for analysis and subsequent processing.” Id. at 4:52-55.
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`27.
`
` In particular, once the microprocessor has received and analyzed the
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`movement data, the microprocessor responds based on “user-programmable
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`configuration information” such as “a series of notice levels corresponding to
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`increasing angles of movement” and or “an event threshold.” FTBT-1001, 4:40-65.
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`The ’576 Patent explains that:
`
`Once the device 12 is operating, the microprocessor 32
`constantly checks to see if the angle movement information
`received from the movement sensor 30 indicates that the wearer
`has exceeded any of the pre-set notice levels. Depending on
`which notice level has been exceeded, the microprocessor 32 will
`cause the device 12 to react; i.e., by sounding an alarm. In
`addition, the microprocessor 32 will obtain the date/time stamp
`from the clock 46 and store that information along with the
`notice level that was exceeded into memory 50 for later analysis
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`Ex. 1005 / IPR1 / Page 15 of 202
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`and reporting.
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`Id. at 5:67-6:9. The device may include several types of indicators (visual,
`audible, vibration-based) that are “activated to notify the wearer when a
`predetermined angle of motion has been exceeded.” Id. at 4:4-25.
`
`28. According to the ’576 Patent, the data collected by the movement
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`measurement device may be downloaded to an external computer. FTBT-1001,
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`8:31-34. And, “[o]nce the data from the device 12 has been downloaded to the
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`computer 16, software running on the computer 16 is used to interpret the data and
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`produce a number of reports and histories.” Id. at 8:40-43.
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`29. As I show in this declaration, it was well-known before the ’576
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`Patent to (i) measure body movement with a portable device, (ii) provide an alert if
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`the body movement exceeded a user-defined threshold, and (iii) download the
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`collected movement data to an external computer. 1 Accordingly, it is my opinion
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`that the elements and functionality recited in the claims of the ’576 Patent were
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`well-known and obvious before the ’576 Patent.
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`B. History of the ’576 Patent
`
`
`1 I note that my own wireless sensor shoe from 1997 already did all of these things.
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`See my article “Expressive Footwear
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`for Computer-Augmented Dance
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`Performance” (FTBT-1021).
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`Ex. 1005 / IPR1 / Page 16 of 202
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`30. The ’576 Patent was filed on November 21, 1997 and issued on May
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`9, 2000. I have been informed by counsel that the earliest alleged priority date for
`
`the ’576 patent is November 21, 1997.
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`31.
`
`I have also been informed that the ’576 Patent was the subject of an ex
`
`parte reexamination filed by the Patent Owner. The reexamination resulted in a
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`reexamination certificate issued March 17, 2015 (FTBT-1003). The claims
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`analyzed in this declaration are the claims found in the reexamination certificate.
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`VI. Claim Construction
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`32.
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`It is my understanding that in order to properly evaluate the ’576
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`Patent, the terms of the claims must first be interpreted. It is also my understanding
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`that for the purposes of this inter partes review the claims are to be given their
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`broadest reasonable interpretation in light of the specification. It is my further
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`understanding that claim terms are given their ordinary and accustomed meaning
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`as would be understood by one of ordinary skill in the art, unless the inventor has
`
`set forth a special meaning for a term. As such, any claim term not construed
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`below and not given a special meaning in the specification should be given its
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`ordinary and customary meaning.
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`33.
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`In order to construe the following claim terms, I have reviewed the
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`entirety of the ’576 Patent, as well as its original prosecution history and reexam
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`- 17 -
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`Ex. 1005 / IPR1 / Page 17 of 202
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`prosecution history.
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`A.
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`“a movement sensor”
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`34. This claim term is found in claims 1, 13, 108, and 139, which recite in
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`part “a movement sensor capable of measuring data associated with unrestrained
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`movement in any direction . . .” It is my opinion that the broadest reasonable
`
`interpretation of “a movement sensor” encompasses one or more movement
`
`sensors that together are capable of performing the functionality recited in the
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`claims. First, I note that dependent claim 170, which depends from claim 13,
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`recites “wherein said movement sensor comprises at least one accelerometer.” It is
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`my understanding that because this dependent claim recites that the “movement
`
`sensor” can comprise more than one sensor, the recitation of “a movement sensor”
`
`in the independent claim and other claims cannot be limited to a single movement
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`sensor.
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`35. The specification of the ’576 Patent also contemplates utilizing
`
`multiple movement sensors in a portable movement measuring device:
`
`In a preferred embodiment, the movement sensor 30 is an
`accelerometer which is capable of detecting angles of movement
`in multiple planes as well as the velocity at which the movement
`occurs. Alternatively, multiple accelerometers, each capable of
`measuring angles of movement in only one plane, may be
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`- 18 -
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`Ex. 1005 / IPR1 / Page 18 of 202
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`oriented within the device 12 so that movement in multiple
`planes may be detected.
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`FTBT-1001, 4:41-48. In other words, the specification describes combining the
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`capabilities of multiple movement sensors in order to “detect[] angles of movement
`
`in multiple planes.” Id. This description is consistent with the notion that the
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`“movement sensor” in claims 1 and 13 may include one or more movement
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`sensors, as illustrated in dependent claim 170.
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`36. Further, the reexamination file history also confirms that the broadest
`
`reasonable interpretation of “a movement sensor” encompasses one or more
`
`movement sensors. Specifically, in the Patent Owner-filed reexamination request,
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`Patent Owner argued to the Patent Office that a plurality of sensors in a prior art
`
`reference (U.S. Patent No. 5,636,146 to Flentov) together disclose the “movement
`
`sensor” in the claims. FTBT-1004, pp. 491-99. In more detail, in applying Flentov
`
`to claims 1 and 13, Patent Owner pointed to multiple sensors, including a speed
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`sensor and a loft sensor, as meeting the recitation of the “movement sensor” and its
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`capabilities:
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`Ex. 1005 / IPR1 / Page 19 of 202
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`FTBT-1004, p. 491 (annotated)
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`37. Further, as shown below, for the limitation “wherein said
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`measurement sensor measures the angle and velocity of said movement,” Patent
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`Owner points to a first sensor (an inclinometer) as measuring angle and points to a
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`second sensor (a speed sensor) as measuring a component of velocity:
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`FTBT-1004, p. 494 (annotated)
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`
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`In other words, Patent Owner relies on a plurality of sensors that together meet the
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`capabilities of the recited “measurement sensor.”
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`38.
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`In the Office Action following the reexamination request, the
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`Examiner agreed with Patent Owner that multiple movement sensors in the Flentov
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`Ex. 1005 / IPR1 / Page 20 of 202
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`
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`reference together meet the recitation of “a movement sensor” in the claims:
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`Flentov teaches a portable, self-contained device 10 for
`monitoring movement of body parts 28 during physical
`activity . . .
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`The device 10 comprising a movement sensor 18, 20, capable of
`measuring data associated with unrestrained movement in any
`direction and generating signals indicative of said movement.
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`FTBT-1004, p. 248. I note that reference numeral 18 is “speed sensor 18” and
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`reference numeral 20 is “loft sensor 20”—the two different sensors pointed to by
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`Patent Owner in the reexamination request. Id. at 491. The Examiner also agreed
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`with Patent Owner that multiple sensors in Flentov could together measure the
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`“velocity” recited in the limitation “wherein said measurement sensor measures the
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`angle and velocity of said movement.” Id. at 250-51(“Speed and direction
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`[velocity] are calculated using the signals from the plural accelerometers of the
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`speed sensor 200.”) (emphasis added).
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`39. Accordingly, for the purposes of my invalidity analysis in this
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`declaration, it is my opinion that the broadest reasonable interpretation of “a
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`movement sensor” encompasses one or more movement sensors.
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`B.
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`“self-contained”
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`40. This claim term is found in claims 1, 13, 20, 108, 110, and 139,
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`Ex. 1005 / IPR1 / Page 21 of 202
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`which recite either “[a] portable, self-contained device for monitoring movement
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`of body parts” or “a portable, self-contained movement measuring device.”
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`41. Based on my review, it appears the ’576 Patent does not set forth an
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`explicit definition of “self-contained” when used as an adjective modifying
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`“device.” It is my opinion, however, that the broadest reasonable interpretation of a
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`“self-contained” device at least encompasses a device whose components are
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`arranged at different locations around an individual’s body and not contained
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`within a single housing. My opinion is based on the claims, specification,
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`reexamination file history, and dictionary definition of “self-contained.”
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`42. First, I note that dependent claim 6 (which depends from claim 1)
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`recites:
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`6. The device of claim 1 wherein said movement sensor is
`housed separately from said microprocessor.
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`It is my understanding that because this dependent claim recites that the movement
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`sensor of the device is housed separately from the microprocessor, the “self-
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`contained” device of the independent claim cannot be limited to a device with all
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`components within the same housing.
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`43. Second, the specification describes several different embodiments of a
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`“self-contained movement measuring device 12” in association with Figs. 1-3.
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`FTBT-1001, 3:20-4:34 (emphasis added). In one embodiment (Fig. 2C), some
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`Ex. 1005 / IPR1 / Page 22 of 202
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`components of the self-contained device 12 are “separate from the remaining
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`components 15 of the device 12” and are not contained within a single housing. Id
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`at 3:47-57. Specifically, the specification notes that a separate “movement sensor
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`13 can be placed anywhere on the individual’s body” because doing so “gives
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`additional flexibility in the use of the device 12.” Id. at 3:52-62. The ’576 Patent
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`explains that:
`
`the
`FIG. 2C shows another alternative embodiment of
`movement measuring device 12. In this version, the movement
`sensor 13 is separate from the remaining components 15 of the
`device 12 and is electronically connected to the remaining
`components 15 via a cable 17 or other commonly used
`connector. Separating the measurement sensor 13 from the
`remaining components 15
`in
`this way gives additional
`flexibility in the use of the device 12. The device 12 operates in
`the
`the same manner as previously described; however,
`movement sensor 13 can be placed anywhere on
`the
`individual's body.
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`FTBT-1001, 3:47-57 (emphasis added). Fig. 2C (annotated below) illustrates that
`the components of the self-contained device 12 may be arranged at different
`locations around an individual’s body:
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`Ex. 1005 / IPR1 / Page 23 of 202
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`Self-contained device 12
`includes components arranged
`at different locations around
`individual’s body
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`
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`FTBT-1001, Fig. 2C (annotated)
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`44. Accordingly, based on the claims and specification, the broadest
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`reasonable interpretation of a “self-contained” device at least encompasses a device
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`whose components are arranged at different locations around an individual’s body
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`and not contained within a single housing.
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`45. Third, the reexamination file history confirms this understanding of
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`the broadest reasonable interpretation. Specifically, Patent Owner argued in its
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`reexamination request—and the Patent Office agreed—that the “self-contained”
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`device limitation of claims 1, 13, and 20 was met by a movement measuring device
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`whose components are arranged at different locations around an individual’s body,
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`Ex. 1005 / IPR1 / Page 24 of 202
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`and not contained within a single housing. FTBT-1004, pp. 505-24, 251-254. In
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`more detail, Patent Owner argued that the “device” illustrated in Fig. 2 of U.S.
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`Patent No.6,018,705 to Gaudet met the limitation in claim 20 of “attaching a
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`portable, self-contained movement measuring device to said body part.” Id. at 520.
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`I note that the device shown in Fig. 2 of Gaudet (reproduced below) includes
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`multiple components distributed around an individual’s body—including sensors
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`20A, 20B, and 20C:
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`Device that includes components
`disposed at different locations
` around individual’s body
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`FTBT-1016, Fig. 2 (annotated)
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`46.
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`In