IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`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
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`
`
`Declaration of Joseph Paradiso, Ph.D.
`Under 37 C.F.R. § 1.68
`
`
`
`- 1 -
`
`FITBIT, INC. v. LOGANTREE LP
`Ex. 1005 / IPR2 / Page 1 of 154
`
`

`
`Table of Contents
`
`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 ....................................................................... - 17 - 
`
`VI. Claim Construction ....................................................................................... - 18 - 
`A.  “a movement sensor” .............................................................................. - 18 - 
`
`B.  “self-contained” ...................................................................................... - 22 - 
`
`VII.  Challenges ............................................................................................... - 27 - 
`A.  Challenge #1: Claims 20, 25, 105, 113, 135, 136, 137 are invalid under
`35 U.S.C § 103 over Vonk in view of Zealear ....................................... - 28 - 
`
`a)  Overview of Vonk ............................................................................ - 28 - 
`
`b)  Overview of Zealear ......................................................................... - 31 - 
`
`c)  Reasons to Combine Vonk and Zealear ........................................... - 32 - 
`
`d)  Detailed Analysis ............................................................................. - 37 - 
`
`B.  Challenge # 2: Claims 20, 25, 26, 104, 105, 108, 110, 113, 114, 118,
`119, 123, 125, 128-132, 134, 135, and 138 are invalid under 35 U.S.C.
`§ 103 over Gesink in view of Dougherty ............................................... - 63 - 
`
`a)  Overview of Gesink .......................................................................... - 63 - 
`
`b)  Overview of Dougherty .................................................................... - 69 - 
`
`c)  Reasons to Combine Gesink and Dougherty ................................... - 71 - 
`
`
`
`- 2 -
`
`Ex. 1005 / IPR2 / Page 2 of 154
`
`

`
`d)  Detailed Analysis ............................................................................. - 76 - 
`
`C.  Challenge #3: Claim 124 is invalid under 35 U.S.C § 103 over Gesink
`in view of Dougherty and Edwards ...................................................... - 142 - 
`
`a)  Overview of Gesink in view of Dougherty .................................... - 142 - 
`
`b)  Overview of Edwards ..................................................................... - 143 - 
`
`c)  Reasons to Combine Gesink, Dougherty, and Edwards ................ - 145 - 
`
`d)  Detailed Analysis ........................................................................... - 147 - 
`
`VIII.  Declaration ............................................................................................ - 154 - 
`
`
`
`
`
`
`
`- 3 -
`
`Ex. 1005 / IPR2 / Page 3 of 154
`
`

`
`I.
`
`Introduction
`
`I, Joseph Paradiso, Ph.D., declare:
`
`1.
`
`I am making this declaration at the request of Fitbit, Inc. in the matter
`
`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
`
`associated with my work and testimony in this matter. My compensation is not
`
`contingent on the outcome of this matter or the specifics of my testimony.
`
`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
`
`FTBT-1003;
`
`(4) The reexamination file history of the ’576 Patent (Reexam No.
`
`90/013,201); Exhibit FTBT-1004;
`
`(5) U.S. Patent No. 5,027,824 (“Dougherty”), Exhibit FTBT-1008;
`
`(6) U.S. Patent No. 5,293,879 (“Vonk”), Exhibit FTBT-1011;
`
`
`
`- 4 -
`
`Ex. 1005 / IPR2 / Page 4 of 154
`
`

`
`(7) U.S. Patent 4,817,628 (“Zealear”), Exhibit FTBT-1012;
`
`(8) U.S. Patent No. 5,803,740 (“Gesink”), Exhibit FTBT-1013;
`
`(9) U.S. Patent No. 4,945,477 (“Edwards”), Exhibit FTBT-1014;
`
`(10) Portions of the Third Edition of the American Heritage Dictionary of
`
`the English Language (1996), Exhibit FTBT-1015; and
`
`(11) U.S. Patent No. 6,018,705 (“Gaudet”), Exhibit FTBT-1016;
`
`(12) International Publication WO 97/39677 (“Lim”), Exhibit FTBT-1017;
`
`(13) Endevco Data Sheet, Exhibit FTBT-1018;
`
`(14) U.S. Patent 5,212,774 (“Grider”), Exhibit FTBT-1019; and
`
`(15) U.S. Patent No. 5,716,377 (“Rise”), Exhibit FTBT-1022;
`
`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
`
`the wearables, sensors, and wireless communication fields, as described
`
`below.
`
`II. Qualifications and Professional Experience
`
`5. My complete qualifications and professional experience are described
`
`
`
`- 5 -
`
`Ex. 1005 / IPR2 / Page 5 of 154
`
`

`
`in my curriculum vitae, a copy of which can be found in FTBT-1006. The
`
`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`6.
`
`I am the Alexander W. Dreyfoos (1954) Professor of Media Arts and
`
`Sciences at the Massachusetts Institute of Technology (MIT). My academic
`
`credentials include a Ph.D in Physics from MIT in 1981 and a Bachelor of Science
`
`Degree in Electrical Engineering and Physics, summa cum laude, from Tufts
`
`University, in 1977. I conducted my post-doctoral research at the Swiss Federal
`
`Institute of Technology (ETH) in Zurich, where I developed sensor and precision
`
`detector technology for high-energy particle physics.
`
`7.
`
`I joined the MIT Media Laboratory in 1994, where I now direct the
`
`Responsive Environments Group’s research into using sensor networks to augment
`
`human experience, interaction, and perception. I have also co-directed the Things
`
`That Think Consortium, which is a group of MIT Media Lab researchers and
`
`industrial partners that examines the future of embedded computation and sensing.
`
`8. My work at the MIT Media Laboratory has influenced transformative
`
`products and industries that have blossomed in recent years. For example, the
`
`sensor-laden wireless shoe I developed for interactive dance in 1997 is recognized
`
`as a watershed in the field of wearable wireless sensing and was an inspiration for
`
`
`
`- 6 -
`
`Ex. 1005 / IPR2 / Page 6 of 154
`
`

`
`the Nike+, one of the very first activity trackers and the first commercial product to
`
`integrate dynamic music with monitored exercise. My team went on to pioneer
`
`clinical gait analysis with wearable wireless sensors in collaboration with the
`
`Massachusetts General Hospital (MGH) in 2002. We then broke new ground in
`
`sports medicine with another MGH collaboration that developed an ultra-wide-
`
`range wireless inertial measurement unit system for evaluating professional
`
`baseball pitchers in 2007. My team and I have also been leaders on wearable
`
`sensing for Human-Computer Interfaces, recently fielding, for example, wristbands
`
`to measure finger position, activity-tracking wristbands that enable pointing
`
`interaction and control of heating and lighting, and even a wireless touchpad
`
`mounted on a fingernail.
`
`9. My work prior to joining the MIT Media Laboratory includes
`
`directing the development of precision alignment sensors for the GEM muon
`
`detector at the Superconducting Supercollider (1992-1994). From 1984-1994, I
`
`was a physicist at the Draper Laboratory in Cambridge, Massachusetts and a
`
`member of the NASA Systems and Advanced Sensors and Signal Processing
`
`Directorates. My research at the Draper Laboratory includes developing spacecraft
`
`control systems and sensor technology for both sonar systems and high-energy
`
`physics.
`
`
`
`- 7 -
`
`Ex. 1005 / IPR2 / Page 7 of 154
`
`

`
`10.
`
`I have consulted and written extensively on topics involving
`
`embedded sensing and wireless sensor networks. My research has become the
`
`basis for widely established curricula and has led to over 250 publications, at least
`
`15 issued patents, and a string of awards in the Pervasive Computing, Human
`
`Computer Interaction, and sensor network communities. I have been invited to
`
`keynote on the sensor revolution for prestigious venues ranging from the Sensors
`
`Expo to the World Economic Forum.
`
`11.
`
`In summary, I have extensive familiarity with fields of embedded
`
`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
`
`this field was at the relevant time of the ’576 Patent and before.
`
`III. Level of Ordinary Skill in the Art
`
`12.
`
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a person of ordinary skill in the art to which the
`
`claimed subject matter pertains would have the capability of understanding the
`
`scientific and engineering principles applicable to the pertinent art. I understand
`
`that one of ordinary skill in the art has ordinary creativity, and is not an automaton.
`
`13.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`
`
`- 8 -
`
`Ex. 1005 / IPR2 / Page 8 of 154
`
`

`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems. There are likely a wide range of
`
`educational backgrounds in the technology field pertinent to the ’576 Patent.
`
`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
`
`around 1997. For example, my work in academia with projects in my group
`
`focused around these areas during the relevant period allowed me to become
`
`personally familiar with the level of skill of practicing individuals and the general
`
`state of the art. Unless otherwise stated, my testimony below refers to the
`
`knowledge of one of ordinary skill in the embedded sensing arts in the period
`
`around 1997, the period that includes the earliest claimed priority date of the ’576
`
`Patent.
`
`15.
`
`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
`
`mobile systems. Lack of work experience can be remedied by additional education
`
`
`
`- 9 -
`
`Ex. 1005 / IPR2 / Page 9 of 154
`
`

`
`or training, and vice versa. Such academic and/or industry experience would be
`
`necessary to appreciate what was obvious and/or anticipated in the industry and
`
`what a person of ordinary skill in the art would have thought and understood at the
`
`time.
`
`16. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a person of ordinary skill in the art generally (and specifically
`
`related to the references I consulted herein), reflect the knowledge that existed in
`
`the field as of 1997.
`
`IV. Relevant Legal Standards
`
`17.
`
`I have been asked to provide my opinions regarding whether claims
`
`20, 25, 26, 104, 105, 108, 110, 113, 114, 118, 119, 123-125, 128-132, and 134-138
`
`of the ’576 Patent are anticipated or would have been obvious to a person having
`
`ordinary skill in the art at the time of the alleged invention, in light of the prior art.
`
`18.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’576 Patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`19.
`
`I have been informed by counsel that a patent claim is invalid as
`
`
`
`- 10 -
`
`Ex. 1005 / IPR2 / Page 10 of 154
`
`

`
`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
`
`that, to be an inherent disclosure, the prior art reference must necessarily disclose
`
`the limitation, and the fact that the reference might possibly practice or contain a
`
`claimed limitation is insufficient to establish that the reference inherently teaches
`
`the limitation.
`
`20.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103, if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`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
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`21.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`
`
`- 11 -
`
`Ex. 1005 / IPR2 / Page 11 of 154
`
`

`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`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
`
`invention.
`
`V. The ’576 Patent
`
`A. Overview of the ’576 Patent
`
`22. The ’576 Patent is generally directed to an “electronic device, system
`
`and method to monitor and train an individual on proper motion during physical
`
`movement.” FTBT-1001, Abstract. The background section of the ’576 Patent
`
`notes that devices such as the one described in the claims are needed because
`
`“improper physical movement, especially when repeated, can result in injury to a
`
`person.” Id. at 1:14-15. Because this is a well-known and much-studied problem of
`
`the human condition, the ’576 Patent correctly recognizes that “a variety of
`
`sensing, monitoring, and notification devices” were previously created “[i]n order
`
`to study and better understand safe human movement.” Id. at 1:18-21. My personal
`
`
`
`- 12 -
`
`Ex. 1005 / IPR2 / Page 12 of 154
`
`

`
`experience confirms this, as I personally designed and built devices (including
`
`wireless wearables) to monitor human motion in 1997 and before. Researchers
`
`were already mounting multiple accelerometers on limbs for biomechanics analysis
`
`by 1973 (e.g., Morris I. Biomechtmics, 1973, Vol. 6, pp. 729-736). The ’576 Patent
`
`acknowledges that such known devices could “quantitatively determine a range of
`
`motion of a human joint in angular degrees” and “provide a warning to the wearer
`
`through an audible alarm or flashing light . . . when a predetermined angle of
`
`flexion or extension has been exceeded.” Id. at 1:30-41.
`
`23. The ’576 Patent instead focuses on secondary features of motion
`
`sensing devices, noting that “[t]he primary import of the present invention lies in
`
`its compact size, ease of use, and detailed information gathering and reporting
`
`features.” FTBT-1001, 11:19-21. As I show in this declaration, however, these
`
`secondary features were also already well-known in the art.
`
`24.
`
`I have been asked to analyze independent claims 1, 13, 20, along with
`
`a number of dependent claims. Each of these independent claims generally
`
`includes similar subject matter but in different forms. Independent claim 1 recites a
`
`“portable, self-contained device for monitoring movement of body parts during
`
`physical activity,” claim 13 recites a system including the portable device, and
`
`claim 20 recites a method of using the portable device.
`
`
`
`- 13 -
`
`Ex. 1005 / IPR2 / Page 13 of 154
`
`

`
`25. The specification of the ’576 Patent describes the portable, self-
`
`contained device in association with Figs. 1-3, which illustrate a “self-contained
`
`movement measuring device 12” with a “movement sensor 13.” FTBT-1001, 3:32-
`
`50. I note that the movement sensor 13 is illustrated as being both together with the
`
`other components of the device (Figs. 2A, 2B) and also as being “separate from the
`
`remaining components 15 of the device 12” (Fig. 2C). Id. Specifically, the
`
`specification notes that “the movement sensor 13 can be placed anywhere on the
`
`individual’s body” because doing so “gives additional flexibility in the use of the
`
`device 12.” Id. at 3:52-62. I have annotated Figs. 2B and 2C. below based on the
`
`description in the specification:
`
`
`
`- 14 -
`
`Ex. 1005 / IPR2 / Page 14 of 154
`
`

`
`Self-contained
`movement
`measuring device 12
`
`Self-contained
`movement
`measuring device 12
`including chest
`sensor
`
`FTBT-1001, Figs. 2B, 2C
`(annotated)
`
`
`
`26. According to the specification, the movement sensor “detects
`
`movement and measures associated data such as angle, speed, and distance” and in
`
`one embodiment is an “accelerometer which is capable of detecting angles of
`
`movement in multiple planes as well as the velocity at which the movement
`
`occurs.” FTBT-1001, 4:38-45. In particular, the movement sensor measures
`
`“angular velocity of physical movement for subsequent interpretation.” Id. at 2:40-
`
`41. For example, the “device 12 can monitor the forward and backward bending of
`
`the spine as well as lateral bending of the spine to aid in correct bending and lifting
`
`tasks.” Id. at 3:42-45. Additionally, “multiple accelerometers, each capable of
`
`
`
`- 15 -
`
`Ex. 1005 / IPR2 / Page 15 of 154
`
`

`
`measuring angles of movement in only one plane, may be oriented within the
`
`device 12 so that movement in multiple planes may be detected.” Id. at 4:45-48.
`
`The ’576 Patent further explains that the “movement sensor 30 is electronically
`
`connected to a microprocessor 32 which receives the signals generated by the
`
`movement sensor 30 for analysis and subsequent processing.” Id. at 4:52-55.
`
`27.
`
` In particular, once the microprocessor has received and analyzed the
`
`movement data, the microprocessor responds based on “user-programmable
`
`configuration information” such as “a series of notice levels corresponding to
`
`increasing angles of movement” and or “an event threshold.” FTBT-1001, 4:40-65.
`
`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
`and reporting.
`
`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
`
`
`
`- 16 -
`
`Ex. 1005 / IPR2 / Page 16 of 154
`
`

`
`predetermined angle of motion has been exceeded.” Id. at 4:4-25.
`
`28. According to the ’576 Patent, the data collected by the movement
`
`measurement device may be downloaded to an external computer. FTBT-1001,
`
`8:31-34. And, “[o]nce the data from the device 12 has been downloaded to the
`
`computer 16, software running on the computer 16 is used to interpret the data and
`
`produce a number of reports and histories.” Id. at 8:40-43.
`
`29. As I show in this declaration, it was well-known before the ’576
`
`Patent to (i) measure body movement with a portable device, (ii) provide an alert if
`
`the body movement exceeded a user-defined threshold, and (iii) download the
`
`collected movement data to an external computer.1 Accordingly, it is my opinion
`
`that the elements and functionality recited in the claims of the ’576 Patent were
`
`well-known and obvious before the ’576 Patent.
`
`B. History of the ’576 Patent
`
`30. The ’576 Patent was filed on November 21, 1997 and issued on May
`
`9, 2000. I have been informed by counsel that the earliest alleged priority date for
`
`the ’576 patent is November 21, 1997.
`
`1 I note that my own wireless sensor shoe from 1997 already did all of these things.
`
`See my article “Expressive Footwear
`
`for Computer-Augmented Dance
`
`Performance” (FTBT-1021).
`
`
`
`- 17 -
`
`Ex. 1005 / IPR2 / Page 17 of 154
`
`

`
`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
`
`reexamination certificate issued March 17, 2015 (FTBT-1003). The claims
`
`analyzed in this declaration are the claims found in the reexamination certificate.
`
`VI. Claim Construction
`
`32.
`
`It is my understanding that in order to properly evaluate the ’576
`
`Patent, the terms of the claims must first be interpreted. It is also my understanding
`
`that for the purposes of this inter partes review the claims are to be given their
`
`broadest reasonable interpretation in light of the specification. It is my further
`
`understanding that claim terms are given their ordinary and accustomed meaning
`
`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
`
`below and not given a special meaning in the specification should be given its
`
`ordinary and customary meaning.
`
`33.
`
`In order to construe the following claim terms, I have reviewed the
`
`entirety of the ’576 Patent, as well as its original prosecution history and reexam
`
`prosecution history.
`
`A.
`
`“a movement sensor”
`
`34. This claim term is found in claims 108 and 137. It is my opinion that
`
`
`
`- 18 -
`
`Ex. 1005 / IPR2 / Page 18 of 154
`
`

`
`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 claims. First, I note that dependent claim 170 recites “wherein said
`
`movement sensor comprises at least one accelerometer,” where the associated
`
`independent claim recites “a movement sensor.” It is 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 claims cannot
`
`be limited to a single movement sensor.
`
`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
`oriented within the device 12 so that movement in multiple
`planes may be detected.
`
`FTBT-1001, 4:41-48. In other words, the specification describes combining the
`
`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
`
`“movement sensor” in claims 1 and 13 may include one or more movement
`
`
`
`- 19 -
`
`Ex. 1005 / IPR2 / Page 19 of 154
`
`

`
`sensors, as illustrated in dependent claim 170.
`
`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,
`
`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
`
`sensor and a loft sensor, as meeting the recitation of the “movement sensor” and its
`
`capabilities:
`
`FTBT-1004, p. 491 (annotated)
`
`
`
`37. Further, as shown below, for the limitation “wherein said
`
`measurement sensor measures the angle and velocity of said movement,” Patent
`
`Owner points to a first sensor (an inclinometer) as measuring angle and points to a
`
`
`
`- 20 -
`
`Ex. 1005 / IPR2 / Page 20 of 154
`
`

`
`second sensor (a speed sensor) as measuring a component of velocity:
`
`FTBT-1004, p. 494 (annotated)
`
`
`
`In other words, Patent Owner relies on a plurality of sensors that together meet the
`
`capabilities of the recited “measurement sensor.”
`
`38.
`
`In the Office Action following the reexamination request, the
`
`Examiner agreed with Patent Owner that multiple movement sensors in the Flentov
`
`reference together meet the recitation of “a movement sensor” in the claims:
`
`Flentov teaches a portable, self-contained device 10 for
`monitoring movement of body parts 28 during physical
`activity . . .
`
`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.
`
`FTBT-1004, p. 248. I note that reference numeral 18 is “speed sensor 18” and
`
`reference numeral 20 is “loft sensor 20”—the two different sensors pointed to by
`
`Patent Owner in the reexamination request. Id. at 491. The Examiner also agreed
`
`
`
`- 21 -
`
`Ex. 1005 / IPR2 / Page 21 of 154
`
`

`
`with Patent Owner that multiple sensors in Flentov could together measure the
`
`“velocity” recited in the limitation “wherein said measurement sensor measures the
`
`angle and velocity of said movement.” Id. at 250-51(“Speed and direction
`
`[velocity] are calculated using the signals from the plural accelerometers of the
`
`speed sensor 200.”) (emphasis added).
`
`39. Accordingly, for the purposes of my invalidity analysis in this
`
`declaration, it is my opinion that the broadest reasonable interpretation of “a
`
`movement sensor” encompasses one or more movement sensors.
`
`B.
`
`“self-contained”
`
`40. This claim term is found in claims 20, 108, 110, 114, 128, 130, and
`
`134, which recite “a portable, self-contained movement measuring device.”
`
`41. Based on my review, it appears the ’576 Patent does not set forth an
`
`explicit definition of “self-contained” when used as an adjective modifying
`
`“device.” It is my opinion, however, that the broadest reasonable interpretation of a
`
`“self-contained” device at least encompasses a device whose components are
`
`arranged at different locations around an individual’s body and not contained
`
`within a single housing. My opinion is based on the claims, specification,
`
`reexamination file history, and dictionary definition of “self-contained.”
`
`42. First, I note that dependent claim 6 (which depends from claim 1)
`
`
`
`- 22 -
`
`Ex. 1005 / IPR2 / Page 22 of 154
`
`

`
`recites:
`
`6. The device of claim 1 wherein said movement sensor is
`housed separately from said microprocessor.
`
`It is my understanding that because this dependent claim recites that the movement
`
`sensor of the device is housed separately from the microprocessor, the “self-
`
`contained” device of the independent claim cannot be limited to a device with all
`
`components within the same housing.
`
`43. Second, the specification describes several different embodiments of a
`
`“self-contained movement measuring device 12” in association with Figs. 1-3.
`
`FTBT-1001, 3:20-4:34 (emphasis added). In one embodiment (Fig. 2C), some
`
`components of the self-contained device 12 are “separate from the remaining
`
`components 15 of the device 12” and are not contained within a single housing. Id
`
`at 3:47-57. Specifically, the specification notes that a separate “movement sensor
`
`13 can be placed anywhere on the individual’s body” because doing so “gives
`
`additional flexibility in the use of the device 12.” Id. at 3:52-62. The ’576 Patent
`
`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
`
`
`
`- 23 -
`
`Ex. 1005 / IPR2 / Page 23 of 154
`
`

`
`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.
`
`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:
`
`Self-contained device 12
`includes components arranged
`at different locations around
`individual’s body
`
`
`
`FTBT-1001, Fig. 2C (annotated)
`
`
`
`44. Accordingly, based on the claims and specification, the broadest
`
`reasonable interpretation of a “self-contained” device at least encompasses a device
`
`
`
`- 24 -
`
`Ex. 1005 / IPR2 / Page 24 of 154
`
`

`
`whose components are arranged at different locations around an individual’s body
`
`and not contained within a single housing.
`
`45. Third, the reexamination file history confirms this understanding of
`
`the broadest reasonable interpretation. Specifically, Patent Owner argued in its
`
`reexamination request—and the Patent Office agreed—that the “self-contained”
`
`device limitation of claims 1, 13, and 20 was met by a movement measuring device
`
`whose components are arranged at different locations around an individual’s body,
`
`and not contained within a single housing. FTBT-1004, pp. 505-24, 251-254. In
`
`more detail, Patent Owner argued that the “device” illustrated in Fig. 2 of U.S.
`
`Patent No.6,018,705 to Gaudet met the limitation in claim 20 of “attaching a
`
`portable, self-contained movement measuring device to said body part.” Id. at 520.
`
`I note that the device shown in Fig. 2 of Gaudet (reproduced below) includes
`
`multiple components distributed around an individual’s body—including sensors
`
`20A, 20B, and 20C:
`
`
`
`- 25 -
`
`Ex. 1005 / IPR2 / Page 25 of 154
`
`

`
`Device that includes components
`disposed at different locations
` around individual’s body
`
`FTBT-1016, Fig. 2 (annotated)
`
`
`
`46.
`
`In the Office Action following the reexamination request, the
`
`Examiner agreed with Patent Owner that the device 20 with multiple components
`
`(20A-20C) arranged at different locations around an individual’s body met the
`
`claimed “portable, self-contained device.” Specifically, the Examiner stated that:
`
`Gaudet teaches a portable, self-contained device and method of
`monitoring physica