REMAND DEMONSTRATIVES
`
`IPR2017-00319, -01555
`U.S. Patent No. 8,923,941
`Before Administrative Patent Judges
`McNamara, Arpin, McShane
`
`December 11, 2020
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`S L I D E
`
`1
`
`
`
`IPR2017-00319, -01555
`U.S. Patent No. 8,923,941
`Before Administrative Patent Judges
`McNamara, Arpin, McShane
`
`December 11, 2020
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`S L I D E
`
`1
`
`
`
`T H E F E D E R A L C I R C U I T A F F I R M S T H E B O A R D ' S
`C O N S T R U C T I O N O F A P P L I C A T I O N - S P E C I F I C I N T E R F A C E , B U T
`R E M A N D S F O R A D E T E R M I N A T I O N B A S E D O N T H E P E T I T I O N
`
`THE BOARD'S REVIEW
`IS LIMITED TO
`THE GROUNDS IN THE
`PETITION
`
`A remand "does not change [the
`Board's] focus on the Petition as
`Petitioner's case-in-chief ...."
`
`adidas AG v. Nike, Inc., IPR 2016-00922, 2018
`WL 4056113, at *3 (PTAB Aug. 24, 2018);
`see also 37 C.F.R. § 42.104(b)(4); SAS Inst.,
`Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).
`
`Support: Paper 62 at 1, 4; Paper 70 at 2, 3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112, 1117-18, 1120 (Fed. Cir. 2020).
`S L I D E
`
`2
`
`
`
`GENERIC API ≠
`APPLICATION SPECIFIC
`INTERFACE
`
`A P P L E ' S P E T I T I O N
`
`Paper 2 at 14.
`
`Paper 2 at 58.
`
`Support: Paper 62 at 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`S L I D E
`
`3
`
`
`
`L U E T O O T H ® I S N O T A P P L I C A T I O N S P E C I F I C
`
`≠B
`
`GENERIC API ≠
`APPLICATION SPECIFIC
`INTERFACE
`
`Support: Paper 62 at 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`S L I D E
`
`4
`
`
`
`GENERIC API ≠
`APPLICATION SPECIFIC
`INTERFACE
`
`A P P L E ' S P E T I T I O N
`
`Paper 2 at 27.
`
`APPLE'S E X P E R T E V I D E N C E
`
`• Craw's "dictionary provides interfaces to access all types of
`definitions abstractly and anonymously, to provide the
`developer with a generic mechanism to handle definitions that
`might come from connected devices."
`
`•
`
`"Craw teaches that string tables provide a generic interface
`that are [sic.] used by any software project ...."
`
`Ex. 1003 ¶¶ 75-76.
`
`S L I D E
`
`5
`
`Support: Paper 62 at 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`GENERIC API ≠
`APPLICATION SPECIFIC
`INTERFACE
`
`T H E B O A R D ' S F I N A L W R I T T E N D E C I S I O N
`
`Paper 43 at 15.
`
`The Board rejected the argument that an interface is application
`specific if "it may be utilizedfor a particular application" because
`that "new argument is not consistent with Petitioner's earlier
`arguments nor with the disclosure of the '941 patent."
`
`Paper 43 at 16 (emphasis altered).
`
`Support: Paper 62 at 9; Paper 70 at 2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`S L I D E
`
`6
`
`
`
`FITBIT'S NEW ARGUMENTS CONFLICT WITH THE PETITION
`
`A P P L E ' S P E T I T I O N
`
`F I T B I T ' S B R I E F O N R E M A N D
`
`•
`
`•
`
`•
`
`"APIs are thus characterized by their broad
`applicability to different applications—and
`not 'application specific' as such."
`
`"Lee teaches multiple APIs and, in particular,
`a wireless communications API (i.e.,
`Bluetooth) to provide an interface between a
`physiological parameter extraction device
`(i.e., a hemadynamometer) and a mobile
`device."
`
`"Craw teaches that a data dictionary used
`with data classes acts as an API for
`managing, extracting, and displaying
`information from information data streams."
`Paper 2 at 14, 27, 58.
`
`•
`
`•
`
`•
`
`•
`
`"[T]he claimed 'application-specific interface'
`performs the same function as an application
`programming interface, i.e., 'enabl[ing] a particular
`application to utilize data obtained from hardware.'"
`
`"Lee discloses [sic.] 'application-specific interface
`(API)' because Lee's 'mobile phone application
`program' is a 'particular application' using the
`data."
`
`"Craw's interfaces are also used by specific
`applications."
`
`"Craw discloses tailoring the 'application-specific
`interface (API)' to a specific application."
`Paper 60 at 6, 7, 8-9, 10.
`
`S L I D E
`
`7
`
`Support: Paper 62 at 1-2, 5-6, 8; Paper 70 at 1-2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`FITBIT'S RELIES ON NEW PORTIONS OF THE PRIOR ART
`
`A P P L E ' S P E T I T I O N
`
`F I T B I T ' S B R I E F O N R E M A N D
`
`•
`
`"Craw teaches that a data dictionary used with
`data classes acts as an API for managing,
`extracting, and displaying information from
`information data streams." Ex. 1056, ¶0256;
`Ex. 1003, ¶92."
`
`Paper 2 at 27.
`
`•
`
`•
`
`•
`
`"Craw teaches that a health-monitoring application, such as
`the blood pressure application in Figure 9A, uses the
`disclosed interfaces in order to display extracted health data.
`Ex. 1056 (Craw) ¶¶ 203, 208 (describing Fig. 9A)."
`
`"Craw discloses using 'a decipherable dictionary and an
`interpreter' in order to 'extract information and act on it,'
`and further teaches that '[a]cting on the received
`information may depend on the goal of the application.'
`Ex. 1056 (Craw) ¶ 48."
`
`"Craw thus recognizes that 'medical devices may include one
`or more types of software, and the medical devices and
`software may be configured to operate upon a particular
`subset of physiological data.' Id.¶ 4."
`
`Paper 60 at 6-7 (emphasis omitted).
`
`S L I D E
`
`8
`
`Support: Paper 62 at 5-7; Paper 70 at 1-3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`OBVIOUSNESS REQUIRES
`MORE THAN A SIMILAR
`FUNCTION
`
`FITBIT'S UNSUPPORTED NEW CLAIMS LACK
`EVIDENCE OF NO UNEXPECTED RESULTS
`
`To show that a design variation is
`obvious, a petitioner must show that
`the claimed variation "would not
`'result in a difference in function or
`give unexpected results.'"
`
`TRW Automotive US LLC v. MAGNA Elecs., Inc.,
`IPR2014-00251, 2014 WL 3945912, at *3
`(P.T.A.B. July 31, 2014).
`
`Fitbit never asserts that the substitution of
`an application-specific interface for an API
`would yield predictable results, and Fitbit
`cites to no evidence to demonstrate that the
`use of an application-specific interface would
`yield predictable results.
`
`Support: Paper 62 at 10; Paper 70 at 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`S L I D E
`
`9
`
`
`
`FITBIT'S MOTIVATION TO
`COMBINE LACKS ADEQUATE
`SUPPORT
`
`T H E E X P E R T E V I D E N C E
`
`Ex. 1003 ¶ 90.
`
`An expert must "explain why a
`person of ordinary skill in the art
`would have combined elements from
`specific references in the way the
`claimed invention does."
`
`TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352,
`1362 (Fed. Cir. 2019) (emphasis in original).
`
`Support: Paper 62 at 4, 10; Paper 70 at 4.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1003 ¶162.
`
`S L I D E
`
`10
`
`
`
`THE PETITION IS PREMISED
`ENTIRELY ON THE WRONG
`DEPENDENCY
`
`T H E P E T I T I O N A N D P O S T -SAS A R G U M E N T
`
`Support: Paper 62 at 7-8; Paper 70 at 3-4.
`
`Paper 2 at 15; Paper 40 at 6-7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`S L I D E
`
`11
`
`
`
`THE PETITION IS PREMISED
`ENTIRELY ON THE WRONG
`DEPENDENCY
`
`"There are two arguments here
`that you need to address.... And
`the second one, was just made is
`that no one ever asked that the
`Board issue a construction that
`these were dependent on Claim 3."
`
`Oral Arg. Rec. at 33:00-33:25 (Dyk, J.),
`available at
`http://oralarguments.cafc.uscourts.gov/
`default.aspx?fl=2019-1048.mp3.
`
`F I T B I T ' S R E B U T T A L A R G U M E N T T O T H E F E D E R A L C I R C U I T
`
`Let me start – let me start actually with Appendix 1601, you
`know, this is the supplemental briefing, and in here Apple
`specifically said the '941 "[quote] the '941 file history indicates
`that claim 4 should depend on claim 3, not on claim 1," and then
`at Appendix 1602, it goes on and Apple says – again, this was
`additional briefing submitted at the request of the Board
`because the SAS decision had come down, and here, Apple said
`"[quote] these facts indicate that patent claim 4's dependence
`on patent claim 1 is a typographical error, and that claim,
`patent claim 4, should depend on patent claim 3."
`
`* * *
`These arguments were presented, they were discussed during
`[sic.] to the Board, and they were discussed at the hearing that
`Mr. Bragalone attended and argued at, so to stand before the
`Court and say those were not presented is incorrect.
`
`Oral Arg. Rec. at 33:41-34:26, 34:46-34:59, available at
`http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2019-1048.mp3.
`
`S L I D E
`
`12
`
`Support: Paper 70 at 3-4 & n.3.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
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