IPR2017-01058 Petition
`U.S. Patent 6,434,212
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`GARMIN INTERNATIONAL, INC.
`Petitioner
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`v.
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`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES
`Patent Owner
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`
`
`
`
`____________
`
`IPR2017-01058
`Patent 6,434,212
` ____________
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,434,212
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................................................ 1
`I.
`II. SUMMARY OF THE ’212 PATENT ........................................................................................................... 2
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’212 PATENT ........................................................................ 2
`B. SUMMARY OF THE PROSECUTION HISTORY OF THE ’608 PATENT .......................................................................... 3
`C. SUMMARY OF THE PROSECUTION HISTORY OF THE ’212 PATENT .......................................................................... 5
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.104 ............................. 7
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ...................................................................................... 7
`B.
`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF REQUESTED ............................. 7
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART ..................................................................... 8
`D. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) ................................................................................. 11
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE CHALLENGED CLAIMS OF THE ’212
`PATENT ARE UNPATENTABLE ...................................................................................................................... 17
`A. GROUND 1: LEVI IN VIEW OF JOHNSON RENDERS CLAIMS 1, 2 AND 5 OBVIOUS ............................................... 17
`B. GROUND 2: LEVI IN VIEW OF JOHNSON IN FURTHER VIEW OF THE KNOWLEDGE OF ONE OF ORDINARY
`SKILL IN THE ART OR LOWREY RENDERS CLAIM 3 OBVIOUS ......................................................................................... 37
`C. GROUND 3: LEVI IN VIEW OF JOHNSON RENDERS CLAIMS 6-8 OBVIOUS UNDER A BROADEST REASONABLE
`INTERPRETATION ................................................................................................................................................................... 40
`D. GROUND 4: LEVI IN VIEW OF JOHNSON IN FURTHER VIEW OF THE KNOWLEDGE OF ONE OF ORDINARY
`SKILL IN THE ART OR HUTCHINGS RENDERS CLAIMS 6-8 OBVIOUS ............................................................................. 52
`V. CONCLUSION ............................................................................................................................................... 58
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ................................................................ 60
`A. REAL PARTY-IN-INTEREST ......................................................................................................................................... 60
`B. RELATED MATTERS ...................................................................................................................................................... 60
`C. LEAD AND BACK-UP COUNSEL ................................................................................................................................... 61
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`I.
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`INTRODUCTION
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`
`Petitioner Garmin International, Inc. (“Petitioner”) respectfully requests an
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`Inter Partes Review (“IPR”) of claims 1-3 and 5-8 (collectively, the “Challenged
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`Claims”) of U.S. Patent 6,434,212 (“the ’212 Patent”). The ’212 Patent claims
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`priority to U.S. Patent Application 09/181,738 (“the Parent Application”), which
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`was filed on October 28, 1998 and itself issued as U.S. Patent 6,175,608. The ’212
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`Patent broadly claims a step counter device for measuring the distance traveled by
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`a user by multiplying a number of steps taken by the length of the user’s stride.
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`‘212 Patent (EX1001) at 1:9-16. The ’212 device’s purported point of novelty uses
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`a variable stride length that is determined through a formula that calibrates the
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`dependency of the user’s stride length upon the user’s stride rate. Id. The ’212
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`Patent faced just one rejection over a single prior art reference during prosecution,
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`and the subject matter of the Challenged Claims were given a first action
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`allowance without substantive prior art rejection, based on this purported point of
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`novelty. See Sec. II.C, infra.
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`But, as demonstrated below, the Challenged Claims’ steps of (1) multiplying
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`a number of counted steps by a stride length that varies with stride rate and (2)
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`calibrating the stride length as a function of stride rate were both known and
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`obvious prior to 1998. Petitioner submits the expert declaration of Dr. Ken Fyfe, an
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`expert in vibration analysis and fitness monitoring technology, in support of this
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`petition. See Fyfe Decl. (EX1002). As explained by Dr. Fyfe, prior to October
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`1998, it was well known that stride length varied with stride rate and that stride
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`length could be varied in pedometers to account for this dependency to more
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`accurately calculate distance. See id. at ¶¶35-36.
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`II.
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`SUMMARY OF THE ’212 PATENT
`A. Description of the alleged invention of the ’212 patent
`The ’212 Patent relates generally to pedometers that estimate distance
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`traveled based on multiplying steps taken by stride length. It describes “a
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`pedometer having improved accuracy by calculating actual stride lengths of a user
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`based on relative stride rates.” ’212 Patent (EX1001), at Abstract. In particular, the
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`disclosed embodiments include the calibration steps of determining a “base stride
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`length” for a particular user by walking or running a predetermined distance,
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`counting steps taken, and dividing the predetermined distance by the number of
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`steps counted. Id. at 2:40-45, 3:56-64; 5:1-9. The number of strides counted may
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`then be divided by the time required to run or walk the predetermined distance to
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`determine the “base stride rate” at which the base stride length was determined. Id.
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`at 2:40-45, 3:65-67, 5:1-9; see also, generally 5:10-6:9. The ’212 Patent notes the
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`well-known dependence of stride length on stride rate (i.e., the length or a person’s
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`stride will naturally change based on how fast they are walking or running), and
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`the patent seeks to correct the base stride length to a calculated “actual” stride
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`length as a function of a measured “actual” stride rate. Id. at 2:33-52, 4:20-46. In
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`doing so, the ’212 Patent seeks to arrive at a more accurate estimate of distance
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`traveled, as compared to prior art “fixed stride length” devices that did not take
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`into account the fact that stride length varies with stride rate or that required re-
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`calibration at the desired stride rate. Id. at 1:54-55, 1:63-65, 4:20-29. Further, the
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`’212 Patent discloses performing a plurality of calibrations for a plurality of stride
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`lengths and stride rates using a plurality of sample runs/walks of a predetermined
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`distance to generate a mathematical function that allows stride length to vary
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`according to stride rate. 2:57-59, 4:62-6:12. Embodiments of the device taught by
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`the ’212 Patent include a step counter, such as an inertia device, used to count
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`steps, a strap, a transmitter, a receiver, and a heart rate monitor. Id. at 2:15-20,
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`3:12-30, Fig. 1.
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`Summary of the prosecution history of the ’608 patent
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`B.
`The Parent Application to which the ’212 Patent claims priority was filed on
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`October 28, 1998. ’608 Patent File History (EX1003) at 7. On January 28, 2000,
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`the Examiner issued a Non-Final Rejection, rejecting all claims under 35 U.S.C. §
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`112 for many instances of lack of clear antecedent basis. Id. at 66. Additionally,
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`many claims were rejected as anticipated under § 102 and/or rendered obvious
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`under § 103 by U.S. Patent 5,891,042 to Sham et al. (“Sham”), teaching a
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`pedometer including a step counter, transmitter, and heart rate monitor. Id. at 67.
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`The Examiner also specifically rejected claims requiring a wireless transmitter as
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`being obvious, stating that “the use of wireless transmitters is widespread in the
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`art” and thus “is not of patentable merit.” Id. at 68. The Examiner also found
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`certain claims
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`to contain allowable subject matter, which
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`the Applicant
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`subsequently amended his other claims to include. Id. at 69, 86.
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`In his Remarks, Applicant states that the “step counter” of the invention does
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`not “measure” anything, stating, “[s]tep counters only count steps.” Id. at 86.
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`Further, Applicant states that “zero inches is the smallest distance and thirty-six
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`inches is the largest distance of transmission for this preferred embodiment,”
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`conceding that the transmitter of the invention covers wired transmitters (i.e., zero
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`inches), consistent with the ’212 specification. Id. at 87; see also EX1001 at 3:14-
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`17 (“Alternately, the transmitter is a wireless or wired digital transmitter . . . .”).
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`Additionally, Applicant distinguishes the invention from a commercially available
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`pedometer by stating that the commercially available pedometer “can only measure
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`distance based on a uniform stride length,” and that, “the user’s stride length must
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`be measured and then input into this pedometer’s ‘memory’. It does not measure
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`stride length automatically.” ’608 Patent File History (EX1003) at 87. Thus,
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`Applicant concludes that, “even if this pedometer were prior art, it has no bearing
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`on the allowability of the claims, particularly those relating to variable stride
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`lengths.” Id. at 88.
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`In remarks summarizing a June 12, 2000 telephone interview discussing
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`U.S. Patent 5,033,013 to Kato and U.S, Patent 5,724,265 to Hutchings, Applicant
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`admits that these references “disclosed a correspondence between stride rate and
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`stride length.” Id. at 104-105. Applicant continued, stating, “Consequently, any
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`claims based on this broad concept were not allowable, but claims reciting a
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`specific algorithm for deriving a range of stride lengths or a pedometer in
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`combination with a heart rate monitor are allowable.” Id. Further, in summarizing
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`a June 15, 2000 interview, Applicant contended that “a distinction between the art
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`of record and the present pedometer invention is the use of data input from runs or
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`walks over known distances to establish a range of stride rate versus stride length
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`data that can be used in subsequent runs or walks to derive actual stride lengths
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`from actual stride rates.” Id. at 105. The Parent Application was then allowed and
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`issued as U.S. Patent 6,175,608 (“the ’608 patent”) on January 16, 2001. ’608
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`Patent (EX1009).
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`Summary of the prosecution history of the ’212 patent
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`C.
`The continuation application that resulted in the ’212 Patent was filed on
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`January 4, 2001. ’212 Patent File History (EX1004), at 6. For purposes of this
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`proceeding, Petitioner is assuming that the priority date for the Challenged Claims
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`is October 28, 1998, the filing date of the Parent Application. The original
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`application included 9 claims, 2 of which were independent. Id. at 18-19. On
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`November 13, 2001, the USPTO issued an Office Action rejecting only claim 1
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`under §102(b) as anticipated by Sham, which the Examiner contended taught an
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`exercise monitoring device with a strap, a step counter, and a heart rate monitor.
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`Id. at 44. Claims 2-9, each of which included the limitation of a variable stride
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`length that is varied according to stride rate, were found to contain allowable
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`subject matter in this initial action (with claims 2-6 being objected to for
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`dependence on claim and claims 7-9 being allowed). Id.; see also id. at 18-19.
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`After this initial action, Applicant submitted an IDS disclosing sixty (60)
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`references. Id. at 49-51. Applicant then cancelled claim 1 and rewrote claims 2-6
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`to remove their dependency on cancelled claim 1. Id. at 60-62
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`The Examiner then issued a notice of allowance on March 16, 2002, and
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`relied in the Reasons For Allowance on the purported absence of “the data
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`processing limitations” in the prior art. Id. at 68. The ’212 Patent issued on August
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`13, 2002. ’212 Patent (EX1001). Thus, the Challenged Claims were, in essence,
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`given a first action allowance without substantive prior art rejection, and the
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`Examiner relied on the purported absence form the prior art of data processing that
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`uses a variable stride length that varies according to stride rate in calculating
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`distance.
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioner certifies that the ’212 patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’212 patent.
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`B.
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`Identification of challenge under 37 C.F.R. § 42.104(b) and relief
`requested
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`In view of the prior art and evidence, claims 1-3, and 5-8 of the ’212 patent
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`are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1). Based on the
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`prior art references identified below, IPR of the Challenged Claims should be
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`granted. 37 C.F.R. § 42.104(b)(2).
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`Proposed Grounds of Unpatentability
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`Ground 1: Claims 1, 2 and 5 are obvious under § 103(a) over U.S.
`Patent No. 5,583,776 to Levi (“Levi”) in view of PCT Patent
`Application Publication WO 87/05229 to Johnson (“Johnson”)
`Ground 2: Claim 3 is obvious under § 103(a) over Levi in view of
`Johnson in further view of the Knowledge of One of Ordinary Skill
`in the Art OR U.S. Patent No. 4,387,437 to Lowrey et al.
`(“Lowrey”)
`Ground 3: Claims 6-8 are obvious under § 103(a) over Levi in
`view of Johnson under a broadest reasonable interpretation
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`Exhibit
`Nos.
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`EX1005 and
`EX1006
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`EX1005,
`EX1006,
`and EX1007
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`EX1005 and
`EX1006
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`Proposed Grounds of Unpatentability
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`Exhibit
`Nos.
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`Ground 4: Claims 6-8 are obvious under § 103(a) over Levi in
`view of the Knowledge of One of Ordinary Skill in the Art OR U.S.
`Patent No. 5,724,265 to Hutchings (“Hutchings”)
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`EX1005 and
`EX1008
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`Section IV identifies where each element of the Challenged Claims is found
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`in the prior art references. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the
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`supporting evidence relied upon to support the challenges are provided above and
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`the relevance of the evidence to the challenges raised are provided in Section IV.
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`37 C.F.R. § 42.104(b)(5). Exhibits EX1001 – EX1031 are also attached.
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`Level of skill of a person having ordinary skill in the art
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`C.
`As explained by Dr. Fyfe, the concept of a pedometer dates back centuries to
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`Leonardo da Vinci, while working pedometers date back to the time of President
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`Thomas Jefferson. Fyfe Decl. (EX1002) ¶25; Cale (EX1011) at 1, Research Digest
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`(EX1012) at 1. Patents on pedometers date as far back as 1902, with Kuhn
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`disclosing a mechanical device for counting steps, and 1904, with Porter
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`disclosing a pedometer with an adjustable spring to allow customization for the
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`steps of a particular user. Fyfe Decl. (EX1002) ¶¶26-28; Kuhn (EX1014) at 2:1-23;
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`Porter (EX1015) at 1:25-31, 2:15-35. In the following decades, inertial
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`accelerometers were developed, including for use in various vehicles. Fyfe Decl.
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`(EX1002) at ¶29; Wimperis (EX1016) at lines 1-12; Head (EX1017) at 1:73-2:7.
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`By at least as early as the 1970s, smaller piezoelectric accelerometers were being
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`used to measure the motion of the human body to analyze walking patterns of
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`people. Fyfe Decl. (EX1002) at ¶30; Morris (EX1018) at p. 729. Also by the early
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`1970s, electronic exercise monitoring devices that used electronic accelerometers
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`capable of sensing steps during walking or running were known, including
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`belts/straps used to attach the device to the user. Fyfe Decl. (EX1002) at ¶31; Biro
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`(EX1019) at 1:5-10, 1:51-55, 2:24-30; Adler (EX1020) at 4:30-36, Fig. 1. By at
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`least the late 1970s, such devices were being used to automatically calculate the
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`distance traveled by the user by using a calibrated stride length determined by the
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`user doing a “control” sample run/walk over a given measured distance. Fyfe Decl.
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`(EX1002) at ¶32; Popular Electronics (EX2021) at pp. 42-43. From the 1980’s
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`through the early 1990’s, a myriad of electronic pedometers for exercise
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`monitoring were being patented and produced. Fyfe Decl. (EX1002) at ¶33; Ono
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`(EX1010) at Abstract, 1:64-2:27; Karr (EX1022) at Abstract, 2:29-3:14; Frederick
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`(EX1023) at Abstract, pp. 3-4; Sutton (EX1024) at Abstract, 1:14-2:17, 3:8-64;
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`Cavanagh (EX1025) at Abstract, 2:33-62. And many such devices included
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`calibration functions to customize the device for the particular user, including the
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`user’s specific stride length. Fyfe Decl. (EX1002) at ¶33; Frederick (EX1023) at
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`pp. 2, 4; Sutton (EX1024) at 4:12-23; Ebeling (EX1026) at Abstract, 3:11-12;
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`Cavanagh (EX1025) at 3:29-42. It was well known in this time frame to combine
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`heart rate monitors with pedometers so as to provide the user with additional
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`exercise monitoring information. Fyfe Decl. (EX1002) at ¶34; Jiminez (EX1027) at
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`Abstract, 3:15-19, 4:14-33, 7:16-28, Fig. 2; Nakamura (EX1028) at Abstract, 1:59-
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`61, 4:37-43; Takenaka (EX1029) at Abstract, 2:3-5, 3:40-48. It was also well
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`known that a person’s stride length would vary with stride rate and that this
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`dependence could result in distance estimation errors based on changes in the
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`user’s stride rate. Fyfe Decl. (EX1002) at ¶35; Porter (EX1015) at 2:9-23;
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`Frederick (EX1023) at p. 2 (“it is known that above a certain speed, stride length
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`begins to increase as speed increases”); Sutton (EX1024) at 6:9-31; Ono (EX1010)
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`at 5:12-15, 5:45-57, 7:11-17; Ebeling (EX1026) at Abstract, 3:56-63, Cale
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`(EX1011) at p. 20 (“…at slower speeds the pedometer tends to underestimate
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`distance walked, while with fast walking or running, distance is overestimated.”).
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`While prior art devices allowed a user to perform multiple calibrations to allow the
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`user to manually change from a walking calibration to a running calibration to
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`address this issue, it was also known, as discussed in detail below in Section IV,
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`infra, that a plurality of calibrations could be used to allow for the automatic
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`variation of stride length with stride rate during use—the purported point of
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`novelty of the Challenged Claims. Fyfe Decl. (EX1002) at ¶37; Sutton (EX1024) at
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`4:12-26, 6:9-31; Cavanagh (EX1025) at 3:29-42, 6:65-7:42.
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`A person having ordinary skill in the art (PHOSITA) of the ’212 patent as of
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`U.S. Patent No. 6,434,212
`October 1998 would have been a person with a bachelor’s degree in mechanical
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`engineering, electrical engineering, or a similar field with at least two years of
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`experience in motion tracking, motion analysis, inertial sensing, or signal analysis
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`or a person with a master’s degree in mechanical engineering, electrical
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`engineering, or a similar field with a specialization in motion tracking, motion
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`analysis, inertial sensing, or signal analysis. Fyfe Decl. (EX1002) ¶¶37-39.
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`D. Claim construction under 37 C.F.R. § 42.104(b)(3)
`In this proceeding, claim terms of an unexpired patent should be given their
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`“broadest reasonable construction in light of the specification.” 37 C.F.R. §
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`42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016).
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`Petitioner proposes the below specific constructions, and all claim terms not
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`specifically discussed below should be given their broadest reasonable construction
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`in light of the specification.
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`i. “stride rate” (claims 2-3, 5-8) / “rate at which steps are counted”
`(claim 1) / “rate at which steps are taken” (claim 6)
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`Claims 2-3 and 5-8 recite a “stride rate,” ’212 Patent (EX1001), at 7:3-8:31.
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`Claim 1 recites “a rate at which steps are counted.” Id. at 7:1-2. Claim 6 recites “a
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`rate at which steps are taken.” Id. at 8:15-16. A PHOSITA would understand that
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`these terms are used interchangeably in the ’212 Patent to refer to the rate at which
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`a user is taking steps/strides (i.e., steps/strides per unit time), as sensed by the
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`device. Fyfe Decl. (EX1002) ¶¶41-43. In general, the ’212 Patent teaches
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`enhancing the accuracy of a pedometer “by the use of an algorithm that adjusts a
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`base stride length based on actual stride rates.” ’212 Patent (EX1001) at 2:33-35.
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`The ’212 Patent does so to account for the fact that “the user’s step rate” can
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`change over the course of a run or walk, which will, in effect chance the user’s
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`stride length. Id. at 4:12-29; see also id. at 1:54-55. Throughout the disclosure of
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`the ’212 Patent, the user’s base stride rate and actual stride rate are represented in
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`units of steps per second. Id. at 4:30-46; see generally id. at 5:1-6:9. In some cases,
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`the terms “stride rate” and “steps per second” are used interchangeably:
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`Again, if the Actual Stride Rate is greater than the Base
`Stride Rate, the Actual Stride Length is longer than the Base
`Stride Length. If the Actual Steps Per Second is lower than the
`Base Steps Per Second, the Actual Stride Length is shorter
`than the Base Stride Length. The algorithm below provides a
`means for comparing the Actual and Base Stride rates to arrive
`at an accurate Actual Stride Length.
`Id. at 4:30-46 (emphasis added). Further, a PHOSITA would understand that a
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`“stride rate” would be represented as steps or strides per unit time (e.g., typically
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`steps per second), and a PHOSITA at that time would have been capable of using
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`known stride/step sensing technology, which was available in pedometers, to
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`measure and interpret such data. Fyfe Decl. (EX1002) ¶¶42-43.
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`Therefore, the broadest reasonable interpretation of “stride rate,” “rate at
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`which steps are counted,” and “rate at which steps are taken” should at least
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`include “sensed steps per unit time” and, specifically, “sensed steps per second.”
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`See id.
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`ii. “a stride length that varies in accordance with a [stride rate]”
`(claim 2) / “a stride length that varies according to the [rate at
`which steps are counted]” (claims 1, 5) / “a stride length that
`varies according to a [rate at which steps are taken]” (claim 6)
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`Claim 2 recites “multiplying a number of steps counted by the step counter
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`by a stride length that varies in accordance with a stride rate.” EX1001 at 7:10-12.
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`Claims 1, 5, and 6 recite very similar language reciting use of a stride length that
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`varies according to stride rate. Id. at 7:1-2, 7:32-33, 8:15-16. Regarding a stride
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`length that varies according to stride rate, the ’212 patent discloses that “using a
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`fixed average stride length in calculating distance traveled will result in errors
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`using prior pedometers,” which is caused by the known natural phenomenon that a
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`person’s stride length will change as their stride rate changes. Id. at 4:12-29. The
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`invention of the ’212 Patent is directed towards solving this problem, teaching,
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`“The accuracy of the device is enhanced by the use of an algorithm that adjusts a
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`stride length based on actual stride rates.” Id. at 2:33-35. As discussed, this
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`requirement of using a so-called “variable” or “actual” stride length that varies as a
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`function of stride rate was relied on during prosecution to obtain allowance. See
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`Secs. II.B & II.C, supra.
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`The ’212 Patent describes that it is able to use a stride length that varies with
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`stride rate by generating a formula for actual stride length as a function of
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`measured stride rate that is generated during a calibration process. See Fyfe Decl.
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`(EX1002) ¶¶44-47. The ’212 Patent describes an example of this process as
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`follows:
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`After a proper warmup, the user completes a sample run or
`walk on the track at a normal pace. This first sample S1, will
`establish the Base Stride and the Base Steps Per Second.
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`Id. at 5:1-3. The user then completes an S2 calibration of a run faster than
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`the S1 sample:
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`Following completion of the first run or walk at normal pace,
`the user runs or walks the same course and the same distance at
`a faster run or walking pace, but not a sprinting pace. The user
`should not run on his toes, but maintain the normal heel to toe
`jogging style. This is the S2 sample. The purpose of the
`S2 sample is to calculate an N2 value for each individual which
`reflects the effect an increase in Steps Per Second has on this
`individual's stride length. Some individual’s steps will lengthen
`more than others as Steps Per Second increases, and by finding
`the value for N2, this relative increase can be quantified for a
`more accurate and customized algorithm for each individual.
`
`Id. at 5:10-20. The ‘212 then similarly computes a slower S3 calibration:
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`Following completion of the fast run or walk, the user runs the
`same course and the same distance at a slower than normal run
`or walking pace. This pace cannot exceed the first sample pace.
`This is the S3 sample. The purpose of the S3 sample is to
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`calculate an N3 value for each individual which reflects the
`effect a decrease in Steps Per Second has on this individual's
`stride length. Some individual's steps will shorten more than
`others as Steps Per Second decreases, and by finding the value
`for N3, this relative decrease can be quantified for a more
`accurate and customized algorithm for each individual.
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`Id. at 5:33-42. Having completed a plurality of calibrations (i.e., three in this
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`example) of stride lengths and corresponding stride rates, the device then derives a
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`function to calculate a stride length that varies in accordance with a stride rate:
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`Once these three samples are completed and the information
`automatically calculated and stored in the data processor 30,
`then [a] formula can be used for
`the most accurate
`measurements of speed and distance.
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`Id. at 5:55-58; see also 5:56-6:12. Future calculations of stride length are then
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`determined using a formula relating measured stride rates to resulting expected
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`stride lengths. Id. As a result, an actual stride length that is allowed to vary is
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`calculated based on a function that relates the measured actual stride rate to the
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`actual stride length. Therefore, the broadest reasonable interpretation of the
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`variable stride length claim terms in claims 1, 2, 5, and 6 should at least include “a
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`variable stride length calculated as a function of a measured actual stride rate.” See
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`Fyfe Decl. (EX1002) ¶¶44-47.
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`iii. “interpolate between and extrapolate from…” (claim 8)
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`U.S. Patent No. 6,434,212
`Claim 8 recites that the data processor is programmed to “interpolate
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`between and extrapolate from the ranges of stride rates and stride lengths to
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`calculate a plurality of additional corresponding stride rates and stride lengths.”
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`’212 Patent (EX1001) at 8:26-30. The phrase “interpolate between and extrapolate
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`from” is not used in the specification of the ’212 Patent.
`
`The ’212 Patent discusses using ranges of stride rates and stride lengths to
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`calculate a plurality of additional corresponding stride rates and stride lengths, in
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`which a plurality of calibrations are performed from a plurality of sample runs to
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`correlate a range of actual stride rates with corresponding actual stride lengths. Id.
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`at 4:62—5:50; see also id. at 2:33-39 (“plurality of samples”), 2:57-59 (“plurality
`
`of sample runs”). Using this plurality of calibration runs, a mathematical formula
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`can be derived for translating measured stride rates to stride lengths. Id. at 5:58-
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`6:9. The formula presented is capable of calculating stride length from stride rate
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`for any value of the stride rate (i.e., even if that specific stride rate has not been
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`used in a calibration run). Id.
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`A PHOSITA would understand “interpolate” to mean accounting for
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`measured stride rate values in between the range of values measured during the
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`above-mentioned calibrations (e.g., calculating a stride length corresponding to 2.5
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`steps per second even though actual stride lengths had only been observed at stride
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`rates of 2 steps per second and 3 steps per second). Fyfe Decl. (EX1002) ¶¶50-51.
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`IPR2017-01058 Petition
`U.S. Patent No. 6,434,212
`Similarly, a PHOSITA would understand “extrapolate” to mean accounting for
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`measured stride rate values outside the range of values measured during the above-
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`mentioned calibrations (e.g., calculating a stride length corresponding to 4 steps
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`per second even though no stride lengths had been observed above 3 steps per
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`second). Id. In this way, regardless of how the measured actual stride rate
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`compares with the range of measured calibration stride rates, the data processor is
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`able to calculate a corresponding stride length. Id.
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`Therefore, the broadest reasonable interpretation of a “interpolate between
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`and extrapolate from” should at least include a process that accounts for actual
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`stride rates between previously measured stride rates (“interpolating”) and outside
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`of previously measured stride rates (“extrapolating”). See id.
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`
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`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS OF THE ’212 PATENT ARE
`UNPATENTABLE
`A. Ground 1: Levi in view of Johnson renders claims 1, 2 and 5
`obvious
`
`U.S. Patent No. 5,583,776 to Levi et al. (“Levi”) was issued and published
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`on December 10, 1996 and therefore qualifies as prior art with regard to the ’212
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`Patent under 35 U.S.C. § 102(b) (pre-AIA). See, Levi (EX1005). Levi was cited
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`during prosecution of the ‘212 Patent, but not substantively discussed. Levi teaches
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`an electronic, portable navigation system including an improved electronic
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`U.S. Patent No. 6,434,212
`pedometer. Id. at 1:8-11, 2:5-8, 2:65-66. The pedometer uses a silicon
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`accelerometer to “provide acceleration data indicative of footsteps” and “may be
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`mounted or attached at any convenient point on the user’s body.” Id. at 3:12-19,
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`see also 4:18-21.
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`Levi teaches that the distance travelled by a user on foot may be calculated
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`by “multiplying a number of steps by a step size,” while “dynamically adjusting
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`the step size.” Id. at 12:17-20. Like in the ’212 Patent, this dynamic adjustment of
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`step size (stride length) is calculated based on a plurality of calibrations of step size
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`(stride length) as a function of step frequency (stride rate) from a plurality of
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`sample runs. Id. at 2:63-65, 6:5-42; ’212 Patent at 1:10-16, 1:34-35, 2:33-35; Fyfe
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`Decl. (EX1002) at ¶¶ 55-56.
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`Using a calibration function derived from the calibration runs, Levi’s system
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`“analyzes the frequency of a user’s footsteps . . . to aid in determining the size of
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`footsteps taken by the user.” Id. at 2:57-60. Levi teaches a similar relationship
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`between stride length and stride rate as taught by the ‘212 Patent. The ‘212 Patent
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`teaches:
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`The invention also includes a method for calculating an actual
`stride length including steps of . . . calculating the actual stride
`length using the formula: Actual Stride Length=Base Stride
`Length+Base Stride Length *(((Actual Stride Rate−Base Stride
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`U.S. Patent No. 6,434,212
`Rate )N)/Base Stride Rate); wherein N is an average value or a
`derived value.
`’212 Patent at 2:52-58. If Actual Stride Length is denoted as “S”