UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`GARMIN INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
`
`_______________
`
`Case IPR2017-01058
`Patent 6,434,212
`
`_______________
`
`
`PATENT OWNER BLACKBIRD TECHNOLOGIES’
`PRELIMINARY RESPONSE
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
`
`
`I. Introduction ..................................................................................................... 1
`II. Background ...................................................................................................... 2
`A. About the ‘212 Patent ................................................................................... 2
`B. Petitioner’s Grounds of Challenge ............................................................... 7
`C. Petitioner’s Proposed Claim Constructions ................................................. 9
`D. Level of Skill of a Person Having Ordinary Skill in the Art........................ 9
`E. The Levi Reference (U.S. Pat. No. 5,583,776) Concerns a
`Dead Reckoning Navigational System ....................................................... 11
`III. Argument: There Is Not a Reasonable Likelihood that the
`Challenged Claims of the ‘212 Patent Are Unpatentable. ......................... 13
`A. All Grounds: Petitioner Fails to Show that Its Primary
`Reference (Levi) Is Analogous Art as Required. ....................................... 13
`1. Levi Is From a Different Field of Endeavor From the
`‘212 Patent. .......................................................................................... 14
`2. Levi Pertains to Different Problems. ................................................... 16
`B. All Grounds: Petitioner Fails to Provide a Proper
`Motivation to Combine Levi with Any Other Reference
`Relied Upon by Petitioner. ......................................................................... 19
`1. All Grounds: Petitioner Fails to Explain Why a
`PHOSITA Would Have Been Motivated to Combine
`Levi and Johnson. ................................................................................ 19
`2. Grounds 2 & 4: Petitioner Also Fails to Explain Why a
`PHOSITA Would Have Been Motivated to Combine
`Levi with Lowrey or Hutchings. .......................................................... 22
`C. Ground 1: Petitioner Fails to Establish that the Combination
`of Levi and Johnson Teaches the “Calibration” Step of
`Claims 2 and 5. .......................................................................................... 24
`1. Levi-Johnson Does Not Disclose a “Plurality of
`Calibrations.” ....................................................................................... 24
`2. Petitioner Alters Levi to Create the False Impression
`that Levi Teaches a “Plurality of Calibrations.” .................................. 27
`
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`D. Ground 2: The Board Should Deny Institution on Ground 2
`Because it is Based on Ground 1 as Applied to Claim 2. .......................... 34
`IV. Conclusion ...................................................................................................... 34
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`iii
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
`
`
`
`Cases
`
`In re Kahn,
`
`441 F.3d 977 (Fed. Cir. 2006) ........................................................................14
`
`In re Oetiker,
`
`977 F.2d 1443 (Fed. Cir. 1992) ............................................................... 14, 19
`
`K-TEC, Inc. v. Vita-Mix Corp.,
`
`696 F.3d 1364 (Fed. Cir. 2012) ............................................................... 14, 16
`
`Personal Web Techs., LLC v. Apple, Inc.,
`
`848 F.3d (Fed. Cir. 2017)................................................................................21
`
`Schott Gemtron Corp. v. SSW Holding Co.,
`
`IPR2013-00358, Final Written Decision
`
`(PTAB Aug. 20, 2014) (Paper 106) (2014 WL 4181969), aff'd per curiam,
`612 Fed. Appx..614 (Mem) (Fed. Cir. 2015) (Non-Precedential) ..... 13, 17, 19
`
`
`Tec Air, Inc. v. Denso Mfg. Michigan Inc.,
`
`192 F.3d 1353 (Fed. Cir. 1999) ......................................................................24
`
`Statutes
`
`35 U.S.C. § 314(a) ...............................................................................................1, 34
`
`
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`iv
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`I.
`
`INTRODUCTION
`The Petition for inter partes review of U.S. Patent No. 6,434,212 (“the ‘212
`
`Patent”) should be denied and no trial instituted because there is no “reasonable
`
`likelihood” that Petitioner Garmin International, Inc. would prevail with respect to
`
`at least one of the challenged claims. 35 U.S.C. § 314(a).
`
`Petitioner challenges the claims of the ‘212 Patent on four obviousness
`
`grounds. However, the prior art references asserted by Petitioner stem from vastly
`
`different fields of endeavor and address very different problems without any
`
`explanation as to how the references could be analogous prior art. Therefore, each
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`of Petitioners obviousness grounds fails because each relies on a combination of
`
`reference that cannot legally be combined. (See infra Part III.A). Even if these
`
`asserted references were combinable (they are not), Petitioner also fails to present
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`legally-sound reasons why a PHOSITA would have been motivated to combine the
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`asserted prior art in the first place, instead relying on conclusory statements and the
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`assumptions of its expert. (See infra Part III.B). These problems with the Petition
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`alone mandate its denial.
`
`Even putting aside the inability to combine the references, the prior art
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`combinations do not teach all of the elements of the challenged claims of the ‘212
`
`Patent. Specifically, Petitioner’s references do not disclose or suggest the multiple
`
`calibration process that is central to accurate distance calculations claimed in the
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`1
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`‘212 Patent. In order to claim otherwise, Petitioner is forced to alter figures and
`
`misrepresent passages of the asserted references, both of which are improper. This
`
`flawed analysis dooms the Petition at least with respect to challenged claims 2, 3
`
`and 5.
`
`For at least these reasons, the Petition is groundless, and should be denied in
`
`its entirety.
`
`II. BACKGROUND
`A. About the ‘212 Patent
`The ‘212 Patent describes and claims an improved exercise monitoring
`
`device that tracks a user’s activity, and reports key fitness metrics back to the user.
`
`(See generally, ‘212 Patent, “Summary of the Invention”). The device includes a
`
`pedometer, which is a portable electromechanical device for determining the
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`distance a person travels on foot. (‘212 Patent, 1:17-18). The inventions claimed
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`in the ‘212 Patent were born out of the inventor’s research into ways of solving
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`problems with prior art pedometers. (Id. at 2:8-11). At the time of invention in
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`1998, prior art pedometers were overly complex devices that produced inaccurate
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`distance determinations. (Id.). Complexity and inaccuracy are serious problems
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`because they tend to defeat the purpose of the pedometer, which is to provide a
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`wearable device that informs the user of the distance he or she has walked or run.
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`(Id. at 1:12-18).
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`2
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`The background section of the ‘212 Patent surveys half a dozen prior art
`
`pedometers. (Id. at 1:19-2:7). This survey shows that, at the time of invention,
`
`prior art pedometers consisted of a variety of different structural components and
`
`configurations, different distance determination techniques, and different
`
`calibration procedures (if any). (Id.). For example, the ‘212 Patent first describes
`
`a complex and inaccurate design with at least three separate components: a pair of
`
`leg-mounted ultrasonic modules and a wrist-mounted display. (Id. at 1:19-27). In
`
`this design, distance is determined by directly measuring the length of each stride,
`
`which in turn is measured by passing sound waves between ultrasonic modules
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`worn on a user’s legs. (Id.). This design involves “a variety of measurement
`
`errors.” (Id.). Because stride length is measured directly, no calibration is
`
`required. (See id.).
`
`The ‘212 Patent next describes another complex and inaccurate design with
`
`a heel-mounted device and stay-at-home computer. (Id. at 1:28-46). In this design,
`
`distance is determined based on the length of time each stride lasts. (Id.). This
`
`design involves an overly complex calibration process and produces “inherent
`
`errors.” (Id.). Also, this design uses a stay-at-home computer, detachably
`
`connected to the heel-mounted device by cabling, to determine distance. (Id.).
`
`This device cannot provide users with real-time distance determinations, and users
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`do not know how far they walked or ran until returning home. (Id.).
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`3
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`The ‘212 Patent describes several more prior art pedometers. In at least
`
`three such designs, distance determinations are inaccurate because they rely on a
`
`single, fixed stride length. (Id. at 1:47-2:2). The reliance on a single, fixed stride
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`length is problematic because, in real life, stride length varies with speed (or stride
`
`rate). Running strides are longer than walking strides. (Id. at 1:54-55). Thus, a
`
`single, fixed stride length may underestimate or overestimate distance travelled
`
`depending on how quickly or slowly the user is moving his or her legs back and
`
`forth. (Id.). As a result, these designs require an overly complex calibration
`
`process that must be repeated whenever the user switches from walking to running,
`
`or vice versa. (Id. at 1:63-65). In still another prior art design described in the
`
`‘212 Patent, stride rates are used not to determine the user’s distance at all, but
`
`rather the user’s pace (e.g. minutes per mile). (Id. at 2:3-7).
`
`To overcome the problems of complexity and inaccuracy, the inventor
`
`conceived of a novel pedometer that reduced design complexity, increased distance
`
`calculation accuracy, and improved calibration efficiency. (Id. at 2:15-26). This
`
`invention is reflected, for instance, in claim 6 of the ‘212 Patent:
`
`6. A pedometer comprising:
`
`a step counter;
`
`a transmitter in communication with the step counter to generate a step
`count signal corresponding to each step and transmit the step count
`signal;
`
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`4
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`a receiver mountable on a user body portion to receive the step count
`signal transmitted from the transmitter; and
`
`a data processor programmed to calculate a distance traveled by
`multiplying a number of steps counted by a stride length that varies
`according to a rate at which steps are taken, and further
`programmed to derive an actual stride length from a range of stride
`lengths calculated from a range of corresponding stride rates.
`
`(Id., claim 6). The step counter is configured to count the number of steps the user
`
`takes (as opposed to, for example, measuring the length of each step). (Id. at 3:7-
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`8). A transmitter, in communication with the step counter, is configured to
`
`generate a step count signal corresponding to each step (as opposed to, for
`
`example, a signal representing the sum of all steps taken). The transmitter is also
`
`configured to transmit the step count signal to a receiver, which in turn is
`
`mountable on a user body portion (as opposed to, for example, positioned on a
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`fixed stay-at-home computer). The pedometer also includes a data processor (as
`
`opposed to, for example, no processor at all). The data processor is programmed to
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`determine the distance travelled by multiplying the step count by a stride length (as
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`opposed to, for example, directly measuring stride length).
`
`Although claim 6 of the ‘212 Patent recites the fact that stride length varies
`
`according to stride rate, the claim does not stop there. It recites a programmatic
`
`mechanism that allows a pedometer to leverage the fact that stride length varies
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`5
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`according to stride rate. But, knowing that stride length varies according to stride
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`rate for most individuals does not inform several related questions necessary to
`
`make a useful, working pedometer: (1) Does stride length vary according to stride
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`rate for the particular individual wearing the pedometer? (2) If so, by how much
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`does stride length vary according to stride rate? (3) How can a pedometer measure
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`the relevant physiological parameter(s) in order to make these determinations?
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`Claim 6 provides claim elements that address these questions. Specifically, the
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`data processor must derive the stride length used to make the distance
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`determination from a range of stride lengths. These stride lengths are, in turn,
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`calculated from a range of stride rates (i.e., number of strides over some period of
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`time).
`
`Remaining independent claims 1, 2, and 5 of the ‘212 Patent expand on
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`claim 6 in several ways. They each claim a strap-mounted device “for releasably
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`securing the exercise monitoring device to a user” (as opposed to stationary
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`devices, or ones mounted within footwear or other articles of clothing). Claims 1,
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`2, and 5 also recite a heart rate monitor joined to the strap (as opposed to being
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`located elsewhere on the user’s body). Claims 2 and 5 specifically recite a
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`calibratable pedometer in which the data processor is programmed to select a stride
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`length “with reference to a plurality of calibrations that each calculate a stride
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`length as a function of a known stride rate,” as in claim 2, or “from a range of
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`6
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`stride lengths calculated from a range of corresponding stride rates calculated from
`
`a plurality of calibration samples,” as in claim 5. These calibration features allow
`
`for the selection of a stride length to be used in the distance calculation that more
`
`closely matches the user’s actual stride length, which as a result makes the distance
`
`calculation more accurate.
`
`The ‘212 Patent describes significant advantages of the claimed inventions
`
`over prior art pedometers. It explains that, with the claimed pedometers, unlike
`
`prior art pedometers, repeated calibrations are not required (absent significant
`
`fitness improvements):
`
`This third option for calculating stride length, and subsequently
`distance, speed, and pace, is a far more accurate method than a fixed
`stride length pedometer. This device and method are also practical,
`convenient, and has a relatively low manufacturing cost…. If
`there are no significant improvements in time, then recalibration is
`not necessary.
`
`(‘212 Patent, 6:10-19 (emphasis added)). In short, the claimed pedometers
`
`provided significant advantages for both manufacturers and users.
`
`Petitioner’s Grounds of Challenge
`
`B.
`Petitioner proposes four grounds of challenge for seven of the eight claims
`
`of the ‘212 Patent. (See, e.g., Pet. at 7-8). Claim 4 is not challenged. (Id.). All
`
`grounds of challenge are obviousness grounds. (Id.). Each Ground requires the
`
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`combination of Levi in view of Johnson. (Pet. at 7, 52). Claims 1, 2, 5, and 6 are
`
`independent. Claim 3 depends on claim 2. Claims 7 and 8 directly or indirectly
`
`depend on claim 6. The proposed grounds of challenge are as follows:
`
`No. Ground
`1
`Section 103:
`US Pat. No. 5,583,776 to Levi et al. (“Levi”) +
`PCT Pub. No. WO 87/05229 to Johnson et al. (“Johnson”)
`Section 103:
`Levi + Johnson +
`Knowledge of PHOSITA -or- US Pat. No. 4,387,437 to
`Lowrey et al. (“Lowrey”)
`
`2
`
`3
`
`4
`
`Section 103:
`Levi + Johnson
`Section 103:
`Levi + Johnson1 +
`Knowledge of PHOSITA -or- US Pat. No. 5,724,265 to
`Hutchings (“Hutchings”)
`
`Claims
`1, 2, 5
`
`3
`
`6-8
`
`6-8
`
`(Pet. at 7-8 and 52). Throughout this Preliminary Response, for ease of
`
`understanding, the Patent Owner will refer to these prior art references by the
`
`inventor names indicated above.2
`
`
`
` 1
`
` The chart of proposed grounds at page 8 of the Petition does not match the
`argument later made at page 52 which includes Johnson in combination.
`
`
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`8
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`Petitioner’s Proposed Claim Constructions
`
`C.
`Petitioner offers proposed claim constructions for three terms. (Pet. at 11-
`
`17). At least some of those proposed constructions are incorrect. However, the
`
`resolution of the parties’ claim construction disputes is unnecessary for the Board’s
`
`evaluation of the Petition for institution. As explained below, the Petition contains
`
`several fatal flaws that prevent institution. Accordingly, for the sake of brevity,
`
`Patent Owner does not present its own proposed constructions at this preliminary
`
`stage, and reserves its right to do so at the appropriate time.
`
`D. Level of Skill of a Person Having Ordinary Skill in the Art
`Petitioner offers two alternative sets of qualifications for a person having
`
`ordinary skill in the art:
`
`A person having ordinary skill in the art (PHOSITA) of the ’212
`patent as of October 1998 would have been a [1] person with a
`bachelor’s degree in mechanical engineering, electrical engineering,
`or a similar field with at least two years of experience in motion
`tracking, motion analysis, inertial sensing, or signal analysis or [2] a
`person with a master’s degree in mechanical engineering, electrical
`
`
`
` 2
`
` Patent Owner reserves its right to present further argument and evidence related
`to these prior art references and the content of the Petition and supporting Exhibits
`later in this proceeding, consistent with the Board’s rules and practices. No waiver
`is intended by any argument withheld by Patent Owner at this preliminary stage.
`
`
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`engineering, or a similar field with a specialization in motion tracking,
`motion analysis, inertial sensing, or signal analysis.
`
`(Pet. at 10-11). For the purposes of this inter partes review, Patent Owner agrees
`
`with this formulation for a person having ordinary skill in the art.
`
`
`
`One aspect of these qualifications of a skilled artisan warrants heightened
`
`emphasis. Although degrees in electrical engineering or mechanical engineering
`
`are broadly applicable, the specific experience (i.e., motion tracking, motion
`
`analysis, inertial sensing, or signal analysis) of one having ordinary skill in the art
`
`is related to the field of exercise monitoring. Indeed, Petitioner’s expert, Dr. Fyfe,
`
`emphasizes his own patents in “the field of motion analysis and exercise
`
`monitoring.” (Pet. EX. 1002 at 3). This is expected, since the ‘212 Patent claims an
`
`exercise monitoring device.
`
`
`
`Petitioner does not claim, however, that one of skill in the art of the ‘212
`
`Patent would have particular experience or expertise in “navigational systems” or
`
`specifically “portable navigational systems that use radionavigational data and
`
`dead reckoning,” such as those described in its primary reference. (See Levi, 1:8-
`
`11). Therefore, Petitioner bears the difficult burden of showing why one of skill in
`
`the fields associated with the ‘212 Patent would have looked to a separate,
`
`unrelated field to construct an exercise monitoring device.
`
`
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`10
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`The Levi Reference (U.S. Pat. No. 5,583,776) Concerns a Dead
`E.
`Reckoning Navigational System
`
`All of Petitioner’s grounds for invalidity rely on Levi as a primary reference.
`
`The Levi reference, however, discloses a navigational tool that is very different –in
`
`both purpose and function – from the ‘212 Patent. Levi discloses a “navigational
`
`system” that “use[s] radionavigational data and dead reckoning3 for foot
`
`navigation.” (Levi, 1:8-11).
`
`The term “dead reckoning” (DR) refers to a position solution that is
`obtained by measuring or deducing displacement from a known
`starting point in accordance with motion of the user. Two types of
`DR are known: inertial navigation and compass/speedometer.
`
`(Levi, 1:13-17). Specifically, the system disclosed in Levi tracks the location of a
`
`user using a Global Positioning System (“GPS”), and “during GPS outages” uses
`
`dead reckoning to “continuously track[] the user’s position without reference to
`
`external aids or signals.” (Id. at 2:13-15). During these outages, the dead reckoning
`
`sub-system in Levi uses “a digital electronic compass with both a silicon
`
`
`
` 3
`
` Dead reckoning is generally known as “[t]he process of calculating one’s
`position, especially at sea, by estimating the direction and distance travelled rather
`than by using landmarks or astronomical observations.” See
`https://en.oxforddictionaries.com/definition/dead_reckoning.
`
`
`
`
`11
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`pedometer and a barometric altimeter . . . used in complementary configuration
`
`with digital electronic maps” to estimate a user’s map position. (Id. at 2:6-9).
`
`Levi estimates the user’s location by noting a user’s last known position (i.e.
`
`the location where GPS coverage was lost) and then calculating a “displacement”
`
`(i.e., “a vector with North and East components” (id. at 10:3-4)) from that position.
`
`Levi’s dead reckoning system determines the user’s displacement by “calculat[ing]
`
`an incremental change in position from a known starting point” (id. at 8:43-44)
`
`using a step size estimate (derived from step data) and direction (from the
`
`electronic compass). (Id. at 4:60-5:1). This displacement is calculated for each step
`
`the user takes, and added incrementally to estimate a new three-dimensional digital
`
`map coordinate. (Id. at 5:17-19 (“component displacements are added to separate
`
`North and East accumulators, and are used to calculate the total displacement from
`
`the starting point”)).
`
`The step-by step “displacement” measurements in Levi are fundamentally
`
`different from the “distance” measurements in the ‘212 Patent. This difference can
`
`be illustrated by comparing how the two systems would monitor a user who walks
`
`a single lap on a standard (i.e., quarter-mile) track. The device claimed in the ‘212
`
`Patent, because it is concerned with reporting only one-dimensional distance, will
`
`count the user’s steps and multiply the number of steps taken by varying step
`
`lengths (depending on the rates at which the steps are taken), and will output a total
`
`
`
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`12
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`distance of .25 miles after one lap of the track (assuming that the device was
`
`accurately calibrated). The Levi device, on the other hand, would continually
`
`monitor the three-dimensional displacement of the user (i.e., the user’s position
`
`relative to the starting point), and after that same lap of the track, will report a
`
`current position with zero net displacement, because the user starts and ends in the
`
`same spot. (See Levi, 10:9-12 (“a circular path has high error. Even though the
`
`total distance may be large, the net displacement is small”)).
`
`III. ARGUMENT: THERE IS NOT A REASONABLE LIKELIHOOD
`THAT THE CHALLENGED CLAIMS OF THE ‘212 PATENT ARE
`UNPATENTABLE.
`A. All Grounds: Petitioner Fails to Show that Its Primary Reference
`(Levi) Is Analogous Art as Required.
`
`Petitioner has the burden to show that Levi is analogous art to the ‘212
`
`Patent. See Schott Gemtron Corp. v. SSW Holding Co., IPR2013-00358, Final
`
`Written Decision at 26 (PTAB Aug. 20, 2014) (Paper 106) (2014 WL 4181969),
`
`aff'd per curiam, 612 Fed. Appx..614 (Mem) (Fed. Cir. 2015) (Non-Precedential)
`
`(“Petitioner bears the burden of showing by a preponderance of the evidence that
`
`the asserted prior art references are analogous art and otherwise combinable”). In
`
`this regard, the Petition fails because Petitioner fails to show that Levi is properly
`
`considered as part of an obviousness combination. “In order to rely on a reference
`
`as a basis for rejection of the applicant’s invention, the reference must either be in
`
`the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the
`
`
`
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`13
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`particular problem with which the inventor was concerned.” In re Oetiker, 977
`
`F.2d 1443, 1447 (Fed. Cir. 1992). The Federal Circuit “ha[s] explained that this
`
`test begins the inquiry into whether a skilled artisan would have been motivated to
`
`combine references by defining the prior art relevant for the obviousness
`
`determination, and that it is meant to defend against hindsight.” In re Kahn, 441
`
`F.3d 977, 987 (Fed. Cir. 2006). Here, Petitioner has not shown, because it cannot
`
`show, that Levi is either from the same field as the ‘212 Patent, or that Levi
`
`reasonably pertains to the problems addressed by the ‘212 Patent. Rather,
`
`Petitioner impermissibly relies on hindsight by looking to Levi when, in fact, a
`
`PHOSITA would not have done the same, as explained below. Accordingly, Levi
`
`is not properly considered in an obviousness combination as against the ‘212
`
`Patent. And because every ground of challenge in the Petition relies on Levi as
`
`part of an obviousness combination (Pet. at 7-8), Petitioner’s failure in this regard
`
`is fatal to the entire Petition.
`
`1.
`
`Levi Is From a Different Field of Endeavor From the ‘212
`Patent.
`
`Petitioner fails to show that Levi and the ‘212 Patent are from the same field
`
`of endeavor. For this prong of the “analogous” art test, the Federal Circuit requires
`
`the “same” field, not a related field. See K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
`
`1364, 1375 (Fed. Cir. 2012). In attempting to show that Levi is from the same
`
`field as the ‘212 Patent, Petitioner incorrectly asserts that “[t]he ‘212 Patent and
`
`
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`14
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`Levi both relate to pedometers that count the number of steps taken to calculate
`
`distance travelled.” (Pet. at 22). Although the ‘212 Patent “relates generally to
`
`pedometers” in the context of exercise monitoring devices (‘212 Patent, 1:9-16 &
`
`2:8-12), Levi does not. Levi is instead from the field of navigational systems. As
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`Levi explains, Levi “relates generally to navigational systems and, in particular, to
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`electronic, portable navigation systems that use radionavigational data and dead
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`reckoning for foot travel.” (Levi, 1:7-11). Levi further explains that these
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`“position finding system[s] … allow[] individual positions to be monitored by a
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`central coordinating facility” using Global Positioning System (GPS) data and
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`digital maps.4 (Id., Abstract).
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`Neither Petitioner nor its expert explains why navigational systems are from
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`the same field as exercise monitoring devices. (Pet. at 22; Ex. 1002 ¶ 73). The
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`fact of the matter is that they are not. Navigational systems determine the
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`geographic location of a user to help the user find his or her way. Exercise
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` 4
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` Although Petitioner’s expert cites a portion of Levi referring to “pedometer” as
`one component of the Levi system (Ex. 1002 ¶ 73 (citing Levi, 2:5-8)), it is clear
`that this component is part of a larger navigation system for determining the user’s
`position, not an exercise monitoring device: “The navigation system of the present
`invention [in Levi] combines a … compass with both a … pedometer and a[n] …
`altimeter to generate a … computerized DR [dead reckoning] system … [that]
`tracks the user’s position.” (Levi, 2:5-14).
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`monitoring devices, by contrast, monitor users’ physical activity. Navigating and
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`monitoring exercise levels are independent of one another. While exercise
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`monitoring devices may determine the distance travelled by the user, the distance
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`determination is made in order to measure physical activity, and that determination
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`is made irrespective of geographical location, and without any need to know, or
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`desire to determine, the user’s geographical location. Accordingly, Petitioner fails
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`to establish that Levi is from the same field as the ‘212 Patent.
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`Levi Pertains to Different Problems.
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`2.
`Petitioner also fails to establish that Levi reasonably pertains to the problems
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`addressed by the ‘212 Patent, which is the only other way Petitioner could have
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`established that Levi was “analogous” and thus properly considered in an
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`obviousness combination. “A reference is reasonably pertinent if it, as a result of
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`its subject matter, logically would have commended itself to an inventor’s attention
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`in considering his problem.” K-TEC, 696 F.3d at 1375. Neither Petitioner nor its
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`expert identify the problems addressed by the ‘212 Patent or Levi (Pet. at 22; Ex.
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`1002 ¶ 73). And, the only portion of Levi cited by Petitioner’s expert does not say
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`anything about problems solved by Levi and only purports to describe the Levi
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`system. (Ex. 1002 ¶ 73 (citing Levi, 2:5-8)). Petitioner’s failure to articulate its
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`reasoning on this point is fatal to the Petition. See K-TEC, 696 F.3d at 1375
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`(concluding that challenger of patent failed to establish that prior art was
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`“reasonably pertinent” because “the [expert’s] report was silent on the question of
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`why [the inventor] would have looked to non-blending containers” when the
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`problems the inventor sought to address related to blenders).
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`In fact, the only “reasoning” Petitioner and its expert provide to support the
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`notion that Levi is reasonably pertinent to the problems faced by the ‘212 Patent is
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`a single conclusory statement. (Pet. at 22 (“Levi is in the same field of endeavor as
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`and is reasonably pertinent to the claimed invention as [sic] the ‘212 Patent”); Ex.
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`1002 ¶ 73 (“Levi and Johnson are reasonably pertinent to the problem faced by the
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`‘212 Patent”)). This is insufficient to carry Petitioner’s burden. See Schott
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`Gemtron, IPR2013-00358. And, in fact, the ‘212 Patent and Levi address different
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`problems, which stems from the fact that, as discussed above, they are from
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`different fields of endeavor. According to the ‘212 Patent, the problems addressed
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`by the ‘212 Patent all relate to exercise monitoring:
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`Thus, there is a need for a simple, but highly accurate, pedometer that
`displays distance traveled, pace, speed, heart rate, and other important
`information on an easily read wrist-mounted device.
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`(‘212 Patent, 2:8-12). The ‘212 Patent thus recognizes a need to improve
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`pedometer distance calculations, among other exercise monitoring facilities such as
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`heart rate monitoring, in order to monitor the user’s physical activity levels more
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`accurately.
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`IPR2017-01058 – Patent Owner’s Preliminary Response
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`By contrast, the problems addressed by Levi relate to navigation,
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`particularly in the context of radionavigational data provided by satellite systems.
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`Specifically, as Levi explains, Levi relates to providing additional navigational
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`capability – i.e., more information about the user’s position – in the absence of
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`radionavigational data from satellites:
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`GPS data can be either unreliable or unavailable due to antenna
`shading, jamming, or interference. The present invention discloses
`incorporation of DR [dead reckoning] functions with GPS position
`information, thus providing the individual foot traveler with an
`autonomous navigation capability.
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`(Levi, 1:59-63). The problems addressed by Levi thus relate to geographic
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`position determinations, not distance determinations that are entirely agnostic as to
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`geographic position. These differences are particularly evident in the context of
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`exercising in place (e.g., on a treadmill), where an exercise monitoring device will
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`register and measure significant activity but where a navigation device wi