Paper No. 8
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`Trials@uspto.gov
`571-272-782 Entered: March 12, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02012
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
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`
`
`Trials@uspto.gov
`571-272-782 Entered: March 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02012
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
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`IPR2017-02012
`Patent 6,434,212
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`
`INTRODUCTION
`
`Fitbit, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 2, 5, and 6 of U.S. Patent No. 6,434,212 B2 (Ex. 1001, “the
`’212 patent”) (Paper 1 (“Pet.”)). Blackbird Tech LLC (“Patent Owner”)
`filed a Preliminary Response (Paper 7 (“Prelim. Resp.”)).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314, which provides that an inter partes review
`may not be instituted unless the information presented in the petition “shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we institute an inter partes review of
`claims 2, 5, and 6 of the ’212 patent.
`
`
` BACKGROUND
`
`Related Matters
`The parties advise us that the ’212 patent is at issue in the following:
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Sony Corp. et
`al., Case No. 16-CV-685 (D. Del.),
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Timex Group
`USA, Inc., Case No. 16-CV-686 (D. Del.),
`Blackbird Tech LLC d/b/a Blackbird Technologies v. TomTom, Inc.,
`Case No. 16-CV-687 (D. Del.),
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Wahoo Fitness,
`Inc., Case No. 16-CV-688 (D. Del.)
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`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Garmin
`International, Inc. and Garmin USA, Inc., Case No. 16-CV-689 (D. Del.),
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Fitbit, Inc., Case
`No. 16-CV-683 (D. Del.), and
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Aliphcom d/b/a
`Jawbone, Case No. 16-CV-684 (D. Del.),
` (Pet. 4–5; Paper 4, 2).
`Additionally, the ’212 patent is at issue in IPR2017-01058 (Garmin
`International, Inc. v. Blackbird Tech LLC d/b/a Blackbird Technologies),
`now terminated; and IPR2017-02023 and IPR2017-02025 (TomTom, Inc. v.
`Blackbird Tech LLC d/b/a Blackbird Technologies).
`
`
`The ’212 Patent
`The ’212 patent, entitled “Pedometer,” relates to a “pedometer having
`improved accuracy by calculating actual stride lengths of a user based on
`relative stride rates” (’212 patent, Abstract). More particularly, the patent
`relates to “pedometers having a waist mounted stride-counting device and
`transmitter, and a wrist-mounted receiver and display” (id. at 1:9–11). The
`device calculates a distance walked or run based on converting a base stride
`length and a base stride rate to an actual stride length and using that to
`calculate distance traveled (id. at 1:12–16).
`Specifically, a step counter which is an inertia device, counts the
`number of steps a user takes (id. at 3:7–8). A data processor includes a data
`archive that stores historic data on stride length and pace and closed loop or
`fuzzy logic programming that continually or periodically replaces the base
`
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`stride rate and length with recently calculated stride rates and lengths (id. at
`3:39–47).
`The pedometer of the ’212 patent may optionally require the user to
`operate a “sampling mode” (id. at 3:56–57). In this mode, a user walks or
`runs a predetermined distance with the distance then divided by the number
`of strides counted (id. at 3:58–62). The result is the average stride length,
`which is stored in the data archive as the “Base Stride Length” (id. at 3:62–
`64). The data processor further divides the number of strides by the time of
`the run or walk to calculate a “Base Stride Rate” (id. at 3:65–67). According
`to the ’212 patent, using a fixed average stride length does not account for
`changes in the user’s pace or improved performance (id. at 4:19–29). To
`correct for this, a “Use Mode” is activated that causes the data processor to
`calculate an “Actual Stride Rate” (id. at 4:30–33). The “Actual Stride Rate”
`is calculated periodically, based on data from the stride counter and the
`clock (id. at 4:30–36). An “Actual Stride Length” is calculated by
`determining a percentage change between the Actual Stride Rate and the
`Base Stride Rate (id. at 4:36–38). More specifically, the Actual Stride
`Length is calculated by:
`Actual Stride Length=Base Stride Length + Base Stride Length
`*(((Actual Stride Rate-Base Stride Rate)N)/Base Stride Rate)
`Where: N=1 When Actual Stride Rate is less than or equal to
`Base Stride Rate multiplied by 1.02, and N=3 When Actual
`Stride Rate is greater than Base Stride Rate multiplied by 1.02,
`although other N values in the range of one to three can be used
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`(id. at 4:50–58). To further improve accuracy, an N value is derived for the
`user by using a number of samples to establish Stride Length and N (id. at
`5:1–6:9).
`Once the actual stride length is calculated for a given period of
`time, the value can be multiplied by the number of strides in that
`period to obtain a total distance for that period to be stored in a
`data archive file for that particular walk or run and added to other
`actual stride lengths or distances for other periods in which stride
`length was calculated
`(id. at 6:34–38).
`
`
`Challenged Claims
`Petitioner challenges independent claims 2, 5, and 6 of the ’212 patent
`(Pet. 6–7). Claim 2 is illustrative of the challenged claims and is reproduced
`below:
`2.
`
`An exercise monitoring device comprising:
`a strap for releasably securing the exercise monitoring
`device to a user;
`a step counter joined to the strap;
`a heart rate monitor joined to the strap; and
`a data processor programmed to calculate a distance
`traveled by multiplying a number of steps counted by the
`step counter by a stride length that varies in accordance
`with a stride rate, wherein the stride length is determined
`with reference to a plurality of calibrations that each
`calculate a stride length as a function of a known stride
`rate.
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`Prior Art Relied Upon
`Petitioner relies upon the following references in asserting the
`unpatentability of claims 2, 5, and 6 of the ’212 patent (Pet. 6):
`
`References
`
`Patent Number
`
`Exhibit
`
`Amano, et al., (hereinafter, “Amano”)
`Kato et al. (hereinafter, “Kato”)
`
`US 6,241,684 B1
`US 5,033,013
`
`1003
`1004
`
`Petitioner also relies on the Declaration of Dr. Tanzeem Choudhury
`(Ex. 1005) (hereinafter “Choudhury Decl.”).
`
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the claims of the ’212 patent
`on the following grounds (Pet. 6–7):
`Claim(s)
`Basis
`References
`
`§ 102
`§ 103
`§ 103
`
`Amano
`Amano
`Kato and Amano
`
`2 and 5
`2 and 5
`6
`
`
`
` ANALYSIS
` Claim Construction
`In an inter partes review, a district court-type claim construction
`approach may be applied if a party requests such a construction and certifies
`that the involved patent will expire within 18 months from the entry of the
`Notice of Filing Date Accorded to Petition, in a motion under 37 C.F.R.
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`§ 42.20 within thirty days from the filing of the petition (37 C.F.R.
`§ 42.100(b)). Here, Petitioner submitted an Motion for District Court-Type
`Claim Construction in accordance with 37 C.F.R. § 42.100(b), certifying that
`the challenged patent will expire within 18 months of the entry of the Notice
`of Filing Data Accorded to Petition, indicating Patent Owner did not oppose
`the motion (Paper 6). Patent Owner did not file an opposition within one
`month as permitted under 37 C.F.R. § 42.25(a)(1); rather, Patent Owner
`asserted in the Preliminary Response that district court-type claim
`construction should apply (Prelim. Resp. 14).
`Under district court-type claim construction, claim terms are given
`their ordinary and customary meaning, as would be understood by a person
`of ordinary skill in the art, at the time of the invention, in light of the
`language of the claims, the specification, and the prosecution history of
`record (Phillips v. AWH Corp., 415 F.3d 1313 (Fed. Cir. 2005) (en banc);
`see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims
`are generally given their broadest possible scope during prosecution, the
`Board’s review of the claims of an expired patent is similar to that of a
`district court’s review.”) (internal citation omitted)).
`Petitioner proposes “step counter” should be interpreted as proffered
`by Patent Owner in the District Court litigation –– “a device that collects
`data to generate step count” (Pet. 27 (citing Ex. 1008, 1; Ex. 1009, 1)).
`Petitioner asserts interpretation of the term is not necessary because
`“Petitioner’s proposed construction is narrower than Patent Owner’s
`proposed construction” and the prior art discloses the recited step counter
`(id. at 27–28). Petitioner does, however, assert the Board should adopt
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`Petitioner’s construction based upon Patent Owner’s proffered interpretation
`(id. at 28).
`Patent Owner agrees that “[t]o the extent the Board believes it is
`necessary to construe ‘a step counter,’ Patent Owner believes that it should
`be construed as ‘a device that collects data to generate a step count’”
`(Prelim. Resp. 14).
`We grant Petitioner’s Motion for District Court-Type Claim
`Construction in this case and, therefore, we interpret the challenged claims
`in accordance with the standard set forth in Phillips.1. Based on the record
`before us, because both Petitioner and Patent Owner agree as to the
`interpretation of “step counter,” and because, on the present record, we
`determine this interpretation is consistent with a district-court type
`interpretation and consistent with the Specification, we construe “step
`counter” as “a device that collects data to generate step count.”
`We need not construe explicitly any of the other claim terms
`discussed by the parties for purposes of this Decision (see Wellman, Inc. v.
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that
`“claim terms need only be construed ‘to the extent necessary to resolve the
`controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be
`construed, and only to the extent necessary to resolve the controversy)))).
`
`
`1 See Black & Decker, Inc. v. Positec USA, Inc., 646 F. App’x 1019, 1024
`(Fed. Cir. 2016) (unpublished) (holding that in an inter partes review,
`“[c]laims of an expired patent are given their ordinary and customary
`meaning in accordance with our opinion in [Phillips]”).
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`Level of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991))).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention
`would have been [1] a person with a bachelor’s degree in
`mechanical engineering, electrical engineering, computer
`science, 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 engineering, computer science, or a
`similar field with a specialization in motion tracking, motion
`analysis, inertial sensing, or signal analysis
`or “[a] person with less education but more relevant practical
`experience. . . .” (Pet. 26–27 (citing Choudhury Decl. ¶ 45–47). Patent
`Owner does not appear to dispute the educational level or experiential
`aspects of Petitioner’s definition.
`At this stage in the proceeding, we determine that Petitioner’s
`description of a skilled artisan as possessing (1) a bachelor’s degree in
`mechanical engineering, electrical engineering, computer science, or a
`similar field with at least two years of experience in motion tracking, motion
`analysis, inertial sensing, or signal analysis, or (2) a master’s degree in
`mechanical engineering, electrical engineering, computer science, or a
`similar field with a specialization in motion tracking, motion analysis,
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`inertial sensing, or signal analysis, is supported by the current record. For
`purposes of this Decision, therefore, we adopt Petitioner’s description.
`We note also that the applied prior art reflects the appropriate level of
`skill at the time of the claimed invention (see Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001)).
`
` Overview of the Asserted Prior Art
`1. Amano
`Amano is a patent entitled “Exercise Workout Support Device”
`(Amano, [54]). Amano is “suitable for use in a maximum oxygen uptake
`quantity estimating device, which enables the user to determine his own
`maximum oxygen uptake quantity easily” (Amano, 1:9–12). Amano’s
`system includes a pulse wave detector thatdetects the user’s pulse waveform;
`a body motion detector that detects body motion when the user is running; a
`recorder to record information relating to user’s stride, sex, and weight; and
`an exercise intensity calculator that calculates exercise intensity from an
`obtained pitch, user’s stride and body weight (id. at 7:6–7, 18–19, 27–28,
`29–31).
`The pulse wave detector is a sensor that detects the user’s pulse
`waveform that, because the heartbeat rate equals the pulse rate, is assumed
`to be the heartbeat rate (id. at 7:13–14). The body motion detector obtains
`“[t]he pitch during running, i.e., the number of steps per unit time. . .” (id. at
`7:24–26). Amano describes when a user is running, “(1) an acceleration
`signal accompanying vertical motion, and (2) an acceleration signal
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`accompanying the swinging motion of the arms are superimposed in the
`body motion signal at body motion detector 104” (id. at 11:19–23).
`The exercise intensity calculator calculates exercise intensity from the
`obtained pitch and the user’s stride and body weight (id. at 7:30–32).
`Exercise intensity may be calculated as distance run per unit time and the
`user’s body weight (id. at 7:33–35). “The distance run per unit time can be
`obtained by multiplying the [user’s] stride and pitch” (id. at 7:35–37).
`
`2. Kato
`Kato is a patent entitled “Method and Apparatus for Measuring the
`Amount of Exercise” (Kato, [54]). Kato is directed to “[a] method and
`apparatus for accurately measuring an amount of exercise taken by a walker
`in terms of a walking speed, the distance traveled[,] and the energy
`consumed” (id. at Abstract). Kato construes the term “walker” as including
`“literally a walking person,” “a jogger[,] and a runner,” and construes the
`terms “walking” or “walk” as including “its literal meaning,” “jogging[,] and
`running” (id. at 3:59–63).
`Kato teaches a detector 100 “designed to detect impacts made by the
`contacts of the foot of a walker with the ground, i.e., the steps of a walker”;
`processing means 106 for processing data received from the detector with
`other data including walker information; and display means 120 for
`receiving the processed data from processing means 106 (id. at 6:58–7:16,
`Fig. 3). Transmitter 104, attached to detector 100, allows detector 100 to
`communicate with wireless receiver 110 which is attached to processing
`means 106 (id. at 6:67–7:4, Fig. 3).
`
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`Prosecution History and Multiple Petitions
`
`1. Kato – Prosecution History
`Patent Owner contends we should exercise our discretion under 35
`U.S.C. § 325 (d) and deny institution of claim 6 under 35 U.S.C. § 103,
`because Kato was previously considered by the Examiner during prosecution
`(Prelim. Resp. 54). Specifically, Patent Owner asserts Kato was considered
`during prosecution of the parent application (U.S. Patent No. 6,175,608
`(hereinafter “’608 patent”)), “with claims nearly identical” to those in the
`’212 patent (id. at 21, 54). Specifically, Patent Owner contends the
`Examiner conducted an interview which Patent Owner summarized as
`follows:
`In the June 12. 2000 interview. Examiner Wambach indicated that
`Kato, U.S. Patent No. 5,033,013 and Hutchings, U.S. Patent Nos.
`5,724.265 and 5,899,963 disclosed a correspondence between stride
`rate and stride length. Consequently, any claims based on this broad
`concept were not allowable, but claims reciting a specific algorithm
`for deriving a range of stride lengths for a pedometer in combination
`with a heart rate monitor are allowable
`
`(Id. at. 21 (citing Ex. 1006, 31–32) (emphasis added)). Thus, according to
`Patent Owner, because the Examiner relied on Kato during prosecution of
`the ’608 patent, and the claims of the ’608 patent and the ’212 patent are
`nearly identical, the Board should exercise its discretion under 35 U.S.C.
`§ 325 (d) and decline to institute on claim 6.
`Based on the record before us, we are not persuaded. The Examiner
`indicated Kato and an additional reference were discussed and “[i]nventive
`subject matter from the disclosure was discussed in order to amend the
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`claims such that they defined over the prior art” (Ex. 1006, 33). Patent
`Owner thus amended the claims to overcome the Kato reference (id. at 30–
`31). Claim 6 of the ’212 patent is not identical to the claims of the ’608
`patent and in particular, the limitations regarding calculation of a distance
`traveled in claim 6 of the ’212 patent are recited differently than those in the
`’608 patent. More importantly, Patent Owner contends the “claims reciting
`a specific algorithm for deriving a range of stride lengths for a pedometer in
`combination with a heart rate monitor are allowable” (Prelim. Resp. 21
`(citing Ex. 1006, 31–32) (emphasis added)). In this Petition, Petitioner relies
`on Amano for teaching the “deriv[ation] of an actual stride length from a
`range of stride lengths calculated from a range of corresponding stride rates”
`(Pet. 72–74) and this reference was not considered by Examiner.
`Therefore, based on the record before us, we are not persuaded by
`Patent Owner’s argument.
`
`2. Multiple Petitions
`Patent Owner asserts four other petitions for inter partes review have
`been filed on this patent and thus, we should deny the Petition under 35
`U.S.C. § 314(a) and/or § 325(d) (Prelim. Resp. 56). Institution of an inter
`partes review is discretionary (see 35 U.S.C. § 314(a) (authorizing
`institution of an inter partes review under particular circumstances, but not
`requiring institution under any circumstances); 37 C.F.R. § 42.108(a) (“the
`Board may authorize the review to proceed”) (emphasis added); Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining
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`that under § 314(a), “the PTO is permitted, but never compelled, to institute
`an IPR proceeding”)).
`“In exercising discretion under 35 U.S.C. § 314(a) … we are mindful
`of the goals of the AIA–namely, to improve patent quality and make the
`patent system more efficient by use of post-grant procedures” (General
`Plastic Indus. Co., Ltd. V. Canon Kabushiki Kaisha, Case IPR2016-01357,
`slip op. at 16 (PTAB Sept. 16, 2017) (Paper 19) (citing H.R. Rep. No.112-
`98, pt.1, at 40 (2011))). We view the following factors as relevant to that
`concern, and therefore helpful in deciding whether to exercise our discretion
`to not institute review:
`(1) whether the same petitioner previously filed a petition directed to
`the same claims of the same patent,
`
`(2) whether the petitioner knew or should have known of the prior art
`asserted in the later petition when it filed its earlier petition, and
`
`(3) whether at the time of filing of the later petition, the petitioner
`already received the patent owner’s preliminary response to the first
`petition or received the Board’s decision on whether to institute
`review in the earlier petition,
`
`(4) the length of time that elapsed between when the petitioner had the
`patent owner’s or Board’s analysis on the earlier petition and when
`petitioner filed the later petition, and
`
`(5) whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions directed to
`the same claims of the same patent;
`
`(6) the finite resources of the Board; and
`
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`(7) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the
`Director notices institution of review
`(IPR 2016-01357, Paper 19, 9–10 (citations omitted)).
`
`Here, Petitioner has not previously filed a petition directed to the ’212
`patent. Once resolution of factor 1 indicates that Petitioner had not
`previously filed a petition against the same patent, factors 2–5 bear little
`relevance unless there is evidence in the record of extenuating
`circumstances. Here, we do not find any extenuating circumstances.
`Petitioner filed this petition for inter partes review on August 29, 2017, one
`month before our Decision to Institute in IPR 2017-01058 was instituted.
`Petitioner asserts at filing of this petition, the prior art asserted is “different
`from the prior art asserted in [IPR2017-01058]” and “Petitioner has not yet
`reviewed the content” of the two petitions for inter parties review filed by
`TomTom International, B.V. (Pet. 5).
`Under 35 U.S.C. § 325 (d), “[i]n determining whether to institute or
`order a proceeding . . . the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same
`prior art or arguments previously were presented to the Office.” We
`determine the art is not the same or substantially the same prior art or that
`the arguments were presented previously to the Office. In particular, we
`note neither Amano nor Kato were proffered in the other petitions, IPR2017-
`01058, IPR2017-02023, and IPR2017-02025. Based upon our review of the
`record, we determine the art is not the same or substantially the same prior
`art. Additionally, based on the record before us, we are not persuaded the
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`arguments in this petition were presented previously to the Office.
`Accordingly, based on the record before us, we are not persuaded by Patent
`Owner’s argument that the Petition should be dismissed.
`
`
`
`Alleged Anticipation and Obviousness of Claims 2 and 5 over Amano
`
`1. Analysis
`Petitioner contends that claims 2 and 5 are anticipated by Amano (Pet.
`29–50) and are obvious over Amano (id. at 50–57). Petitioner provides
`supporting testimony from its expert, Mr. Thomas Choudhury (Choudhury
`Decl.).
`Patent Owner asserts Amano does not disclose “programmed to
`calculate a distance travelled by multiplying a number of steps counted by
`the step counter by a stride length that varies in accordance with a stride
`rate” and “a step counter joined to the strap,” as recited in claims 2 and 5,
`and does not disclose all limitations in the same embodiment (Prelim. Resp.
`23–42). With respect to the asserted obviousness ground, Patent Owner
`contends Petitions has not established a motivation to combine the described
`embodiments of Amano (id. at 38–40).
`a. “calculate a distance traveled by multiplying a number of steps
`counted by a stride length that varies in accordance with a stride
`rate”
`Petitioner asserts Amano teaches “multiplying the user’s ‘pitch’ (i.e.,
`number of steps per unit time) by the user’s stride length to determine a
`distance travelled by the user over a period of time” (Pet. 43 (citing
`Choudhury Decl. ¶¶ 106–108)). Specifically, Petitioner contends Amano
`teaches detection of the pitch of running, where “pitch” is defined as “the
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`number of steps per unit time” (id. at 43–44 (citing Amano, 7:24–26, 10:63–
`65, 12:12–15)). Petitioner then asserts Amano discloses “CPU 201
`multiplies the pitch by ‘the subject[‘s] stride which is stored in RAM 203 . .
`. to calculate the distance run by the test subject per unit time” (id. at 44
`(citing Amano, 12:15–18)).
`Patent Owner contends Amano does not disclose this feature as
`asserted by Petitioner (Prelim. Resp. 24). Specifically, according to Patent
`Owner
`Amano discloses a system in which the user’s pitch—the number
`of steps per unit of time or the ‘stride rate,’ as that term is used
`in the ’212 patent—is sampled at time intervals and this sampling
`is used ‘to calculate the distance run by the test subject per unit
`of time
`
`
`(id.). Thus, according to Patent Owner, Amano describes “[d]istance run per
`unit of time” which is “a measure of speed, not distance” (id. at 24–25
`(citing Amano, 12:17–21)). According to Patent Owner, Amano does not
`disclose “calculating the actual distance traversed by the user” (id. at 25).
`Based on the record before us, Petitioner has made a sufficient
`showing that Amano teaches “calculate[ing] a distance travelled by
`multiplying a number of steps counted by the step counter by a stride length
`that varies in accordance with a stride rate” and “a step counter joined to the
`strap,” as recited in claim 2 and commensurately recited in claim 5.
`Specifically, Amano discloses obtaining the pitch (stride rate or “rate at
`which steps are counted”) from the body motion detector (Amano, 7:24–26).
`Amano further discloses the distance run per unit time is calculated by
`
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`multiplying the stride (length) and pitch (stride rate) (id. at 7:34–36).
`Amano describes determining the step count through use of acceleration
`signals (id. at 11:19–40). “[T]he pitch of the running can . . . be detected as
`a result of . . . processing carried out by CPU 201 on the body motion signal
`from body motion detector 104 (id. at 11:50–62). Once the pitch is
`determined, “CPU 201 multiplies the test subject[‘]s stride . . . with the pitch
`detected on the immediately preceding step, to calculate the distance run by
`the test subject per unit time” (Amano, 12:15–18). The unit time is not
`defined explicitly in Amano. We credit Dr. Choudhury’s testimony that
`CPU 201 calculates
`
`
`
`(Pet. 44 (citing Choudhury Decl. ¶ 106)).
`Patent Owner asserts Amano discloses in step Sa3, the test subject’s
`stride is multiplied by the pitch “detected on the immediately proceeding
`step, to calculate the distance run by the test subject per unit of time”
`(Prelim. Resp. 26 (citing Amano, 12:15–18)). Thus, Patent Owner contends,
`Amano describes “multiplying the subject’s stride length by the pitch
`detected on a single step” (id. at 26). Patent Owner points to Figure 7’s
`annotation which states the steps are “EXECUTED EVERY 30S AFTER
`PERMISSION” (id. at 27 (Amano, Fig. 7)).
`We agree with Patent Owner that Petitioner has not shown Amano
`anticipates claims 2 and 5.
`
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`We are persuaded, however, based on the record before us, that
`Petitioner has made a sufficient showing that Amano teaches or suggests
`“calculat[ing] a distance traveled by multiplying a number of steps counted
`by the step counter by a stride length,” as recited in claims 2 and 5.
`b. Embodiments of Amano
`Patent Owner contends that Petitioner’s obviousness challenge fails
`because it does not establish a motivation to combine two embodiments
`(Embodiments 1 and 2) of Amano (Prelim. Resp. 38–40). Petitioner asserts
`that “[a]lthough Amano discloses the varying stride rate under the heading
`‘Embodiment 2,’ Amano states that this second embodiment incorporates all
`the elements of the first embodiment, and merely adds ‘a table in RAM 203
`showing the relationship between pitch and the stride correction coefficient”
`(Pet. 45–46 (citing Amano, 16:40–50)). Patent Owner responds that
`“Amano discloses only that the invention of the second embodiment does
`not require different essential hardware than that of the first embodiment . .
`.” (Prelim. Resp. 30 (citing Amano, 16:39–52)). Amano discloses
`Although there are slight differences between individuals, stride is
`generally viewed to become shorter when the pitch of running is
`increased. However, in the first embodiment, a constant value for
`stride was employed despite the fact that the pitch was increased,
`Since the stride value set in RAM 203 was used without modification.
`Namely, the first embodiment does not take into consideration this
`characteristic of running.
`
`Accordingly, from this perspective, the first embodiment has a flaw in
`that the exercise intensity obtained at step Sa3 tends to be inaccurate.
`
`Thus, in the second embodiment, a table showing the relationship
`between pitch and the stride correction coefficient is obtained in
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`advance and stored. When the pitch changes during running, then the
`stride correction coefficient corresponding to the changed pitch is
`read out, and multiplied by the stride set in RAM 203, so as to correct
`to a stride corresponding to the aforementioned pitch
`
`(Amano 16:20–33(emphases added)). Patent Owner points to a later
`disclosure that states
`Accordingly, the structure of the maximum oxygen uptake quantity
`estimating device according to the second embodiment does not
`include any essential components which must be added to the
`maximum oxygen uptake quantity estimating device according to the
`first embodiment which is shown in FIGS. 1 and 2. Rather, it is merely
`necessary to provide a table in RAM 203 showing the relationship
`between pitch and the stride correction coefficient
`
`(Prelim. Resp. 30–31(emphases added)).
`Based on this disclosure, we are persuaded Amano’s second
`embodiment represents an improvement of the first embodiment by adding a
`table to account for the characteristic of running. Accordingly, at this stage
`of the proceeding, Petitioner has shown sufficiently that an ordinarily skilled
`artisan would have been motivated to combine the embodiments (Pet. 51–
`52).
`
`c. “a step counter joined to the strap”
`Petitioner contends “Amano explicitly discloses that the device may
`be incorporated into ‘[a]ny object used by the test subject daily, or an object
`worn on the body (i.e., portable object)’” (Pet. 31 (citing Ex. 1003, 40:17–
`22)). Patent Owner asserts “Amano does not disclose ‘a step counter’
`mounted” to the “chest, waist, or leg” (Prelim. Resp. 31). As set forth
`above, the interpretation of “step counter” does not require the step counter
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`be mounted to the chest, waist, or leg. Nevertheless, even the portion of
`Amano cited by Patent Owner discloses “the device may be incorporated
`into eyeglasses, a ring, necklace, band, or the like, or may be incorporated
`as one function of a pedometer that is attached via a band” (Prelim. Resp.
`32 (citing Amano, 40:14–26)(emphasis added)). Patent Owner asserts
`“[t]his makes clear that the various locations listed as potentially appropriate
`for the ‘pulse wave detector’ (‘eyeglasses, a ring, necklace, band, or the
`like’) are different from locations that may be appropriate for the
`pedometer” (id. at 33). Amano, however, does not limit where the
`incorporated device may be attached; rather, it merely describes that the
`pedometer may include the pulse wave detector, “that is attached via a band”
`(Amano, 40:14–26).
`Patent Owner further argues “there is no disclosure of a device
`mounted to the ‘chest, waist, or leg’ of the user” (Prelim. Resp. 33);
`however, as set forth above Section III. A., the claim construction of “step
`counter” does not limit the element to the chest, waist, or leg o
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