`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH LLC,
`Patent Owner.
`
`_______________
`
`Case IPR2017-02012
`Patent 6,434,212
`____________
`
`
`
`
`PATENT OWNER’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND ............................................................................................. 3
`
`A. About The ‘212 Patent .......................................................................... 3
`
`B.
`
`C.
`
`Instituted Grounds ................................................................................. 7
`
`Claim Construction................................................................................ 8
`
`III. THE STATUTES GOVERNING INTER PARTES REVIEW REQUIRE
`THAT THIS PROCEEDING BE DISMISSED .............................................. 8
`
`IV. PETITIONER CANNOT SALVAGE ITS PETITION’S DEFICIENT
`CHALLENGES POST-INSTITUTION ........................................................14
`
`V.
`
`THE CHALLENGED CLAIMS ARE NOT ANTICIPATED OR
`RENDERED OBVIOUS BY THE ASSERTED REFERENCES .................16
`
`A. Ground 1: 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” ...............................................16
`
`B.
`
`C.
`
`Ground 2: Amano Does Not Render Obvious a Data Processor
`“Programmed To Calculate A Distance Travelled By Multiplying A
`Number Of Steps Counted By The Step Counter By A Stride Length”
` .............................................................................................................21
`
`Ground 3: Neither Kato Nor Amano Discloses “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” .....................................................................25
`
`D. Ground 3: Petitioner Does Not Establish Motivation To Combine
`Kato’s Components With Amano’s Speed Calculation Feature To
`Teach “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” ...................28
`
`E.
`
`Ground 3: Petitioner Does Not Establish Motivation To Combine
`Kato’s Components With Amano’s “Data Processing Steps” To Teach
`
`- i -
`
`

`

`Deriving “An Actual Stride Length From A Range Of Stride Lengths
`Calculated From A Range Of Corresponding Stride Rates” ...............32
`
`VI. RETROACTIVE APPLICATION OF INTER PARTES REVIEW ON PRE-
`AIA PATENTS IS CONSTITUTIONALLY IMPERMISSIBLE ................40
`
`VII. CONCLUSION ..............................................................................................41
`
`
`
`
`
`
`
`
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`- ii -
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`

`

`TABLE OF AUTHORITIES
`
`Cases
`Berkovitz v. United States,
`486 U.S. 531 (1988).......................................................................................12
`
`Dell Inc. v. Acceleron, LLC,
`818 F.3d 1293 (Fed. Cir. 2016) .....................................................................14
`
`InTouch Techs., Inc. v. VGO Communications, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) .....................................................................22
`
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .....................................................................38
`
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`138 S. Ct. 1365 (2018) ...................................................................................40
`
`Personal Web Technologies, LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .......................................................................31
`
`Reuters Ltd. v. FCC,
`781 F.2d 946 (D.C. Cir. 1986) .......................................................................11
`
`SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................... passim
`
`Securus Techs., Inc. v. Glob. Tel*Link Corp.,
`701 Fed. Appx. 971 (Fed. Cir. 2017) ............................................................31
`
`Teleflex, Inc. v. Ficosa North America Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) .....................................................................40
`
`Statutes
`
`35 U.S.C. § 282(a) ...................................................................................................41
`
`35 U.S.C. § 314 ......................................................................................................1, 8
`
`35 U.S.C. § 314(a) ...................................................................................................13
`
`35 U.S.C. § 314(b) ........................................................................................ 9, 13, 14
`
`- iii -
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`

`

`35 U.S.C. § 314(d) ...................................................................................................11
`
`35 U.S.C. § 316 ................................................................................................. 12, 14
`
`35 U.S.C. § 316(a) ..................................................................................................... 9
`
`35 U.S.C. § 316(b) ...................................................................................................12
`
`35 U.S.C. § 318(a) ............................................................................................ 13, 14
`
`35 U.S.C. § 324(e) ...................................................................................................11
`
`Rules
`
`37 C.F.R. § 42 ............................................................................................................ 9
`
`37 C.F.R. § 42.108(a) ................................................................................................. 9
`
`37 C.F.R. § 42.108(b) ................................................................................................ 9
`
`37 C.F.R. § 42.108(c) ........................................................................................ 10, 11
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`37 C.F.R. § 42.23(b) ................................................................................................14
`
`37 C.F.R. § 42.5 .......................................................................................................11
`
`37 C.F.R. § 42.71(c) .................................................................................................11
`
`Other Authorities
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,612 (Aug. 14, 2012) .............10
`
`
`
`
`
`- iv -
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`

`

`PATENT OWNER’S LIST OF EXHIBITS
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`Declaration of Michael Caloyannides, Ph.D.
`
`CV of Michael Caloyannides, Ph.D.
`
`Deposition Transcript of Tanzeem Choudhury, Ph.D.
`
`2001
`
`2002
`
`2003
`
`
`
`- v -
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`

`

`IPR2017-02012 – Patent Owner’s Response
`
`Pursuant to 37 C.F.R. § 42.120, Blackbird Tech LLC d/b/a Blackbird
`
`Technologies (“Blackbird” or “Patent Owner”) files this Response, setting forth
`
`reasons why the Board should determine that claims 2, 5, and 6 of U.S. Patent
`
`6,434,212 are not unpatentable, contrary to the Petition for inter partes review
`
`(“IPR”) filed by the named Petitioner Fitbit, Inc. (“Fitbit” or “Petitioner”).
`
`I.
`
`INTRODUCTION
`
`In its March 12, 2018 Institution Decision (Paper 8) the Board found that
`
`with respect to Petitioner’s Ground 1 challenge, “Petitioner has not shown Amano
`
`anticipates claims 2 and 5.” (Paper 8, 18). Accordingly, the Board instituted IPR
`
`on only Petitioner’s Grounds 2 and 3.
`
`After the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct.
`
`1348 (2018), on May 16, 2018, the Board issued an Order to “modify [the]
`
`institution decision to institute on all of the challenged claims and all of the
`
`grounds presented in the Petition.” (Paper 11, 2).
`
`However, the Board’s partial institution decision was unlawful under 35
`
`U.S.C. § 314, and SAS Institute, 138 S. Ct. 1348, and the Board cannot correct that
`
`unlawful order by issuing an unauthorized and untimely Order attempting to
`
`modify the institution decision outside of the statutory period for issuing institution
`
`decisions. First, the Board’s institution “modification” order improperly attempts
`
`to address, without the statutorily-mandated rulemaking, how to govern a
`
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`

`

`IPR2017-02012 – Patent Owner’s Response
`
`proceeding covering all challenged claims and all asserted grounds, including those
`
`for which a petitioner failed to establish a reasonable likelihood of prevailing.
`
`Second, the Board lacks authority to modify an unlawful institution decision once
`
`the statutory timeframe for issuing an institution decision has expired. Because full
`
`institution of this IPR did not occur until after the three-month statutory period for
`
`making the requisite determination, the Agency has no authority to carry out this
`
`proceeding and the IPR must be terminated.
`
`Petitioners’ challenges are also substantively deficient. First, Petitioner fails
`
`to establish that Amano anticipates claims 2 and 5 of the ’212 patent. Claims 2 and
`
`5 recite a specific method of calculating distance: “multiplying a number of steps
`
`counted by the step counter by a stride length that varies in accordance” with
`
`certain factors, the “stride rate” for claim 2 and “the rate at which steps are
`
`counted” for claim 5. However, Amano does not disclose calculating distance at
`
`all. Rather, the system disclosed in Amano calculates a user’s speed at specific
`
`sampling intervals. Moreover, even if determining speed were somehow
`
`equivalent to calculating distance, the system disclosed in Amano does not
`
`multiply “a number of steps counted by the step counter by a stride length.”
`
`Instead, Amano determines a user’s pitch, or stride rate, by analyzing a single
`
`stride at specified intervals. Therefore, it does not anticipate either claims 2 or 5.
`
`Second, Petitioner fails to establish that Amano renders claims 2 and 5
`
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`

`

`IPR2017-02012 – Patent Owner’s Response
`
`obvious. Petitioner’s obviousness argument fails for largely the same reasons its
`
`anticipation one does: Amano discloses a fundamentally different system from that
`
`recited in claims 2 and 5. And Petitioner fails to acknowledge the differences
`
`between Amano and the claims of the ‘212 patent or explain why it would have
`
`been obvious to modify Amano’s different system to result in the challenged
`
`claims.
`
`Third, Petitioner fails to establish that Kato in view of Amano renders claim
`
`6 obvious. Like Amano, Kato does not disclose claim 6’s method of distance
`
`calculation, which is, in relevant part, the same as that recited in claims 2 and 5.
`
`Kato calculates distance by assessing the user’s speed, not by counting steps, and
`
`therefore does not render claim 6 obvious. Petitioner attempts to fill this gap in
`
`Kato by combining it with Amano, but Amano does not disclose this limitation
`
`either, and, even if it did, Petitioner fails to establish that a skilled artisan would be
`
`motivated to combine these references. More generally, Petitioner fails to establish
`
`that a skilled artisan would have been motivated to combine Kato and Amano in
`
`the manner alleged.
`
`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.
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`IPR2017-02012 – Patent Owner’s Response
`
`(See generally, ‘212 Patent, “Summary of the Invention”). The device includes a
`
`pedometer, which is a portable electromechanical device for determining the
`
`distance a person travels on foot. (‘212 Patent, 1:17-18). The inventions claimed
`
`in the ‘212 Patent were born out of the inventor’s research into ways of solving
`
`problems with prior art pedometers. (Id. at 2:8-11). At the time of invention in
`
`1998, prior art pedometers were overly complex devices that produced inaccurate
`
`distance determinations. (Id.). Complexity and inaccuracy are serious problems
`
`because they tend to defeat the purpose of the pedometer’s inclusion in an exercise
`
`monitoring device, which is to provide a wearable device that informs the user of
`
`the distance he or she has walked or run while exercising. (Id. at 1:12-18).
`
`To overcome the problems of complexity and inaccuracy, the inventor
`
`conceived of a novel pedometer that reduces design complexity, increases distance
`
`calculation accuracy, and improves 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;
`
`a receiver mountable on a user body portion to receive the step count
`signal transmitted from the transmitter; and
`
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`

`

`IPR2017-02012 – Patent Owner’s Response
`
`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. (Id. at 3:7-8). A transmitter, in communication with the step counter, is
`
`configured to generate a step count signal corresponding to each step. The
`
`transmitter is also configured to transmit the step count signal to a receiver, which
`
`in turn is mountable on a user body portion. The pedometer also includes a data
`
`processor that is programmed to determine the distance travelled by multiplying
`
`the step count by a stride length (as opposed to, for example, directly measuring
`
`stride length).
`
`Claim 6 of the ‘212 Patent also recites a programmatic mechanism that
`
`allows a pedometer to leverage the fact that stride length varies according to stride
`
`rate. Specifically, the data processor must derive the stride length used to make the
`
`distance determination from a range of stride lengths. These stride lengths are, in
`
`turn, calculated from a range of stride rates (i.e., number of strides over some
`
`period of time).
`
`Remaining independent claims 1, 2, and 5 of the ‘212 Patent expand on
`
`claim 6 in several ways. They each claim a strap-mounted device “for releasably
`
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`

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`IPR2017-02012 – Patent Owner’s Response
`
`securing the exercise monitoring device to a user[.]” Claims 1, 2, and 5 also recite
`
`a heart rate monitor joined to the same strap as the step counter. Claims 2 and 5
`
`specifically recite a calibratable pedometer in which the data processor is
`
`programmed to select a stride length “with reference to a plurality of calibrations
`
`that each calculate a stride length as a function of a known stride rate,” as in claim
`
`2, or “from a range of 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 exercise monitoring
`
`devices provided significant advantages for both manufacturers and users.
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`IPR2017-02012 – Patent Owner’s Response
`
`Instituted Grounds
`
`B.
`Petitioner proposed three grounds of challenge for claims 2, 5, and 6 of the
`
`‘212 Patent in this petition (See, e.g., Pet. at 7). The proposed grounds of
`
`challenge were:
`
`No. Ground
`1
`Section 102:
`U.S. Patent No. 6,241,684 to Amano et al. “Amano” (Ex.
`1003))
`Section 103:
`Amano
`Section 103:
`U.S. Patent No. 5,033,013 to Kato et al. (“Kato” (Ex. 1001))
`in view of Amano
`
`2
`
`3
`
`Claims
`2 and 5
`
`2 and 5
`
`6
`
`
`
`Throughout this Response, for ease of understanding, the Patent Owner will refer
`
`to these prior art references by the inventor names indicated above.
`
`In its March 12, 2018 Institution Decision (Paper 8), the Board found that
`
`with respect to Petitioner’s Ground 1 challenge, “Petitioner has not shown Amano
`
`anticipates claims 2 and 5.” (Paper 8, 18). Accordingly, the Board instituted IPR on
`
`just Petitioner’s Ground 2 and 3.
`
`After the Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct.
`
`1348 (2018), on May 16, 2018, the Board issued an Order to “modify [the]
`
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`

`

`IPR2017-02012 – Patent Owner’s Response
`
`institution decision to institute on all of the challenged claims and all of the
`
`grounds presented in the Petition.” (Paper 11, 2).
`
`C. Claim Construction
`In its Institution Decision, the Board granted Petitioner’s Motion to Apply
`
`Philips-style claim construction to the terms of the ‘212 Patent. (Paper 8, 7). The
`
`Board went on to construe the term “step counter” as “a device that collects data to
`
`generate a step count.” (Id. at 8). The Board indicated that that they need not
`
`explicitly construe any other claim terms. ( Id.) Blackbird agrees that express
`
`construction of other claim terms is not required for the Board to consider the
`
`merits of the Petition.
`
`III. THE STATUTES GOVERNING INTER PARTES REVIEW
`REQUIRE THAT THIS PROCEEDING BE DISMISSED
`
`The Board’s partial institution decision (Paper 8) was unlawful under 35
`
`U.S.C. § 314, and the Board cannot correct that unlawful order by issuing an
`
`unauthorized Order (Paper 11) attempting to modify the institution decision
`
`outside of the statutory period for issuing institution decisions. First, the Board’s
`
`institution “modification” order violates existing regulations governing inter partes
`
`review. With those regulations thrown into disarray by the Supreme Court, the
`
`modification order improperly attempts to create new rules, without the statutorily-
`
`mandated rulemaking, regarding how to govern a proceeding covering all
`
`challenged claims and grounds, including those for which a petitioner failed to
`
`- 8 -
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`

`

`IPR2017-02012 – Patent Owner’s Response
`
`establish a reasonable likelihood of prevailing. Second, the Board lacks authority
`
`to modify an unlawful institution decision once the statutory timeframe for issuing
`
`an institution decision has expired. This period expired three months after Patent
`
`Owner filed its Preliminary Response, or March 13, 2018 in this case. Because the
`
`Board’s attempt to correct the unlawful institution decision did not occur until May
`
`16, 2018, over two months after this critical date, the Agency has no authority to
`
`carry out this proceeding and this IPR must be terminated.
`
`The statute authorizing inter partes review requires the Director to (a) issue
`
`regulations “establishing and governing inter partes review under this chapter” (35
`
`U.S.C. § 316(a)(4)) and (b) to “determine whether to institute an inter partes
`
`review … within 3 months after” a preliminary response (35 U.S.C. § 314(b)(1)).
`
`In 2012, prior to SAS Institute Inc. v. Iancu, the Director implemented the
`
`regulations required by statute in a manner that permitted claim-by-claim and
`
`ground-by-ground institution. See 37 C.F.R. § 42. In particular, 37 C.F.R. §
`
`42.108(a) allowed the Board to “authorize the review to proceed on all or some of
`
`the challenged claims and on all or some of the grounds of unpatentability asserted
`
`for each claim.” Additionally, 37 C.F.R. § 42.108(b) allowed the Board to “deny
`
`some or all grounds for unpatentability for some or all of the challenged claims”
`
`prior to institution of inter partes review.” When denying a ground, 37 C.F.R. §
`
`42.108(b) held that such a “[d]enial of a ground is a Board decision not to institute
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`IPR2017-02012 – Patent Owner’s Response
`
`inter partes review on that ground.” Moreover, under the heading “Sufficient
`
`grounds,” 37 C.F.R. § 42.108(c) provided that “Inter partes review shall not be
`
`instituted for a ground of unpatentability unless the Board decides that the
`
`petition supporting the ground would demonstrate that there is a reasonable
`
`likelihood that at least one of the claims challenged in the petition is unpatentable.”
`
`(emphasis added). In implementing these final rules, the Agency stated, “The
`
`Board will identify the grounds upon which the review will proceed on a claim-by-
`
`claim basis. Any claim or issue not included in the authorization for review is not
`
`part of the review.” 77 Fed. Reg. 48,689. Indeed, the Agency specifically stated
`
`that the regulations did not adopt comments requesting “all challenged claims to
`
`be included in the inter partes review when there is a reasonable likelihood of
`
`prevailing with respect to one challenged claim.” 77 Fed. Reg. 48,702-03. Under
`
`the pre-SAS regulations, the Board’s decision not to institute became final and non-
`
`reviewable when Fitbit did not request rehearing of the institution decision.1 See
`
`77 Fed. Reg. 48,702 (“Denial of a ground is a final Board decision and thus is
`
`subject to request for reconsideration at that time. § 42.71(c)(2). The decision of
`
`
`1 Petitioner could have challenged the Board’s decision to partially institute on the
`challenged claims through a request for rehearing, but did not do so. See 37 C.F.R.
`§ 42.71(c).
`
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`IPR2017-02012 – Patent Owner’s Response
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`the Director on whether to institute review on any ground is not appealable. 35
`
`U.S.C. § 314(d), as amended, and 35 U.S.C. § 324(e).”).
`
`The SAS decision upended the Agency’s regulations for procedures to
`
`conduct inter partes reviews. In fact, the Supreme Court held, in SAS v. Iancu, that
`
`partial institution decisions, like the Board originally issued in this case, are
`
`unlawful. 138 S. Ct. at 1352-53. However, no new rules have been promulgated,
`
`and the modification order violated the still-existing rules by instituting a challenge
`
`ground (Ground 1, in this instance) for which there was no reasonable likelihood
`
`that at least one of the challenged claims was unpatentable, which is expressly
`
`forbidden by 37 C.F.R. § 42.108(c). The Board’s “modification” of its prior
`
`institution decision improperly attempts to address, without the rulemaking
`
`required by statute, how to govern a proceeding in which all challenged claims are
`
`included but where a petitioner has failed to establish a reasonable likelihood of
`
`prevailing with respect to certain challenged claims. The Board cites 37 C.F.R. §
`
`42.5 in support of its modification Order. (Paper 11, 1). But that rule, which allows
`
`the Board to “determine a proper course of conduct in a proceeding for any
`
`situation not specifically covered by this part,” does not permit the Board to
`
`proceed on a course of conduct that is expressly contrary to and specifically
`
`rejected by the regulations promulgated by the Agency to govern inter partes
`
`review. See Reuters Ltd. v. FCC, 781 F.2d 946, 950-51 (D.C. Cir. 1986) (“[I]t is
`
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`IPR2017-02012 – Patent Owner’s Response
`
`elementary that an agency must adhere to its own rules and regulations. Ad hoc
`
`departures from those rules, even to achieve laudable aims, cannot be sanctioned,
`
`for therein lie the seeds of destruction of the orderliness and predictability which
`
`are the hallmarks of lawful administrative action. Simply stated, rules are rules,
`
`and fidelity to the rules which have been properly promulgated, consistent with
`
`applicable statutory requirements, is required of those to whom Congress has
`
`entrusted the regulatory missions of modern life.”) (citation omitted); Berkovitz v.
`
`United States, 486 U.S. 531, 544 (1988) (“The agency has no discretion to deviate
`
`from this mandated procedure” [its own regulations]). By statutory mandate, only
`
`the Director can regulate how such inter partes review should be conducted, and
`
`the Director must issue such regulations after considering “the effect of any such
`
`regulation on the economy, the integrity of the patent system, the efficient
`
`administration of the Office, and the ability of the Office to timely complete
`
`proceedings.” 35 U.S.C. § 316(b). In this case, the Board essentially operated
`
`under a new, de facto set of rules that did not go through any of these proper
`
`channels. As such, the Board’s modification Order is improper as it constitutes
`
`improper rulemaking by the Board, and conflicts with 35 U.S.C. § 316 and the
`
`Administrative Procedure Act.
`
`The Board’s Institution Decision (Paper 8) issued on March 12, 2018, but
`
`this Institution Decision partially instituted in a manner that the Supreme Court has
`
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`IPR2017-02012 – Patent Owner’s Response
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`confirmed was not in accordance with law. SAS, 138 S. Ct. 1348, 1355 (“The
`
`Director’s claimed ‘partial institution’ power appears nowhere in the text of § 318,
`
`or anywhere else in the statute for that matter.”) The Board’s modification Order
`
`(Paper 11) attempted to bring the content of the Board’s Institution Decision into
`
`compliance with § 314(a), but the modification Order also fails to comport with the
`
`governing statute by violating the mandatory timing of institution decisions, 35
`
`U.S.C. § 314(b). Specifically, Patent Owner’s Preliminary Response was filed on
`
`December 14, 2017 (Paper 7), thus requiring the Board’s statutorily-required
`
`decision whether to institute under 35 U.S.C. § 314(b) to issue within three months
`
`of this date, or March 14, 2018. Instead, the Board’s complete determination
`
`“whether to institute an inter partes review under this chapter” did not occur until
`
`May 16, 2018 (Paper 11), outside of the time period required under the statute.
`
`Coupled with its improper partial institution decision, the expiration of the
`
`time permitted to “determine whether to institute an inter partes review” under 35
`
`U.S.C. § 314(b)(1) presented the Board with a dilemma—the Board’s final written
`
`decision must address all claims in the petition but a corrected institution decision
`
`instituting all claims and all challenges would be out of time. But the Board’s
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`modification Order overlooks a simple solution that avoids issuance of an improper
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`institution decision or an improper final written decision in this situation. Under
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`35 U.S.C. § 318(a), the Board can avoid issuing a final written decision following
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`institution where the inter partes review is “dismissed under this chapter.” 35
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`U.S.C. § 318(a). Because the Board’s attempt to correct the improper institution
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`was untimely under 35 U.S.C. § 314(b)(1) and in violation of the Director’s
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`obligation to engage in formal rulemaking under 35 U.S.C. § 316, the sole option
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`for the Board was (and remains) to dismiss the improvidently granted inter partes
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`review.
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`IV. PETITIONER CANNOT SALVAGE ITS PETITION’S DEFICIENT
`CHALLENGES POST-INSTITUTION
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`In the Board’s first Institution Decision, the Board rejected Ground 1 against
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`claims 2 and 5. (Paper 8, 18).
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`Because Petitioner
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`is prohibited from
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`introducing new
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`theories of
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`unpatentability in a reply or otherwise post-institution (see 37 C.F.R. § 42.23(b);
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`Dell Inc. v. Acceleron, LLC, 818 F.3d 1293 (Fed. Cir. 2016)), Petitioner cannot
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`now present a new theory of unpatentability in an attempt to remedy the
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`shortcomings identified in the Board’s Institution Decision. For claims 2 and 5, the
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`sole permissible outcome is for the Board to confirm that these claims are not
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`anticipated by Amano.
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`The Supreme Court’s Decision in SAS does not change this result.
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`Specifically, in SAS, the Supreme Court confirmed the statutory requirement that
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`an IPR’s final written decision must address the patentability of every claim
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`challenged in the petition. SAS, 138 S. Ct. 1348, 1354 (finding fault in the Board’s
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`decision, which “did not address the remaining claims on which the Director had
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`refused review.”). “Because SAS challenged all 16 claims of ComplementSoft’s
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`patent, the Board in its final written decision had to address the patentability of all
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`16 claims.” Id. at 1355 (emphasis added). However, SAS does not allow
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`Petitioners to modify or otherwise pivot from the Petition’s challenges, which have
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`already been deemed insufficient in the Board’s Institution Decision. Instead, SAS
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`consistently reiterates that it is the petition that defines the metes and bounds of the
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`scope of investigation: “[T]he petition must identify ‘each claim challenged,’ the
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`grounds for the challenge, and the evidence supporting the challenge.” Id. at 1353;
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`see also id. at 1355 (“[T]he petitioner is master of its complaint”); id. at 1356
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`(“Nothing suggests the Director enjoys a license to depart from the petition … .”);
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`id. at 1358 (“The statutory provisions before us deliver unmistakable commands.
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`The statute … makes the petition the centerpiece of the proceeding both before
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`and after institution.”) (emphasis added).
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`Fitbit is prohibited from introducing a newly modified argument of
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`unpatentability post-institution, or new evidence or testimony in support of such
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`improper argument. In this proceeding, “Petitioner has not shown Amano
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`anticipates claims 2 and 5.” (Paper 8, 18). Nothing in SAS enables a different
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`result in the final written decision.
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`While SAS confirms that the Board’s final written decision must address the
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`IPR2017-02012 – Patent Owner’s Response
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`patentability of every challenged claim, the Board has already confirmed that
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`claims 2 and 5 are not anticipated by Amano. To be in compliance with SAS, the
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`Board’s final written decision should simply reiterate the outcome and reasoning
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`expressed in the institution decision as to these claims.
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`V. THE CHALLENGED CLAIMS ARE NOT ANTICIPATED OR
`RENDERED OBVIOUS BY THE ASSERTED REFERENCES
`A. Ground 1: 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”
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`Claims 2 and 5 recite a specific method of calculating distance: multiplying
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`the number of steps “counted by the step counter by a stride length.” Ex. 1001 at
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`7:3-14 (claim 2), 7:24-8:4 (claim 5). For claim 2, the “stride length…varies in
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`accordance with a stride rate.” For claim 5, the “stride length…varies according to
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`the rate at which steps are counted.”
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`Petitioner alleges Amano discloses “multiplying the user’s ‘pitch’ (i.e.,
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`number of steps per unit time) by the user’s stride length to determine a distance
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`travelled by the user over a period of time.” Pet. at 43; see also id. at 49 (“Amano
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`therefore teaches this limitation [of claim 5] for the same reasons discussed above
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`in Section IX.A.1.f [regarding claim 2].”). However, that is not an accurate
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`characterization of Amano’s disclosure. Ex. 2001 at ¶ 37.
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`In fact, Amano discloses a system in which the user’s pitch—the number of
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`steps per unit of time or the “stride rate,” as that term is used in the ’212 patent—is
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`IPR2017-02012 – Patent Owner’s Response
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`sampled at time intervals and this sampling is used “to calculate the distance run
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`by the test subject per unit of time.” Ex. 1003 at 12:4-21. “Distance run per unit
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`of time,” e.g., 5 miles-per-hour, is a measure of speed, not distance.2 Amano then
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`specifies that “[t]his distance run,” i.e., the “distance run by the test subject per
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`unit of time,” “is multiplied by the user’s body