IPR2017-02012
`Fitbit’s Reply
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`FITBIT, INC. and WAHOO FITNESS LLC,
`Petitioners,
`v.
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`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
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`––––––––––
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`Case IPR2017-02012
`Patent 6,434,212
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`––––––––––
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`PETITIONER FITBIT’S REPLY TO PATENT OWNER’S RESPONSE
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`Fitbit’s Reply
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`FITBIT, INC. and WAHOO FITNESS LLC,
`Petitioners,
`v.
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`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
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`––––––––––
`
`Case IPR2017-02012
`Patent 6,434,212
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`––––––––––
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`PETITIONER FITBIT’S REPLY TO PATENT OWNER’S RESPONSE
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`IPR2017-02012
`Fitbit’s Reply
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`I.
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`Introduction
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`The Board’s Institution Decision correctly found that claims 2 and 5 were
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`obvious in view of Amano, and that claim 6 is obvious in view of the combination
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`of Amano and Kato. Blackbird’s arguments are centered on the data processing
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`limitations of each challenged claim. In finding that claims 2 and 5 were not
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`anticipated by Amano, the Board appears to have accepted Blackbird’s argument
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`that the Amano device does not calculate distance traveled by the user, but instead
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`determines the user’s speed based upon data taken from a single step every 30
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`seconds. (ID at 18; POR at 17-20). Blackbird advances this argument again in its
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`Patent Owner Response, and argues that because Amano’s invention relates to
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`calculating blood oxygen levels, its other teachings should be ignored. (POR at
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`22).
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`Blackbird’s “single step” argument is wrong and contradicted by the explicit
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`teachings of Amano. As explained by Fitbit’s expert (and ignored by Blackbird in
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`its Response), Amano teaches performing calculations using an overall time
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`interval of data (30 seconds is provided as one example) in order to determine
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`pitch (number of steps run per unit time), as well as the distance traveled by a
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`runner during that time interval. (Ex. 1005 at ¶106).
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`IPR2017-02012
`Fitbit’s Reply
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`Blackbird’s Patent Owner Response is silent on how its single step theory is
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`possible given the fact that Amano teaches performing the calculations using
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`signal processing techniques, such as Fast Fourier Transform (“FFT”). The
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`unrebutted explanation by Fitbit’s expert establishes that these techniques analyze
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`data from an extended time sample, and Amano’s reference to these techniques is
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`inconsistent with Blackbird’s assertion that Amano only teaches performing
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`calculations for a single step. Indeed, Blackbird’s expert admitted during his
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`deposition that signal processing techniques disclosed by Amano (such as wavelet
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`analysis) would use a time period longer than a single step, and that a POSITA
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`who wanted to implement these signal processing techniques would be motivated
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`to use a longer period of data to allow for more accurate step count and stride rate
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`calculations.
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`While the Board found at the Institution Decision stage that Amano
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`discloses a single step calculation, it is clear that Amano’s calculation is not based
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`upon only a single step, but an interval of data (such as 30 seconds). As explained
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`by Fitbit’s expert, Amano teaches the claimed distance calculation of multiplying
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`the number of steps counted by a stride length that varies in accordance with a
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`stride rate. For these reasons, the Board should find that the challenged claims are
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`not only obvious, but anticipated by Amano.
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`IPR2017-02012
`Fitbit’s Reply
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`Blackbird’s second argument, that Amano’s teachings may be rejected
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`because the invention is used to calculate blood oxygen levels, mischaracterizes
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`the extensive teachings of Amano for the operation of exercise devices and is legal
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`error. The Federal Circuit has consistently held that it is the teachings contained
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`within a prior art reference that is relevant and not merely the claimed invention.
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`With respect to the Amano and Kato ground, Blackbird re-raises multiple
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`alternate arguments regarding the combination, including an alleged lack of
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`motivation to combine and the supposed lack of similarity of the references. (See
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`PPOR at 43-54, POR at 25-40, ID at 24-28). These arguments lack merit and fail
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`to address Fitbit’s explanation and evidence showing that a POSITA would have
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`been motivated to substitute Kato’s stride length calculations that do not use the
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`specific user’s own stride length measurements with Amano’ calculations that are
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`based on user-specific stride length measurements. As explained below,
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`Blackbird’s arguments do not hold up to scrutiny, are not supported by its own
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`expert’s testimony, and are contradicted by the teachings of Amano and Kato.
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`The Board should also be wary of relying on Blackbird’s expert. He was
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`unable to answer basic questions, including being unable to provide definitions to
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`terms included in his declaration, such as fitness trackers, health trackers, and
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`pedometers. (See, e.g., Ex. 1021 at 15:18-16:3; 22:20-23:5; 24:10-24; 25:15-26:1;
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`IPR2017-02012
`Fitbit’s Reply
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`29:1-18; 33:7-25). He struggled to explain what specific calculation was required
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`by the claims. (Ex. 1021 at 63:5-74:16). And Dr. Caloyannides refused to take a
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`position on what knowledge a POSITA possessed, claiming that such knowledge
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`would depend on the specific (hypothetical) individual. (Ex. 1021 at 118:25-
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`120:9). Such a flawed fundamental position should render his entire declaration
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`without merit.
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` Finally, Blackbird’s constitutional arguments against
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`the
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`application of inter partes review should be rejected.
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`II. Amano anticipates and renders obvious “calculat[ing] a distance
`traveled by multiplying a number of steps counted by a stride length” as
`claimed.
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`In the Institution Decision, the Board found that the limitation that requires
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`“calculat[ing] a distance traveled by multiplying a number of steps counted by a
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`stride length that varies in accordance with a stride rate” is rendered obvious by
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`Amano. (ID at 18). In making this finding, the Board credited Dr. Choudhury’s
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`(Fitbit’s expert) explanation that Amano calculates a distance by multiplying the
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`user’s pitch (i.e., the number of steps per unit time) by the user’s stride length, and
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`that Amano adjusts the stride length according to the user’s pitch. (ID at 17-18
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`(citing Ex. 1005 at ¶106)). In mathematical terms, Amano performs the following
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`calculation:
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`IPR2017-02012
`Fitbit’s Reply
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`This is “calculat[ing] a distance traveled by multiplying a number of steps
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`counted by a stride length that varies in accordance with a stride rate.” And even if
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`Amano did not expressly disclose the claimed calculation, it would have been
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`obvious based on this teaching. Indeed, Blackbird’s expert admitted that the basic
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`relationship between stride length and stride rate (applied by Amano and the ’212
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`Patent) was well known. For example, he stated “I mean, common sense shows
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`that. People have been running the same way for thousands of years.” (Ex. 1021
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`at 82:21-83:3).
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`The Board did not originally institute on the Amano anticipation ground and
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`the Institution Decision suggests that the Board accepted Blackbird’s arguments
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`that are re-raised in the Response: that Amano only calculates a speed and not a
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`distance (POR at 16-17), and that Amano calculates a speed based on “a single
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`step” instead of “a number of steps” (POR at 17-21). Both of Blackbird’s
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`arguments are wrong and are premised on a mischaracterization of Amano.
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`Furthermore, the claimed calculation is obvious in view of Amano.1 The Board
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`1 Furthermore, while Blackbird’s Response argues that Amano does not teach the
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`specific method of calculating distance set forth in claims 2 and 5, Blackbird’s
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`expert admitted that the challenged claims do not set forth an exact calculation, and
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`IPR2017-02012
`Fitbit’s Reply
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`should find that Amano anticipates claims 2 and 5 because Amano discloses
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`calculating a distance for the processing time interval, and Amano’s use of FFT
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`signal processing (and other similar techniques) in performing the calculation
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`demonstrates that Amano performs a calculation based on a time window of data
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`and is not based on a speed detected during a single step.
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`A. Amano discloses “calculat[ing] a distance traveled” based on a
`time interval that is longer than a single step.
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`Amano teaches and discloses “calculat[ing] a distance traveled” over an
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`extended time interval. Blackbird is therefore wrong when it asserts that Amano
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`discloses only calculating speed over a time interval. In particular, as set forth in
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`the Petition, Amano teaches determining the pitch of a runner, which can be
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`detected based upon processing carried out by CPU 201 on the body motion signal
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`from body motion detector 104. (Petition at 35-36; Ex. 1003 at 11:52-55). Amano
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`teaches that the CPU performs this calculation by using FFT processing of the
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`body signal motion, and that CPU 201 can be setup to execute calculations at
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`specific time intervals, with a time interval of 30 seconds being used as an
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`example. (Ex. 1003 at 12:4-7; 13:25-26). The specification further explains that
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`that necessary aspects of the claimed calculation must be implied from the claim
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`language. (Ex. 1021 at 71:16-74:9).
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`IPR2017-02012
`Fitbit’s Reply
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`when CPU 201 performs the calculation, it calculates “the distance run by the test
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`subject.” (Ex. 1003 at 12:15-18).
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`Dr. Caloyannides (Blackbird’s expert) argues that Amano calculates a speed
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`based on Amano’s disclosure that “the user’s pitch…is sampled at time intervals
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`and this sampling is used ‘to calculate the distance run by the test subject per unit
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`of time.’” (Ex. 2001 at ¶38). Rather than take this disclosure at face value (i.e.,
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`that Amano discloses calculating the distance the user ran during a time interval),
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`Dr. Caloyannides opines that Amano merely discloses calculating a speed. (Ex.
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`2001 at ¶38; Ex. 1021 at 142:15-143:6 (testifying that Amano has no teaching of
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`“determining the distance that is traveled by a person that is walking”)).
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`Blackbird and its expert are also wrong to assert that “Amano does not
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`disclose calculating distance at all.” (POR at 2; Ex. 1021 at 142:15-
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`143:6)(emphasis added). This assertion is directly contradicted by Amano,
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`including by the following teaching:
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`On the other hand, if an altitude difference is present,
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`then in step Sa103, CPU 201 first determines the slope
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`from the aforementioned altitude distance and the
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`distance run during the 30 seconds.
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`(Ex. 1003 at 18:40-44)(emphasis added).
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`IPR2017-02012
`Fitbit’s Reply
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`Thus, as made clear by the overall teachings of Amano as well as the
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`specific language from Column 18, Amano teaches calculating the distance run
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`over a particular time interval (30 seconds in this example), and does not merely
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`perform a speed calculation based upon data consisting of a single step every 30
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`seconds.
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`When confronted with the passage from Column 18 of Amano quoted
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`above, which shows that the disclosed device calculates the distance run during a
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`time interval, Dr. Caloyannides (who stated he had considered the passage
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`previously) chose to ignore the specific language regarding the determination of
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`the distance run over the time interval:
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`Q.
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`So let's turn to column 18 of Amano.
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`A. All right.
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`Q. On line 40 it says, On the other hand, if an altitude
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`difference is present, then in step Sa103, CPU 201 first
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`determines the slope from the aforementioned altitude
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`distance and the distance run during the 30 seconds.
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`A. Yes. Again distance over time. That's the
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`velocity. Distance run over 30 seconds, that's a velocity
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`measurement.
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`(Ex. 1021 at 165:2-11; see also Ex. 1003 at FIG. 12 (stating that the calculation
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`display processing is executed every 30 seconds)). As the challenged claims
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`IPR2017-02012
`Fitbit’s Reply
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`require calculating “a” distance traveled – calculating a distance traveled by the
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`user in 30 seconds meets this claim limitation.2
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`Even more telling is that Dr. Caloyannides made no attempt to determine
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`how the device disclosed in Amano allegedly calculates speed or distance. At his
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`deposition, Dr. Caloyannides admitted that he did not consider how Amano works
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`because he had concluded that the ’212 Patent is directed to solving a different
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`problem:
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`Q. …It's your opinion that Amano calculates speed of
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`the user every 30 seconds; correct?
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`A. Yes.
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`Q. And it's your opinion that it does that by an
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`instantaneous calculation; correct?
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`A. Yes, presumably, yes, yes.
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`Q.
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`There's no measurement of a – where was the user
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`2 Blackbird’s Response appears to argue that the challenged claims require
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`calculating the overall actual distance a runner has traveled (POR at 17, 25)(“actual
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`distance traversed”, “as opposed to accurate total distance determination”), such a
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`requirement is absent from the challenged claims. Instead, the claims merely
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`require calculating “a distance traveled” – something that Amano explicitly
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`discloses and explains in detail.
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`IPR2017-02012
`Fitbit’s Reply
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`at some time zero, and where – and how far did the user
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`travel to the stopping point?
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`A. Oh, I don't know exactly. That's his algorithm. I
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`did not go into that because I felt that he is addressing a
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`different problem, does not do what the '212 patent
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`does, and I did not take the time to see just exactly how
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`does he do what he does which does not relate to the
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`patent.
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`Q. Okay. So in calculating speed, you can't say one
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`way or the other whether Amano accomplishes the
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`instantaneous speed calculation based upon measuring a
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`distance traveled by the user in some small amount of
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`time?
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`A.
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`I don't know over what period of time he actually
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`averages the speed. I do not know that.
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`Q.
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`So you don't know if it's averaging the speed over
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`one second?
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`A.
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`I don't know whether he average over one second,
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`five or ten. I think that's a design parameter that he can
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`select while he's running his machine.
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`Q.
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`I mean, is it possible that he's averaging the
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`speed over 30 seconds?
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`A.
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`It's possible.
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`Q. Okay.
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`(Ex. 1021 at 155:15-156:21)(emphasis added).
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`IPR2017-02012
`Fitbit’s Reply
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`Dr. Caloyannides clearly erred by refusing to consider the overall teachings
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`of the Amano reference. The Federal Circuit has consistently held that it is the
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`teaching contained within a prior art reference that is relevant, not merely the
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`claimed invention. See In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed.
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`Cir. 2012) (“A reference must be considered for everything that it teaches, not
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`simply the described invention or a preferred embodiment.”).
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`B. Amano’s use of FFT signal processing means that the disclosed
`calculation uses a time window of data and not just a single step.
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`Amano’s use of FFT processing and other signal processing techniques
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`(such as wavelet) also demonstrates that Blackbird’s single step theory is wrong.
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`Signal processing techniques including FFT are used in Amano for detecting heart
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`beats and body motions. (Ex. 1003 at Figs. 21A, 21B, 22A, 22B, 7:18-37; 11:52-
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`60; 22:22-23:12; 23:29-24:4)(using 16 seconds as an example of the duration of an
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`FFT processing interval). Amano discloses that the user’s steps and distance are
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`calculated using FFT signal processing, which means that Amano performs the
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`calculations using a time window of data and are not based upon data for a single
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`step. (Ex. 1003 at 11:52-60, 23:35-57)(describing how steps are identified in the
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`output of FFT processing applied to body motion sensor 302). In her declaration,
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`Dr. Choudhury explains Amano’s disclosure that the body motion detector and
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`CPU use FFT signal processing to detect the user’s steps and to determine the
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`IPR2017-02012
`Fitbit’s Reply
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`user’s pitch while running. (Ex. 1005 at ¶¶93-94). Dr. Choudhury further explains
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`how these calculations are used to calculate the distance traveled. (Ex. 1005 at
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`¶¶106-108). Blackbird asked Dr. Choudhury to explain how Amano calculates the
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`user’s pitch (i.e., stride rate), and she explained that Amano discloses using FFT
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`signal processing and that FFT requires a time window of data:
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`Q. Yes. What is your understanding in terms of how
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`the calculation is done?
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`A.
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`There is signal, acceleration signal that is
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`generated by movement of -- related to body motion
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`which is capturing, is correlated with the steps. And
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`based on a time window of acceleration data, FFT is
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`done to estimate pitch.
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`Q. You said a time window. What were you referring
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`to when you said there was a time window?
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`A.
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`So it mentions Fast Fourier transform, FFT
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`processing. For FFT processing, one would need to use
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`a time window of data.
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`(Ex. 2003 at 45:2-14)(emphasis added).
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`Blackbird specifically asked Dr. Choudhury about its contention that Amano
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`determines pitch based upon a single step, which she refuted:
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`Q. Okay. Does Amano determine pitch based
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`on a single step?
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`A.
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`That would not be my understanding.
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`Q. Why is that not your understanding?
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`A.
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`Because it's using FFT. You cannot get -- for that,
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`you would need to have a time window of data. And
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`usually, the process of how FFT works is you need at
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`least multiple samples to get -- accurately estimate the
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`rate of change.
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`(Ex. 2003 at 45:21-46:4)(emphasis added).
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`C. Blackbird’s expert did not address the fact that Amano uses FFT
`signal processing in its calculations.
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`Despite Amano’s clear disclosure that FFT processing is used to perform the
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`relevant calculations and the fact that Dr. Choudhury relied on the FFT disclosures
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`in her declaration, Blackbird’s Response and expert declaration are silent on FFT
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`processing and signal processing in general. In fact, FFT is not even mentioned in
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`either document.
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`In his deposition, Blackbird’s expert admitted that “signal processing in
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`copious amounts” is relevant to the ’212 Patent and professed to having expertise
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`in such techniques. (Ex. 1021 at 21:1-12, 124:14-25). Despite this, not only did
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`Dr. Caloyannides’ declaration fail to address the FFT-related opinions from Dr.
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`Choudhury’s declaration, he admitted that he did not even consider Dr.
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`Choudhury’s deposition testimony when forming his own opinions. (Ex. 1021 at
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`11:11-16).
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`Nevertheless, Dr. Caloyannides made a number of admissions that support
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`Dr. Choudhury’s FFT and signal processing-related opinions. Amano explains that
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`it is not limited to using FFT processing, and that “it is also acceptable to employ
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`MEM analysis, wavelet analysis or the like.” (Ex. 1003 at 15:66-16:4). Under
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`questioning, Dr. Caloyannides admitted that wavelet analysis is a type of signal
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`processing that could be used in the field of pedometers, health trackers and fitness
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`trackers at the time of the invention. (Ex. 1021 at 126:3-11). Dr. Caloyannides
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`also explained that such techniques use data from a time domain, and that a person
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`of ordinary skill would prefer to have data for a longer time rather than a shorter
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`time period. (See Ex. 1021 at 131:1-21). Dr. Caloyannides also admitted that a
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`POSITA would prefer to have more data – rather than less – for performing any
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`signal processing technique:
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`Q.
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`So a person of ordinary skill in the art using a
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`technique such as wavelet processing would prefer to use
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`as much data that is available?
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`A. Yes.
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`Q. Okay. And would that same consideration apply
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`for maximum entropy techniques?
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`IPR2017-02012
`Fitbit’s Reply
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`A.
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`For any techniques. The more raw data you have,
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`the better.
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`(Ex. 1021 at 132:16-25). Finally, Dr. Caloyannides confirmed that too short
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`of a time period can produce unreliable information:
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`Q.
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`-- can you perform this analysis on a single -- the
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`single smallest observation or measurement?
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`A. When you say "this analysis," which one is this
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`analysis?
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`Q. A wavelet analysis.
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`A. Well, you can perform some kind of an analysis in
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`a sample which is very short in time. It would be not
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`very meaningful. . . .
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`So, yes, you can perform an analysis. It might be
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`laughable because of it's known limitations. So because
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`of that, people usually do not perform an analysis of
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`something which is so short that it makes no sense to
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`make an analysis.
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`(Ex. 1021 at 127:23-128:19).
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`Thus, Blackbird’s expert confirms what Fitbit’s expert said – that signal
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`processing techniques analyze data based upon a time window of data and that a
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`POSITA would have not understood Amano’s disclosure to mean that the relevant
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`calculation was performed on a single step. Because it is clear that Amano does
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`IPR2017-02012
`Fitbit’s Reply
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`not perform calculations based upon a single step, but instead uses a time window
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`of data to determine a distance traveled, the Board should find that claims 2 and 5
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`are not only obvious but also anticipated by Amano.
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`III. The combination of Kato and Amano renders the challenged claims
`obvious.
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`Blackbird raises two general theories with respect to the Kato/Amano
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`ground for claim 6: (1) that Kato does not teach calculating a distance traveled by
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`multiplying the number of steps counted by a stride length that varies according to
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`a rate at which steps are taken, and (2) that Fitbit has not shown that a POSITA
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`would have been motivated to combine the teachings of Amano and Kato.
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`Blackbird’s first argument is a rehash of an argument from its Preliminary
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`Patent Owner Response that the Board properly rejected in the Institution
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`Decision. (PPOR at 43-46; ID at 24). As explained in the Petition and the
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`Institution Decision, Kato teaches or at least suggests multiplying the number of
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`steps counter by the step counter by a stride length. (Petition at 71-73; ID at 24).
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`Additionally, Blackbird’s argument that Kato does not teach the claimed distance
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`calculation is irrelevant because the claimed calculation is taught by Amano. As
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`explained above, Amano also teaches the distance calculation required by claim 6.
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`Blackbird’s second argument is also unavailing. Essentially, Blackbird
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`argues that a POSITA would not have been motivated to combine the Amano and
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`IPR2017-02012
`Fitbit’s Reply
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`Kato references because the references are not sufficiently similar, that a POSITA
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`would not have been motivated to substitute Amano’s teaching that the device
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`should employ user-specific (e.g., customized) data instead of the generic data
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`employed by Kato, and that a POSITA would not have viewed Amano’s teaching
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`that the device should employ user-specific data as a way to provide more accurate
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`measurements. (POR at 24-40).
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`While Blackbird argues that Amano and Kato are “not especially similar,” a
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`review of the references reveals that this position has no merit. (POR at 30). As
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`set forth in the Petition, a POSITA would have been motivated to combine the
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`teachings of Amano and Kato for numerous overlapping reasons. At a high level,
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`both references are within the field of exercise science and both references
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`recognize that a user’s stride length varies with the user’s stride rate. (Petition at
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`58). More specifically, both references are concerned with accounting for changes
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`in stride lengths and how such changes affect speed and distance calculations.
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`(Id.) And even more specifically, a POSITA would have been motivated to use
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`Amano’s data processing steps to solve the underlying problem being address in
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`Kato – calculating a distance traveled by the user while taking into account varying
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`stride lengths and rates – and doing so with user-specific stride measurements
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`(taught by Amano) within the Kato system. (Petition at 74-75).
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`IPR2017-02012
`Fitbit’s Reply
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`Blackbird’s expert fails to provide any explanation for why a POSITA
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`would think that using user-specific stride length measurements would not result in
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`more accurate stride length calculations as opposed to deriving the user’s stride
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`length from the user’s height. As explained in Dr. Choudhury’s declaration, Kato
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`calculates the user’s stride length based upon the user’s stride rate and user’s
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`height. (Ex. 1005 at ¶81). The formula Kato uses for this calculation is derived
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`from observing 142 test subjects that walked on a treadmill. (Ex. 1004 at 4:7-49).
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`In contrast, Amano teaches measuring the specific user’s stride length at different
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`stride rates, and then interpolating between the user’s stride length-stride rate data
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`points to calculate the user’s stride length at other stride rates. (Ex. 1005 at ¶109).
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`Thus, modifying Kato’s distance calculation to use Amano’s calculation (one that
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`is based on the user’s own actual stride length) would have been desirable because
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`it would allow a device to more accurately determine the stride length of a
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`particular user. (Petition at 75, Ex. 1005 at ¶150).
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` Faced with these well-articulated motivations to combine, Blackbird tries to
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`deflect by arguing that Kato’s teaching of a relationship between stride rate, stride
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`length, and height precludes a POSITA from looking to Amano’s teaching. (POR
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`at 33-37). But this argument only reinforces Fitbit’s position: that a POSITA
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`looking at Kato’s use of a formula to calculate the user’s stride length based upon
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`IPR2017-02012
`Fitbit’s Reply
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`the user’s height and stride rate would have been motivated to replace the
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`calculation with Amano’s calculation that uses actual measurements of the user’s
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`stride length. (Petition at 75). Blackbird is also wrong in stating that Amano does
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`not consider the relationship of stride length, stride rate, and height. (See Ex. 1003
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`at 16:6-14)(determining stride length indirectly obtained from height).
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`IV. The claimed “step counter” must be mounted on the waist, chest, or leg.
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`The Institution Decision incorrectly states that the “Petitioner proposes ‘step
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`counter’ should be interpreted as proffered in the District Court litigation — ‘a
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`device that collects data to generate step count…’” and that the parties agree to this
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`construction.3 (ID at 7-8). In its Petition, Fitbit proposed a narrower construction
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`for “step counter” that is “a device mounted to the chest, waist, or leg that counts
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`the number of steps a user takes.” (Petition at 27). In contrast, Blackbird proposed
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`in the district court the broader construction that “step counter” means “a device
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`that collects data to generate step counter.” (Id.; PPOR at 15).
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`Fitbit requests that the Board adopt Fitbit’s proposed construction for “step
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`counter” or, in the alternative, find that it is unnecessary to construe the term “step
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`3 Fitbit believes this confusion may have been the result of another entity,
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`TomTom, filing IPRs on the ’212 Patent close in time to Fitbit’s IPR. See
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`IPR2017-02023 and IPR2017-02025.
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`IPR2017-02012
`Fitbit’s Reply
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`counter” to decide this inter partes review because Fitbit has demonstrated for each
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`ground of invalidity that the “step counter” is mounted to the chest, waist, or leg.
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`(See Petition at 28). Although Blackbird argued in its Preliminary Response that
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`Amano Grounds 1 and 2 do not disclose or teach a “step counter” mounted to the
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`chest, waist, or leg (PPOR at 31-36 and 40-42), the Board considered and rejected
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`Blackbird’s arguments in the Institution Decision. (See ID at 20-22). In addition,
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`Blackbird did not raise the issue its Response, and Blackbird’s expert did not offer
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`any opinions that are based on Fitbit’s construction of “step counter.” (Ex. 1021 at
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`102:2-18).
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`V. This inter partes review proceeding was properly instituted under the
`governing statutes.
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`35 U.S.C. §314(a) sets the threshold test for instituting inter partes review: a
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`determination by the Board “that the information presented in the petition under
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`section 311 and any response filed under section 313 shows that there is a
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`reasonable likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.” The Board’s timely Institution Decision
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`found “that the Petitioner has demonstrated a reasonable likelihood of prevailing
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`on the challenge to claims 2 and 5 as obvious over Amano” (ID at 22) and that
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`“independent claim 6 would have been obvious over Kato and Amano” (ID at 28).
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`The Institution Decision gave the required notice of the Board’s determination that
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`IPR2017-02012
`Fitbit’s Reply
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`the threshold for institution as required by §314(c) was met by the petition. By
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`operation of the plain-language of the statute, the Board’s decision effectively
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`instituted inter partes review on all grounds presented in the petition because the
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`Supreme Court has held that the Board can only institute the petition in its entirety
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`or not at all. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354-56 (2018); see also
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`PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting
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`SAS “to require a simple yes-or-no institution choice” for all challenges); Eset,
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`LLC v. Finjan, Inc., IPR2017-01738, Paper 28 (PTAB Aug. 10, 2018) (denying
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`rehearing request to partially institute or terminate because “petitioner’s petition,
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`not the Director’s discretion, is supposed to guide the life of the litigation”)
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`(quoting Adidas AG v. Nike, Inc., 894 F.3d 1256 (Fed. Cir. 2018)).
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`Contrary to Blackbird’s argument, 37 C.F.R. §42.5 authorized the Board to
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`issue its later order permitting consideration of the petition’s anticipation ground
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`because the Supreme Court’s decision that the Board may only grant or deny
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`institution of a petition in full is an intervening change in law that could not have
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`been contemplated by the existing regulations. In addition, the Federal Circuit has
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`indicated that the Board must consider all challenged claims and all challenged
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`grounds in the petition. See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics,
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`Fitbit’s Reply
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`Inc., 898 F.3d 1205, 1210 (Fed. Cir. 2018) (“[E]ven if a prior action did not appear
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`unlawful at the time, this does not insulate it from corrective action.”).
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`VI. The Constitution does not bar the application of the inter partes review
`process to the ’212 Patent.
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`Blackbird’s argument that the application of inter partes review to a patent
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`that issued before the enactment of the America Invents Act (AIA) lacks merit for
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`three reasons. First, inter partes review only provides prospective relief. In
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`Landgraf v. USI Film Products, the Supreme Court noted that “[w]hen the
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`intervening statute authorizes or affects the propriety of prospective relief,
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`application of the new provision is not retroactive.” 511 U.S. 244, 273 (1994).
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`Inter partes review provides only prospective relief – a decision that one or more
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`claims are unpatentable, and therefore is not a retroactive application of law.
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`Second, inter partes review does not qualify as a retroactive application of law
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`because the intervening change in law that created inter partes review merely
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`effected procedural changes over what was previously available under the law. As
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`Landgraf explained, changes of procedure do not effect a retroactive change
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`“[b]ecause rules of procedure regulate secondary rather than primary conduct.”
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`511 U.S. at 275. Applied here, the substance of an inter partes review is the same
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`as the substance of a pre-existing inter partes reexamination–i.e., the Patent Office
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`can re-consider patentability using printed prior art under 35 U.S.C. §§ 102 and
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`IPR2017-02012
`Fitbit’s Reply
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`103. The differences in proce
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