`
`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 SUR-REPLY
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`
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`IPR2017-02012 – Patent Owner’s Response
`
`Pursuant to authorization provided in the Board’s October 15, 2018 e-mail to
`
`the parties, Blackbird Tech LLC d/b/a Blackbird Technologies (“Blackbird” or
`
`“Patent Owner”) files this sur-reply in response to the Reply in support of the
`
`Petition for inter partes review filed by the named Petitioner Fitbit, Inc. (“Fitbit” or
`
`“Petitioner”).
`
`I.
`
`THE BOARD WAS CORRECT TO DENY PETITIONERS’
`ANTICIPATION CHALLENGE TO CLAIMS 2 AND 5
`A. Amano Does Not Disclose “Programmed To Calculate A Distance
`Travelled By Multiplying A Number Of Steps Counted By The
`Step Counter By A Stride Length That Varies In Accordance With
`A Stride Rate”
`
`Petitioner devotes a significant portion of its reply attempting to establish
`
`that Amano discloses the claimed “calculate a distance travelled by multiplying a
`
`number of steps counted by the step counter by a stride length that varies in
`
`accordance with a stride rate.” But Petitioner’s effort falls short. Petitioner again
`
`insists that Amano “calculates a distance by multiplying the user’s pitch (i.e., the
`
`number of steps per unit time) by the user’s stride length.” Reply at 4. Petitioner
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`represents Amano’s calculation using the following equation:
`
`Even though Petitioner chose not the highlight the “unit time” aspects of the
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`equation, it is readily apparent that Amano’s calculation determines distance
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`- 1 -
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`IPR2017-02012 – Patent Owner’s Response
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`travelled per unit of time. And distance travelled per unit of time is speed, not
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`distance. Speed and distance are not the same thing. Amano’s calculation does
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`not determine distance any more than the following equation determines what “X”
`
`is:
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`(Pitch) x (stride length) = X/B
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`A person presented with the above equation cannot determine what “X” is without
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`multiplying “X/B” by “B.” Similarly, a person presented with Amano’s
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`calculation cannot determine what distance is travelled without multiplying
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`“distance travelled/unit time” by the “unit time.”
`
`Petitioner’s expert confirmed the difference between speed and distance
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`during her deposition:
`
`In your opinion, how would a person of ordinary skill in the art as
`Q.
`described in your declaration express the speed of an individual
`walking?
`
`A. Distance travelled in unit time.
`
`So would it be fair to say that speed can be expressed in distance
`Q.
`traveled per unit time?
`
`A. Yes.
`
`Q. And in your opinion, what is the difference between speed and
`distance?
`
`There is an equation that states the relationship. Distance is equal to
`A.
`speed multiplied by time.
`
`Ex. 2003 at 38:10-23.
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`- 2 -
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`IPR2017-02012 – Patent Owner’s Response
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`The Kato reference, on which Petitioner relies in a separate challenge
`
`(Ground 3), is also informative. Kato, like Amano, explicitly discloses that pitch is
`
`multiplied by stride length. Specifically, Kato makes it clear that pitch multiplied
`
`by stride length is speed, not distance, by disclosing that “the stride is multiplied
`
`by the pitch, to obtain a walking speed of the walker.” Ex. 1004 at 4:50-51. Kato
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`also appreciates the difference between speed and distance, recognizing that it is
`
`necessary to multiply “the walking speed by said unit of time after the walking
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`speed is calculated to obtain the distance travelled by the walker in said unit of
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`time.” Id. at 4:62-68. These teachings by Kato help emphasize that, contrary to
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`Petitioner’s belief, speed and distance are two separate things. And that pitch
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`multiplied by stride length is speed, not distance. Accordingly, Amano’s
`
`calculation of pitch multiplied by stride length does not meet the claimed
`
`“calculate a distance travelled by multiplying a number of steps counted by a stride
`
`length that varies in accordance with a stride rate” and cannot anticipate the
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`challenged claims.
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`Perhaps recognizing that Amano’s alleged teaching of distance calculation is
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`deficient, Petitioner argues for the first time that column 18 in Amano teaches
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`calculating distance. Reply at 7-9. But neither Petitioner nor its expert previously
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`relied on column 18 and should not be allowed to do so now.
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`- 3 -
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`IPR2017-02012 – Patent Owner’s Response
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`Substantively, the disclosures in column 18 fail to remedy the previously
`
`identified deficiencies. Petitioner alleges that the following text in column 18
`
`teaches the claimed distance calculation:
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`On the other hand, if an altitude difference is present, then in step
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`Sa103, CPU 201 first determines the slope from the aforementioned
`
`altitude distance and the distance run during the 30 seconds.
`
`Ex. 1003 at 18:40-44. First, a “distance run during the 30 seconds” is a speed
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`calculation, not a distance calculation. Patent Owner’s expert confirmed during his
`
`deposition that this language refers to speed, not distance:
`
`Q. On line 40 it says, On the other hand, if an altitude difference is
`present, then in step Sa103, CPU 201 first determines the slope from the
`aforementioned altitude distance and the distance run during the 30
`seconds.
`
`A. Yes. Again distance over time. That's the velocity. Distance run over 30
`seconds, that's a velocity measurement.
`
`Ex. 1021 at 165:2-11.
`
`Second, even if the recited text discloses calculating a distance (it does not),
`
`there is no indication that that distance is calculated by multiplying a number of
`
`steps counted by a stride length, as required by the challenged claims. The
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`distance run during the 30 seconds is determined by some undisclosed method.
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`Such a vague disclosure is inadequate to teach that distance is calculated by
`
`multiplying a number of steps counted by a stride length.
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`IPR2017-02012 – Patent Owner’s Response
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`B. Amano’s FFT Processing Does Not Establish That Its Alleged
`Distance Calculation Is Longer than a Single Step
`
`Petitioner makes several arguments that Amano’s use of FFT processing
`
`proves that its alleged distance calculation is longer than a single step. But that is
`
`not the case. Petitioner’s arguments are premised on FFT processing using a time
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`window of data that lasts longer than a single step. For example, Petitioner posits
`
`that “Amano discloses that the user’s steps and distance are calculated using FFT
`
`signal processing, which means that Amano performs the calculations using a time
`
`window of data and are not based upon data for a single step.” Reply at 11.
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`Regardless of Petitioner’s musings about Amano’s FFT processing, Amano
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`itself discloses detecting pitch for a single step: “In step Sa3, CPU 201 multiplies
`
`the test subject s stride which is stored in RAM 203, with the pitch detected on the
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`immediately preceding step.” Amano at 12:15-17. Amano’s apparent use of FFT
`
`processing does not change that explicit disclosure. Indeed, Petitioner’s expert’s
`
`unsupported view that FFT processing uses a time window of data is not
`
`inconsistent with Amano’s explicit teaching that pitch is detected for a single step.
`
`Even a single step occupies a window of time, and there is no reason FFT
`
`processing could not be performed for a single step.
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`- 5 -
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`IPR2017-02012 – Patent Owner’s Response
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`II.
`
`PETITIONERS’ NEW OBVIOUSNESS CHALLENGE TO CLAIMS 2
`AND 5 SHOULD BE REJECTED
`
`Petitioner attempts to remedy Amano’s failure to disclose the claimed
`
`distance calculation by arguing, for the first time, that the claimed calculation is
`
`obvious in view of Amano. Reply at 5. But this new argument is too late and
`
`should not be considered.1 Moreover, Petitioner provides no explanation as to why
`
`a POSITA would have been motivated to modify Amano to determine distance
`
`instead of speed. In fact, a POSITA would not have been motivated to make such
`
`a modification because Amano is focused on determining exercise intensity.
`
`Amano specifies that the “distance run by the test subject per unit of time,” “is
`
`multiplied by the user’s body weight…to obtain exercise intensity.” Ex. 1003 at
`
`12:17-21. When determining exercise intensity, speed is the important parameter,
`
`not distance.
`
`Petitioner makes the single unsupported statement that “even if Amano did
`
`not expressly disclose the claimed calculation, it would have been obvious based
`
`on this teaching.” Reply at 5. Such bald statements are inadequate to establish
`
`obviousness and fatal to Petitioner’s position. See InTouch Techs., Inc. v. VGO
`
`Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
`
`
`1 Petitioner’s obviousness argument presented in the petition focused on limitations
`
`other than the missing claimed distance calculation. Petition at 50-57.
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`- 6 -
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`
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`IPR2017-02012 – Patent Owner’s Response
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`In an attempt to provide support for its new obviousness argument that even
`
`its own expert did not, Petitioner now argues that “Blackbird’s expert admitted that
`
`the basic relationship between stride length and stride rate (applied by Amano and
`
`the ‘212 Patent) was well known.” Reply at 5. But Petitioner’s point misses the
`
`mark. Whether or not the basic relationship between stride length and stride rate is
`
`well known does not change anything about Amano’s failure to teach calculating a
`
`distance travelled by multiplying a number of steps by a stride length. Even
`
`assuming that the aforementioned relationship is well known, that does not make it
`
`obvious for Amano to calculate a distance instead of speed.
`
`III. PETITIONERS’ CHALLENGE OF CLAIM 6 SHOULD BE
`REJECTED
`
`A combination of Kato and Amano does not teach the claim element:
`
`“calculate a distance travelled by multiplying a number of steps counted by a stride
`
`length that varies in accordance with a stride rate.” Like Amano, Kato calculates
`
`speed, not distance. Kato discloses that “the stride is multiplied by the pitch, to
`
`obtain a walking speed of the walker.” Ex. 1004 at 4:50-51. As discussed above,
`
`Amano discloses that pitch is multiplied by stride length to calculate speed. For
`
`example, Amano discloses a system in which the user’s pitch is sampled at time
`
`intervals and this sampling is multiplied by a test subject’s stride “to calculate the
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`distance run by the test subject per unit of time.” Ex. 1003 at 12:4-21 (emphasis
`
`added). “Distance run per unit of time,” e.g., 5 miles-per-hour, is a measure of
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`- 7 -
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`IPR2017-02012 – Patent Owner’s Response
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`speed, not distance. Amano thus discloses that pitch multiplied by stride equals
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`speed, just like Kato. As both Amano and Kato fail to teach the claimed distance
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`calculation, a combination of Amano and Kato cannot teach this required claim
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`element.
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`IV. CONCLUSION
`For the foregoing reasons, the Petition’s grounds challenging the validity of
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`the ’212 patent claims are improperly supported, and the patentability of claims 2,
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`5, and 6 should be confirmed by final written decision.
`
`
`
`Dated: October 25, 2018
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Walter D. Davis, Jr.
` Walter D. Davis, Jr. (Reg. No. 45,137)
` Aldo Noto (Reg. No. 35,628)
` Wayne M. Helge (Reg. No. 56,905)
` DAVIDSON BERQUIST JACKSON &
` GOWDEY, LLP
` 8300 Greensboro Drive, Suite 500
` McLean, VA 22102
` Telephone: 571-765-7700
` Fax: 571-765-7200
` Email: wdavis@dbjg.com
` Email: anoto@dbjg.com
` Email: whelge@dbjg.com
`
` Counsel for Patent Owner
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`IPR2017-02012 – Patent Owner’s Response
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`CERTIFICATE OF WORD COUNT
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`The undersigned certifies that the foregoing PATENT OWNER’S SUR-
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`REPLY complies with the type-volume limitation in 37 C.F.R. § 42.24(b)(2).
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`According to the word processing system’s word count, the brief contains 1,631
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`words, excluding the parts of the response exempted by 37 C.F.R. § 42.24(a).
`
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`
`
`By: /s/ Walter D. Davis, Jr.
` USPTO Reg. No. 45,137
` Counsel for Patent Owner
`
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`- 9 -
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`IPR2017-02012 – Patent Owner’s Response
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on October 25, 2018, a true and correct copy
`
`of the foregoing Patent Owner’s Sur-Reply is being served electronically to the
`
`Petitioners at the correspondence email addresses of record as follows:
`
`Harper Batts (Reg. No. 56,160)
`Chris Ponder (Reg. No. 77,167)
`Sheppard, Mullin,
`Richter & Hampton LLP
`379 Lytton Avenue
`Palo Alto, CA, 94301
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`LegalTM-Fitbit-BB-
`IPRs@sheppardmullin.com
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`
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`Matthew L. Cutler (Reg. No. 43,574)
`Douglas A. Robinson (Reg. No. 59,703)
`Harness, Dickey & Pierce PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`mcutler@hdp.com
`drobinson@hdp.com
`
`
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`
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`By: /s/ Walter D. Davis, Jr.
` USPTO Reg. No. 45,137
`
`DAVIDSON BERQUIST JACKSON &
` GOWDEY, LLP
` 8300 Greensboro Drive, Suite 500
` McLean, VA 22102
` Telephone: 571-765-7700
` Fax: 571-765-7200
` Email: wdavis@dbjg.com
`
`
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`
`
`
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`Counsel for Patent Owner
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`- 10 -
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