UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT AND APPEAL BOARD
`____________________
`
`TOMTOM, INC. Petitioner
`
`v.
`
`BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner
`
`
`
`U.S. Patent No. 6,434,212
`Issue Date: August 13, 2002
`
`
`Entitled: PEDOMETER
`
`
`____________________
`
`Inter Partes Review No.: 2017-02017
`____________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`i
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`

`

`
`
`TABLE OF CONTENTS
`
`Page
`I. MANDATORY NOTICES ............................................................................. 1
`A. Real Parties-In-Interest Pursuant to 37 C.F.R. § 42.8(b)(1) ....................... 1
`B. Related Matters Pursuant to 37 C.F.R. § 42.8(b)(2) .................................. 1
`C. Lead and Back-Up Counsel Pursuant to 37 C.F.R. § 42.8(b)(3) ............... 2
`D. Service Information Pursuant to 37 C.F.R. § 42.8(b)(4) ............................ 2
`E. Payment of Fees under 37 C.F.R. §§ 42.15(a) and 42.103 ........................ 3
`II. GROUNDS FOR STANDING ........................................................................ 3
`III. STATEMENT OF PRECISE RELIEF REQUESTED ................................... 3
`A. Identification of Claims Challenged ........................................................... 3
`B. Statutory Grounds and Patents and Printed Publications Relied Upon for
`Each Ground ............................................................................................... 3
`IV. SPECIFIC CLAIMS AND GROUNDS FOR RELIEF .................................. 4
`V.
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF ............... 5
`A. Brief Summary of Reasons for Relief Requested ...................................... 5
`B. The ’212 Patent ........................................................................................... 7
`C. Prosecution History of the ’608 Patent ....................................................... 9
`D. Prosecution History of the ’212 Patent ..................................................... 11
`VI. SPECIFIC IDENTIFICATION OF WHERE EACH ELEMENT OF THE
`CLAIMS
`IS DISCLOSED IN PRIOR ART PATENTS AND PRINTED
`PUBLICATIONS .......................................................................................... 12
`A. Construction of the Claims of the ’212 Patent ......................................... 12
`
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`i
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`
`
`1. “Step counter” ................................................................................ 13
`2. “Stride rate” .................................................................................... 13
`3. “A Range of Stride Lengths Calculated from a Range of
`Corresponding
`Stride Rates” (claim 6) ................................................................... 13
`B. Level of Skill in the Art ............................................................................ 15
`C. Brief Description of the References Relied Upon .................................... 15
`1. Jimenez ........................................................................................... 15
`2. Levi ................................................................................................. 16
`3. Ebeling ........................................................................................... 17
`D. Jimenez in View of Levi Renders Claims 1-8 Obvious ........................... 17
`1. Claim 1 ........................................................................................... 18
`2. Claim 2 ........................................................................................... 33
`3. Claim 3 ........................................................................................... 36
`4. Claim 4 ........................................................................................... 40
`5. Claim 5 ........................................................................................... 41
`6. Claim 6 ........................................................................................... 43
`7. Claim 7 ........................................................................................... 47
`8. Claim 8 ........................................................................................... 49
`E. Jimenez in View of Ebeling Renders Claims 1-8 Obvious ...................... 50
`1. Claim 1 ........................................................................................... 50
`2. Claim 2 ........................................................................................... 55
`3. Claim 3 ........................................................................................... 60
`
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`ii
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`4. Claim 4 ........................................................................................... 61
`5. Claim 5 ........................................................................................... 62
`6. Claim 6 ........................................................................................... 64
`7. Claim 7 ........................................................................................... 66
`8. Claim 8 ........................................................................................... 69
`VII. CONCLUSION .............................................................................................. 70
`
`
`
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`iii
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 195 L. Ed. 2d 423 (2016) ......................................................... 12
`Mark I Mktg. Corp. v. R.R. Donnelley & Sons Co.,
`66 F.3d 285 (Fed. Cir. 1995) ................................................................................ 9
`Research Plastics, Inc. v. Fed. Packaging Corp.,
`421 F.3d 1290 (Fed. Cir. 2005) ............................................................................ 8
`Statutes
` 35 U.S.C. § 102 ......................................................................................................... 9
`35 U.S.C. § 102(b) ........................................................................................... 3, 4, 11
`35 U.S.C. § 102(e) ................................................................................................. 3, 5
`35 U.S.C. § 103 ...................................................................................................... 3, 9
`35 U.S.C. § 103(a) ..................................................................................................... 4
`35 U.S.C. § 112 .......................................................................................................... 9
`35 U.S.C. §§ 311 – 318 .............................................................................................. 3
`35 U.S.C. § 312(a)(3) ................................................................................................. 3
`Other Authorities
`37 C.F.R. § 42.10(b) .................................................................................................. 2
`37 C.F.R. § 42.24 ..................................................................................................... 72
`37 C.F.R. §42.24(a)(1) ............................................................................................. 72
`37 C.F.R. § 42.65 ................................................................................................... 4, 5
`37 C.F.R. §§ 42.100 – 42.123 .................................................................................... 3
`iv
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`

`

`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`37 CPR. § 42.100(b) .............................................................................................. 12
`37 C.F.R. §42.104(b) ................................................................................................. 3
`37 CPR. §42.104(b) ................................................................................................. 3
`
`
`
`
`
`
`v
`
`

`

`EX1001
`EX1002
`EX1003
`EX1004
`EX1005
`EX1006
`EX1007
`EX1008
`EX1009
`EX1010
`
`EX1011
`
`EX1012
`
`EX1013
`
`EX1014
`
`EX1015
`EX1016
`EX1017
`EX1018
`EX1019
`
`
`
`
`
`
`
`
`
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 6,434,212
`U.S. Patent No. 4,367,752
`U.S. Patent No. 5,583,776
`U.S. Patent No. 6,145,389
`Expert Declaration
`U.S. Patent No. 5,807,267
`U.S. Patent No. 6,099,478
`U.S. Patent No. 6,175,608
`File Wrapper of U.S. Patent No. 6,434,212
`File Wrapper of U.S. Patent No. 6,175,608
`Blackbird Tech LLC d/b/a Blackbird Technologies
`v. Fitbit, Inc., D.I. 87, Case No. 16-CV-00683 (D.
`Del. Aug. 23, 2017)
`Infringement Contentions
`TS Keller, AM Weisberger, JL Ray, SS Hasan, RG
`Shiavi, DM Spengler, Relationship Between
`Vertical Ground Reaction Force and Speed During
`Walking, Slow Jogging, and Running, Clinical
`Biomechanics, Vol. 11, Issue 5 at 253-259 (July
`1996)
`Karvonen, Juha and Vuorimaa Timo, Heart Rate
`and Exercise Intensity During Sports Activities,
`Sports Medicine, Vol. 5, Issue 5, at 303–311 (May
`1988)
`U.S. Patent No. 4,578,769
`U.S. Patent No. 5,117,444
`U.S. Patent No. 4,771,394
`U.S. Provisional Patent App. No. 60/030,743
`U.S. Patent No. 5,891,042
`
`i
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`I. MANDATORY NOTICES
`A. Real Parties-In-Interest Pursuant to 37 C.F.R. § 42.8(b)(1)
`TomTom, Inc. (“Petitioner”) and TomTom International BV are the real
`
`parties-in-interest.
`
`B. Related Matters Pursuant to 37 C.F.R. § 42.8(b)(2)
`Records of the U.S. Patent and Trademark Office (“PTO”) indicate that U.S.
`
`Patent No. 6,434,212 (“the ’212 Patent”) (EX1001) issued on August 13, 2002 from
`
`U.S. Patent Application No. 09/756,647 (“the ’647 Application”), which claims the
`
`benefit of U.S. Patent Application No. 09/181,738, filed on October 28, 1998, now
`
`issued as U.S. Patent No. 6,175,608 (“the ’608 Patent”), and is at issue in the
`
`following proceedings.
`
`• • Blackbird Tech LLC d/b/a Blackbird Technologies v. Garmin International,
`
`Inc. and Garmin USA, Inc., Case No. 16-CV-689 (D. Del.);
`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Fitbit, Inc., Case No.
`
`16-CV-683 (D. Del.);
`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Aliphcom d/b/a
`
`Jawbone, Case No. 16-CV-684 (D. Del.);
`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Sony Corp. et al., Case
`
`No. 16-CV-685 (D. Del.);
`
`
`
`1
`
`

`

`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Timex Group USA, Inc.,
`
`Case No. 16-CV-686 (D. Del.);
`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. TomTom, Inc., Case No.
`
`16-CV-687 (D. Del.);
`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Wahoo Fitness, Inc.,
`
`Case No. 16-CV-688 (D. Del.); and
`
`• Garmin International, Inc. v. Blackbird Tech LLC d/b/a Blackbird
`
`Technologies, IPR2017-01058 (P.T.A.B.).
`
`Further, this Petition is one of two petitions for inter partes review that
`
`Petitioner is filing with respect to the ’212 Patent. The other petition is being filed
`
`concurrently herewith.
`
`C. Lead and Back-Up Counsel Pursuant to 37 C.F.R. § 42.8(b)(3)
`Petitioner identifies Dipu A. Doshi (Reg. No. 60,373) as Lead Counsel, and
`
`Michael S. Marcus (Reg. No. 31,727) and Megan R. Wood (Reg. No. 72,367) as
`
`Back-up Counsel. Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney
`
`accompanies this Petition.
`
`D. Service Information Pursuant to 37 C.F.R. § 42.8(b)(4)
`Dipu A. Doshi
`
`BLANK ROME LLP
`
`1825 Eye Street NW
`
`
`
`2
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`

`

`
`Washington, DC 20006
`
`Tel.: (202) 420-2604
`
`Fax: (202) 420-2201
`
`ddoshi@blankrome.com and TomTom.Blackbird@blankrome.com
`
`E. Payment of Fees under 37 C.F.R. §§ 42.15(a) and 42.103
`The required fees are submitted herewith. If additional fees are owed during
`
`this proceeding, the PTO is authorized to charge Deposit Account No. 23-2185.
`
`II. GROUNDS FOR STANDING
`Petitioner certifies that the ’212 Patent is available for inter partes review.
`
`Petitioner is not barred or estopped from requesting inter partes review challenging
`
`the patent claims on the grounds set forth herein.
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`A. Identification of Claims Challenged
`Pursuant to 37 C.F.R. §42.104(b), Petitioner respectfully requests inter partes
`
`review of claims 1-8 of the ’212 Patent under 35 U.S.C. §§ 311 – 318 and 37 C.F.R.
`
`§§ 42.100 – 42.123, and the cancellation of those claims as being unpatentable under
`
`35 U.S.C. § 103.
`
`B. Statutory Grounds and Patents and Printed Publications Relied
`Upon for Each Ground
`There is at least a reasonable likelihood that at least one of claims 1-8 of the
`
`’212 Patent will be found obvious based on the following prior art. All of the prior
`
`
`
`3
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`

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`art patents and publications discussed herein constitute prior art against the ’212
`
`Patent under 35 U.S.C. §§ 102(a), 102(b) and/or 102(e), and are submitted under 35
`
`U.S.C. § 312(a)(3).
`
`• U.S. Patent No. 4,367,752 to Jimenez et al. (“Jimenez”) (EX1002);
`
`• U.S. Patent No. 5,583,776 to Levi et al. (“Levi”) (EX1003); and
`
`• U.S. Patent No. 6,145,389 to Ebeling et al. (“Ebeling”) (EX1004).
`
`IV.
`
`SPECIFIC CLAIMS AND GROUNDS FOR RELIEF
`Ground 1: Claims 1-8 of the ’212 Patent are obvious under pre-AIA 35
`
`U.S.C. § 103(a) in light of the disclosure and teachings of Jimenez in view of Levi
`
`and in view of the knowledge of a person having ordinary skill in the art
`
`(“PHOSITA”).
`
`Jimenez does not appear on the face of the ’212 Patent, and was not relied
`
`upon during original prosecution. Jimenez qualifies as prior art under at least 35
`
`U.S.C. § 102(b) as it was published on January 11, 1983, which is more than one
`
`year prior to the ’212 Patent’s earliest effective filing date (September 9, 1997).
`
`EX1002. Levi qualifies as prior art under at least 35 U.S.C. § 102(b) as it was
`
`published on December 10, 1996, more than one year before the earliest priority date
`
`of the ’212 Patent. EX1003. The grounds for unpatentability are supported by the
`
`Declaration under 37 C.F.R. § 42.65 of Mr. Thomas Blackadar. EX1005.
`
`
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`4
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`

`
`Ground 2: Claims 1-8 of the ’212 Patent are obvious under pre-AIA 35
`
`U.S.C. § 103(a) in light of the disclosure and teachings of Jimenez, supra, in view
`
`of Ebeling and in view of the knowledge of a PHOSITA.
`
`Ebeling does not appear on the face of the ’212 Patent, and was not relied
`
`upon during original prosecution. Ebeling qualifies as prior art under at least 35
`
`U.S.C. § 102(e) as it was filed on November 13, 1997, and claims priority to a
`
`provisional application filed on November 12, 1996, before the invention of the ’212
`
`Patent. EX1004; EX1018. Ebeling was not considered by the Examiner during the
`
`prosecution of the application which issued as the ’212 Patent. The grounds for
`
`unpatentability are supported by the Declaration under 37 C.F.R. § 42.65 of Mr.
`
`Blackadar.
`
`V.
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Brief Summary of Reasons for Relief Requested
`Independent claims 1, 2, 5, and 6 of the ’212 Patent are generally directed to
`
`an exercise monitoring device or pedometer that includes a data processor
`
`programmed to calculate a distance traveled by multiplying a number of steps by a
`
`stride length that varies in accordance with the stride rate. The ’212 Patent combines
`
`known hardware (e.g., prior art pedometers) with a known method of varying stride
`
`length with stride rate to purportedly calculate distance more accurately.
`
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`5
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`As discussed in greater detail below, Jimenez and Levi disclose and teach
`
`pedometers with straps and data processors. As one example, Jimenez discloses and
`
`teaches an exercise monitoring device (see EX1002 at 1:8-14 (“[A]n apparatus for
`
`testing the physical condition of a subject in response to signals indicative of heart
`
`activity of the subject and of the distance traversed by a limb of the subject during a
`
`timed testing period to provide a fitness indication of the cardiovascular system of
`
`the subject and/or parametric data related to exercise.”)); a strap (see id. at 16:39-
`
`41 (“Diodes 202 and 203 are connected via leads in strap 204 to housing 17, which
`
`is also mounted on strap 204.”)); a heart rate monitor (see id. at 16:35-39 (“In
`
`accordance with a modification of the apparatus illustrated in FIG. 13, board 201 is
`
`mounted on strap 204 so that light emitting diode 202 and photodiode 203 monitor
`
`systolic pressure pulses in the cephalic vein adjacent the brachialis muscle.”); and a
`
`data processor (see id. at 16:49-54: (“the circuitry of FIG. 10 is included in housing
`
`17. The electronic circuitry illustrated in FIGS. 11a and 11b can be subdivided into
`
`a number of segments, namely: a 40 pin microcomputer 301, an erasable
`
`programmable read only memory 302, controller 303 for liquid crystal display 31,
`
`[etc.]”).
`
`As discussed in greater detail below, the Examiner did not rely on references
`
`that taught the well known relationship between stride rate and stride length. Both
`
`Levi and Ebeling, in an effort to improve on prior art pedometers, disclose and teach
`6
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`a data processor that varies stride length with stride rate to calculate distance more
`
`accurately. See, e.g., EX1003 at 6:15-20 (“Since step size directly affects the
`
`estimated DR distance, the presently preferred embodiment adjusts step size
`
`according to the step frequency. A dynamic scaling algorithm to improve the
`
`accuracy of distance measurements of a human footstep sensor by adjusting the scale
`
`factor as a function of step frequency is thus harnessed by the present invention.”);
`
`see also EX1004 at 4:4-8 (“The total distance traveled is computed as the sum of
`
`the individual stride lengths. Since the length of each stride is calculated
`
`independently, this pedometer calculates the distance traveled accurately even if the
`
`person changes speed and gait while walking or running.”).
`
`As discussed below, the references are presented in a new light and in view
`
`of the knowledge of a PHOSITA as evidenced by Mr. Blackadar’s declaration. As
`
`explained below, a PHOSITA would have been motivated to combine Jimenez with
`
`either Levi or Ebeling to improve the functionality and distance calculations of
`
`known pedometers. See generally EX1005 at ¶¶90-96, 153-159.
`
`B. The ’212 Patent
`The ’212 Patent relates generally to pedometers that estimate distance traveled
`
`based on multiplying steps taken by stride length. It describes “[a] pedometer having
`
`improved accuracy by calculating actual stride lengths of a user based on relative
`
`stride rates.” EX1001 at Abstract. In particular, the disclosed embodiments include
`
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`7
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`

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`the calibration steps of determining a “base stride length” for a particular user by
`
`walking or running a predetermined distance, counting steps taken, and dividing the
`
`predetermined distance by the number of steps counted. Id. at 2:40-45, 3:56-64, 5:1-
`
`9. The number of strides counted may then be divided by the time required to run
`
`or walk the predetermined distance to determine the “base stride rate” at which the
`
`base stride length was determined. Id. at 2:40-45, 3:65-67, 5:1-9; see also, generally,
`
`id. at 5:10-6:9.
`
`The ’212 Patent notes the well known dependence of stride length on stride
`
`rate (i.e., the length of a person’s stride will naturally change based on how fast they
`
`are walking or running), and the ’212 Patent seeks to correct the base stride length
`
`to a calculated “actual” stride length as a function of a measured “actual” stride rate.
`
`Id. at 2:33-52, 4:19-58. In doing so, the ’212 Patent purports to achieve a more
`
`accurate estimate of distance traveled, as compared to prior art devices that used
`
`“fixed average stride lengths” to calculate distance, and that required periodic
`
`recalibration. Id. at 1:54-55, 1:63-65, 4:19-28. As explained by the ’212 Patent,
`
`“[w]ith the old devices, a user needed to re-calibrate periodically to be close to
`
`getting an accurate reading, and could not change pace during a workout without
`
`decreasing accuracy.” Id. at 4:25-28. The ’212 purportedly improved on the “old
`
`devices” by performing a plurality of calibrations for a plurality of stride lengths and
`
`stride rates using a plurality of sample runs/walks of a predetermined distance to
`8
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`generate a mathematical function that allows stride length to vary according to stride
`
`rate. Id. at 2:57-59, 4:62-6:12. Embodiments of the device taught by the ’212 Patent
`
`include a step counter, such as an inertia device used to count steps, a strap, a
`
`transmitter, a receiver, and a heart rate monitor. Id. at 2:15-20, 3:12-30, FIG. 1.
`
`C. Prosecution History of the ’608 Patent
`The ’608 Patent, to which the ’212 Patent claims priority, was filed on October
`
`28, 1998, as U.S. Application 09/181,738 (“the Parent ’738 Application”). EX1010
`
`at 7. It is a matter of law that arguments made during prosecution are pertinent and
`
`binding. Research Plastics, Inc. v. Fed. Packaging Corp., 421 F.3d 1290, 1296 (Fed.
`
`Cir. 2005). The prosecution history also includes, inter alia, the prosecution history
`
`of parent and grandparent applications. See Mark I Mktg. Corp. v. R.R. Donnelley
`
`& Sons Co., 66 F.3d 285, 291 (Fed. Cir. 1995).
`
`On January 28, 2000, the Examiner issued a Non-Final Rejection for the
`
`Parent ’738 Application, rejecting all claims under 35 U.S.C. § 112 primarily for
`
`lack of clear antecedent basis. Id. at 61 (“The claims are replete with terms which
`
`lack a clear antecedent basis. Numerous instances of this problem will be
`
`specifically pointed out; however, applicant is required to proofread and correct all
`
`instances.”). Additionally, many claims were rejected as anticipated under § 102
`
`and/or rendered obvious under § 103 by U.S. Patent No. 5,891,042 to Sham et al.
`
`(“Sham”), teaching a pedometer including a step counter, transmitter, and heart rate
`
`
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`9
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`monitor. Id. at 62-63. The Examiner also specifically rejected claims requiring a
`
`wireless transmitter as being obvious, stating that “the use of wireless transmitters is
`
`widespread in the art” and thus “is not of patentable merit.” Id. at 63. The Examiner
`
`also found certain claims to contain allowable subject matter. Id. at 64. Applicant
`
`subsequently amended other claims to include the allowable subject matter. Id. at
`
`74-80.
`
`In its Remarks, Applicant states that the “step counter [of the invention] does
`
`not ‘measure’ anything,” stating, “[s]tep counters only count steps.” Id. at 80.
`
`Further, Applicant states that “zero inches is the smallest distance and thirty-six
`
`inches is the largest distance of transmission for this preferred embodiment,”
`
`conceding that the transmitter of the invention covers wired transmitters (i.e., zero
`
`inches), consistent with the shared specification of the Parent ’738 Application and
`
`the ’212 Patent. Id. at 81; see also EX1001 at 3:14-15 (“Alternately, the transmitter
`
`is a wireless or wired digital transmitter . . . .”). Additionally, Applicant
`
`distinguished the invention from a commercially available pedometer by stating that
`
`the commercially available pedometer “can only measure distance based on a
`
`uniform stride length,” and that, “the user’s stride length must be measured and then
`
`input into this pedometer’s ‘memory.’ It does not measure stride length
`
`automatically.” EX1010 at 81. Thus, Applicant concludes that, “even if this
`
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`10
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`

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`pedometer were prior art, it has no bearing on the allowability of the claims,
`
`particularly those relating to variable stride lengths.” Id. at 82.
`
`In remarks summarizing a June 12, 2000 telephone interview discussing U.S.
`
`Patent No. 5,033,013 to Kato and U.S. Patent No. 5,724,265 to Hutchings, Applicant
`
`admits that these references “disclosed a correspondence between stride rate and
`
`stride length.” Id. at 100. Applicant continued, stating, “[c]onsequently, any claims
`
`based on this broad concept were not allowable, but claims reciting a specific
`
`algorithm for deriving a range of stride lengths or a pedometer in combination with
`
`a heart rate monitor are allowable.” Id. at 100-101. Further, in summarizing a June
`
`15, 2000 interview, Applicant contended that “a distinction between the art of record
`
`and the present pedometer invention is the use of data input from runs or walks over
`
`known distances to establish a range of stride rate versus stride length data that can
`
`be used in subsequent runs or walks to derive actual stride lengths from actual stride
`
`rates.” Id. at 101. The Parent ’738 Application was then allowed and issued as U.S.
`
`Patent 6,175,608 on January 16, 2001. EX1008.
`
`D. Prosecution History of the ’212 Patent
`The continuation application that resulted in the ’212 Patent was filed on
`
`January 4, 2001 as U.S. Application 09/756,647 (“the ’647 Application”). EX1009
`
`at 6. For purposes of this proceeding, Petitioner assumes the priority date for the
`
`claims for the ’212 Patent is October 28, 1998, the filing date of the Parent ’738
`
`
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`11
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`Application. The ’647 Application included 9 claims, two of which were
`
`independent. Id. at 20-21. On November 13, 2001, the USPTO issued an Office
`
`Action rejecting only claim 1 under §102(b) as anticipated by Sham, which the
`
`Examiner contended taught an exercise monitoring device with a strap, a step
`
`counter, and a heart rate monitor. Id. at 41. Claims 2-9, each of which included the
`
`limitation of a variable stride length that is varied according to stride rate, were found
`
`to contain allowable subject matter in this initial action (with claims 2-6 being
`
`objected to for dependence on claim 1 and claims 7-9 being allowed). Id.; see also
`
`id. at 20-21. After this initial action, Applicant submitted an IDS disclosing sixty-
`
`nine (69) references. Id. at 44-46. Applicant then cancelled claim 1 and rewrote
`
`claims 2-6 to remove their dependency on cancelled claim 1. Id. at 73.
`
`The Examiner issued a notice of allowance on March 19, 2002, relying on the
`
`purported absence of “the data processing limitations” in the prior art. Id. at 83. The
`
`’212 Patent issued on August 13, 2002. See EX1001.
`
`VI.
`
`SPECIFIC IDENTIFICATION OF WHERE EACH ELEMENT OF
`THE CLAIMS IS DISCLOSED IN PRIOR ART PATENTS AND
`PRINTED PUBLICATIONS
`A. Construction of the Claims of the ’212 Patent
`The terms of claims 1-8 of the ’212 Patent are to be given their “broadest
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`reasonable construction in light of the specification,” as understood by a PHOSITA.
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`37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
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`2142 (2016). Petitioner submits constructions for the following terms and phrases
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`in accordance with 37 C.F.R. § 42.100(b) for this proceeding.
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`1. “Step counter”
`The term “step counter” is present in claims 1, 2, 5, and 6 of the ’212 Patent.
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`Patent Owner proposed construing “step counter” to mean “a device that collects
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`data to generate a step count” in the corresponding district court litigation. EX1011
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`at 2. Patent Owner’s proposed construction is broad enough to encompass devices
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`that do not necessarily count the number of times the foot strikes the ground. As
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`discussed in greater detail below, Petitioner submits that the prior art references
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`disclose a step counter under Patent Owner’s proposed construction.1
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`2. “Stride rate”
`“Stride rate” appears in claims 2, 5, and 6 of the ’212 Patent. Patent Owner
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`proposed construing this term to mean “number of steps over a time period” in the
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`corresponding district court litigation. EX1011 at 4. As discussed in greater detail
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`below, Petitioner submits that the prior art references disclose this limitation under
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`Patent Owner’s proposed construction.
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`3. “From A Range of Stride Lengths Calculated from a Range of
`Corresponding Stride Rates” (claim 6)”
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`1 Petitioner joined co-defendants’ proposed claim constructions, which are attached
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`as EX1011.
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`Patent Owner proposed construing the claim 6 phrase as “from a range of
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`stride lengths that correspond to stride rates, the correspondence generated from two
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`or more calibrations.” EX1011 at 6. As discussed in greater detail below, Petitioner
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`submits that the prior art references disclose this limitation under Patent Owner’s
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`proposed construction.
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`Additionally, while Patent Owner ultimately dropped its construction of
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`similar phrases in independent claims 2 and 5, Patent Owner had proposed their
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`meanings to be essentially the same as claim 6’s phrase (referenced above). EX1012
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`at 2. For example, Patent Owner proposed that claim 2’s phrase be construed to
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`mean “two or more calibrations that each generate a correspondence between stride
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`rate and stride length.” Id. Similarly, Patent Owner proposed that claim 5’s phrase
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`be construed the same as claim 6’s phrase, namely, to mean “a range of stride lengths
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`that correspond to stride rates, the correspondence generated from two or more
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`calibrations”.”2 Id. As discussed in greater detail below, Petitioner submits that the
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`prior art references disclose this limitation under Patent Owner’s proposed
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`construction.
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`2 Patent Owner proposed these constructions in the related district court
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`litigation before the parties determined that no construction was necessary.
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`EX1012.
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`B. Level of Skill in the Art
`For purposes of this proceeding, Petitioner submits that a PHOSITA of the
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`’212 Patent as of October 1998 would have been a person with a bachelor’s degree
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`in mechanical engineering, electrical engineering, or a similar field with at least two
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`years of experience in motion tracking, motion analysis, inertial sensing, or signal
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`analysis, or a person with a master’s degree in mechanical engineering, electrical
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`engineering, or a similar field with a specialization in motion tracking, motion
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`analysis, inertial sensing, or signal analysis. EX1005 at ¶36.
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`C. Brief Description of the References Relied Upon
`1. Jimenez
`Jimenez relates generally to “an apparatus for testing the physical condition
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`of a subject in response to signals indicative of heart activity of the subject and of
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`the distance traversed by a limb of the subject during a timed testing period to
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`provide a fitness indication of the cardiovascular system of the subject and/or
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`parametric data related to exercise.” See EX1002 at 1:8-14. Jimenez discusses
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`known exercise monitoring devices in its Background of the Invention. See EX1002
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`at 1:13-2:35. Jimenez discloses two types of devices that were known at the time:
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`those that monitored heart rate, and those that monitored distance traveled. See
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`EX1002 at 2:7-11. Jimenez sought to combine both functionalities into a single
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`device that was capable of monitoring both heart rate and distance traveled. See id.
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`at 2:38-44. As such, Jimenez discloses an exercise monitoring device having a strap,
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`a step counter joined to the strap, a heart rate monitor joined to the strap, and a data
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`processor to calculate distance using the number of steps multiplied by a single,
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`constant stride length over a period of time. See EX1005 at ¶48.
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`2. Levi
`Levi discloses an improvement on the types of pedometers disclosed by
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`Jimenez. Specifically, according to Levi, “[e]xisting electronic pedometer designs
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`use a spring-loaded mechanical pendulum to sense walking motions of the user. The
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`pendulum operates a simple switch so that the up-down motion of the pendulum may
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`be counted by the unit’s electronics.” EX1003 at 2:67-3:4. According to Levi, these
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`known pedometers employ a “scale factor that is proportional to the user’s stride
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`length [that] is applied to the count. The assumption is that each count represents
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`one step, however due to the pendulum dynamics extra bounces can occur.
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`Sensitivity and bouncing depends on the spring rate and the pendulous mass.” Id. at
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`3:4-9. “Multiplying step counts by the scale factor yields a measure of distance.”
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`Id. at 3:9-10. According to Levi, “[p]rior-art pedometers require manual calibration,
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`are unreliable, and cannot be interfaced to a computer.” EX1003 at 3:10-12.
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`The objective of Levi is to solve these deficiencies. See EX1005 at ¶81. Levi
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`therefore teaches the use of the frequency of steps to determine step size, and to
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`calculate the distance traveled. See id. at ¶¶78-83. Accordingly, Levi discloses a
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`“Dynamic Step Size Algorithm,” which calculates distance based on the number of
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`steps multiplied by the step size for each step based on the frequency of the ste