UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT AND APPEAL BOARD
`____________________
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`TOMTOM, INC. Petitioner
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`v.
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`BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner
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`____________________
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`Case IPR2017-02023
`U.S. Patent No. 6,434,212
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`____________________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`____________________
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`BEFORE THE PATENT AND APPEAL BOARD
`____________________
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`TOMTOM, INC. Petitioner
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`v.
`
`BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner
`
`____________________
`
`Case IPR2017-02023
`U.S. Patent No. 6,434,212
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`____________________
`
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`Petitioner’s Reply
`Case IPR2017-02023
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`Page
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`INTRODUCTION ........................................................................................... 1
`I.
`LEVEL OF SKILL IN THE ART ................................................................... 2
`II.
`III. CLAIM CONSTRUCTION ............................................................................ 3
`A.
`Stride Rate ............................................................................................. 4
`B.
`Calibration ............................................................................................. 4
`IV. THE ASSERTED REFERENCES AND GROUNDS RENDER THE
`’212 PATENT’S CLAIMS INVALID ............................................................ 6
`A.
`Claims 1-8 are Obvious under Ground 1 .............................................. 6
`1.
`Levi Discloses Calibration .......................................................... 6
`2.
`Jimenez Discloses a Transmitter and Receiver ........................ 12
`3.
`Claims 3 and 4 are Unpatentable .............................................. 18
`Claims 1-8 are Obvious under Ground 2 ............................................ 21
`B.
`V. MOTIVATION TO COMBINE .................................................................... 24
`VI.
`IPR PROCEEDINGS ARE CONSTITUTIONAL IN THIS
`CONTEXT ..................................................................................................... 26
`VII. CONCLUSION .............................................................................................. 28
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`i
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`TABLE OF AUTHORITIES
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`Petitioner’s Reply
`Case IPR2017-02023
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` Page(s)
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`Cases
`BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc.,
`898 F.3d 1205 (Fed. Cir. 2018) .......................................................................... 27
`Karlin Tech., Inc. v. Surgical Dynamics, Inc.,
`177 F.3d 968 (Fed. Cir. 1999) .............................................................................. 5
`Landgraf v. USI Film Prod.,
`511 U.S. 244 (1994) ...................................................................................... 26, 27
`NTP, Inc. v. Research In Motion, Ltd.,
`418 F.3d 1282 (Fed. Cir. 2005) .......................................................................... 17
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 27
`Superguide Corp. v. DirecTV Enterprises, Inc.,
`358 F.3d 870, 69 USPQ2d 1865 (Fed. Cir. 2004) ................................................ 5
`Wowza Media Sys., LLC v. Adobe Sys., Inc.,
`IPR2013-00054, 2013 WL 5653114 (P.T.A.B. July 13, 2013) ............................ 3
`Statutes
`35 U.S.C. §§ 301 ...................................................................................................... 26
`35 U.S.C. §§ 303 ...................................................................................................... 26
`35 U.S.C. § 311 ........................................................................................................ 26
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`ii
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`LISTING OF EXHIBITS
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`Petitioner’s Reply
`Case IPR2017-02023
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`Description
`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 of Thomas Blackadar
`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
`Filing Receipt for IPR2017-02017
`Blackadar Deposition Exhibit, Blackadar CV
`Deposition Transcript of Thomas Blackadar, June 27,
`2018
`Deposition Transcript of Michael Caloyannides,
`September 21, 2018
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`iii
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`Ex. 1015
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`Ex. 1020
`Ex. 1021
`Ex. 1022
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`Ex. 1023
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`Petitioner’s Reply
`Case IPR2017-02023
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`I.
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`INTRODUCTION
`As demonstrated in the Petition (Paper 1), the claims of the ’212 patent are
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`nothing more than the obvious combination of a prior art pedometer capable of
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`calculating a distance traveled by multiplying a number of steps counted by the step
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`counter by a stride length that varies according to a rate at which steps are counted
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`together with a pedometer having a heart rate monitor. Patent Owner’s arguments
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`to the contrary cannot withstand scrutiny.
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`First, as the Decision (Paper 7) noted, “none of the independent claims recite
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`‘for a particular use.’” Paper 7 at 17. Nor do any of the dependent claims recite “for
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`a particular user.” Patent Owner’s attempts to insert this phrase into the claims is
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`misguided and contrary to the law.
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`Second, even if the claims were construed to include the phrase, Levi discloses
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`calibration for a particular user. See Paper 1 at 35-36. Patent Owner’s attempts to
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`mischaracterize Levi are directly contradicted by a plain reading of Levi, which
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`specifically explains that the calibration process “is particular to the individual
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`person using the system.” EX1001 at 6:22-25.
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`Further, as set forth in the Petition, Jimenez discloses a transmitter and
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`receiver. See Paper 1 at 46-47 and 68. The terms transmitter and receiver are
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`undefined by the ’212 patent, and Petitioner submits that any component that sends
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`1
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`Petitioner’s Reply
`Case IPR2017-02023
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`(or transmits) a signal and any component that receives that signal constitute a
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`transmitter and receiver. Jimenez discloses such components.
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`For at least these reasons, claims 1-8 should be canceled.
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`II. LEVEL OF SKILL IN THE ART
`Patent Owner disagrees with Petitioner’s definition of PHOSITA in this
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`proceeding because it believes that the “’212 Patent implicates other fields, such as
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`Sports Medicine, Exercise Science, and Physiology.” EX2001 at ¶26. However,
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`Patent Owner and its expert provide no reason to include these fields other than “in
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`the interest of completeness.” EX1023 at 26:15-19. Patent Owner added these terms
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`even though its own expert has no experience in these fields. See EX1023 at 25:18-
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`26:10 and 28:8-29:2. As a result, a PHOSITA under Patent Owner’s definition
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`would be more well-informed than Patent Owner’s own expert.
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`Ironically, most of the experience Patent Owner’s expert does have is in the
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`field of GPS navigation, which Patent Owner initially argued was non-analogous art.
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`Paper 6 at 44 et seq. And while Patent Owner’s expert has been consulting as an
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`expert for the past 18 years (and was contacted through an expert referral service for
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`this proceeding) and has provided testimony in over one hundred cases, his
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`testimony should be afforded little, if any, evidentiary weight because he is simply
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`parroting Patent Owner’s arguments from its Preliminary Response (Paper 6)
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`2
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`Case IPR2017-02023
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`without any further independent analysis. See Wowza Media Sys., LLC v. Adobe
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`Sys., Inc., IPR2013-00054, 2013 WL 5653114, at *2 (P.T.A.B. July 13, 2013)
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`(“[T]he Declaration appeared, for the most part, simply to track and repeat the
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`arguments for unpatentability presented in the Petition. . . . Expert testimony that
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`does not disclose the underlying facts or data on which the opinion is based is entitled
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`to little or no weight.”). Indeed, Patent Owner’s expert was hired only four months
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`ago, well after Patent Owner had filed its Preliminary Response. See EX1023 at
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`6:19-7:13. Patent Owner’s expert provides little, if any, further analysis of why the
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`positions set forth in Patent Owner’s Preliminary Response are correct. For these
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`reasons, Exhibit 2001 (testimony of Patent Owner’s expert) should be afforded little,
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`if any, evidentiary weight.
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`III. CLAIM CONSTRUCTION
`The Petition construed the claims of the ’212 patent in accordance with the
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`Patent Owner’s proposed claim construction in the related and co-pending district
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`court litigation. See Paper 1 at 13-15. While Petitioner disagreed with Patent
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`Owner’s proposed constructions in the district court litigation (see EX1011 (Joint
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`Claim Construction)), Petitioner adopted Patent Owner’s proposed claim
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`constructions for purposes of this proceeding. See Paper 1 at 13-15 (“Petitioner
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`3
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`Case IPR2017-02023
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`submits that the prior art references disclose [the] limitation[s] under Patent Owner’s
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`proposed construction[s].”).
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`A.
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`Stride Rate
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`Petitioner adopted Patent Owner’s construction of “stride rate” as the “number
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`of steps over a time period.” See Paper 1 at 14. Patent Owner doubled down on its
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`construction in its Response (Paper 15 at 10). This is no small matter as Ebeling (a
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`secondary reference relied on for Ground 2) discloses a stride duration, which, by
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`definition, meets the “stride rate” limitation because stride duration is a number of
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`steps over a time period. See infra at Section IV. B.
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`B. Calibration
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`The term “calibration” was not a disputed term in the district court litigation.
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`See generally EX1011. The Board, however, “encouraged” the parties “to develop
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`the record regarding what ‘calibration’ is and if the correlation of a known step size
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`with steps per second constitutes a calibration.” Paper 7 at 22. Patent Owner failed
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`to answer the question, and posited its own construction of “calibration” as a
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`“process which correlates a particular user’s stride rate and stride length.” Paper
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`15 at 11 (emphasis added).
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`Patent Owner attempts to rely on a preferred embodiment from the
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`specification to read the phrase “for a particular user” into the claims. See id. at 13
`4
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`Petitioner’s Reply
`Case IPR2017-02023
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`(“[a] preferred embodiment uses a plurality of sample runs over known distances . .
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`.”) (emphasis added).1 But, it is blackletter law that “a particular embodiment
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`appearing in the written description may not be read into a claim when the claim
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`language is broader than the embodiment.” Superguide Corp. v. DirecTV
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`Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).
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`Patent Owner’s reliance on dependent claims for its proposed construction is
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`equally impermissible. Specifically, Patent Owner argues claims 3 and 4 are
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`“instructive” in construing claim 1; however, claims 3 and 4 do not include the
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`phrase “for a particular user,” so Patent Owner’s reliance on those claims do not
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`help. Moreover, limitations from a dependent claim cannot be read into the claim
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`from which it depends. Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968,
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`971-72 (Fed. Cir. 1999).
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`Accordingly, Patent Owner’s attempts to impermissibly narrow the scope of
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`the claims should be rejected.2
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`1 Notably, Patent Owner cannot rely on the specification for the phrase “for a
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`particular user” because the phrase is nowhere to be found.
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`2 However, even if Patent Owner’s construction is adopted, the combination of
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`Jimenez in view of Levi and the knowledge in the art renders the claims obvious.
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`5
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`Petitioner’s Reply
`Case IPR2017-02023
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`IV. THE ASSERTED REFERENCES AND GROUNDS RENDER THE
`’212 PATENT’S CLAIMS INVALID
`A. Claims 1-8 are Obvious under Ground 1
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`Claims 1-8 are rendered obvious by Jimenez in view of Levi and in further
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`view of the knowledge in the art as discussed in the Petition. Contrary to Patent
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`Owner’s arguments, the combination of Jimenez and Levi disclose each and every
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`limitation of claims 1-8 of the ’212 patent including 1) the “plurality of calibrations”
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`limitations of claims 2 and 5, and 6; 2) the transmitter/receiver limitations of claim
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`6; and 3) the recalibration limitation of claims 3 and 4.
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`1.
`Levi Discloses Calibration
`Patent Owner attempts to conflate and confuse several different “calibrations”
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`disclosed by Levi to support its argument that Levi does not disclose “calibration”
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`as used in claims 2, 5, and 6. Patent Owner’s argument, however, ignores the plain
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`text of Levi that states “[t]he step size may be initialized from default values stored
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`in a configuration file . . . particular to the individual person using the system and
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`is generated during the calibration process.” EX1003 at 6:22-28 (emphasis added).
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`Under the title “3. Dynamic Step Size Algorithm,” Levi explains that “[a]s a
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`user walks faster, both the step size and the frequency of steps increases. This can
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`be simply modeled as a linear fit to observed data at different walking speeds.” Id.
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`at 6:7-9 (emphasis added).
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`6
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`Petitioner’s Reply
`Case IPR2017-02023
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`As discussed by Levi and depicted by Figure 5, “as the number of steps
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`increases from 1.7 to 2.1 steps per second, for example, the step size increases from
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`0.72 meters (2.36 feet) to 0.90 meters (2.95 feet).” Id. at 6:10-13. Levi shows these
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`two points (labeled A and B, respectively, of annotated Figure 5 below), and one in
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`between (labeled C).3
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`3 Annotated Figure 5 was presented in Paper 1 of IPR-01058 captioned Garmin
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`Int’l, Inc. v. Blackbird Tech LLC, 2017 WL 3476790, IPR2017-01058 (P.T.A.B.
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`Mar. 13, 2017).
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`7
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`Petitioner’s Reply
`Case IPR2017-02023
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`According to Levi,
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`[s]ince 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.
`Id. at 6:15-20 (emphasis added).
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`A PHOSITA would have understood Levi as seeking to improve a common
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`hiker’s pedometer by implementing a method of calculating distance based on the
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`number of steps multiplied by the step size (or stride length) for each step that varies
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`depending on the frequency of the steps (or stride rate). EX1005 at ¶88.
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`Patent Owner argues that Levi’s correlation of a step size that varies with
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`stride rate is not for a particular user. See Paper 15 at 30-31. First, as discussed
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`above, the claims fail to recite that the calibration must be for a particular user.
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`Second, Levi discloses “calibration” even under Patent Owner’s claim
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`construction. Patent Owner and its expert strain credulity when they argue that
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`Levi’s dynamic step algorithm is not for a particular user despite the plain disclosure
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`that “[t]he step size may be initialized from default values stored in a configuration
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`8
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`Petitioner’s Reply
`Case IPR2017-02023
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`file . . . particular to the individual person using the system and is generated during
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`the calibration process.” EX1003 at 6:22-28 (emphasis added).
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`Patent Owner’s argument that Levi fails to disclose a correspondence between
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`a particular user’s step size with stride rate flies in the face of Levi’s entire purpose,
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`which is to “improve the accuracy of distance measurements.” See, e.g., EX1003 at
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`6:18-20. A PHOSITA would understand that Levi’s improvements to prior art
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`pedometers would necessarily be for a particular user, and not based on multiple
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`individuals as Patent Owner’s expert argues. EX1002 at 67:8-68:1 (quoting EX1001
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`at 6:6-28).
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`Indeed, Levi acknowledges that different individuals can have different
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`strides at Figure 1: “FIG. 1 illustrates a pedometer calibration curve of speed versus
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`fundamental frequency for two different users” (EX1003 at 2:25-26);
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`[o]ne of the curves is for a person with a relatively short
`stride, and the other curve is for a person with a longer
`stride. As expected, the person with the shorter stride
`must “walk faster,” which results in higher fundamental
`frequencies for the same speed for that person with the
`shorter stride.
`Id. at 4:4-11. Logically, if Levi’s purpose is to improve prior art pedometers, it
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`would not, as Patent Owner and its expert argue, base stride length on undisclosed
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`9
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`Petitioner’s Reply
`Case IPR2017-02023
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`multiple calibration curves referred to by Patent Owner’s expert as “generic
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`experimentation that might result in a graph like Figure 5 in Levi.” EX2001 at ¶57.
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`Notably absent is any citation by Patent Owner or its expert to Levi that
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`discusses or even mentions a process of “match[ing]” a user’s slope “m” to a number
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`of predetermined default slopes. See id. Indeed, when questioned about his lack of
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`a specific citation to Levi that disclosed such an interpretation, Patent Owner’s
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`expert conceded that there was no explicit disclosure to support his interpretation of
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`Levi. See EX1023 at 108:11-109:4. This lack of support is of no surprise as his
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`interpretation is directly contradicted by the plain reading of Levi, which specifically
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`states that the configuration is “particular to the individual person.” EX1003 at 6:23-
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`25. Further, Levi states that it is “generated during the calibration process.” Id.
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`(emphasis added).
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`Moreover, Patent Owner’s argument that the “observed data” points
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`graphically depicted by Levi’s Figure 5 are simply “endpoints of a graph” cannot
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`withstand scrutiny. Se EX1022 at 58:1-12. A PHOSITA would have understood
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`that the data points were from a particular user because a PHOSITA would have
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`understood Levi to disclose data from different walking speeds of 1.7 steps per
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`second, 2.1 steps per second, and a rate in between for a particular user. Id. at 67:4-
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`Petitioner’s Reply
`Case IPR2017-02023
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`68:8. A PHOSITA would then have understood that slope m of Levi’s Figure 5
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`represents the “linear fit” of the “observed data.” Id. at 72:2-73:9.
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`Patent Owner and its expert rely heavily on Levi’s disclosure of Figure 9 and
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`its description at columns 9 and 10. But, as Mr. Blackadar explains, that portion of
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`Levi, under heading B. 2,4 describes an additional aspect of Levi’s disclosure that
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`uses a digital map to calculate a new step size. See EX1022 at 74:10-76:24
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`(explaining difference between calibration process discussed with respect to Levi’s
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`dynamic step size algorithm and DR calibration using digital map). Patent Owner
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`and its expert apparently are attempting to capitalize on the term “calibration” used
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`in Figure 9 to the exclusion of the description of Figure 5 that specifically refers to
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`a calibration process that is particular to an individual. See EX1003 at 6:23-25; see
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`also 6:10 (“Looking at the calibration data shown in FIG. 5 . . . .”). But that
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`mischaracterizes Levi’s calibration process described at column 6 under heading
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`A. “3. Dynamic Step Size Algorithm,” which, as discussed above, a PHOSITA
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`would have understood as a calibration process for a particular user.
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`4 See EX1023 at 80:22-84:6 (acknowledging Levi has headings and sub-headings).
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`11
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`Petitioner’s Reply
`Case IPR2017-02023
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`Accordingly, contrary
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`to Patent Owner’s arguments, Levi discloses
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`calibration even under Patent Owner’s narrow construction that requires the
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`calibration be for “a particular user.”
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`2.
`Jimenez Discloses a Transmitter and Receiver
`The terms transmitter and receiver are not defined by the ’212 patent, and are
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`sparingly discussed in its description. The specification and drawings fail to provide
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`any structural detail on either the transmitter (34) or the receiver (40), and simply
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`depict the elements as boxes in Figure 1 (the only figure of the ’212 patent).
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`The relevant description of these elements begins with a description of the
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`step counter 24 as an inertia device that counts the number of steps a user takes. See
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`EX1001 at 3:7-8. The number of steps is transmitted to a data archive 32 by
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`transmitter 34. See id. at 3:8-11. According to the ’212 patent “[t]he transmitter 34
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`is mounted in the step counter housing and is preferably an Rf telemetric signal
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`transmitter with a 30 inches to 36 inches transmission range. Alternat[iv]ely, the
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`transmitter is a wireless or wired digital transmitter with a coding function to limit
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`or eliminate interference with other similar devices.” EX1001 at 3:12-17 (emphasis
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`added). The ’212 patent further states that “[t]he transmitter 34 transmits either raw
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`data or calculated distances, pace, etc. to a wrist-mounted display unit receiver 40.
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`The receiver 40 relays a raw data signal to the data processor 30 or a calculated data
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`12
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`Petitioner’s Reply
`Case IPR2017-02023
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`signal directly to the display panel 42, such as an LCD or LED” Id. at 3:22-24
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`(emphasis added).
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`The plain text of the ’212 patent allows a “transmitter” to be a device that
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`transmits a raw data signal and a “receiver” to be a device that receives that signal.
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`See id. As demonstrated in the Petition and confirmed by Mr. Blackadar when
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`questioned by Patent Owner’s counsel, Jimenez discloses both:
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`A. The One-Shot Monostable Multivibrator [of
`Jimenez] is a computer component in an analog
`computer. It is programmed by the capacitor and the
`resistance network; thus, it is a single computing element
`that is determining what information to send.
`And it -- so it's preprocessing the information and then
`sending it out to a microcontroller. So it's transmitting it
`to a microcontroller. And the microcontroller receives
`the information.
`The same is true for the ECG monitor. It works on the
`same premise.
`Q. Okay.
`A. So he preprocesses the ECG signal, turns it into a
`pulse, and then it gets transmitted.
`In 1998, that's exactly what Polar was doing with their
`heart rate monitor and transmitting that information.
`EX1022 at 97:9-98:14 (emphasis added). Mr. Blackadar further testified:
`13
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`Petitioner’s Reply
`Case IPR2017-02023
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`A. I believe that 146, 140, 151, and 150 in that drawing
`constitute an analog computer. The analog computer is
`connected to the gait step switch/accelerometer --
`whichever is in there -- and it is interpreting that –
`Q. What are you pointing to when you're saying –
`A. Oh, 157. 157 is your switch, your accelerometer,
`your pendulum. And that computer conditions that
`signal, because it's a very bouncy signal, as -- known as -
`- described -- and he cleans it up and he turns it into a
`signal that can be qualified as a step, a gait, and requires
`no further processing other than whatever calibration and
`subject routine, but it's saying here's a qualifying step.
`So it can transmit that to any number of things.
`Q. When you say ‘it’ in that sentence, what --
`A. It is the Monostable Multivibrator and the associated
`circuitry around it.
`Q. And so --
`A. So 146.
`Q. And so you see an output that says PED GATE?
`A. Yes.
`Q. What is that, in your opinion, referring to?
`A. That ped gate is the step in step profile.
`Id. at 115:24-116:23.
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`14
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`Petitioner’s Reply
`Case IPR2017-02023
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`According to Mr. Blackadar, therefore, the step counter 157/158 is in
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`communication with the one shot 146 that transmits the number of steps counted as
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`depicted in Figure 10 of Jimenez.
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`Like the ’212 patent, Jimenez’s one shot transmitter is “mounted in the step counter
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`housing” 17 (see EX1002 at Fig. 9) and transmits “raw data or calculated distances,
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`pace” (see EX1001 at 3:22-24), or step count to the microprocessor. See EX1005 at
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`¶¶128-129.
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`Moreover, as Mr. Blackadar testified with reference to Figure 11A and ¶127
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`of his Declaration (EX1005), Jimenez discloses both a receiver and a data processor:
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`15
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`Petitioner’s Reply
`Case IPR2017-02023
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`A. The microcomputer receives the transmission from
`the step engine, which I recall the -- as the One-Shot; and
`the microcomputer houses the algorithms to do the
`various step, stride length, and other calculations that
`may want to be done based on the stride rate and the
`integrity of that signal.
`Q. So the microcomputer, how does it – how does it
`communicate with the One-Shot, if at all?
`A. It -- it -- it receives the One-Shot transmission of,
`[“]Here's a step.[”]
` Q. And in Paragraph 127, you specifically refer to
`certain terminals of the microcontroller?
`A. Yes. That's based on the -- on the drawing.
`Q. And were you looking at 11A?
`A. Yes. That's where we started.
`Q. Okay.
`A. L4 and L8. L4 and L8.
`EX1022 at 117:12-118:5 (emphasis added). Accordingly, terminals L4 and L8
`
`“receive” the raw data from the one shot 146. See id.
`
`As explained in the Petition, Jimenez discloses that:
`
`Microcomputer 301 responds to the number of steps and
`time signals respectively applied to input terminals L4
`and L8 thereof by one shot 146 and time oscillator 316,
`as well as a physiological signal for the subject, to
`16
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`Petitioner’s Reply
`Case IPR2017-02023
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`calculate miles per hour. From the number of steps, as
`applied to terminal L4, and the initial entry of the stride
`length of the subject, as derived from keyboard 212 and
`stored in the random access memory of microcomputer
`301, and a predetermined constant relating inches to
`miles, the microcomputer calculates total distance in
`tenths of miles.
`Paper 1 at 45-46 (quoting EX1002 at 18:59-19:1) (emphasis added); see also
`
`EX1005 at ¶128. Accordingly, Jimenez discloses the transmitter, receiver, and data
`
`processor limitations of claim 6.
`
`Patent Owner’s argument that Petitioner cannot rely on microprocessor 301
`
`for two separate limitations (i.e., 1) the receiver and 2) the data processor) has
`
`already been rejected by the Federal Circuit. In NTP, Inc. v. Research In Motion,
`
`Ltd., 418 F.3d 1282 (Fed. Cir. 2005), the defendant argued that a claim reciting an
`
`RF receiver that transfers information to processors had to be separately housed. Id.
`
`at 1310. The Court rejected the argument, and held that the “two entities do[] not
`
`require the physical separation of those entities.” Id. Here, Jimenez discloses signals
`
`applied to L4 and L8 by one shot 146; a PHOSITA would have understood that the
`
`one shot is transmitting a signal to, and being received by, terminals L4 and L8. See
`
`EX1005 at ¶128. A PHOSITA would have also understood that the microprocessor
`
`
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`17
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`Petitioner’s Reply
`Case IPR2017-02023
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`301 is receiving those signals through terminals L4 and L8.5 Id. If the signals were
`
`not received, the microprocessor could not calculate the distance, which would be
`
`antithetical to Jimenez’s teachings. Accordingly, the microprocessor’s terminals are
`
`receiving signals and the microprocessor is calculating distance. Thus, the
`
`microprocessor can and does meet both limitations of claim 6.
`
`Accordingly, contrary to Patent Owner’s arguments, Jimenez discloses claim
`
`6’s limitation of having “a transmitter in communication with the step counter to
`
`generate a step count signal corresponding to each step and transmit the step count
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`signal;” and “a receiver mountable on a user body portion to receive the step count
`
`signal transmitted from the transmitter,” as previously explained in the Petition. See
`
`Paper 1 at 46-47.
`
`3.
`Claims 3 and 4 are Unpatentable
`Patent Owner’s assertion that Petitioner has “no support” for its arguments
`
`regarding these claims is wrong. Petitioner relied on 1) PHOSITA’s knowledge that
`
`
`5 Petitioner notes that the ’212 patent describes its receiver 40 and data processor
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`30 as being housed together, and provides sparing details about how the two
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`communicate. See EX1001 at Fig. 1 and 3:22-24.
`
`
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`18
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`Petitioner’s Reply
`Case IPR2017-02023
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`recalibration for pedometers was well known, and 2) Levi’s disclosure of
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`recalibration.
`
`First, as explained in the Petition, “[a] PHOSITA would have been motivated
`
`to allow a user to recalibrate the modified Jimenez device (discussed above with
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`respect to claims 1 and 2) because it was well known that stride lengths could change
`
`after conditioning and that recalibrating results in more accurate distance
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`calculations.” Paper 1 at 38 (citing EX1005 at ¶111). The Petition further stated,
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`“as Mr. Blackadar testified, a PHOSITA would have been motivated to modify
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`Jimenez in view of Levi and in view of the knowledge of a PHOSITA because it was
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`well known that ‘recalibrating the stride length increases the accuracy of the distance
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`calculation.’” Id. at 41 (quoting EX1005 at ¶111).
`
`In response to redirect upon cross-examination by Patent Owner’s counsel,
`
`Mr. Blackadar testified that his opinion had not changed. EX1022 at 114:1-16.
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`Moreover, as the ’212 patent admits, it was known that “a user [can] change[] pace,
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`or improve[] conditioning and speed to the point where the average stride length
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`over a given run increases dramatically.” See EX1005 at ¶92 (quoting EX1011 at
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`4:19-23) (alteration added); see also EX1001 at 4:25-28 (conceding that
`
`recalibration was known) (“[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
`19
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`Petitioner’s Reply
`Case IPR2017-02023
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`during a workout without decreasing accuracy.”); see also EX1023 at 41:1-12
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`(Patent Owner’s expert admitting that column 4, lines 19-28 is discussing the prior
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`art). It would therefore have been obvious for a user to recalibrate by generating a
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`new calibration curve (slope m of Levi’s Figure 5) by measuring at least three step
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`sizes at different speeds. EX1022 at 84:13-19; see also id. at 70:23-71:72:4. Further,
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`it would have been obvious to “a PHOSITA that recalibrating the stride length
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`increases the accuracy of the distance calculation, and that in order to further refine
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`a calibrated stride length, a subsequent calibration would depend at least in part on
`
`an initial calibration or previous calibrations.” EX1005 at ¶116.
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`Second, Levi discloses recalibration; when asked by Patent Owner’s counsel
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`whether Levi disclosed recalibration, Petitioner’s expert reiterated his previously
`
`stated opinion that Figure 9 of Levi shows a process by which a periodic
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`recalibration is performed using Differential GPS receivers. See EX1022 at 80:23-
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`85:1; see also EX1005 at ¶117.6 In his testimony, elicited by Patent Owner, Mr.
`
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`6 While Petitioner and its expert cited to Levi’s process of adjusting step size
`
`disclosed in column 5 and Figure 6, Petitioner’s expert found that he had misread
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`Levi’s description of Figure 6, and stated that he no longer believed that Figure 6
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`disclosed recalibration. See EX1022 at 80:3-8.
`
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`Petitioner’s Reply
`Case IPR2017-02023
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`Blackadar states that Levi can “calculate a new displacement, [and] calculates the
`
`new step size based off of that.” EX1022 at 84:2-8. He further states that Levi
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`discloses that “[a] new step is obtained by scaling the old step size by the new ratio
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`of the two displacements.” Id. He also states that Levi “doesn’t preclude
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`recalibration from starting all over from scratch.” Id. at 84:13-19. Thus, Levi’s
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`recalibration step could be based off 1) average stride lengths “bas[ed] off of a
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`previous calibration” (see id. at 84:9-11) or 2) recalibrating the device altogether
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`(see id. at 84:17-19). Patent Owner’s response that Figure 9 cannot constitute
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`recalibration because it is the only calibra
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