UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TOMTOM, INC.,
`Petitioner,
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`v.
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`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
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`_______________
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`Case IPR2017-02023
`Patent 6,434,212
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`_______________
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`PATENT OWNER’S SUR-REPLY
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`TOMTOM, INC.,
`Petitioner,
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`v.
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`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`Patent Owner.
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`_______________
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`Case IPR2017-02023
`Patent 6,434,212
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`_______________
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`PATENT OWNER’S SUR-REPLY
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`Pursuant to authorization provided in the Board’s October 16, 2018 e-mail
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`to the parties, Blackbird Tech LLC d/b/a Blackbird Technologies (“Blackbird” or
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`“Patent Owner”) files this sur-reply in response to the Reply in support of the
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`Petition for inter partes review filed by the named Petitioner TomTom, Inc.
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`(“TomTom” or “Petitioner”). Rather than rehash prior arguments, Patent Owner
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`will focus on certain salient issues in Petitioner’s Reply, and stand on its
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`Response for the remaining issues.
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`I.
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`JIMINEZ DOES NOT DISCLOSE A TRANSMITTER
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`Petitioner continues to insist that Jiminez’s ‘one shot 146’ teaches the
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`claimed “transmitter in communication with the step counter,” required by claim 6.
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`Reply at 12-18. A “one shot” is a type of monostable multivibrator that is an
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`electrical component used, in this context, to normalize the voltage wave input
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`from a sensor.1 It is not, as Petitioner claims, a transmitter. (Ex. 2001 at ¶ 45).
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`Petitioner points to the ‘212 patent’s description of a transmitter to attempt
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`to bolster its ill-founded argument:
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` See Ex. 1022 at 94:17-20.
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`1
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`According to the ‘212 patent “[t]ransmitter 34 is mounted in the step
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`counter housing and is preferably an Rf telemetric signal transmitter
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`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
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`function to limit or eliminate interference with other similar devices.”
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`EX1001 at 3:12-17 (emphasis added). The ‘212 patent further states
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`that “[t]he transmitter 34 transmits either raw data or calculated
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`distances, pace, etc. to a wrist-mounted display unit receiver 40.
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`Reply at 12. Petitioner posits that the ‘212 patent’s indication that its transmitter
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`can transmit raw data “allows a ‘transmitter’ to be a device that transmits a raw
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`data signal.” Reply at 13. Petitioner concludes that because Jiminez’s ‘one shot
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`146’ transmits raw data, calculated data, or step count to a microprocessor, it
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`qualifies as the transmitter required by claim 6 of the ‘212 patent. Reply at 15.
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`Petitioner’s argument is incorrect for several reasons. First, to the extent
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`Petitioner believes it is proper to look to the specification to determine what a
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`transmitter in the ‘212 patent is, the ‘212 patent makes it clear that a transmitter is
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`either a RF telemetric signal transmitter or a wireless or wired digital transmitter
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`with a coding function. Ex. 1001 at 3:12-17. Since Jiminez’s ‘one shot 146’ is
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`2
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`indisputably not a RF telemetric signal transmitter, in order to be a transmitter
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`under the ‘212 patent, it would have to fall into the second category of transmitter
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`disclosed by the ‘212 patent: a wireless or wired digital transmitter with a coding
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`function. But ‘one shot 146’ does not have a coding function. Rather, ‘one shot
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`146’ is a type of monostable multivibrator that is an electrical component used to
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`normalize the voltage wave input from a sensor. See Ex. 1022 at 94:17-20.
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`Normalizing a voltage wave input is not a coding function.
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`Second, Petitioner’s new position regarding the claimed transmitter (that a
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`transmitter is any device that transmits a raw data signal), is an untimely claim
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`construction argument that should not be considered. Petitioner presented this
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`theory for the first time in its Reply and did not construe “transmitter” at all in its
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`Petition. Such a belated theory should be rejected by the Board. The Supreme
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`Court has observed that “a petitioner will seek an inter partes review of a particular
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`kind—one guided by a petition describing ‘each claim challenged’ and ‘the
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`grounds on which the challenge to each claim is based.’ 35 U.S.C. § 312(a)(3).”
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`SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). The PTO’s regulations
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`implementing 35 U.S.C. § 312(a)(3) require the petition to identify “[h]ow the
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`challenged claim is to be construed” and “[h]ow the construed claim is
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`3
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`unpatentable.” 37 C.F.R. § 42.104(b)(3),(4). Once set out in a petition,
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`“petitioner’s contentions … define the scope of the litigation all the way from
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`institution through to conclusion.” SAS, 138 S. Ct. at 1357. By trying to present a
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`new claim construction argument on Reply, instead of relying on an explanation of
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`the claims presented in the Petition,2 Petitioners have impermissibly departed from
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`their Petition, in contravention of the guidance found in the SAS decision and the
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`Board’s regulations.
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`Third, Petitioner’s expert and Patent Owner’s expert agree that ‘one shot
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`146’ is a monostable multivibrator. See Ex. 1022 at 94:17-20; Ex. 2001 at ¶ 45.
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`The Board also agreed with this position in its Institution Decision. Paper No. 7 at
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`26. Patent Owner and the Board agree that a monostable multivibrator is not a
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`transmitter. Paper No. 7 at 26-27; Patent Owner’s Response at 44. Indeed, the
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`Board inserted a link in its Institution Decision that supports its (and Patent
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`Owner’s) position (https://en.wikipedia.org/wiki/Multivibrator). Paper No. 7 at
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` 2
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` Petitioners did not seek reconsideration of the Board’s initial institution decision
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`or otherwise attempt to demonstrate where, in their Petition, such a theory was
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`presented.
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`26. The text found at this link does not discuss a transmitter at all.3 For example,
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`the text does not include the words “transmit,” “transmitter,” or “transceiver.” Nor
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`does it include the words “code” or “coding.” The implication is clear: a
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`monostable multivibrator is not a transmitter. Accordingly, Petitioner’s challenges
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`of claims 6-8 must fail.
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`II.
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`PETITIONER FAILS TO ESTABLISH THAT JIMINEZ IN VIEW OF
`LEVI RENDER OBVIOUS THE RECALIBRATION OF CLAIM 3
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`Despite the fact that Petitioner’s expert recanted his testimony that Figure 6
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`of Levi teaches a recalibration, Petitioner doubles down on its arguments that
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`“recalibrat[ing] the stride length as a function of a subsequently calculated and
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`known stride rate” (claim 3) is obvious. Petitioner makes two principal arguments
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`in its Reply, both of which should be rejected.
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` 3
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` The Board’s link explains that a monostable multivibrator is a circuit in which
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`one of the states is stable, but the other state is unstable (transient). A trigger pulse
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`causes the circuit to enter the unstable state. After entering the unstable state, the
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`circuit will return to the stable state after a set time. Such a circuit is useful for
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`creating a timing period of fixed duration in response to some external event. This
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`circuit is also known as a one shot.
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`5
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`Petitioner’s first argument is that it relied on a POSITA’s knowledge that
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`recalibration for pedometers was well known. Reply at 19. Here, Petitioner points
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`to unsupported, conclusory statements from its expert. For example, Petitioner’s
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`expert testified that “a PHOSITA would have been motivated to modify Jiminez in
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`view of Levi and in view of the knowledge of a PHOSITA because it was well
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`known that ‘recalibrating the stride length increases the accuracy of the distance
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`calculation.” Reply at 19. Petitioner also relies on the ‘212 patent itself as
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`purportedly providing a reason that the claimed recalibration is obvious, noting
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`that the ‘212 admits that recalibration was known. Reply at 19. That recalibration
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`is known does not make it obvious to include in this claimed device. All told,
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`Petitioner’s reliance on its expert’s conclusory, ipse dixit statements and
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`disclosures from the ‘212 patent constitute hindsight reasoning and should be
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`rejected.
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`Petitioner’s second argument focuses on Figure 9 of Levi. Here, Petitioner
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`points to Figure 9 as allegedly teaching “recalibration” and indicates that its expert
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`supports this position as well. Reply at 20. But in its Petition, Petitioner relied on
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`Figure 6 of Levi, not Figure 9, to allege a teaching of the recalibration of claim 3.
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`Petition at 38-41. During his deposition, Petitioner’s expert recanted his earlier
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`6
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`testimony that Figure 6 teaches the recalibration of claim 3, leaving Petitioner with
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`no support for its claim 3 positions, other than hindsight reasoning.
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`III. CONCLUSION
`For at least the reasons discussed above, the Petition’s grounds challenging
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`the validity of the ‘212 Patent claims are improperly supported, and the
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`patentability of claims 1 – 8 should be confirmed by final written decision.
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`Dated: October 25, 2018
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`Respectfully submitted,
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`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
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`Counsel for Patent Owner
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`IPR2017-02023 – Patent Owner’s Sur-Reply
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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)(1).
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`According to the word processing system’s word count, the brief contains 1,309
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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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`IPR2017-02023 – Patent Owner’s Sur-Reply
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 25, 2018, a true and correct copy of the
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`foregoing PATENT OWNER’S SUR-REPLY is being served electronically to the
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`Petitioners as authorized in the Petition at the correspondence email address of
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`record as follows:
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`Dipu A. Doshi (Reg. No. 60,373)
`Michael S. Marcus (Reg. No. 31,727)
`Megan R. Wood (Reg. No. 72,367)
`BLANK ROME LLP
`1825 Eye Street NW
`Washington, DC 20006
`Tel.: (202) 420-2604
`Fax: (202) 420-2201
`ddoshi@blankrome.com
`TomTom.Blackbird@blankrome.com
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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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` Counsel for Patent Owner
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