Paper No. 7
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOMTOM, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02025
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 12, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOMTOM, INC.,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02025
`Patent 6,434,212
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-02025
`Patent 6,434,212
`
`
`INTRODUCTION
`
`TomTom, Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–8 of U.S. Patent No. 6,434,212 B2 (Ex. 1001, “the ’212
`patent”) (Paper 1 (“Pet.”)). Blackbird Tech LLC (“Patent Owner”) filed a
`Preliminary Response (Paper 6 (“Prelim. Resp.”)).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314, which provides that an inter partes review
`may not be instituted unless the information presented in the petition “shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.”
`For the reasons set forth below, we decline to institute an inter partes
`review of claims 1–8 of the ’212 patent.
`
`
` BACKGROUND
`Related Matters
`
`The parties advise us that the ’212 patent is at issue in the following:
`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.),
`
`2
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`IPR2017-02025
`Patent 6,434,212
`
`
`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.), and
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Wahoo Fitness,
`Inc., Case No. 16-CV-688 (D. Del.)
`(Pet. 1–2; Paper 4, 2).
`Petitioner additionally filed IPR2017-02023 on this same patent.
`Additionally, the ’212 patent is at issue in IPR2017-01058 (Garmin
`International, Inc. v. Blackbird Tech LLC d/b/a Blackbird Technologies),
`now terminated.
`
`The ’212 Patent
`
`The ’212 patent, entitled “Pedometer,” relates to a “pedometer having
`improved accuracy by calculating actual stride lengths of a user based on
`relative stride rates” (’212 patent, Abstract). More particularly, the patent
`relates to “pedometers having a waist mounted stride-counting device and
`transmitter, and a wrist-mounted receiver and display” (id. at 1:9–11). The
`device calculates a distance walked or run based on converting a base stride
`length and a base stride rate to an actual stride length and using that to
`calculate distance traveled (id. at 1:12–17).
`Specifically, a step counter which is an inertia device, counts the
`number of steps a user takes (id. at 3:7–8). A data processor includes a data
`archive that stores historic data on stride length and pace and closed loop or
`fuzzy logic programming that continually or periodically replaces the base
`
`3
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`IPR2017-02025
`Patent 6,434,212
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`stride rate and length with recently calculated stride rates and lengths (id. at
`3:39–47).
`The pedometer of the ’212 patent may optionally require the user to
`operate a “sampling mode” (id. at 3:56–57). In this mode, a user walks or
`runs a predetermined distance with the distance then divided by the number
`of strides counted (id. at 3:58–62). The result is the average stride length,
`which is stored in the data archive as the “Base Stride Length” (id. at 3:62–
`64). The data processor further divides the number of strides by the time of
`the run or walk to calculate a “Base Stride Rate” (id. at 3:65–67). According
`to the ’212 patent, using a fixed average stride length does not account for
`changes in the user’s pace or improved performance (id. at 4:19–29). To
`correct for this, a “Use Mode” is activated that causes the data processor to
`calculate an “Actual Stride Rate” (id. at 4:30–33). The “Actual Stride Rate”
`is calculated periodically, based on data from the stride counter and the
`clock (id. at 4:30–36). An “Actual Stride Length” is calculated by
`determining a percentage change between the Actual Stride Rate and the
`Base Stride Rate (id. at 4:36–38). More specifically, the Actual Stride
`Length is calculated by:
`Actual Stride Length=Base Stride Length + Base Stride Length
`*(((Actual Stride Rate-Base Stride Rate)N)/Base Stride Rate)
`Where: N=1 when Actual Stride Rate is less than or equal to Base
`Stride Rate multiplied by 1.02, and N=3 When Actual Stride Rate
`is greater than Base Stride Rate multiplied by 1.02, although
`other N values in the range of one to three can be used
`
`4
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`IPR2017-02025
`Patent 6,434,212
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`(id. at 4:50–58). To further improve accuracy, an N value is derived for the
`user by using a number of samples to establish Stride Length and N (id. at
`5:1–6:9).
`Once the actual stride length is calculated for a given period of
`time, the value can be multiplied by the number of strides in that
`period to obtain a total distance for that period to be stored in a
`data archive file for that particular walk or run and added to other
`actual stride lengths or distances for other periods in which stride
`length was calculated
`(id. at 6:34–38).
`
`Challenged Claims
`
`Petitioner challenges claims 1–8 of the ’212 patent (Pet. 5–6). The
`’212 patent has four independent claims, claims 1, 2, 5, and 6, and four
`dependent claims 3 and 4 (depending from claim 2) and claims 7 and 8
`(depending from claim 6) (Ex. 1001, Claims). Claim 1 is illustrative of the
`challenged claims and is reproduced below:
` 1. An exercise monitoring device comprising:
`a strap for releasably securing the exercise monitoring
`device to a user;
`a step counter joined to the strap;
`a heart rate monitor joined to the strap; and
`a data processor programmed to calculate a distance
`traveled by multiplying a number of steps counted by the
`step counter by a stride length that varies according to a
`rate at which steps are counted.
`
`5
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`
`Prior Art Relied Upon
`
`Petitioner relies upon the following references in asserting the
`unpatentability of claims 1–8 of the ’212 patent (Pet. 4–5):
`
`References
`
`Patent Number
`
`Exhibit
`
`Levi, et. al., (hereinafter, “Levi”)
`Sham et al. (hereinafter, “Sham”)
`Ebeling et. al., (hereinafter, “Ebeling”)
`
`US 5,583,776
`US 5,891,042
`US 6,145,389
`
`1003
`1002
`1004
`
`Petitioner also relies on the Declaration of Mr. Thomas Blackadar
`(Ex. 1005) (hereinafter “Blackadar Decl.”).
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of the claims of the ’212 patent
`on the following grounds (Pet. 5–6):
`
`Claims
`
`Basis
`
`References
`
`§ 103(a)
`
`§ 103(a)
`
`Sham, Levi, and “knowledge of a person having
`ordinary skill in the art”
`Sham, Ebeling, and “knowledge of a person having
`ordinary skill in the art”
`
`1–8
`
`1–8
`
`
`
`6
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`
` ANALYSIS
`Claim Construction
`
`Petitioner proposes specific constructions for the claim terms “step
`counter,” “stride rate,” and “from a range of stride lengths calculated from a
`range of corresponding stride rates” based on Patent Owner’s proposed
`constructions in the concurrent patent litigation between the parties on this
`patent (Pet. 13–15 (citing Ex. 1011, 2, 4, 6)). Patent Owner contends
`Petitioner has not explained why it is not proposing the constructions
`Petitioner asserted in the District Court litigation (Prelim. Resp. 8–13).
`Accordingly, Patent Owner asserts Petitioner has not complied with 37 CFR
`§ 42.104(b)(3)–(4) because Petitioner has not explained how the challenged
`claims are to be construed and how they read on the prior art (id. at 12).
`We are not persuaded, at this stage of the proceeding, that Petitioner
`has failed to comply with 37 CFR § 42.104(b)(3)–(4). Rather, Petitioner has
`set forth terms believed to be in dispute, adopting Patent Owner’s proposed
`construction. Moreover, neither Petitioner nor Patent Owner has asserted
`any of the claims recite limitations in means-plus-function format.
`Additionally, in view of our analysis, we determine that at this stage,
`no claim terms require express construction (see Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which
`are in controversy need to be construed, and only to the extent necessary to
`resolve the controversy)).
`
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`
`Level of Ordinary Skill in the Art
`
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991))).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention
`would have been [1] a person with a bachelor’s degree in
`mechanical engineering, electrical engineering or a similar field
`with at least two years of experience in motion tracking, motion
`analysis, inertial sensing, or signal analysis, or [2] a person with
`a master’s degree
`in mechanical engineering, electrical
`engineering, or a similar field with a specialization in motion
`tracking, motion analysis, inertial sensing, or signal analysis
`(Pet. 16 (citing Blackadar Decl. ¶ 36)). Patent Owner does not appear to
`dispute the educational level or experiential aspects of Petitioner’s definition
`“for purpose of this inter partes review” (Prelim. Resp. 13–14). Patent
`Owner, however, emphasizes “[a]lthough degrees in electrical engineering
`or mechanical engineering are broadly applicable, the specific experience
`(i.e., motion tracking, motion analysis, inertial sensing, or signal analysis) of
`one having ordinary skill in the art is related to the field of exercise
`monitoring” (Prelim. Resp. 14 (citing Blackadar Dec. 2–4)).
`At this stage in the proceeding, we determine that Petitioner’s
`description of a skilled artisan as possessing (1) a bachelor’s degree in
`mechanical engineering, electrical engineering or a similar field with at least
`two years of experience in motion tracking, motion analysis, inertial sensing,
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`Patent 6,434,212
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`or signal analysis, or (2) a master’s degree in mechanical engineering,
`electrical engineering, or a similar field with a specialization in motion
`tracking, motion analysis, inertial sensing, or signal analysis, is supported by
`the current record. For purposes of this Decision, therefore, we adopt
`Petitioner’s description.
`We note also that the applied prior art reflects the appropriate level of
`skill at the time of the claimed invention (see Okajima v. Bourdeau, 261
`F.3d 1350, 1355 (Fed. Cir. 2001)).
`
` Overview of the Asserted Prior Art
` Sham (Ex. 1002)
`Sham is a patent entitled “Fitness Monitoring Device Having an
`Electronic Pedometer and a Wireless Heart Rate Monitor” (Sham, [54]).
`Sham is related to “a fitness activity monitoring device which monitors the
`heart rate of its user while providing pedometer functions” (Sham, 1:6–10).
`Sham describes pedometers “worn on the side of the user,” “built into a
`wrist watch,” and “secured to a waist band” (Shaw, 1:15–19, 3:34–45).
`
` Levi (Ex. 1003)
`Levi is a patent entitled “Dead Reckoning Navigational System Using
`Accelerometer to Measure Foot Impacts.” Levi is directed to an electronic,
`portable navigational method and system that use radionavigational data and
`dead reckoning for foot navigation (Levi, 1:8–11). According to Levi,
`[t]he term “dead reckoning” (DR) refers to a position
`solution that is obtained by measuring or deducing displacements
`from a known starting point in accordance with motion of the
`
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`Patent 6,434,212
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`
`user. Two types of DR are known: inertial navigation and
`compass/speedometer
`(id. at 1:13–17). Levi teaches incorporation of DR functions through use of
`a digital electronic compass with a silicon pedometer and a barometric
`altimeter, with Global Positioning System (GPS) position information and
`digital maps to arrange an integrated navigation system that “provides
`advantages during GPS outages” (id. at 1:60–64, 2:5–11). Specifically,
`during GPS outages, “DR continuously tracks the user’s position without
`references to external aids or signals” (id. at 2:12–14).
`Levi teaches the frequency of a user’s footsteps is used in determining
`the size of footsteps taken by the user (id. at 2:57–60). A silicon
`accelerometer, mounted or attached to the user, senses harmonic motions
`and impact accelerations that result from walking or running, and thus,
`provides acceleration data indicative of footsteps (id. at 3:13–20). Levi
`further teaches three different algorithms: peak detection algorithm,
`frequency measurement algorithm, and dynamic step size algorithm to be
`used (id. at 4:29, 5:20, 6:6).
`The peak detection algorithm “allows determination of distance
`directly by a scale factor” (id. at 4:30–31). In the peak detection algorithm,
`accelerometer samples are taken and from each sample, it is determined if a
`peak over a threshold, exists –– thus, indicating a step (id. at 4:36–60, 5:9–
`11, Fig. 4). The frequency measurement algorithm is performed “primarily
`to obtain step size” because “[s]tep size is related to frequency” (id. at 5:21–
`23, Fig. 5).
`
`10
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`
`In the dynamic step size algorithm “[a]s a user walks, faster, both the
`step size and the frequency of steps increase. This can be simply modeled as
`a linear fit to observed data at different walking speeds” (id. at 6:6–9, Fig.
`5). The step size is initialized from stored default values, particular to an
`individual person, generated during a calibration process (id. at 6:22–28,
`Fig. 7, step 701).
`
` Ebeling (Ex. 1004)
`Ebeling is a patent entitled “Pedometer Effective for Both Walking
`and Running” (Ebeling, [54]). Ebeling is related to a pedometer that
`“accurately calculates the length of the strides taken by a user when walking
`and running,” by “using measurements of the acceleration of the wearer’s
`foot during each stride” (id. at Abstract). In Eberling, “[t]he total distance
`traveled is computed as the sum of the individual stride lengths” (id. at 4:4–
`5). The length of each individual stride is calculated independently, from a
`profile data vector which includes “values that characterize the running
`stride” and walking strides length coefficients (id. at 4:5–6, 9:51–55, 10:24–
`34).
`
`Prosecution History
`
`
`1. Previous Consideration of Sham and Levi and Multiple Petitions
`Patent Owner asserts the two references, Sham and Levi, “are cited on
`the face of the ’212 patent and were before the patent examiner during
`prosecution” (Prelim. Resp. 14). Patent Owner, therefore, contends
`Petitioner’s “Ground 1 relies entirely upon references that were before the
`Examiner during the entirety of the examination of the applications that lead
`11
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`to the ’212 Patent and its parent, U.S. Patent No. 6,175,608 []” (id. at 17).
`More specifically, Patent Owner explains Levi was submitted in an IDS
`(Information Disclosure Statement) as “the only reference submitted in that
`IDS,” and the Examiner initialed the IDS indicating Levi was considered
`(id.at 63).
`Patent Owner further details that the Examiner, in the first Office
`Action, “rejected several pending claims as anticipated or rendered obvious
`by Sham” and “did not mention Levi or include it in any prior art
`combinations, despite having it fresh in her mind. . . [which] suggests that
`she did not consider Levi’s ‘dead reckoning system’ to be particularly
`relevant” (id. at 67–69). The Examiner indicated several claims were
`allowable over Sham (id. (citing Ex. 1009, 69, 83)).
`Moreover, Patent Owner asserts, this “Petition is cumulative of
`several other petitions for inter partes review addressing the ’212 patent”
`(Prelim. Resp. 19). Patent Owner explains, in more specificity, that the Levi
`reference, relied upon by Petitioner in Ground 1, “formed the centerpiece of
`four grounds asserted in an earlier petition, IPR2017-01058, filed by Garmin
`International, Inc. . . . now terminated” (id. at 19 (citing IPR2017-01058,
`Paper 11)). In addition, Patent Owner asserts Petitioner “submitted a second
`petition [(IPR2017-02023)] concurrently with the present Petition” which “is
`essentially a carbon-copy of this Petition” except that IPR2017-02023
`substitutes US Patent 4,367,752 (“Jimenez”) for Sham as the primary
`reference (id. at 19–20). According to Patent Owner, the IPR2017-02023
`and this Petition have the same analysis with the same combinations of Levi
`in Ground 1 and Ebeling in Ground 2, and uses “substantially similar”
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`language throughout (id. at 20). Lastly, Patent Owner asserts IPR2017-
`02012 filed by Fitbit, “is cumulative of Sham and Ebeling” and uses US
`Patent 5,033,013 (“Kato”) which was considered in the ’608 patent (id.).
`
` Discretionary Denial Under 35 U.S.C § 314(b)
`We are not persuaded that Levi was explicitly considered by the
`Examiner. In particular, we note that although the reference was submitted
`on an IDS to the Examiner in the original prosecution, there is no evidence
`that Levi or Petitioner’s arguments regarding Levi were before the Examiner
`(see generally, Ex. 1010), the Examiner did not indicate the reference had
`been fully considered.
`For the reasons that follow, we exercise our discretion and decline to
`institute an inter partes review of claims 1–5 on the grounds advanced by
`Petitioner in this Petition (see 37 C.F.R. § 42.108(a)).
`The ’212 patent has been challenged in five separate IPRs:
`IPR2017-01058: Garmin International, Inc. v. Blackbird Tech
`LLC d/b/a Blackbird Technologies (now terminated);
`IPR 2017-02012: Fitbit, Inc. v. Blackbird Tech LLC d/b/a
`Blackbird Technologies;
`IPR 2017-02023: TomTom International, B.V. v Blackbird Tech
`LLC d/b/a Blackbird Technologies;
`IPR 2017-02025: TomTom International, B.V. v Blackbird Tech
`LLC d/b/a Blackbird Technologies; and
`IPR 2018-00275: Wahoo Fitness v Blackbird Tech LLC d/b/a
`Blackbird Technologies.
`In this Petition, the asserted grounds rely on teachings of Sham and
`Levi and Sham and Ebeling, respectively (Pet. 5). In IPR2017-00023, the
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`asserted grounds were essentially identical. Both this Petition and IPR2017-
`02023, also filed by Petitioner, rely on Levi, Ebeling, and “knowledge of a
`person having ordinary skill in the art,” respectively combined with another
`reference (Pet. 5; IPR2017-02023, Paper 1, 4–5). As Patent Owner points
`out, the only difference is the substitution of Sham for Jimenez. Petitioner
`relies on Sham and Jimenez to meet the same claim limitations, and
`Petitioner’s analyses of Sham and Jimenez are substantially identical.
`Specifically, in IPR2017-02023, Petitioner has asserted the following
`grounds:
`
`
`Claims
`
`Basis
`
`1–8
`
`1–8
`
`§ 103(a)
`
`§ 103(a)
`
`References
`Jimenez, Levi, and “knowledge of a person
`having ordinary skill in the art”
`Jimenez, Ebeling, and “knowledge of a
`person having ordinary skill in the art”
`
`
`(IPR2017-02023, Paper 1, 4–5). In this Petition, Petitioner asserts the
`following grounds:
`
`
`Claims
`
`Basis
`
`1–8
`
`1–8
`
`§ 103(a)
`
`§ 103(a)
`
`References
`Sham, Levi, and “knowledge of a person
`having ordinary skill in the art”
`Sham, Ebeling, and “knowledge of a person
`having ordinary skill in the art”
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`(Pet. 5–6).
`
`In IPR2017-02023, we instituted an inter partes review on claims 1–5,
`determining Petitioner has established a reasonable likelihood of prevailing
`with respect to those claims 1–5 under 35 U.S.C. § 103 (a) for obviousness
`over Jimenez, Levi, and “knowledge of a person having ordinary skill in the
`art” (see IPR2017-02023, Dec. to Institute). We declined to institute on
`claim 6–8, determining Petitioner has not established a reasonable likelihood
`of prevailing under either ground (id.). We also declined to institute trial on
`Petitioner’s challenge to claims 1–8 based on Jimenez and Ebeling.
`IPR2017-02023. Paper7.
`“In exercising discretion under 35 U.S.C. § 314(a) … we are mindful
`of the goals of the AIA–namely, to improve patent quality and make the
`patent system more efficient by use of post-grant procedures” (General
`Plastic Indus. Co., Ltd. V. Canon Kabushiki Kaisha, Case IPR2016-01357,
`slip op. at 16 (PTAB Sept. 16, 2017) (Paper 19) (citing H.R. Rep. No.112-
`98, pt.1, at 40 (2011))). Notwithstanding the goals of the AIA, in applying
`§ 314(a), we are mindful of the potential inequity of parties filing multiple
`petitions (see id.).
`Here, Petitioner has filed a petition directed to the same claims
`(claims 1–8) of the same patent (the ’212 patent) as in IPR2017-02023.
`Although Petitioner filed both IPRs concurrently, Petitioner filed four
`different grounds on the same claims using substantially similar references.
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` Sham and Levi
`In light of the substantial similarity between the two primary
`references, Jimenez and Sham, and considering the finite resources of the
`Board; and the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which the Director
`notices institution of review, Petitioner has not shown sufficiently, how the
`two primary references are different enough to warrant institution on their
`respective combinations with Levi. In particular, Petitioner relies on each of
`Jimenez and Sham, each teach the same limitations and relies on Levi as
`teaching the same “data processor” limitations (compare e.g., Pet. 24–34,
`with IPR2017-02023, Pet. 24–34). Thus, Petitioner’s analysis does not
`distinguish adequately between the two petitions.
`Because the analysis is fact-driven, no single factor is determinative
`of whether we exercise our discretion and deny institution under 35 U.S.C.
`§ 314(a) and 37 C.F.R. § 42.108(a). Here, Petitioner has filed two petitions
`directed to the same claims of the same patent (the ’212 patent) on
`essentially the same grounds. Although Petitioner filed both IPRs
`concurrently, Petitioner relies on substantially similar references and
`analyses. Under the circumstances, it is appropriate to limit Petitioner’s
`obviousness challenge to claims 1–5 based on Jimenez and Levi.
`Nonetheless, on this record, we elect to invoke our discretion under 35
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of an inter
`partes review of claims 1–5 under 35 U.S.C. § 103 (a) for obviousness over
`Sham, Levi, and “knowledge of a person having ordinary skill in the art.”
`
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` Sham and Ebeling
`In IPR2017-02023, we also determined Petitioner had not explained
`with sufficient particularity how Ebeling’s duration of the stride teaches the
`recited “stride rate” or “rate at which steps are counted,” as recited in the
`independent claims (IPR2017-02023, Dec. to Inst. 36). With respect to the
`combination of Sham with Ebeling, Petitioner relies on Sham to teach
`substantially the same limitations upon which Jimenez was relied and relies
`on Ebeling to teach substantially the same limitations (compare e.g., Pet.
`52–57, with IPR2017-02023, Pet. 52–57). In light of the substantial
`similarity between the two primary references, Jimenez and Sham, and our
`determination in IPR2017-00023 that Petitioner had not shown sufficiently
`that Ebeling teaches the “data processor” limitations, we conclude that
`Petitioner’s obviousness challenge to claims 1–8 based on Sham and Ebeling
`has already been determined not reasonably likely to prevail for the reasons
`set forth in our Decision in IPR2017-00023. Accordingly, we exercise our
`discretion to deny institution under § 314(b).
`
` Summary
`Accordingly, on this record, we exercise our discretion under 35
`U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of an inter
`partes review of claims 1–5 under 35 U.S.C. § 103 (a) for obviousness over
`Sham and Levi. Furthermore, because it has already been determined that
`Petitioner is not likely to prevail on its challenge to claims 1–8 based on
`Jimenez and Ebeling, we will exercise our discretion and deny institution of
`
`17
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`
`IPR2017-02025
`Patent 6,434,212
`
`trial on the challenge based on Sham and Ebeling. In the following section,
`we consider Petitioner’s challenge to claims 6–8 over Sham and Levi.
`
`
`
`Alleged Obviousness of Claims 6–8 over Sham, Levi, and “knowledge
`of a person having ordinary skill in the art”
`
` Analysis
`Petitioner contends that each element of claims 6–8 is taught by the
`combination of Sham, Levi, and knowledge of one of ordinary skill in the art
`(Pet. 45–48). Petitioner also provides supporting testimony from its expert,
`Dr. Blackadar (Blackadar Decl. ¶¶ 70–76, 124–143, 183). Specifically,
`Petitioner argues Sham’s pedometer sensing circuit 32 provides an output
`signal to microprocessor 34 (Pet. 46 (citing Sham, 4:12–16)). Petitioner
`then contends
`A PHOSITA would have understood Sham’s sensing circuit that
`outputs a pulse per step as a transmitter sending step counts to
`the microprocessor. A PHOSITA would have understood
`Sham’s microprocessor that receives the output of its sensing
`circuit as a receiver to receive the step count signal transmitted
`from the transmitter
`(id. at 46–47 (citing Sham, 4:12–16, Blackadar Decl. ¶ 128)).
`
`Claim 6 also calls for “a transmitter in communication with the step
`counter to generate a step count signal corresponding to each step and
`transmit the step count signal” and “a receiver mountable on a user body
`portion to receive the step count signal transmitted from the transmitter.”
`Patent Owner contends Sham fails to disclose the recited “transmitter” and
`“receiver,” as required by claim 6 (Prelim. Resp. 24–25)). Specifically,
`Patent Owner asserts Sham identifies a transmitter and receiver, but those
`
`18
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`IPR2017-02025
`Patent 6,434,212
`
`are not Sham’s elements relied upon by Petitioner (id. at 25). Rather, Patent
`Owner contends Petitioner relies on pedometer sensing circuit 32 which is
`neither a transmitter nor a receiver; the transmitter and receiver in Sham
`“deal with the wireless heart rate monitor, not the step counter”; and
`Petitioner has relied on pedometer sensing circuit 32 as the pedometer (id. at
`25–26). Similarly, Patent Owner contends Petitioner relies on Sham’s
`microprocessor 34 as both the “receiver” and the “data processor,” recited in
`claim 6 (id. at 26).
`
`We determine Petitioner has not identified with sufficient specificity
`where Sham teaches the recited “transmitter” and “receiver.” In particular,
`Petitioner has not explained how pedometer sensing circuit 32 teaches both
`the recited “step counter” and the recited “transmitter in communication
`with the step counter” and similarly, how microprocessor 34 teaches both
`the recited “receiver” and “data processor.” Petitioner identifies Sham,
`column 4, lines 12–16, as teaching the limitations and relies on Petitioner’s
`expert to support their conclusion (Pet. 46–47). On the relied upon portion,
`Sham teaches that “an electronic pedometer circuit 32 provides input signals
`to the microprocessor 34” (Sham, 4:12–13). Sham further teaches “the
`pedometer sensing circuit 32 outputs a pulse per step to the microprocessor
`34” which will “update and display the step counter” (id. at 14–16).
`Petitioner has relied on its analysis of claim 1 to identify where Sham
`teaches the recited “step counter” (Pet. 46). In this analysis, Petitioner
`contends pedometer sensing circuit 32 teaches the recited “step counter” (id.
`at 23). Petitioner further identifies Sham’s microprocessor as teaching the
`recited “data processor” (id. at 25). However, Petitioner fails to explain how
`19
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`
`
`IPR2017-02025
`Patent 6,434,212
`
`pedometer sensing circuit 32 meets both the recited “step counter” and
`“transmitter” limitations, and how microprocessor 34 teaches both the
`recited “receiver” and “data processor” limitations. Nor does Petitioner’s
`expert, Mr. Blackadar provide sufficient explanation (Blackadar Decl.
`¶¶126–128). Thus, Petitioner has not set forth with sufficient specificity
`how the combination of Sham and Levi teaches or suggests the recited
`limitations of claim 6 or its dependent claims 7 and 8.
`
` Conclusion
`Accordingly, for the reasons set forth above, we determine that
`Petitioner’s showing and supporting testimony presented, fails to establish a
`reasonable likelihood that Petitioner would prevail in showing that
`independent claim 6 and dependent claims 7 and 8, would have been
`obvious over Sham, Levi, and “knowledge of a person having ordinary skill
`in the art.”
`
` Alleged Obviousness of Claims 6–8 over Sham, Ebeling, and Knowledge
`of One of Ordinary Skill in the Art
`For the reasons set forth above, we determine that Petitioner’s
`showing and supporting testimony presented, fails to establish a reasonable
`likelihood that Petitioner would prevail in showing that independent claim 6
`and dependent claims 7 and 8, would have been obvious over Sham,
`Ebeling, and “Knowledge of One of Ordinary Skill in the Art.”
`
`20
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`IPR2017-02025
`Patent 6,434,212
`
`
` ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied as to all challenged claims of
`the ’212 patent.
`
`
`
`
`21
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`
`IPR2017-02025
`Patent 6,434,212
`
`PETITIONER:
`Dipu A. Doshi
`Michael S. Marcus
`Megan R. Wood
`BLANK ROME LLP
`ddoshi@blankrome.com
`mwood@blankrome.com
`mmarcus@blankrome.com
`
`
`PATENT OWNER:
`
`Walter D. Davis, Jr.
`Wayne M. Helge
`Aldo Noto
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`wdavis@dbjg.com
`whelge@dbjg.com
`anoto@dbjg.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`22
`
`
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