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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`WAHOO FITNESS LLC,
`Petitioner,
`
`v.
`
`BLACKBIRD TECH LLC,
`Patent Owner.
`
`____________________
`
`Case IPR2018-00275
`Patent 6,434,212
`
`____________________
`
`
`PATENT OWNER BLACKBIRD TECHNOLOGIES’
`PRELIMINARY RESPONSE
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................. 6
`I.
`II. BACKGROUND ............................................................................................... 9
`A. Related Proceedings Bearing On This Proceeding ........................................ 9
`B. About The ‘212 Patent ................................................................................... 9
`C. Petitioner’s Grounds of Challenge ...............................................................14
`D. Response To Petitioner’s Proposed Claim Constructions ............................15
`III. OVERVIEW OF THE REFERENCES RELIED UPON BY
`PETITIONER ......................................................................................................... 19
`A. Amano ..........................................................................................................19
`B. Kato ..............................................................................................................20
`IV. THE BOARD SHOULD DENY INSTITUTION ON
`GROUND 1 ............................................................................................................ 23
`A. Amano Does Not Disclose “Programmed To Calculate A Distance Travelled
`By Multiplying A Number Of Steps Counted By The Step Counter By A
`Stride Length” ..............................................................................................24
`B. Amano Does Not Disclose All Limitations In The Same Embodiment ......29
`C. Amano Does Not Disclose “A Step Counter Joined To The Strap” Under
`Petitioner’s Proposed Construction ..............................................................31
`V. THE BOARD SHOULD DENY INSTITUTION ON
`GROUND 2 ............................................................................................................ 37
`A. Amano Does Not Disclose “Programmed To Calculate A Distance Travelled
`By Multiplying A Number Of Steps Counted By The Step Counter By A
`Stride Length” ..............................................................................................38
`B. Petitioner Does Not Establish A Motivation To Combine Embodiments 1
`and 2 .............................................................................................................39
`C. Amano Does Not Disclose “A Step Counter Joined To The Strap” Or A
`“Heart Rate Monitor Joined To The Strap” Under Petitioner’s Proposed
`Construction .................................................................................................40
`VI. THE BOARD SHOULD DENY INSTITUTION ON
`GROUND 3 ............................................................................................................ 42
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`
`A. Kato Does Not Disclose “Programmed To Calculate A Distance Traveled
`By Multiplying A Number Of Steps Counted By A Stride Length That
`Varies According To A Rate At Which Steps Are Taken” ............................44
`B. Petitioner Does Not Establish Motivation To Combine Kato’s Components
`With Amano’s Speed Calculation Feature....................................................46
`C. Petitioner Does Not Establish Motivation To Combine Kato’s Components
`With Amano’s “Data Processing Steps” .......................................................50
`VII. THE BOARD SHOULD DENY INSTITUTION BECAUSE
`THE PRIOR ART RELIED UPON HAS BEEN CONSIDERED
`DURING PROSECUTION AND IS REDUNDANT OF OTHER
`IPRS. ...................................................................................................................... 55
`VIII. CONCLUSION ............................................................................................ 57
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`3
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`
`TABLE OF AUTHORITIES
`
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .....................................................................37
`Atofina v. Great Lakes Chem. Corp.,
`441 F.3d 991 (Fed. Cir. 2006) .......................................................................34
`Bayer Healthcare Pharm., Inc. v. Watson Pharm., Inc.,
`713 F.3d 1369 (Fed. Cir. 2013) .....................................................................43
`ClearValue, Inc. v. Pearl River Polymers, Inc.,
`668 F.3d 1340 (Fed. Cir. 2012) .....................................................................36
`Creative Integrated Sys., Inc. v. Nintendo of Am., Inc.,
`526 F. App’x 927 (Fed. Cir. 2013) ................................................................17
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7) ........................................56
`Epistar Corp. v. Int’l Trade Comm’n,
`566 F.3d 1321 (Fed. Cir. 2009) .....................................................................16
`FenF, LLC v. SmartThingz, Inc.,
`601 F. App'x 950 (Fed. Cir. 2015) .......................................................... 17, 18
`In re Gleave,
`560 F.3d 1331 (Fed. Cir. 2009) .....................................................................35
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .......................................................................43
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) .....................................................................52
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) .............................................................. 35, 36
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007).......................................................................................43
`MBO Labs., Inc. v. Becton, Dickinson & Co.,
`474 F.3d 1323 (Fed. Cir. 2007) .....................................................................17
`Net MoneyIn, Inc. v. Verisign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008) .....................................................................29
`
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd,
`851 F.3d 1270 (Fed. Cir. 2017) .....................................................................35
`Perricone v. Medicis Pharm. Corp.,
`432 F.3d 1368 (Fed. Cir. 2005) .....................................................................34
`Personal Web Technologies v. Apple,
`848 F.3d 987 (Fed. Cir. 2017) ................................................................ 40, 49
`Rambus Inc. v. Infineon Techs. Ag,
`318 F.3d 1081 (Fed. Cir. 2003) .....................................................................17
`Securus Techs., Inc. v. Glob. Tel*Link Corp.,
`701 Fed. Appx. 971 (Fed. Cir. 2017) ............................................................49
`Symantec Corp. v. RPost Communications Limited,
`IPR2014-00357 (PTAB July 15, 2014) (Paper 14) ................................ 29, 30
`Teleflex, Inc. v. Ficosa North America Corp.,
`299 F.3d 1313 (Fed. Cir. 2002) .............................................................. 43, 54
`Unified Patents, Inc. v. Berman,
`IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10) .......................................55
`Unigene Laboratories, Inc. v. Apotex, Inc.,
`655 F.3d 1352 (Fed. Cir. 2011) .....................................................................43
`Ventana Med. Sys., Inc. v. Biogenex Labs., Inc.,
`473 F.3d 1173 (Fed. Cir. 2006) .....................................................................18
`Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC,
`683 F.3d 1356 (Fed. Cir. 2012) .....................................................................34
`Statutes
`35 U.S.C. § 314(a) ...................................................................................................57
`35 U.S.C. § 325(d) .................................................................................. 8, 55, 56, 57
`Rules
`37 C.F.R. § 42.107 ..................................................................................................... 6
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 9
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`5
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`I.
`
`INTRODUCTION
`
`In accordance with 37 C.F.R. § 42.107, Patent Owner Blackbird Tech LLC
`
`d/b/a Blackbird Technologies (“Blackbird” or “Patent Owner”) submits this
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`preliminary response to the Petition (the “Petition” or “Pet.”) filed by Wahoo
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`Fitness LLC (“Petitioner” of “Wahoo”) requesting inter partes review of claims 2,
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`5, and 6 (the “Challenged Claims”) of U.S. Patent No. 6,434,212 (the “’212
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`patent”). Petitioner Wahoo filed its request for inter partes review concurrently
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`with a Motion for Joinder to IPR2017-02012, filed by Fitbit, Inc. In its Motion for
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`Joinder, Wahoo states that “the Petition filed by Wahoo is identical to the Fitbit IPR
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`[IPR2017-02012] in all substantive respects, including reliance on the same
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`exhibits and reliance on the same expert declaration testimony.” (IPR2018-00275,
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`Paper 3, at 1). Therefore, Blackbird submits this Patent Owner Preliminary
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`Response that is substantially identical to the Patent Owner Response Blackbird
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`submitted in IPR2017-02012. Blackbird respectfully requests that the Board deny
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`the Petition for at least the following reasons:
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`First, Petitioner fails to establish that Amano anticipates claims 2 and 5 of
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`the ’212 patent. Claims 2 and 5 recite a specific method of calculating distance:
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`“multiplying a number of steps counted by the step counter by a stride length that
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`varies in accordance” with certain factors, the “stride rate” for claim 2 and “the rate
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`at which steps are counted” for claim 5. However, Amano does not disclose
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`calculating distance at all. Rather, the system disclosed in Amano calculates a
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`user’s speed at specific sampling intervals. Moreover, even if determining speed
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`were somehow equivalent to calculating distance, the system disclosed in Amano
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`does not multiply “a number of steps counted by the step counter by a stride
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`length.” Instead, Amano determines a user’s pitch, or stride rate, by analyzing a
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`single stride at specified intervals. Therefore, it does not anticipate either claims 2
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`or 5. This ground fails for the additional reason that Petitioner improperly
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`combines disclosures from two different embodiments in Amano in its anticipation
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`analysis.
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`Second, Petitioner fails to establish that Amano renders claims 2 and 5
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`obvious. Petitioner’s obviousness argument fails for largely the same reasons its
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`anticipation one does: Amano discloses a fundamentally different system from that
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`recited in claims 2 and 5. In addition, Petitioner fails to perform any obviousness
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`analysis to support its attempt to combine the disclosures from different
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`embodiments.
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`Third, Petitioner fails to establish that Kato in view of Amano renders claim
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`6 obvious. Like Amano, Kato does not disclose claim 6’s method of distance
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`calculation, which is, in relevant part, the same as that recited in claims 2 and 5.
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`Kato calculates distance by assessing the user’s speed, not by counting steps, and
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`therefore does not render claim 6 obvious. Petitioner attempts to fill this gap in
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`Kato by combining it with Amano, but Amano does not disclose this limitation
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`either, and, even if it did, Petitioner fails to establish that a skilled artisan would be
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`motivated to combine these references. More generally, Petitioner fails to establish
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`that a skilled artisan would have been motivated to combine Kato and Amano in
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`the manner alleged.
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`Finally, the Board should exercise its discretion under 35 U.S.C. § 325(d)
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`and deny institution of Ground 3 because it primarily relies on a reference that was
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`previously considered by the Office during prosecution and, in addition, deny
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`institution on all grounds because four other petitions have been filed against the
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`’212 patent, creating redundancies and unnecessary burden for the Board and
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`Patent Owner.
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`Accordingly, the Petition fails to establish a reasonable likelihood that the
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`Challenged Claims are unpatentable. Consequently, the Board should not institute
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`trial in this proceeding.
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`II. BACKGROUND
`A. Related Proceedings Bearing On This Proceeding1
`In addition to the instant matter, the ’212 patent is the subject of three other
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`pending petitions for inter partes review (“IPR”) and was previously the subject of
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`one other now-terminated petition:
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`IPR2017-01058 filed by Garmin International, Inc. now terminated;
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`IPR2017-02012 filed by Fitbit, Inc., which this Petition purports to join;
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`IPR2017-02023 filed by TomTom, Inc.; and
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`IPR2018-02025 filed by TomTom, Inc.
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`B. About The ‘212 Patent
`The ’212 patent describes and claims an improved exercise monitoring
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`device that tracks a user’s activity, and reports key fitness metrics back to the user.
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`See generally Ex. 1001 at 2:14-59. The device includes a pedometer, which is a
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`portable electromechanical device for determining the distance a person travels on
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`foot. Id. at 1:17-18. The inventions claimed in the ’212 patent were born out of
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`the inventor’s research into ways of solving problems with prior art pedometers.
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`Id. at 2:8-11. At the time of invention in 1998, prior art pedometers were overly
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` 1
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` A complete list of the related matters is contained in Patent Owner’s Mandatory
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`Notices per 37 C.F.R. § 42.8(b)(2).
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`complex devices that produced inaccurate distance determinations. Id.
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`Complexity and inaccuracy are serious problems because they tend to defeat the
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`purpose of the pedometer’s inclusion in an exercise monitoring device, which is to
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`provide a wearable device that informs the user of the distance he or she has
`
`walked or run while exercising. Id. at 1:12-18.
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`The background section of the ’212 patent surveys half a dozen prior art
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`pedometers. Id. at 1:19-2:7. This survey shows that, at the time of invention, prior
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`art pedometers consisted of a variety of different structural components and
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`configurations, different distance determination techniques, and different
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`calibration procedures (if any). Id. For example, the ’212 patent first describes a
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`complex and inaccurate design with at least three separate components: a pair of
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`leg-mounted ultrasonic modules and a wrist-mounted display. Id. at 1:19-27. In
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`this design, distance is determined by directly measuring the length of each stride,
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`which is measured by passing sound waves between the ultrasonic modules worn
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`on a user’s legs. Id. This design involves “a variety of measurement errors.” Id.
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`Because stride length is measured directly, no calibration is required. See id.
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`The ’212 patent next describes another complex and inaccurate design with a
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`heel-mounted device and stay-at-home computer. Id. at 1:28-46. In this design,
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`distance is determined based on the length of time each stride lasts. Id. This
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`design involves an overly complex calibration process and produces “inherent
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`errors.” Id. Also, this design uses a stay-at-home computer, detachably connected
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`to the heel-mounted device by cabling, to determine distance. Id. This device
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`cannot provide users with real-time distance determinations, and users do not know
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`how far they walked or ran until returning home. Id.
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`The ’212 patent describes several more prior art pedometers. In at least
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`three such designs, distance determinations are inaccurate because they rely on a
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`single, fixed stride length. Id. at 1:47-2:2. The reliance on a single, fixed stride
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`length is problematic in exercise monitoring because, in real life, stride length
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`varies with speed (or stride rate). Running strides are longer than walking strides.
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`Id. at 1:54-55. Thus, a single, fixed stride length may underestimate or
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`overestimate distance travelled depending on how quickly or slowly the user is
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`moving his legs back and forth. Id. As a result, these designs require a complex
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`calibration process that must be repeated whenever the user switches from walking
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`to running, or vice versa. Id. at 1:63-65. In still another prior art design described
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`in the ’212 patent, stride rates are used not to determine the user’s distance at all,
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`but rather the user’s pace (e.g. minutes per mile). Id. at 2:3-7.
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`To overcome the problems of complexity and inaccuracy, the inventor
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`conceived of a novel pedometer that reduces design complexity, increases distance
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`calculation accuracy, and improves calibration efficiency. Id. at 2:15-26. This
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`invention is reflected, for instance, in claim 6 of the ’212 patent:
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`6. A pedometer comprising:
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`a step counter;
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`a transmitter in communication with the step counter to generate a step
`count signal corresponding to each step and transmit the step count
`signal;
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`a receiver mountable on a user body portion to receive the step count
`signal transmitted from the transmitter; and
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`a data processor programmed to calculate a distance traveled by
`multiplying a number of steps counted by a stride length that varies
`according to a rate at which steps are taken, and further
`programmed to derive an actual stride length from a range of stride
`lengths calculated from a range of corresponding stride rates.
`
`Id., claim 6. The step counter is configured to count the number of steps the user
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`takes. Id. at 3:7-8. A transmitter, in communication with the step counter, is
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`configured to generate a step count signal corresponding to each step. The
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`transmitter is also configured to transmit the step count signal to a receiver, which
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`in turn is mountable on a user body portion. The pedometer also includes a data
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`processor that is programmed to determine the distance travelled by multiplying
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`the step count by a stride length (as opposed to, for example, directly measuring
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`stride length for each stride and adding them together).
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`Although claim 6 of the ’212 patent recites the fact that stride length varies
`
`according to stride rate, the claim does not stop there. It recites a programmatic
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`mechanism that allows a pedometer to leverage the fact that stride length varies
`
`according to stride rate. Specifically, the data processor must derive the stride
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`length used to make the distance determination from a range of stride lengths.
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`These stride lengths are, in turn, calculated from a range of stride rates (i.e.,
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`number of strides over some period of time).
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`Remaining independent claims 1, 2, and 5 of the ’212 patent expand on
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`claim 6 in several ways. They each claim a strap-mounted device “for releasably
`
`securing the exercise monitoring device to a user[.]” Claims 1, 2, and 5 also recite
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`a heart rate monitor joined to the same strap as the step counter. Claims 2 and 5
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`specifically recite a calibratable pedometer in which the data processor is
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`programmed to select a stride length “with reference to a plurality of calibrations
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`that each calculate a stride length as a function of a known stride rate,” as in claim
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`2, or “from a range of stride lengths calculated from a range of corresponding
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`stride rates calculated from a plurality of calibration samples,” as in claim 5. These
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`calibration features allow for the selection of a stride length to be used in the
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`distance calculation that more closely matches the user’s actual stride length,
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`which as a result makes the distance calculation more accurate.
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`The ’212 patent describes significant advantages of the claimed inventions
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`over prior art pedometers. It explains that, with the claimed pedometers, unlike
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`prior art pedometers, repeated calibrations are not required (absent significant
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`fitness improvements):
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`This third option for calculating stride length, and subsequently
`distance, speed, and pace, is a far more accurate method than a fixed
`stride length pedometer. This device and method are also practical,
`convenient, and has a relatively low manufacturing cost…. If there
`are no significant improvements in time, then recalibration is not
`necessary.
`
`’212 patent at 6:10-19.2 In short, the claimed exercise monitoring devices
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`provided significant advantages for both manufacturers and users.
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`Petitioner’s Grounds of Challenge
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`C.
`Petitioner alleges that the Challenged Claims are unpatentable based on the
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`following:
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`• Ground 1: Claims 2 and 5 are anticipated by U.S. Patent No.
`6,241,684 to Amano et al. (“Amano” (Ex. 1003)).
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`• Ground 2: Claims 2 and 5 are obvious over Amano.
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`• Ground 3: Claim 6 is obvious over 5,033,013 to Kato et al. (“Kato”
`(Ex. 1001)).
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` 2
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` All emphasis herein is added, unless otherwise noted, and all defined terms have
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`the same meaning as specified in the Petition, unless otherwise specified.
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`Throughout this Preliminary Response, for ease of understanding, the Patent
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`Owner will refer to these prior art references by the inventor names indicated
`
`above.
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`D. Response To Petitioner’s Proposed Claim Constructions
`Petitioner states that the Phillips standard applies to the construction of
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`terms of the ’212 patent, Pet. 25, and Patent Owner agrees. Petitioner identifies a
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`single term for construction—“a step counter”—but argues that “because the prior
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`art presented in this petition includes chest, waist and leg mounted step counters, it
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`is not necessary to construe this term in order to resolve this Petition.” Pet. 27. As
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`set forth more fully below, Patent Owner disputes that the prior art of record
`
`discloses “chest, waist and leg mounted step counters,” but, because the Petition
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`fails to establish a reasonable likelihood of success for other, independent reasons,
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`Patent Owner agrees that this term need not necessarily be construed by the Board.
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`To the extent the Board believes it is necessary to construe “a step counter,”
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`Patent Owner believes that it should be construed as “a device that collects data to
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`generate a step count.”
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`The key dispute between Petitioner and Patent Owner is whether the location
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`of the “step counter” should be limited to “the chest, waist, or leg” of the user, as
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`Petitioner proposes. There is no basis in the claims, the specification, or the
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`prosecution history to limit the scope of “a step counter” in this way. In particular,
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`Petitioner’s proposed construction conflicts with the plain language of the claims,
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`which Petitioner fails to address. There is no claim language that directs the
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`placement of the step counter, other than that it be “joined to the strap” (for
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`releasably securing the exercise monitoring device to a user).
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`Petitioner’s proposed construction seeks to improperly limit the scope of this
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`claim term based on an alleged disclaimer of claim scope. Pet. 28. However, none
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`of the disclosures to which Petitioner points are sufficient to establish disavowal,
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`particularly in light of the relevant standard, which the Federal Circuit has made
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`clear is exacting. Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed.
`
`Cir. 2009) (party arguing for disavowal must establish the inventors
`
`“demonstrate[d] an intent to deviate from the ordinary and accustomed meaning of
`
`a claim term by including in the specification expressions of manifest exclusion or
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`restriction, representing a clear disavowal of claim scope.”). Petitioner does not
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`meet that standard and, indeed, in a substantive argument that amounts to two
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`sentences, barely attempts to do so.
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`Petitioner primarily points to statements in the specification “that ‘the
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`invention’ comprises a step counter attached to the user’s chest, waist, or leg.” Pet.
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`28. However, the Federal Circuit has repeatedly cautioned that the phrase “the
`
`present invention” does not automatically signal a disclaimer. See, e.g., Rambus
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`Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094–95 (Fed. Cir. 2003) (“While clear
`
`language characterizing ‘the present invention’ may limit the ordinary meaning of
`
`claim terms, … such language must be read in context of the entire
`
`specification.”); Creative Integrated Sys., Inc. v. Nintendo of Am., Inc., 526 F.
`
`App’x 927, 933 (Fed. Cir. 2013) (rejecting argument that descriptions of “the
`
`invention” mandated a claim construction that departed from the meaning made
`
`clear from the claims).
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`Here, as in FenF, LLC v. SmartThingz, Inc., 601 F. App'x 950, 953 (Fed. Cir.
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`2015), the phrases “the present invention” or “the invention” are used throughout
`
`the specification, in various contexts, and refer just as often to specific
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`embodiments of the ’212 patent as to descriptions of the invention as a whole. For
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`example, the ’212 patent notes that “FIG. 1 is a [s]chematic diagram of a
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`pedometer in accordance with the present invention.” Ex. 1001 at 2:60-63.
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`However, the fact the system depicted in a figure embodies the invention claimed
`
`in the patent is not a basis to limit the scope of the claims to what is disclosed in
`
`that embodiment. See MBO Labs., Inc. v. Becton, Dickinson & Co.,474 F.3d 1323,
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`1333 (Fed. Cir. 2007) (observing that “patent coverage is not necessarily limited to
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`inventions that look like the ones in the figures”).
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`Further, other uses of “the present invention” are statements that no party
`
`contends are disclaimers. For example, the ’212 patent states that “the present
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`invention relates generally to pedometers having a waist mounted stride-counting
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`device.” Ex. 1001 at 1:9-10. Petitioner does not, however, contend that this
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`sentence represents a disclaimer of step counters mounted anywhere but a user’s
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`waist. Given the variety of uses of “the present invention” and “the invention,” it
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`would be inappropriate to limit claim scope based on the disclosures to which
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`Petitioner points. See FenF, 601 F. App’x at 953 (reversing a finding of disclaimer
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`where “the phrase [‘the present invention’] here appears to refer to separate
`
`embodiments, with language that is tracked in separate claims[.]”)
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`The ’212 patent’s supposed disparagement of “wrist-based step counters,”
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`Ex. 1001 at 1:50-55 (“Wrist-mounted step counters are known to be inaccurate”),
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`also does not support Petitioner’s contention that the inventor disavowed claim
`
`scope. This statement itself does not expressly disavow claim scope. Nor is it
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`indicative of any intent to disavow. Although disparaging certain prior art systems
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`can weigh in favor of finding disavowal, the Federal Circuit has distinguished
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`disparaging statements that relate to a focus of the claimed invention and those that
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`relate to ancillary features. Ventana Med. Sys., Inc. v. Biogenex Labs., Inc., 473
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`F.3d 1173, 1181 (Fed. Cir. 2006) (finding no disclaimer from critique of prior art
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`methods of physically dispensing reagents onto microscope slides, where the main
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`focus of the claims was the automation of slide creation through the use of bar
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`codes). The optimal placement of step-counting sensors is not the focus of the
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`’212 patent. Rather, the fundamental improvement over prior art devices is
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`improved distance calculation by utilizing the relationship between stride rate and
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`stride length. Accordingly, the statement to which Petitioner points does not
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`support a finding of disavowal.
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`Consequently, to the extent the Board believes it necessary to construe “a
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`step counter,” it should be construed, consistent with its plain meaning, as “a
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`device that collects data to generate a step count.”
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`III. OVERVIEW OF THE REFERENCES RELIED UPON BY
`PETITIONER3
`A. Amano
`Amano is generally directed to a device that measures exercise intensity so a
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`user can determine if the intensity at which they are exercising is appropriate,
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`which the device accomplishes by, in particular, “display[ing] the upper and lower
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` Patent Owner reserves its right to present further argument and evidence related
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` 3
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`to these prior art references and the content of the Petition and supporting Exhibits
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`later in this proceeding, consistent with the Board’s rules and practices. No waiver
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`is intended by any argument withheld by Patent Owner at this preliminary stage.
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`limit values for the pulse rate corresponding to an appropriate exercise intensity.”
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`Ex. 1003 at abstract. As part of its system for calculating exercise intensity,
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`Amano discloses a system for detecting the stride rate of the user, which Amano
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`refers to as the user’s “pitch.” Id. at 7:24–26 (defining “pitch” as “the number of
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`steps per unit of time.”). At certain specified intervals while the user is running,
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`such as, for example, every 30 seconds, the system disclosed in Amano determines
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`a runner’s speed by multiplying “the test subject’s stride [length] which is stored in
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`RAM 203 with the pitch detected on the immediately preceding step, to calculate
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`the distance run by the test subject per unit of time.” Id. at 12:4-19. The system
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`then uses this calculation to help measure exercise intensity. It does this by
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`multiplying “the distance run by the test subject per unit of time,” i.e., the runner’s
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`speed, by the runner’s “body weight” to obtain what Amano refers to as “[W],
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`which Amano defines as “exercise intensity.” Id. at 12:18-21. The system then
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`converts “[W]” to “kilo-pound[sic]-meters,” per unit of time id. 8:19-20, or
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`“kpm/min.” Id. at 12:20. These measurements, in turn, are fed into a further series
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`of calculations to eventually calculate the “maximum oxygen uptake quantity
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`(VO2max/wt) per unit body” which is “displayed” by the device. Id. at 12:64-66.
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`B. Kato
`Kato is generally directed to “[a] method and apparatus for accurately
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`measuring an amount of exercise taken by a walker in terms of a walking speed,
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`IPR2018-00275 – Patent Owner’s Preliminary Response
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`the distance traveled and the energy consumed.” Ex. 1004 at abstract. In
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`particular, Kato purports to improve upon prior art systems in which elements such
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`as “time,” “speed,” “mileage,” and “consumer calories” are calculated based on the
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`weight of an exerciser and the amount of time the foot of the exerciser is in contact
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`with the ground while moving. Id. at 1:20-34. Kato notes that this “known
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`method has a disadvantage in that it is not possible to determine the number of
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`steps taken in walking or running, because it is designed to detect a time length for
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`which the foot of a runner or jogger is in contact with the ground, so that the
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`speed… may not be accurately calculated.” Id. at 1:34-40. Kato purports to solve
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`this problem by measuring speed by “impacts made by the contacts of a foot of the
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`walker with the ground,” obtaining the “pitch” for the walker in a given period of
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`time, and then calculating “the stride [length] of the walker from said pitch and
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`known height of the walker by processing means according to a predetermined
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`empirical relationship.” Id. at 1:48-58.4
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` Patent Owner res