UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`WAHOO FITNESS LLC.,
`Petitioner,
`v.
`
`BLACKBIRD TECH LLC.,
`Patent Owner.
`_____________
`Case IPR. No. Unassigned
`Patent 6,434,212 B2
`Title: PEDOMETER
`_____________
`
`
`
`
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,434,212 Under
`U.S.C. §§ 311-319 and 37 C.F.R. §§ 42.1-.8, 42.100-.123
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`

`
`
`TABLE OF CONTENTS
`
`
`Page
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`
`II. GROUNDS FOR STANDING ....................................................................... 4
`
`III. MANDATORY NOTICES AND FEES ........................................................ 4
`
`IV.
`
`IDENTIFICATION OF CHALLENGE ......................................................... 6
`A.
`Relied Upon Patents and Publications ................................................. 6
`B.
`Statutory Grounds ................................................................................. 7
`
`V.
`
`BACKGROUND OF THE TECHNOLOGY ................................................. 7
`
`VI. THE ‘212 PATENT ........................................................................................ 8
`A.
`Technology Background ...................................................................... 8
`B.
`Prosecution History and Challenged Claims ...................................... 11
`1.
`Parent Application .................................................................... 11
`2.
`The ‘212 Patent and the Challenged Claims ............................ 12
`
`VII. SUMMARY OF THE PRIOR ART ............................................................. 15
`A. Amano ................................................................................................ 15
`B. Kato .................................................................................................... 19
`
`VIII. CLAIM CONSTRUCTION .......................................................................... 25
`The Phillips Standard Applies ............................................................ 25
`A.
`B.
`Level of Ordinary Skill in the Art ...................................................... 26
`C.
`“A Step Counter” (Claims 2, 5, and 6) ............................................... 27
`
`IX. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE .................................. 28
`A.
`Count 1: Claims 2 and 5 of the ‘212 Patent Are Anticipated By
`Amano ................................................................................................. 28
`1.
`Claim 2 ..................................................................................... 29
`a.
`“An exercise monitoring device comprising” ............... 29
`i
`
`
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`

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`b.
`
`c.
`
`d.
`
`e.
`f.
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`g.
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`c.
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`
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`B.
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`
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`2.
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`“a strap for releasably securing the exercise
`monitoring device to a user” .......................................... 32
`i. Wrist Band Disclosure ......................................... 32
`ii.
`Generic Band and Wearable Object
`Variations ............................................................ 34
`“a step counter joined to the strap” ................................ 35
`i. Wrist Band Variation ........................................... 38
`ii.
`Generic Band and Worn Object Variations ......... 39
`“a heart rate monitor joined to the strap” ...................... 40
`i. Wrist Band Variation ........................................... 40
`ii.
`Generic Band and Worn Object Variations ......... 41
`“a data processor” .......................................................... 43
`“programmed to calculate a distance traveled by
`multiplying a number of steps counted by the step
`counter by a stride length that varies in accordance
`with a stride rate” ........................................................... 43
`“wherein the stride length is determined with
`reference to a plurality of calibrations that each
`calculate a stride length as a function of a known
`stride rate” ...................................................................... 46
`Claim 5 ..................................................................................... 48
`a.
`Limitations Identical to Claim 2 .................................... 48
`b.
`“programmed to calculate a distance traveled by
`multiplying the number of steps counted by the
`step counter by a stride length that varies
`according to the rate at which steps are counted” ......... 48
`“and further programmed to derive the stride
`length from a range of stride lengths calculated
`from a range of corresponding stride rates
`calculated from a plurality of calibration samples” ....... 49
`Count 2: Claims 2 and 5 of the ‘212 Patent Are Obvious Under
`§103 over Amano ................................................................................ 50
`General Motivations to Combine Amano’s Different
`1.
`Variations ................................................................................. 51
`ii
`
`

`

`
`
`C.
`
`2.
`
`“a strap for releasably securing the exercise monitoring
`device to a user” ....................................................................... 52
`“a step counter joined to the strap” .......................................... 53
`3.
`“a heart rate monitor joined to the strap” ................................. 55
`4.
`Count 3: Claim 6 of the ‘212 Patent is Rendered Obvious Under
`§103 Kato in View of Amano ............................................................. 57
`1. Motivations to Combine Kato and Amano ............................... 58
`2.
`Claim 6 ..................................................................................... 59
`a.
`“A pedometer comprising” ............................................ 59
`b.
`“a step counter” .............................................................. 63
`c.
`“a transmitter in communication with the step
`counter to generate a step count signal
`corresponding to each step and transmit the step
`count signal” ...................................................................66
`“a receiver mountable on a user body portion to
`receive the step count signal transmitted from the
`user” ............................................................................... 67
`“a data processor” .......................................................... 70
`“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” ....................................................................... 71
`“and further programmed to derive an actual stride
`length from a range of stride lengths calculated
`from a range of corresponding stride rates” .................. 72
`
`d.
`
`e.
`f.
`
`g.
`
`X.
`
`CONCLUSION ............................................................................................. 74
`
`
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`
`
`iii
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`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`ClearValue, Inc. v. Pearl River Polymers, Inc.,
`668 F.3d 1340 (Fed. Cir. 2012)........................................................................... 32, 39
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015)........................................................................... 32, 40
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011)........................................................................... 52, 59
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005)........................................................................... 25, 26
`
`In re Schreiber,
`128 F.3d 1473 (Fed. Cir. 1997)................................................................................. 29
`
`Statutes
`
`35 U.S.C. §102 ........................................................................................................ passim
`
`35 U.S.C. §103 ............................................................................................... 7, 11, 50, 57
`
`35 U.S.C. §112 ............................................................................................................... 11
`
`35 U.S.C. §154(b) .......................................................................................................... 25
`
`Other Authorities
`
`37 C.F.R. §42.15(a) .......................................................................................................... 6
`
`37 C.F.R. §42.100(b) ...................................................................................................... 25
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`iv
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`Exhibit
`No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
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`1011
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`1012
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`1013
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`1014
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`1015
`
`1016
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`EXHIBIT LIST
`
`
`Description
`
`U.S. Patent No. 6,434,212 (the “‘212 Patent”)
`
`File History for U.S. Patent No. 6,434,212
`
`U.S. Patent No. 6,241,684 to Amano et al. (“Amano”)
`
`U.S. Patent No. 5,033,013 to Kato et al. (“Kato”)
`
`Declaration of Tanzeem Choudhury (“Choudhury Decl.”)
`
`File History for U.S. Patent No. 6,175,608
`
`U.S. Patent No. 6,175,608 (the “‘608 Patent”)
`
`Defendants Fitbit, Inc., Sony Mobile Communications (USA) Inc.,
`TomTom, Inc., Garmin International, Inc., and Garmin USA, Inc.’s
`Proposed Claim Constructions
`
`Plaintiff Blackbird Tech LLC’s Proposed Claim Constructions
`
`Proposed Constructions of Timex Group USA, Inc.
`
`U.S. Patent No. 758,405 to Bartel & Kuhn
`
`U.S. Patent No. 4,367,752 to Jimenez et al.
`
`U.S. Patent No. 4,371,945 to Karr et al.
`
`U.S. Patent No. 5,724,265 to Hutchings
`
`Gunnar B.J. Andersson et al., “Correlations Between Changes in Gait and
`in Clinical Status After Knee Arthroplasty,” Acta Orthopaedica
`Scandinavica (1981)
`
`European Patent Application Publ’n No. 0 330 463 A1
`
`v
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`Exhibit
`No.
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`1017
`
`1018
`
`1019
`
`1020
`
`Description
`
`U.S. Patent No. 3,095,872 to Tolles
`
`U.S. Patent No. 4,807,639 to Shimizu et al.
`
`U.S. Patent No. 5,891,042 to Sham et al.
`
`U.S. Patent No. 5,475,725 to Nakamura
`
`
`
`
`vi
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`

`

`
`
`Petitioner Wahoo Fitness, LLC (“Wahoo”) requests an inter partes review of
`
`Claims 2, 5, and 6 of U.S. Patent No. 6,434,212 (Ex. 1001).
`
`I. INTRODUCTION
`
`The ‘212 Patent describes a pedometer secured to a user that calculates a
`
`distance traveled by the user. Challenged Claims 2, 5, and 6 are composed of basic,
`
`well-known components—such as straps, step counters, heart-rate monitors, data
`
`processors, transmitters, and receivers—that the ‘212 Patent admits existed in the
`
`prior art. A “strap” was a well-known way to secure exercise devices to users, and
`
`the prior art discloses exercise components secured to the user’s body at any
`
`number of locations. Ex. 1001 1:22–24 (strap), 1:24 (leg), 1:53 (same), 1:26
`
`(wrist), 1:45 (same), 1:47–51 (same), 1:41 (foot), 1:53 (waist). Pedometers, step
`
`counters, and heart-rate monitors were all known. Id. 1:19–21 (pedometer), 1:56
`
`(same), 1:40 (step counter), 1:48–50 (same), 1:60 (same), 1:67 (heart-rate
`
`monitor). The use of transmitters and receivers with exercise devices was similarly
`
`known. Id. 1:27–28.
`
`The examiner allowed the ‘212 Patent not because of any novelty in its
`
`components, but because “[n]one of the references of record t[aught] an exercise
`
`monitoring device comprising the data processing limitations included in the
`
`
`
`1
`
`

`

`
`
`[issued] claims.”1 Ex. 1002 68 (emphasis added). Those data-processing limitations
`
`are directed to calculating and using a stride length that varies as a function of a
`
`user’s stride rate. Claim 2, for example, contains the following data-processing
`
`limitations:
`
`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 in accordance with a stride rate,
`wherein the stride length is determined with reference to a
`plurality of calibrations that each calculate a stride length as a
`function of a known stride rate.
`
`Ex. 1001 7:3–15.
`
`
`
`Prior art that was not of record, however, teaches all of the data-processing
`
`limitations. For example, U.S. Patent No. 6,241,684 (“Amano”)—which was never
`
`cited during prosecution of the ‘212 Patent or its parent—teaches the data
`
`processing recited in the challenged claims. Amano recognizes that stride length
`
`varies according to the stride rate (which Amano refers to as “pitch,” or “the
`
`
`1 The examiner rejected an independent claim that did not contain processing
`
`limitations. Id. 42. The applicant responded by cancelling the independent claim
`
`and incorporating its limitations into the dependent claims. Id. 47–48, 50.
`
`
`
`2
`
`

`

`
`
`number of steps per unit time,”2 Ex. 1003 7:24–26) and explicitly discloses a
`
`device into which a user can input measurements to calibrate his or her relationship
`
`between stride rate and stride length. Id. 16:19–26 (discussing that stride length
`
`varies with pitch), 16:59–65 (discussing a user inputting stride lengths at certain
`
`stride rates). The device’s processor then plots those data points “and interpolates
`
`between these plots to obtain the characteristics such as shown by the dashed line
`
`in FIG. 9.” Id. 16:66–17:4.
`
`
`
`“This is then rendered into a table and stored” in memory. Id. 17:3–4. Thereafter,
`
`this “stride correction coefficient”
`
`is used
`
`to determine a stride
`
`length
`
`corresponding to a measured stride rate (id. 16:31–37) and to determine the
`
`distance traveled by a user (id. at 12:15–18).
`
`
`2 Kato, another prior art reference relied upon this petition, also uses the term
`
`“pitch” to describe the number of steps taken per unit of time. Ex. 1004, Abstract.
`
`
`
`3
`
`

`

`
`
`Accordingly, Claims 2, 5, and 6 are anticipated and rendered obvious by the
`
`prior art. These claims merely encompass known and obvious exercise-monitoring
`
`devices, making known and obvious measurements using those devices, and
`
`processing the data from those measurements in a known and obvious way. The
`
`Board should cancel these unpatentable claims.
`
`II.
`
`GROUNDS FOR STANDING
`
`Petitioner certifies that the ‘212 Patent is available for inter partes review.
`
`Petitioner further certifies that it is not barred or estopped from requesting this
`
`inter partes review on the grounds identified herein.
`
`III. MANDATORY NOTICES AND FEES
`
`REAL PARTY IN INTEREST: The real party in interest is Wahoo
`
`Fitness, LLC. (“Wahoo”).
`
`RELATED MATTERS: The ‘212 Patent is the subject of the following
`
`civil actions:
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. Sony Corp., No. 1:16-
`
`cv-00685 (D. Del. filed Aug. 9, 2016);
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. Timex Grp. USA, Inc.,
`
`No. 1:16-cv-00686 (D. Del. filed Aug. 9, 2016);
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. TomTom, Inc., No.
`
`1:16-cv-00687 (D. Del. filed Aug. 9, 2016);
`
`
`
`4
`
`

`

`
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. Wahoo Fitness, LLC,
`
`No. 1:16-cv-00688 (D. Del. filed Aug. 9, 2016);
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. Garmin Ltd., No. 1:16-
`
`cv-00689 (D. Del. filed Aug. 9, 2016);
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. Fitbit, Inc., No. 1:16-
`
`cv-00683 (D. Del. filed Aug. 8, 2016);
`
`・ Blackbird Tech LLC d/b/a Blackbird Techs. v. AliphCom d/b/a
`
`Jawbone, No. 1:16-cv-00684 (D. Del. filed Aug. 8, 2016).
`
`The ‘212 Patent claims the benefit of U.S. Patent No. 6,175,608. U.S. Patent
`
`No. 6,473,483, now expired, claims the benefit of the ‘212 Patent.
`
`The ‘212 Patent was the subject of a petition for inter partes review filed by
`
`Garmin International, Inc., No. IPR2017-01058. At the time this Petition was filed,
`
`the Garmin Petition was granted, but the underlying IPR was then settled and
`
`terminated. The prior art relied upon in this petition is different from the prior art
`
`asserted in Garmin’s petition. The ‘212 Patent is also the subject of two petitions
`
`for inter partes review filed by TomTom International, B.V., Nos. IPR2017-02015
`
`and -02017. At the time this Petition was filed, no decision had been issued for or
`
`against institution of these requested inter partes reviews. Of course, the ‘212
`
`Patent is also the subject of the inter partes review filed by Fitbit, No. IPR2017-
`
`02012.
`
`
`
`5
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`

`

`
`
`LEAD AND BACKUP COUNSEL:
`
`Lead Counsel
`Matthew L. Cutler
`HARNESS, DICKEY & PIERCE PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`
`Backup Counsel
`Douglas A. Robinson
`HARNESS, DICKEY & PIERCE PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`
`
`
`Phone: 314-726-7500
`Fax: 314-726-7501
`mcutler@hdp.com
`USPTO Reg. No. 43,574
`
`
`Phone: 314-726-7500
`Fax: 314-726-7501
`drobinson@hdp.com
`USPTO Reg. No. 59,703
`
`
`
`Please direct all correspondence to lead counsel at the above address.
`
`Petitioner consents to email service at mcutler@hdp.com and drobinson@hdp.com.
`
`FEES: The Director is authorized to charge the fee specified by 37 C.F.R.
`
`§ 42.15(a), and any other required fees, to Deposit Account No. 08-0750.
`
`IV.
`IDENTIFICATION OF CHALLENGE
`A. Relied Upon Patents and Publications
`
`Exhibit 1003—U.S. Patent No. 6,241,684 to Amano et al. (“Amano”) is
`
`prior art under at least pre-AIA §102(e). See infra Section VII.A.
`
`Exhibit 1004—U.S. Patent No. 5,033,013 to Kato et al. (“Kato”) is prior art
`
`under at least pre-AIA §102(a), (b), and (e). See infra Section VII.B.
`
`
`
`
`
`
`
`6
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`

`

`
`
`B.
`
`Ground
`No.
`1
`2
`3
`
`
`
`V.
`
`Statutory Grounds
`
`References
`
`Statutory Basis
`
`Amano (Ex. 1003)
`Amano (Ex. 1003)
`Kato (Ex. 1004) in view
`of Amano (Ex. 1003)
`
`Anticipation (§102)
`Obviousness (§103)
`Obviousness (§103)
`
`Claims
`Challenged
`2, 5
`2, 5
`6
`
`BACKGROUND OF THE TECHNOLOGY
`
`Various exercise-monitoring devices mountable on users’ bodies have
`
`existed in the art of exercise science for over a century. Ex. 1005, ¶50. Since at
`
`least the early 1980s exercise-monitoring devices were attached to the user’s body
`
`by a strap. Id. By 1998, pedometers, step counters, and heart-rate monitors were all
`
`well-known in the art (and had been for some time), along with data processors. Id.
`
`One major limitation of early exercise-monitoring devices was non-existent
`
`or extremely limited computing power. Id., ¶51. As the computing power usable
`
`with wearable devices increased, particularly in the 1990s, POSITAs had
`
`increasing success in developing more complicated exercise-monitoring programs.
`
`Id. These programs could, for example, rely less on pre-programmed parameters
`
`and functions that had been developed using test subjects, and instead rely more on
`
`more accurate parameters and functions developed based on data received from the
`
`user actually wearing the device. Id.
`
`POSITAs had recognized for some time that, (1) as a user’s stride rate
`
`changes, his or her stride length also changes, and (2) this change can affect
`7
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`
`
`

`

`
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`distance calculations made by exercise monitoring devices. Id., ¶52. POSITAs also
`
`had recognized various solutions to this problem, including (1) predetermining a
`
`relationship between stride length and stride rate based on test subject data (as
`
`described, for example, in Kato), and (2) determining said relationship based on
`
`data obtained from the user (as described, for example, in Amano). Id. Amano’s
`
`solution to this particular problem is just one example of the types of solutions
`
`being adopted by POSITAs as the result of the increased computing power
`
`available for wearable exercise monitoring devices. Id.
`
`VI.
`THE ‘212 PATENT
`A. Technology Background
`
`The application for the ‘212 Patent was filed as a continuation of U.S. Patent
`
`No. 6,175,608 (the “’608 Patent”), the application for which was filed on October
`
`28, 1998. Ex. 1001. Petitioner is not aware of any claim by the Patent Owner that
`
`the ‘212 Patent is entitled to a priority date earlier than October 28, 1998, or that
`
`there is objective evidence of nonobviousness for the ‘212 Patent.
`
`The ‘212 Patent is directed to a pedometer that has “improved accuracy by
`
`calculating actual stride lengths of a user based on relative stride rates.” Id.,
`
`Abstract. The ‘212 Patent contains one figure (Figure 1):
`
`
`
`8
`
`

`

`
`
`The ‘212 Patent describes a “pedometer 20 including: a waist, chest, or leg
`
`mounted stride counter 24, and a wrist or waist mounted display unit 26[,]” along
`
`with “[a]n optional chest-mounted heart monitor 28” and “a data processor 30[.]”
`
`
`
`Id. 2:66–3:6.
`
`“The step counter 24 is an inertia device that counts the number of steps a
`
`user takes,” which is “transmitted to a data archive 32 either directly or via a
`
`transmitter 34.” Id. 3:7–10. “The transmitter 34 is mounted in the step counter
`
`housing,” and “transmits either raw data or calculated distances, pace, etc. to a
`
`wrist-mounted display unit receiver 40.” Id. 3:12; 3:21–23. “The receiver 40 relays
`
`a raw data signal to the data display processor 30 or a calculated data signal
`
`directly to the display panel 42, such as an LCD or LED.” Id. 3:23–25.
`
`
`
`9
`
`

`

`
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`The “data processor 30 ... is mounted in the same housing as either the step
`
`counter 24 or the display unit 26.” Id. 3:4–6. It “includes a data archive 32 to store
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`historic data on stride length and pace to be used in an algorithm for calculating
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`actual distances, speed, and rate for real-time conversion of data to useful
`
`information to the user.” Id. 3:39–43.
`
`“One option for using the pedometer 20, requires the user to operate a
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`‘sampling mode’ and begin walking or running a predetermined distance....” Id.
`
`3:56–59. “Upon completion of the distance ... [t]he data processor 30 is
`
`programmed to then divide the distance by the number of strides counted to
`
`calculate an average stride length[,] which is “stored in the data archive 32 as the
`
`‘Base Stride Length.’” Id. 3:59–64. “Also, the data processor 30 is programmed to
`
`divide the number of strides by the time of the run or walk as measured by the
`
`clock 48 to arrive at a ‘Base Stride Rate.’” Id. 3:65–67.
`
`To account for different stride rates and lengths, “the user activates a ‘Use
`
`Mode’ in which the data processor 30 calculates an Actual Stride Rate based on
`
`data from the stride counter 24 and the clock 48.” Id. 4:30–33. “The percentage
`
`change between the Actual Stride Rate and the Base Stride Rate is then computed
`
`by the data processor 30 to determine the Actual Stride Length.” Id. 4:35–38. The
`
`user can record “separate run or walk samples” at “different paces” to assist in
`
`
`
`10
`
`

`

`
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`“calculating actual stride length” during later exercise periods. Id. 4:62–64; see
`
`also Id. 4:64–6:23.
`
`“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. 6:33–38.
`
`B. Prosecution History and Challenged Claims
`1. Parent Application
`
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`The parent application for the ‘212 Patent (which issued as the ’608 Patent)
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`was filed on October 28, 1998 with 45 claims. Ex. 1006 6, 21–28. The examiner
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`rejected all claims as indefinite under §112, ¶2, rejected eight claims under §102 as
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`anticipated, and rejected two claims under §103 as obvious. Id. 64–69.
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`The applicant responded, cancelling most of the claims rejected by the
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`examiner under §§102 and 103 and amended the remaining claims. See Id. 80–86.
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`Thereafter, the applicant held interviews with the examiner on June 12 and 15,
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`2000 and submitted amendments and remarks on June 19, 2000. Id. 102–, 106. The
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`applicant argued that “claims reciting a specific algorithm for deriving a range of
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`stride lengths or a pedometer in combination with a heart rate monitor are
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`allowable.” Id. 104–05. The applicant further argued that “the use of data input
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`from runs or walks over known distances to establish a range of stride rate versus
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`stride length data that can be used in subsequent runs or walks to derive actual
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`stride lengths from actual stride lengths” distinguished the alleged invention from
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`the prior art, including Kato. Id. 104–05. The examiner thereafter issued a notice of
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`allowability. Id. 125.
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`2. The ‘212 Patent and the Challenged Claims
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`The application for the ‘212 Patent was filed on January 4, 2001, with nine
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`draft claims. Ex. 1002, 5 (filing date), 18–19 (original draft claims). The applicant
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`did not file any IDSs with the application. Id. 1–41. On November 13, 2001, the
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`examiner rejected draft claim 1 and allowed the remaining claims.3 Id. at 40–45.
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`Six days later, the applicant submitted an IDS disclosing nearly 70 prior art
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`references, including Kato. Id. 48–52. The applicant then submitted an amendment
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`and remarks on February 13, 2002, cancelling draft claim 1 and incorporated its
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`limitations into the otherwise allowable dependent claims. Id. 59– 66. The
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`examiner thereafter issued a notice of allowance on March 16, 2002, allowing the
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`remaining claims because “[n]one of the references of record teach an exercise
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`monitoring device comprising the data processing limitations included in the
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`3 The examiner indicated that the draft claims dependent on draft claim 1 would be
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`allowable if rewritten in independent form. Id.
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`[issued] claims.” Id. 67–70. This Petition challenges three of the issued claims—
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`Claims 2, 5, and 6:
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`2. An exercise monitoring device comprising:
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`a strap for releasably securing the exercise monitoring device
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`to a user;
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`a step counter joined to the strap;
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`a heart rate monitor joined to the strap; and
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`a data processor programmed to calculate a distance traveled
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`by multiplying a number of steps counted by the step
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`counter by a stride length that varies in accordance with a
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`stride rate, wherein the stride length is determined with
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`reference to a plurality of calibrations that each calculate a
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`stride length as a function of a known stride rate.
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`5. An exercise monitoring device comprising:
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`a strap for releasably securing the exercise monitoring device
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`to a user;
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`a step counter joined to the strap;
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`a heart rate monitor joined to the strap; and
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`a data processor programmed to calculate a distance traveled
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`by multiplying the number of steps counted by the step
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`counter by a stride length that varies according to the rate at
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`which steps are counted, and further programmed to derive
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`the stride length from a range of stride lengths calculated
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`from a range of corresponding stride rates calculated from a
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`plurality of calibration samples.
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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
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`generate a step count signal corresponding to each step and
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`transmit the step count signal;
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`a receiver mountable on a user body portion to receive the step
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`count signal transmitted from the transmitter; and
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`a data processor programmed to calculate a distance traveled
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`by multiplying a number of steps counted by a stride length
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`that varies according to a rate at which steps are taken, and
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`further programmed to derive an actual stride length from a
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`range of stride lengths calculated from a range of
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`corresponding stride rates.
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`VII.
`SUMMARY OF THE PRIOR ART
`A. Amano
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`Amano discloses an “exercise workout support device,” that is “capable of
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`determining the maximum oxygen uptake quality....” Ex. 1003, Title, Abstract. To
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`calculate the maximum oxygen uptake quality, Amano teaches using the devices,
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`measurements, and calculations referenced in the challenged claims, including:
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`(1) a “body motion detector” (i.e., a “step counter”) that measures the steps
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`taken by a user during a period of time, Id. 11:14–61;
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`(2) a “pulse detector” (i.e., a “heart rate monitor”) that measures a user’s
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`heart beats during a period of time, Id. 10:43–52; and
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`(3) a “CPU” (i.e., a “data processor”) that:
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`(a) calculates the user’s “pitch” (i.e., “stride rate”), Id. 10:63–65;
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`(b) calculates the user’s “stride” (i.e., “stride length”) from the
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`previously calculated stride rate based on a previously
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`determined relationship between the user’s “pitches” (i.e.,
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`“stride rates”) and “strides” (i.e., “stride lengths”), Id. 12:15–
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`18, 16:30–17:20; and
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`(c) uses that stride length to calculate a “distance run by the test
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`subject per unit time,” (i.e., a “distance”), Id. 12:15–17.4
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`Figure 2, shows the electrical structure of the Amano device.
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`In one embodiment, Amano discloses a “device main body 500” for the
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`exercise workout support device that houses a CPU 201, the body motion detector
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`104, the sensor interface 204, and other “elements not visible in the outer
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`appearance of the device[.]” Id. 9:54–56. Figure 5 illustrates this embodiment:
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`4 These calculations are then used to “obtain exercise intensity,” which, together
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`with the “detected heart beat rate,” is used to “estimate maximum oxygen uptake
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`quantity....” See, Id. 12:17–49. Put differently, Amano does more than the
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`challenged claims require and in that process performs all of the steps recited in the
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`challenged claims.
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`Id., Fig. 5. There is “[a] wrist band 502 ... attached to device main body 500.” Id.
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`8:66. Pulse wave detector 101 is attached to “the test subject[’s] index finger[,]”
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`and is fixed in place “by band 520.” Id. 9:43–48. Pulse wave detector 101 is
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`“provided to the tip of cable 501.” Id. 8:64–65. “Connector piece 504, which is
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`provided at the end of cable 501, is attached to connector 503....” Id. 9:5–7.
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`“[C]onnector 503 is provided to the surface of the main device body 500....” Id.
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`9:4–5.
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`Amano discloses that the arrangement of the device and its various
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`components is subject to modification, and is not limited to the form of a wrist-
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`based device. Id. 40:18–25. The user’s pulse wave can be measured at locations
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`other than the finger, including “any site ... provided the pulse wave can be
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`measured there.” Id. 49:14–16. Further, “the acceleration sensor employed as body
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`motion sensor 302 is not limited to the arm, but may be attached anywhere on the
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`body of the runner....” Id. 42:5–9.
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`Amano recognizes that stride length for a particular user can vary as a
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`function of the “pitch”, which Amano defines as “the number of steps per unit
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`time.” Id. 16:19–26, 7:24–26. Accordingly, Amano discloses calculating in
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`advance and storing “a table showing the relationship between pitch and the stride
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`correction coefficient[.]” Id. 16:30–32. This table is generated based on
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`information provided by the user. The user “measures stride with respect to
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`standard pitch after increasing the pitch in stages ... and determines what
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`proportion the measured stride is with respect to the standard stride.” Id. 16:59–63.
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`The user then “input[s] this proportion and the proportion with respect to the
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`standard pitch into the device main body 500.” Id. 16:63–65. The CPU then “plots
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`the input pitch proportion and stride proportion, and interpolates between these
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`plots to obtain the characteristics as shown by the dashed line in FIG. 9.”
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`e
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`As a result, “[w]hen the test subject is running, ... CPU 201 first determines what
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`proportion the pitch detected ... is with respect to the standard pitch, and second,
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`reads out the stride correction coefficient corresponding to this proportion from the
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`aforementioned table.” Id. 17:5–10. “CPU 201 [then] multiplies the standard stride
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`read out from RAM 203 by the aforementioned coefficient, to correct the stride so
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`as to match the pitch of running.” Id. 17:10–13.
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`The Amano application was filed on February 2, 1998. See Ex. 1003. Amano
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`is prior art under at least §102(e) because its underlying application was filed
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`nearly nine months before the ‘212 Patent’s earliest priority date (October 28,
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`1998). Amano was not cited or otherwise considered during the prosecution of the
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`‘212 Patent. Ex. 1001 (References Cited).
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`B. Kato
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`Kato teaches “[a] method