`U.S. Patent No. 6,434,212
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`FITBIT, INC.
`Petitioner
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`v.
`BLACKBIRD TECH LLC
`Patent Owner
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`––––––––––
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`Case IPR2017-02012
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`––––––––––
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`DECLARATION OF DR. TANZEEM CHOUDHURY IN SUPPORT OF
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,434,212
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`TABLE OF CONTENTS
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`Introduction and Professional Background ..................................................... 1
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`A.
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`B.
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`C.
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`Educational Background ....................................................................... 1
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`Career History ....................................................................................... 2
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`Publications and Patents ........................................................................ 3
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`II. Materials and Other Information Considered .................................................. 4
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`III. Understanding of the Law ............................................................................... 4
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`A.
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`Prior Art ................................................................................................. 4
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`B. Date of Invention and Priority Date ...................................................... 6
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`C.
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`Claim Construction ............................................................................... 6
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`1. The “Broadest Reasonable Interpretation” Standard ....................... 8
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`2. The Phillips Standard ....................................................................... 9
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`D.
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`Patentability of Claims ........................................................................ 10
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`1. Anticipation .................................................................................... 10
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`2. Obviousness ................................................................................... 12
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`IV. Level of Skill of One of Ordinary Skill in the Art ........................................ 17
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`V.
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`Technology Background ................................................................................ 19
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`VI. The ’212 Patent .............................................................................................. 21
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`A.
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`B.
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`Summary of the ’212 Patent. ............................................................... 21
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`Prosecution History ............................................................................. 24
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`1. Parent Application (the ’608 Patent) .............................................. 24
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`2. The ’212 Patent .............................................................................. 25
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`C.
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`Challenged Claims .............................................................................. 26
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`VII. Claim Construction ........................................................................................ 28
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`VIII. Analysis of the Asserted Prior Art ................................................................. 30
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`A.
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`B.
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`Amano .................................................................................................. 31
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`Kato ..................................................................................................... 35
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`IX. Amano Anticipates Claims 2 and 5 of the ’212 Patent .................................. 39
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`A.
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`Claim 2 ................................................................................................ 39
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`1. “An exercise monitoring device comprising” ................................ 39
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`2. “a strap for releasably securing the exercise monitoring
`device to a user” ............................................................................. 42
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`a. Wrist Band Disclosure ............................................................ 42
`b. Generic Band and Wearable Object Variations ..................... 43
`3. “a step counter joined to the strap” ................................................ 44
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`a. Wrist Band Variation .............................................................. 47
`b. Generic Band and Worn Object Variations............................ 49
`4. “a heart rate monitor joined to the strap” ....................................... 49
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`a. Wrist Band Variation .............................................................. 50
`b. Generic Band and Worn Object Variations............................ 51
`5. “a data processor” .......................................................................... 53
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`6. “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” ....................... 54
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`7. “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” .................................................. 56
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`B.
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`Claim 5 ................................................................................................ 58
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`1. Limitations Identical to Claim 2 .................................................... 58
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`Petition for Inter Partes Review of
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`2. “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” ......................................................................................... 58
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`3. “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” ....................................................................... 59
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`X.
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`Amano Renders Obvious Claims 2 and 5 of the ’212 Patent ........................ 60
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`A. General Motivations to Combine Amano’s Different Variations ....... 61
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`B.
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`C.
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`D.
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`“a strap for releasably securing the exercise monitoring device
`to a user” .............................................................................................. 62
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`“a step counter joined to the strap” ..................................................... 64
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`“a heart rate monitor joined to the strap” ............................................ 66
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`XI. Kato in View of Amano Renders Obvious Claim 6 of the ’212 Patent ......... 68
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`A. Motivations to Combine Kato and Amano .......................................... 68
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`B.
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`Claim 6 ................................................................................................ 69
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`1. “A pedometer comprising” ............................................................ 69
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`2. “a step counter” .............................................................................. 74
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`3. “a transmitter in communication with the step counter to
`generate a step count signal corresponding to each step and
`transmit the step count signal” ....................................................... 76
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`4. “a receiver mountable on a user body portion to receive the
`step count signal transmitted from the user” .................................. 77
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`5. “a data processor” .......................................................................... 80
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`6. “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” ................................. 81
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`7. “and further programmed to derive an actual stride length
`from a range of stride lengths calculated from a range of
`corresponding stride rates” ............................................................. 83
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`XII. Conclusion ..................................................................................................... 85
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`I.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`I, Tanzeem Choudhury, declare as follows:
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`INTRODUCTION AND PROFESSIONAL BACKGROUND
`1. My name is Tanzeem Choudhury, Ph.D. I have been retained by
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`Petitioner Fitbit, Inc. (“Petitioner”) to provide my expert opinions regarding U.S.
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`Patent No. 6,434,212 (“the ’212 Patent”) in connection with Petitioner’s petition
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`for inter partes review of the ’212 Patent.
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`2.
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`I am being compensated for my work in this matter at my standard
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`hourly rate of $600 for consulting services. My compensation in no way depends
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`on the outcome of this proceeding.
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`3.
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`I describe below my professional background,
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`including my
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`educational background, career history, publications and patents, and other
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`relevant qualifications.
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` My full curriculum vitae (“CV”) is attached as
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`Appendix A to this declaration.
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`A. Educational Background
`4.
`I received my Ph.D
`in Media Arts and Sciences from
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`the
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`Massachusetts Institute of Technology (MIT) in February 2004. I previously
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`received a Master of Science in Media Arts and Science from MIT in September
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`1999, and received a Bachelor of Science in Electrical Engineering from the
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`University of Rochester in May 1997.
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`5.
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`I worked on facial feature tracking and video compression for my
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`senior thesis as an undergraduate degree. My master’s thesis was on face and facial
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`expression recognition. My doctor thesis was on a developing wearable device (the
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`sociometer) to track human behavior and social networks in the physical world.
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`This work gave rise to the area of Reality Mining and my thesis work was
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`recognized by MIT Technology Review’s 2008 TR 35 award that select 35 top
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`innovators under the age of 35.
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`B. Career History
`6.
`Since July 2011, I have been an Associate Professor for the
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`Department of Information Science at Cornell University (“Cornell”) in Ithaca,
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`New York. I direct the People Aware Computing group at Cornell, which
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`develops wearable and mobile sensing systems for understanding life patterns of
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`individuals, groups, and societies and to support individuals with physical and
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`mental illness and shaping the future of technology-assisted wellbeing. As an
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`Associate Professor, I teach and oversee both graduate and undergraduate students.
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`I have taught various courses in both computer and information science, including
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`courses on programming, ubiquitous computing and wearable devices.
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`7.
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`In May 2014, I co-founded Health Rhythms Inc. (“HealthRhythms”),
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`and am currently the company’s Chief Executive Officer. The company is
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`transforming healthcare by providing real-time mental health monitoring as a
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`service. HealthRhythms develops and licenses a smartphone-based behavioral
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`health sensing and trending engine to create a truly personalized assessment of
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`individuals’ health in real time.
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`8.
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`Prior to joining Cornell, I was an Assistant Professor for the
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`Department of Computer Science at Dartmouth College. I held that position from
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`April 2008 through June 2011. From September 2003 through January 2008, I was
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`a Member of Research Staff at Intel in Seattle, Washington, where I led the effort
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`on human activity recognition using wearable sensors. The foundational work
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`inspired a lot of the following work in activity recognition. In 2016, I received a
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`Ubiquitous Computing 10 year impact award for my work in activity monitoring.
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`After receiving my undergraduate degree from University of Rochester, I served as
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`a Research Assistant at MIT Media Laboratory from September 1997 through
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`August 2003, where I developed wearable devices for tracking human behavior
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`and machine sensing and machine learning techniques for modeling a range of
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`behaviors in real-world settings. I also worked as a summer intern for Compaq
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`Computer Corporation from June 1999 through August 1999 and at AT&T Bell
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`Lab in the summer of 1996.
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`C.
`9.
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`Publications and Patents
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`I have authored or co-authored approximately 90 publications over the
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`course of my career, including journal and magazine papers and workshop papers
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`and abstracts. I have also given numerous talks related to my research and
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`participated in a number of panels and symposiums. I am also named as an
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`inventor on several issued patents and patent publications, including patents issued
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`by the United States Patent and Trademark Office (“USPTO”).
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`II. MATERIALS AND OTHER INFORMATION CONSIDERED
`10. Sources that I specifically used in the course of writing this
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`declaration and forming the opinions stated herein are listed in the attached
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`Appendix B (Appendix of Exhibits).
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`III. UNDERSTANDING OF THE LAW
`11.
`I am not an attorney and will offer no opinions about the law. I have
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`been provided by counsel with an understanding of legal principles concerning
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`U.S. patent law, including claim construction, anticipation, and obviousness. I
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`have applied these legal principles in forming my opinions.
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`A.
`12.
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`Prior Art
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`It is my understanding that there are several different types of prior
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`art. It is also my understanding that, in a petition for inter partes review, a
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`petitioner may assert only patents or printed publications. I understand a claim can
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`be found unpatentable only if a patent or printed publication qualifies as prior art
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`Petition for Inter Partes Review of
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`under 35 U.S.C § 102.1
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`13.
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`I understand that a patent or printed publication can be prior art under
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`one or more of the following circumstances:
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`(cid:120)
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`The reference is a patent that publicly issued or a printed
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`publication that was publicly available before the date the
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`applicant allegedly invented the subject matter claimed in the
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`challenged patent. 35 U.S.C. § 102(a).
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`(cid:120)
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`The reference is a patent that publicly issued or a printed
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`publication that was publicly available more than one year
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`before the date the applicant allegedly invented the subject
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`matter claimed in the challenged patent. 35 U.S.C. § 102(b).
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`(cid:120)
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`The reference is a patent that issued from an application filed
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`in the United States by another more than one year before the
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`1 I have been informed that there are what is known as “pre-AIA” and “post-AIA”
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`versions of 35 U.S.C. § 102, which refers to the America Invents Act (“AIA”). I
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`have also been informed that, because the ’212 Patent was filed before the
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`effective date of the AIA, the pre-AIA version of 35 U.S.C. § 102 applies here.
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`date the applicant allegedly invented the subject matter claimed
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`in the challenged patent. 35 U.S.C. § 102(e)(2).
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`14.
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`I understand that patents and publications that qualify as prior art can
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`be used in an inter partes review proceeding to cancel claims of a challenged
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`patent as unpatentable.
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`B. Date of Invention and Priority Date
`15.
`I understand that patents are entitled to a “priority date,” which is the
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`date on which the applicant allegedly invented the claimed subject matter. I
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`understand that a patent is entitled a “constructive” priority date, which is the date
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`on which the (1) application for the patent was filed or (2) the date on which an
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`earlier-filed patent application was filed if the applicant properly claimed the
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`benefit of priority to that earlier-filed patent application. I also understand that a
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`patent applicant is permitted to claim an earlier “actual” priority date based on
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`conception and diligent reduction to practice.
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`C. Claim Construction
`16.
`I understanding that a patent may include independent claims and
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`dependent claims. It is my understanding that an independent claim stands alone
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`and includes only the elements that it recites. It is my further understanding that a
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`dependent claim can depend from an independent claim or another dependent
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`claim, and includes all limitations that it recites in addition to all of the limitations
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`recited in the claim (or claims) from which it depends.
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`17.
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`I understand that a term in the preamble of a claim may be construed
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`as a claim limitation if the term gives life and meaning to the claim. I further
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`understand that a term in a preamble may be construed as a claim limitation if, in
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`light of the specification, construing the term as a limitation is required to limit the
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`scope of the claim to what the inventors allegedly invented. As with terms in the
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`claim body, however, I understand that, when an applicant defines a structurally
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`complete invention in the claim body and uses the preamble only to state the
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`intended result or use of the invention, the preamble is not a claim limitation. I
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`further understand that the preamble may limit the claim if the applicant relied on
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`language in the preamble to overcome a rejection during prosecution.
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`18.
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`It is my understanding that, as a general matter, limitations from the
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`specification should not be imported into the claims. It is my understanding,
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`however, that a claim term may be given a meaning inconsistent with the ordinary
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`and customary meaning of the term only if the applicant (1) acts as his or her own
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`lexicographer, or (2) disavows or disclaims the full scope of the claim term in the
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`specification or the prosecution history.
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`19.
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`It is my understanding that an applicant acts as his or her own
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`lexicographer by (1) clearly setting forth in the specification a definition for a
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`claim term that is different from its ordinary and customary meaning and
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`(2) clearly expressing an intent to redefine the term. It is my understanding that an
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`applicant’s disavowal or disclaimer of the full scope of a claim term must be clear
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`and unmistakable.
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`20.
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`I have been informed that the Patent Trial and Appeal Board
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`(“PTAB”) utilizes two different claim constructions standards, depending on the
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`expiration date of the challenged patents. It is my understanding that, in analyzing
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`unexpired patents, the PTAB applies what is known as the “broadest reasonable
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`interpretation” standard. It is my further understanding that, in analyzing expired
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`patents, the PTAB applies what is known as the Phillips standard, which is the
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`standard used in district court litigation. It is my understanding that the broadest
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`reasonable interpretation of a claim term may be the same or broader than the
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`construction of a term under the Phillips standard, but it cannot be narrower.
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`21.
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`I have been informed by counsel that the ’212 Patent has not yet
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`expired, but that it will likely expire before a final determination is issued in these
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`proceedings. Accordingly, I have been informed by counsel that the PTAB may
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`apply either the “broadest reasonable interpretation” standard or the Phillips
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`standard.
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`1.
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`The “Broadest Reasonable Interpretation” Standard
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`22. Under the “broadest reasonable interpretation” standard, it is my
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`understanding that claims are given their broadest reasonable interpretation from
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`the perspective of one of ordinary skill in the art. I understand that the broadest
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`reasonable interpretation does not mean the broadest possible interpretation.
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`23.
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`I further understand that the meaning given to a claim term must
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`generally be consistent with the ordinary and customary meaning of the term, and
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`must be consistent with the use of the claim term in the specification and drawings.
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`Further, it is my understanding that the broadest reasonable interpretation of the
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`claims must be consistent with the interpretation that those skilled in the art would
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`reach. Therefore, it is my understanding that the focus of the inquiry regarding the
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`meaning of a claim should focus on what would be reasonable from the perspective
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`of one of ordinary skill in the art.
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`2.
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`The Phillips Standard
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`24. Under the Phillips standard, it is my understanding that claim terms
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`are given the meaning they would have had to a person of ordinary skill in the art
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`at the time of the alleged invention, in view of the specification and file history. In
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`applying the Phillips standard, it is my understanding that one should look at
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`(1) the words of the claims themselves, (2) the remainder of the specification,
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`(3) the prosecution history, and (4) extrinsic evidence concerning relevant
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`scientific principles, the meaning of technical terms, and the state of the art. I
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`further understand that each of these sources of meaning should be afforded a
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`decreasing amount of weight in the order listed, with extrinsic evidence being
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`afforded the least amount of weight.
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`D.
`25.
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`Patentability of Claims
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`I understand that a claims may be cancelled as unpatentable in inter
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`partes review proceedings only if the is anticipated (35 U.S.C. § 102) or obvious
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`(35 U.S.C. § 103).
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`1.
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`Anticipation
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`26.
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`I understand that, once the claims of a patent have been properly
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`construed, the properly construed claim language must be compared to the prior art
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`on a limitation-by-limitation basis.
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`27.
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`I understand that a prior art reference “anticipates” a challenged claim
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`if all elements of the claim are disclosed in a single embodiment of that prior art
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`reference, either explicitly or inherently, such that it enables a person of ordinary
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`skill in the art to make the alleged invention without undue experimentation. I
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`understand that a claim element is inherently disclosed if a person of ordinary skill
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`in the art would recognize that the missing limitation is necessarily or implicitly
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`present in the prior art reference.
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`28.
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`It is my understanding that a broader genus anticipates a narrower
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`species in certain circumstances. For example, it is my understanding that a
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`broader genus anticipates a narrower species if there is nothing critical about the
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`narrower species or if there is not a considerable difference between the narrower
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`species and the broader genus.
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`29.
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`It is also my understanding that, even if a prior art reference does not
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`expressly spell out all the limitations arranged or combined as in a claim, that prior
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`art reference still anticipates if a person of ordinary skill in the art reading the prior
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`art reference would at once envisage the claimed arrangement or combination.
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`30.
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`I understand that, although anticipation cannot be established through
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`a combination of
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`references or embodiments, additional
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`references or
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`embodiments may be used to interpret an allegedly reference by, for example,
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`indicating what the anticipating reference would have meant to a person of
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`ordinary skill in the art at the time of the alleged invention. For a patent claim to
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`be anticipated, it is my understanding that the other references must make clear
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`that the missing descriptive matter in the claim is necessarily or implicitly present
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`in the allegedly anticipating reference. I also understand that a person of ordinary
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`skill in the art may recognize the inherent features disclosed by an anticipating
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`reference even if the prior art does not recognize the disclosure of said inherent
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`features.
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`31.
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`It is my understanding that, in inter partes review proceedings,
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`anticipation must be shown by a preponderance of the evidence.
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`2.
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`Obviousness
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`32.
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`It is my understanding that, even if a claim is not anticipated by the
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`prior art, it is still unpatentable if the differences between the claimed subject
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`matter and the prior art are such that the subject matter as a whole would have been
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`obvious to a person of ordinary skill in the art at the time of the alleged invention.
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`It is my understanding that a reference need not be enabling to render a patent
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`claim unpatentable as obvious. It is my further understanding that the obviousness
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`analysis requires a comparison of the properly construed claim language to the
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`prior art on an element-by-element basis.
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`33.
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`I understand that a person of ordinary skill in the art provides a
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`reference point from which the prior art and claimed invention should be viewed.
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`This reference point prevents a person of ordinary skill in the art from using one’s
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`insight or hindsight in deciding whether a claim is obvious.
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`34.
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`I also understand that analyzing whether a claim is obvious involves
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`considering various factors such as (1) the scope and content of the prior art,
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`(2) the differences between the prior art and the claim, (3) the level of ordinary
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`skill in the art, and (4) secondary considerations, to the extent they exist.
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`35.
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`It is my understanding that secondary indicia of non-obviousness may
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`include (1) a long felt but unmet need in the prior art that was satisfied by the
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`alleged invention; (2) commercial success of processes covered by the claim as a
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`result of the merits of the alleged invention, rather than the result of design needs,
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`market pressure, advertising, or similar activities; (3) unexpected results achieved
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`by the alleged invention; (4) praise of the invention by others skilled in the art;
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`(5) the taking of licenses under the patent by others; (6) whether others had tried
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`and failed to make the invention; (7) whether persons of ordinary skill in the art
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`expressed surprise or disbelief regarding the alleged invention; (8) whether the
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`alleged inventor proceeded contrary to accepted wisdom; and (9) deliberate
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`copying of the invention. I also understand that there must be a relationship
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`between any such secondary indicia and the alleged invention. I further understand
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`that
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`independent contemporaneous
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`invention by others
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`is a secondary
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`consideration supporting an obvious determination.
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`36.
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`It is my understanding that an obviousness determination can be based
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`on a combination of multiple prior art references, or a combination of different
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`embodiments within the same prior art reference. It is also my understanding that
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`a claim can be obvious in light of a single prior art reference or single embodiment,
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`without the need to combine references or embodiments, if the elements of the
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`claim that are not found in the reference can be supplied by the knowledge or
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`common sense of one of ordinary skill in the art.
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`37.
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`I understand that the prior art references or embodiments may
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`themselves provide a suggestion, motivation, or reason to combine, but that at
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`other times the nexus linking two or more prior art references or embodiments is
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`simple common sense. I further understand that the obviousness analysis
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`recognizes that market demand, rather than scientific literature, often drives
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`innovation, and that a motivation to combine references may be supplied by the
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`direction of the marketplace.
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`38.
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`I understand that if a technique has been used to improve one device,
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`and a person of ordinary skill in the art would have recognized that it would
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`improve similar devices in the same way, using the technique was obvious unless
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`its actual application was beyond his or her skill.
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`39.
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`I also understand that practical and common sense considerations
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`should guide a proper obviousness analysis, because familiar items may have
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`obvious uses beyond their primary purposes. I further understand that a person of
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`ordinary skill in the art looking to overcome a problem would often have been able
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`to fit the teachings of one or more publications together like pieces of a puzzle,
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`although the teachings need not be like puzzle pieces that must fit perfectly
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`together. I understand that the obviousness analysis therefore takes into account
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`the differences and creative steps that a person of ordinary skill in the art would
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`employ under the circumstances. I understand that the relevant question to
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`consider is whether prior art techniques are interoperable with respect to one
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`another, such that a person of ordinary skill in the art would view them as a design
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`choice, or whether a person of ordinary skill in the art could apply prior art
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`techniques into a new combined system.
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`40.
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`I understand that a particular combination may be proven obvious by
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`showing that it was obvious to try the combination. For example, when there is a
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`design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, a person of ordinary skill has good reason to
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`pursue the known options within his or her technical grasp because the result is
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`likely the product not of innovation but of ordinary skill and common sense.
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`41.
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`I understand that the combination of familiar elements according to
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`known methods may be proven obvious when it does no more than yield
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`predictable results. When a work is available in one field of endeavor, design
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`incentives and other market forces can prompt variations of it, either in the same
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`field or a different one. If a person of ordinary skill in the art can implement a
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`predictable variation, obviousness likely bars its patentability.
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`42.
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`It is also my understanding that there are additional considerations
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`that may be used as further guidance as to when a claim is obvious, including the
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`following:
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`(cid:120)
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`the alleged invention is a simple combination of prior art
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`elements according to known methods to yield predictable
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`results;
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`(cid:120)
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`(cid:120)
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`(cid:120)
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`the alleged invention is a simple substitution of one element for
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`another to obtain predictable results;
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`the alleged invention uses known techniques to improve similar
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`devices or methods in the same way;
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`the alleged invention applies a known technique to a known
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`device or method that is ready for improvement to yield
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`predictable results;
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`(cid:120)
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`the alleged invention would have been ‘obvious to try,’
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`choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success;
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`(cid:120)
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`there is known work in one field of endeavor that may prompt
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`variations of it for use in either the same field or a different one
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`based on design incentives or other market forces if the
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`variation would have been predictable to one of ordinary skill
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`in the art;
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`(cid:120)
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`there existed at the time of invention a known problem for
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`which there was an obvious solution encompassed by the
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`alleged claim; and
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`(cid:120)
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`there is some teaching, suggestion, or motivation in the prior art
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`that would have led one of ordinary skill in the art to modify the
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`prior art reference or to combine prior art reference teachings to
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`arrive at the alleged invention.
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`43.
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`It is my further understanding that a proper obviousness analysis
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`focuses on what was known or obvious to a person of ordinary skill in the art.
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`Accordingly, I understand that any need or problem known in the field of endeavor
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`at the time of alleged invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.
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`44.
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`It is my understanding that, in inter partes review proceedings,
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`anticipation must be shown by a preponderance of the evidence.
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`IV. LEVEL OF SKILL OF ONE OF ORDINARY SKILL IN THE ART
`45.
`It is my understanding that a person of ordinary skill