UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.
`
`Patent Owner
`
`
`
`
`
`IPR2018-00294
`PATENT 6,736,759
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.
`
`Patent Owner
`
`
`
`
`
`IPR2018-00294
`PATENT 6,736,759
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`Table of Contents
`
`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`C.
`
`D.
`
`INTRODUCTION .................................................................................... 1
`THE ’759 PATENT .................................................................................. 1
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 2
`THE REDUNDANT CHALLENGE IN GROUNDS 7-9
`AGAINST ARE PROCEDURALLY AND
`SUBSTANTIVELY DEFICIENT ............................................................ 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 4
`A.
`Claim Construction ......................................................................... 5
`B.
`(Ground 1) No Prima Facie Obviousness for “a display
`unit configured for displaying real-time data provided
`by said electronic positioning device and said
`physiological monitor” (Claim 1) ................................................... 6
`(Ground 1) No Prima Facie Obviousness for “said
`display unit separate from said data acquisition unit”
`(Claim 1) ....................................................................................... 10
`(Ground 3) The Deficiency of the Ground 1 Challenge
`of Claim 1 Taints the Ground 3 Challenge of
`Independent Claim 29 ................................................................... 14
`Ground 7 Fails to Present Prima Facie Obviousness of
`Claim 1 .......................................................................................... 15
`1.
`“a data acquisition unit comprising an electronic
`positioning device and a physiological monitor,
`said data acquisition unit configured to be worn
`by a subject performing a physical activity” ...................... 16
`“a display unit configured for displaying real-time
`data provided by said electronic positioning
`
`E.
`
`2.
`
`ii
`
`
`
`F.
`
`IPR2018-00294
`U.S. Patent 6,736,759
`device and said physiological monitor” (Claim 1) ............. 17
`[All Grounds] The Petition Should Also Be Denied As
`To Challenged Dependent Claims 2-28 and 30-32. ..................... 23
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 23
`CONCLUSION ....................................................................................... 23
`
`VI.
`
`VII.
`
`
`
`TABLE OF EXHIBITS
`
`
`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
`
`iii
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00294 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 6,736,759 (“the ’759 patent” or “EX1001”)
`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’759 PATENT
`The ’759 patent is titled “Exercise Monitoring System and Methods.” The
`ʼ759 patent issued May 18, 2004, from U.S. Patent Application No. 09/436,515 filed
`November 9, 1999.
`The inventors of the ’759 patent observed that while more and more people
`were exercising to improve general health and fitness, monitoring typical
`measurements of physical fitness and progress, such as weight loss, often failed to
`meet expectations. This often resulted in a lack of motivation, which in turn leads to
`a cessation of exercise. EX1001, 1:17-20.
`The inventors also observed that while athletes of all ages are usually able to
`overcome motivational hurdles, athletes often have difficulty in accurately
`measuring their progress. Many athletes also do not know how to train effectively
`for maximal improvement. For example, competitive runners may have difficulty
`determining whether their training pace on a given day is too fast or too slow. While
`running on a track or treadmill may allow the runner to monitor speed, speed alone
`is often an inadequate way to monitor optimal training levels. Additionally, human
`nature often demands instantaneous feedback for motivation and encouragement.
`
`1
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`EX1001, 1:27-37.
`The ’759 Patent teaches an innovative exercise monitoring system, as well as
`training and analytical methods useful for subjects performing physical activities.
`As an example, certain disclosed embodiments provide real-time data and feedback
`useful to individuals (such as athletes) performing a physical activity. The
`monitoring system may include an electronic positioning device (such as a GPS
`device) and/or a physiological monitor (such as an oximeter or a heart rate monitor).
`EX1001, 6:36-44.
`A particular embodiment of the monitoring system includes both an electronic
`positioning device and a physiological monitor (such as an oximeter or heart rate
`monitor) as part of an integrated monitoring system. Such an integrated monitoring
`system allows velocity, pace, and/or distance traveled information provided by the
`electronic positioning device to be used in conjunction with data provided by the
`physiological monitor. In this manner, exercising subjects can monitor, control
`and/or analyze their performance while exercising at any location. EX1001, 6:61-
`7:4. The teachings of the ’759 Patent also provide analytical and training methods
`which utilize data provided by: (a) a physiological monitor; (b) an electronic
`positioning device (such as a GPS device); or (c) the combination of an electronic
`positioning device and a physiological monitor (such as a heart rate monitor or an
`oximeter). EX1001, 7:5-10.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “[a] person having ordinary skill in the art
`(PHOSITA) as of the ’759 Patent priority date in November 1999 would have had
`
`2
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`at least a bachelor’s degree in mechanical engineering, electrical engineering, or a
`similar field with at least two years of experience in exercise monitoring device
`design, body-mounted computing systems, or in motion tracking. More direct
`industry experience can accommodate less formal education in the field and more
`formal education in the field can accommodate less direct industry experience” Pet.
`11-12. Given that Petitioner fails to meet its burden of proof in establishing prima
`facie obviousness when applying its own definition of a person of ordinary skill in
`the art (“POSITA”), Patent Owner does not offer a competing definition for POSITA
`at this preliminary stage, though it reserves the right to do so if trial is instituted.
`
`IV. THE REDUNDANT CHALLENGE IN GROUNDS 7-9 ARE
`PROCEDURALLY AND SUBSTANTIVELY DEFICIENT
`The Petition presents a facially-redundant challenge against the challenged
`claims based in Grounds 7-9 based on Vock and Arcelus. As a procedural matter,
`this redundant challenge of the challenged claims should be denied because
`Petitioner makes no attempt to articulate the relative strengths and weaknesses of
`Grounds 1-6 and Grounds 7-9, so as to justify the redundancy in raising multiple
`redundant challenges against the challenged claims.
`The oft-cited Liberty Mut. opinion provides that “multiple grounds, which are
`presented in a redundant manner by a petitioner who makes no meaningful
`distinction between them, are contrary to the regulatory and statutory mandates, and
`therefore are not all entitled to consideration.” See Liberty Mutual Insurance Co. v.
`Progressive Casualty Insurance Co., CBM2012-00003, 2012 WL 9494791, at *2
`(Paper 7 Order) (PTAB October 25, 2012). Liberty Mut. and its oft-cited progeny
`
`3
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`further confirm that multiple grounds for unpatentability for the same claim will not
`be considered unless the petition itself explains the relative strengths and weaknesses
`of each ground. Id. Here, Petitioner makes no attempt to differentiate the redundant
`challenges against the challenged claims in terms of the relative strengths and
`weaknesses of Grounds 1-6 and Grounds 7-9, presumably to avoid having to
`concede any weakness in the Petition. Such circumstances invoke the Board’s
`discretion to deny the Petition as procedurally deficient.
`Even if the Board were to consider the substantive merits of Grounds 7-9,
`notwithstanding these multiple procedural defects, Grounds 7-9 should nevertheless
`be denied as failing to present a prima facie case of obviousness for the reasons
`explained below.
`
`V.
`
`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges under 35 U.S.C.
`§ 103:
`
`4
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`Reference(s)
`
`Fry1, Newell2
`
`Claims
`Claims 1-7, 9, 12, 14,
`17-22, 26
`20, 22-23
`Fry, Newell, Arcelus3
`9, 29-32
`Fry, Newell, Richardson4
`Fry, Newell, Richardson, Arcelus
`32
`4, 13, 15, 16, 27-28
`Fry, Newell, Chance5
`24-25
`Fry, Newell, French6
`1-5, 8-12, 14, 17, 19-26 Vock7, Arcelus
`6
`Vock, Arcelus, Richardson
`4, 13, 15, 16, 27-28
`Vock, Arcelus, Chance
`
`Ground
`1
`
`2
`3
`4
`5
`6
`7
`8
`9
`
`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”).
`Petitioner appears to acknowledge that applying the broadest reasonable
`interpretation to the claims here may result in a construction that differs from that
`
`5
`
`
`
` 1
`
` U.S. Patent No. 6,002,982
`2 U.S. Patent No. 6,466,232
`3 U.S. Patent No. 6,149,602
`4 U.S. Patent No. 5,976,083
`5 U.S. Patent No. 5,564,417
`6 PCT App. No. US/96/17580
`7 U.S. Patent No. 6,539,336
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`applied by courts in related matters. Nevertheless, for certain terms Petitioner
`purports to “adopt[] the CAFC’s construction because a Broadest Reasonable
`Interpretation (“BRI”) must be at least as broad as the CAFC’s construction.” Pet.
`10 (emphasis added). Additionally, for the claim term “probe”, Petitioner proposes
`adopting “[a] District Court’s construction.” Pet. 11.
`To the extent any term requires construction here, the proper inquiry is not an
`“at least as broad as” determination. Rather, a proper construction should reflect the
`full scope of the claim under the broadest reasonable interpretation (“BRI”).
`Petitioner does not even purport to meet this standard by its proposed constructions.
`Indeed, Petitioner offers no explanation for why constructions made under an
`admittedly different standard applicable in district court are equally applicable here
`under the BRI standard.
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc., 642 F.3d at 1361. Accordingly, at this
`preliminary stage, Patent Owner does not offer competing constructions under the
`appropriate BRI standard, although Patent Owner reserves the right to do so, to the
`extent deemed necessary, if trial is instituted.
`
`B.
`
`(Ground 1) No Prima Facie Obviousness for “a display unit
`configured for displaying real-time data provided by said
`electronic positioning device and said physiological monitor”
`(Claim 1)
`In challenging Claim 1 under Ground 1, the Petition relies exclusively on Fry
`for the limitation “a display unit configured for displaying real-time data provided
`
`6
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`by said electronic positioning device and said physiological monitor”. This single-
`reference theory fails to establish prima facie obviousness.
`As shown in the block quotation below, the data identified in the Petition is
`received by the device of Fry at “block 330”, but it is not acted on for display (which
`in the Fry device, is its “least critical function”) until “block 360” and after the
`execution of no less than six, higher-priority intervening steps:
`
`“Having attended to mode-related functions, the controller
`next executes the most time-critical routines, preferably in
`the form of interrupts, followed by a scanning of less-time
`critical sensor inputs, after which the display is updated in
`accordance with new and previously stored parameters.
`More particularly, at block 330, if, through a mode
`selection, a GPS position is to be received, an interrupt
`is generated, and the new coordinates are computed at
`block 34 and stored in memory at block 338. Although
`updating the GPS coordinates may take place on a non-
`interrupt basis, the received coordinates would have to be
`maintained in a buffer until servicing, potentially adding
`additional, unnecessary hardware.
`
` . . .
`
`At block 350, less time-critical sensors are simply
`scanned by the controller. These include internal
`electronic compass heading, weather sensors and so forth,
`which do not change on a time-critical or even periodic
`basis. Thus, in these cases, the sensors are simply scanned
`after time-critical interrupts are first serviced. At block
`360, the least critical function takes places, that is, the
`display is updated by refreshing from memory the data to
`be displayed in accordance with the mode selected. In
`other words, a portion of the memory 226 may be set aside
`and utilized as a buffer for the display 110. After
`updating the display at block 360, the software loops back
`to the mode-selection inquiry at block 310, and the various
`
` .
`
`7
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`routines are repeated, or skipped, in accordance with mode
`and the existence of various inputs.”
`EX1004, 6:1-41 (boldface and underlining added).
`Figure 3 of Fry further illustrates the multiple, time-consuming steps between
`Fry’s receiving of its GPS data and its “least critical function” of displaying that
`data:
`
`
`
`EX1004, Fig. 3. As disclosed in Figure 3 of Fry and its accompanying description,
`once GPS data is received, the device executes, at a minimum, steps 334, 338, 340,
`342, 346, 350, and then finally 360, in order to update the display with the GPS data.
`By Fry’s own admission updating the display of its device is its “least critical
`
`8
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`function” Id., 6:32-33. Thus, Fry fails to disclose or suggest “a display unit
`configured for displaying real-time data…”, as required by Claim 1.
`Petitioner’s proposed construction of “real-time” only further emphasizes the
`deficiency. Petitioner proposes construing “real-time” to mean “displaying data
`without intentional delay, given the processing limitations of the system and the
`time required to accurately measure the data.” Pet. 16. Fry expressly falls short of
`Petitioner’s definition. As explained above, Fry teaches at least in Figure 3 and its
`accompanying description that the device—by intended design—implements at
`least six delaying and interceding steps between its receiving the GPS data and the
`display of the GPS data, which according to Fry is the “least critical function.”
`Those numerous, higher-priority steps that Fry purposefully implements before
`ultimately tending to its “least critical function” (displaying the data) cannot
`reasonably be considered to be implemented “without intentional delay”, as required
`under Petitioner’s proposed construction.
`Further, the delay caused at least in part by the intervening steps cannot fairly
`be characterized as “processing limitations of the system” or “the time required to
`accurately measure the data.” This is because, at the very least, Fry’s box 350
`(scanning “other sensors”, EX1004, Fig. 3) and “less time-critical sensors”
`(EX1004, 6:27-28), are expressly extraneous to the function of displaying the GPS
`data. See also EX2001, ¶ 22.
`For the foregoing reasons, Ground 1 of the Petition should be denied as failing
`to present prima facie obviousness (even under Petitioner’s proposed construction)
`for “a display unit configured for displaying real-time data”, as recited in Claim 1.
`
`9
`
`
`
`C.
`
`IPR2018-00294
`U.S. Patent 6,736,759
`(Ground 1) No Prima Facie Obviousness for “said display unit
`separate from said data acquisition unit” (Claim 1)
`In presenting its Ground 1 challenge of Claim 1, the Petition admits that Fry
`teaches its GPS receiver and display are combined into a single device: “Fry
`describes specific component placement for only the sports computer depicted in
`Figure 1, which illustrates a bicycling application where the GPS receiver and
`display are combined and mounted on bicycle handlebars ….” Pet. 17 (emphasis
`added). That admission confirms that Fry does not disclose, and in fact expressly
`teaches away from, the recitation “said display unit separate from said data
`acquisition unit.” This is because the claim language explicitly defines the “data
`acquisition unit” as comprising the “electronic positioning device” (in addition to
`the “physiological monitor”). Thus, to prove obviousness, Petitioner has the burden
`to show (among other limitations) that the “display unit” is separate from the
`“electronic positioning device.” Petitioner’s admission concerning the teachings of
`Fry not only precludes relying on Fry alone, but also teaches away from combining
`Fry with another reference in a manner that would vitiate Fry’s intended design of
`combining its GPS receiver and display into a single device.8
`
`
`
` 8
`
` In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“It is improper to combine
`references where the references teach away from their combination.”); In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (holding that if proposed
`modification would render the prior art invention being modified unsatisfactory for
`its intended purpose, then there is no suggestion or motivation to make the proposed
`modification); See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed.
`Cir. 2007) (“a reference teaches away from a combination when using it in that
`
`
`10
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`Newell cannot be relied upon to cure the admitted deficiencies of Fry at least
`because Fry teaches away from such a combination.9 Furthermore, the alleged
`motivation to combine in the manner proposed is illusory. To establish obviousness
`under 35 U.S.C. § 103(a), it is petitioner’s “burden to demonstrate . . . that a skilled
`artisan would have been motivated to combine the teachings of the prior art
`references to achieve the claimed invention.” In re Magnum Oil Tools Int’l Ltd., 829
`F.3d 1364, 1381 (Fed. Cir. 2016) (quotations omitted). The petitioner must
`“articulate[] reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`(citation omitted).
`The “factual inquiry” into the reasons for “combin[ing] references must be
`thorough and searching, and the need for specificity pervades.” In re Nuvasive, Inc.,
`842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). An obviousness
`determination cannot be reached where the record lacks “explanation as to how or
`why the references would be combined to produce the claimed invention.”
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). This requisite
`explanation avoids an impermissible “hindsight reconstruction,” using “the patent
`in suit as a guide through the maze of prior art references, combining the right
`
`
`
`combination would produce an inoperative result.”); In re Gurley, 27 F.3d 551, 553
`(Fed. Cir. 1994) (finding that a prior art reference teaches away from the claimed
`invention when a person of ordinary skill, upon reading the reference, “would be led
`in a direction divergent from the path that was taken by the applicant.”).
`9 See note 1, supra.
`
`11
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`references in the right way so as to achieve . . . The claims in suit.” Id.; In re NTP,
`Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
`Here, in addition to ignoring the teach away issue, the Petition lacks the
`required “factual inquiry” into reasons for combining the references and lacks any
`“explanation as to how or why the references would be combined to produce the
`claimed invention.” The Petitioner relies, instead, on impermissible hindsight
`reconstruction, which the controlling authority cited above expressly proscribes.
`For example, the Petition merely makes the conclusion that “[a] PHOSITA
`would understand that these teachings effectively direct a skilled artisan to re-
`arrange the Fry components in a manner that is safe, ergonomic, and efficient for
`runners.” Pet. 18. The Petition then offers the conclusory statement that “[a]
`PHOSITA would recognize that an eyeglass-mounted heads-up display is well-
`suited to a running application because it allows the user to maintain a view of their
`surroundings unlike wrist-mounted displays that require the user to either stop
`running or to divert their full view from their surroundings to the displayed
`information.” Id.
`For this and other conclusory statements, the Petition cites to its declarant’s
`testimony as the sole support. However, Petitioner cannot merely speculate through
`its declarant, outside the four corners of the reference, to carry its burden. The
`Federal Circuit has instructed that “legal determinations of obviousness, as with
`such determinations generally, should be based on evidence rather than on mere
`speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290
`(Fed. Cir. 2006); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66
`
`12
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`(Fed. Cir. 2014) (finding the P.T.A.B. correctly rejected conclusory assertions of
`what would have been common knowledge in the art). Here, the Petitioner’s
`declarant merely makes the same conclusory statements, without providing the
`required “explanation as to how or why the references would be combined to
`produce the claimed invention.” TriVascular, 812 F.3d at 1066; see also Arendi
`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362–66 (Fed. Cir. 2016) (recognizing that
`“reasoned analysis and evidentiary support” are required to supply a “limitation
`missing from the prior art” as well as a motivation to combine).
`In the case of the conclusory statements above, neither the Petition itself nor
`the attached declaration provides the required “explanation as to how or why the
`references would be combined to produce the claimed invention.” TriVascular, 812
`F.3d at 1066. For example, the Petition provides no analysis underpinning its ipse
`dixit conclusion that a POSITA “would recognize” the improvement of an
`“eyeglass-mounted heads-up display”. Apart from hindsight analysis applying the
`teachings of the ’759 Patent itself, there is no evidence, explanation, or “factual
`inquiry” into why a POSITA would look to make modifications in the first place, or
`why a POSITA would look to an eyeglass-mounted display instead of the plethora
`of alternatives, such as an all-in-one watch. See Nuvasive, 842 F.3d at 1384–86
`(holding an obviousness determination to lack support where “obtain[ing] additional
`information” was the only motivation to combine alleged, yet the record lacked any
`articulation as to “why the additional information would benefit [a skilled artisan]”
`and “why [such an artisan] would have been motivated” “to obtain this additional
`information”).
`
`13
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`As another example of deficient, conclusory statements, the Petition alleges
`that “the modification to Fry would be straightforward, not requiring undue
`experimentation, and would produce predictable results.” See Pet. 19-20; EX1002,
`¶¶ 38-40. This verbiage has become toothless boilerplate language applied in
`virtually every Petition and does not further the analysis required under controlling
`authority. The cited portion of the declarant’s testimony essentially repeats the same
`conclusion without providing any rational underpinning or explanation for such a
`conclusion. This is improper and insufficient, and the Petition fails to carry its
`burden. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir.
`2017) (holding obviousness determination to be improper where the record lacked
`a “clear, evidence-supported account” of “how the combination” would work);
`Nuvasive, 842 F.3d at 1381–82 (“[T]he factual inquiry whether to combine
`references must be thorough and searching, and the need for specificity pervades . .
`. .” (quotations and alterations omitted)); Magnum Oil, 829 F.3d at 1380 (“[A]
`petitioner cannot employ mere conclusory statements” and “must instead articulate
`specific reasoning, based on evidence of record . . . .”).
`For the forgoing reasons, Ground 1 of the Petition should be denied as failing
`to establish prima facie obviousness for “said display unit separate from said data
`acquisition unit”, as recited in Claim 1.
`
`D.
`
`(Ground 3) The Deficiency of the Ground 1 Challenge of Claim 1
`Taints the Ground 3 Challenge of Independent Claim 29
`Ground 3 of the Petition does not present new arguments in addressing Claim
`29, but rather relies entirely on its Ground 1 challenge of Claim 1. See Pet. 36-37
`
`14
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`(“As described above in Section V.A.i-ii for Claims 1 and 2, Fry in view of Newell
`discloses element 29(a), 29(b), and 29(c).”) Accordingly, the Ground 3 challenge of
`Claim 29 should be denied for at least the same reasons explained above in
`addressing Claim 1.
`
`E. Ground 7 Fails to Present Prima Facie Obviousness of Claim 1
`The impermissibly-redundant challenges in Grounds 7-9 should be denied for
`at least the reasons described in Section IV, above. As detailed above, the Petition’s
`unjustified redundancies invoke the holding that “multiple grounds, which are
`presented in a redundant manner by a petitioner who makes no meaningful
`distinction between them, are contrary to the regulatory and statutory mandates, and
`therefore are not all entitled to consideration.” See Liberty Mut., CBM2012-00003,
`2012 WL 9494791, at *2 (Paper 7 Order).
`In addition to the uncontroverted procedural deficiencies, redundant Ground
`7 also has numerous substantive defects. While the Ground 7 of the Petition purports
`to rely either on alleged obvious variant of Vock, or a proposed combination of Vock
`with Arcelus, the Petition admittedly strays from the four corners of those
`references, and otherwise vacillates between relying on disparate embodiments, in
`attempting to reconstruct the distinguishable invention through hindsight analysis.
`See EX2001, ¶¶ 16-17. As explained above, such an analysis cannot establish prima
`facie obviousness and, instead, invites reversible error. See, e.g., KSR, 550 U.S. at
`418; Magnum Oil, 829 F.3d at 1381; Nuvasive, 842 F.3d at 1381-82; TriVascular,
`812 F.3d at 1066; NTP, 654 F.3d at 1299.
`Further, the Petitioner cannot merely speculate through its declarant, outside
`
`15
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`the four corners of the reference, to carry its burden. The Federal Circuit has
`instructed that “legal determinations of obviousness, as with such determinations
`generally, should be based on evidence rather than on mere speculation or
`conjecture.” Alza Corp., 464 F.3d at 1290; K/S HIMPP, 751 F.3d at 1365-66
`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`been common knowledge in the art).
`
`1. “a data acquisition unit comprising an electronic positioning device
`and a physiological monitor, said data acquisition unit configured
`to be worn by a subject performing a physical activity”
`Ground 7 of the Petition purports to rely exclusively on Vock for the limitation
`“a data acquisition unit comprising an electronic positioning device and a
`physiological monitor, said data acquisition unit configured to be worn by a subject
`performing a physical activity.” Yet the Petition fails to identify any element in Vock
`allegedly satisfying a wearable “data acquisition unit” comprising both (1) “an
`electronic positioning device” and (2) “a physiological monitor”. Indeed, Petitioner
`at least tacitly acknowledges such an integral “unit” is not disclosed in Vock by
`arguing, instead, “[a] PHOSITA would have understood that the GPS positioning
`and physiological heart rate monitor could be combined in a single embodiment.”
`Pet. 49 (summarizing conclusory testimony in EX1002 at ¶67). Missing limitations
`cannot be cured by such conclusory hindsight analysis.
`Petitioner and its declarant take the same approach recently rejected by the
`Federal Circuit in DSS Tech. Mgmt. v. Apple Inc., Nos. 2016-2523, 2016-2524, 2018
`(Fed. Cir. Mar. 23, 2018). There, the Federal Circuit proscribed using a conclusory
`
`16
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`approach that asked whether the missing limitation resulted from “ordinary
`creativity” of a skilled artisan. More specifically, the Federal Circuit offered the
`following explanation:
`
`After acknowledging that Natarajan does not disclose a
`base unit
`transmitter
`that uses
`the same power
`conservation technique, the Board concluded that a person
`of ordinary skill would have been motivated to modify
`Natarajan to incorporate such a technique into a base unit
`transmitter and that such a modification would have been
`within the skill of the ordinarily skilled artisan. Id. In
`reaching these conclusions, the Board made no further
`citation to the record. Id. It referred instead to the
`“ordinary creativity” of the skilled artisan. Id. (quoting
`KSR, 550 U.S. at 420-21). This is not enough to satisfy the
`Arendi standard.
`Here, Petitioner and its declarant apply a similar analysis to that rejected in
`DSS Tech. Petitioner attempts to cure acknowledged deficiencies of Vock through
`conclusory testimony alleging that Vock “would benefit from the GPS positional
`data and heart rate physiological data being displayed to the user.” Pet. 49
`(summarizing conclusory testimony in EX1002 at ¶67). Under the reasoning set
`forth in DSS Tech., a reference cannot render claim language obvious simply
`because it would “benefit” from certain undisclosed modifications. This is true
`regardless whether those undisclosed modifications are within the “ordinary
`creativity” of a skilled artisan.
`
`2. “a display unit configured for displaying real-time data provided
`by said electronic positioning device and said physiological
`monitor” (Claim 1)
`The Petition repeatedly acknowledges that Vock does not disclose the real-
`
`17
`
`
`
`IPR2018-00294
`U.S. Patent 6,736,759
`
`time display of any measurements, let alone the display of real-time data provided
`by both (1) “an electronic positing device” and (2) a “physiological device”, which
`must both be a part of the same actively wearable “data acquisition unit”. Pet. 47
`(“Vock does not expressly teach that the resulting pulse measurements are provided
`to the athlete in real-time.”); id. at 50 (“As described above, Vock does not expressly
`teach that heart rate measurements are displayed in real-time.”)
`In an attempt to cure these conceded deficiencies, the Petition first speculates
`that “a PHOSITA would have recognized that pulse/heart rate monitoring with real-
`time display would be an obvious extension of [Vock’s] express teachings and would
`be easily incorporated into the Vock system.” Id. As alleged support, the Petition
`relies exclusively on mere ipse dixit statements of its declarant proposing
`speculative modifications to the Vo
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
