Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 7
`Entered: May 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`
`____________
`
`Case IPR2018-00294
`Patent 6,736,759 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 7
`Entered: May 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`
`____________
`
`Case IPR2018-00294
`Patent 6,736,759 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`I. INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`U.S. Patent No. 6,736,759 B1 (Ex. 1001, “the ’759 patent”). Paper 1
`(“Pet.”), 1. Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`
`Institution of an inter partes review is authorized by statute only when
`“the information presented in the petition . . . and any response . . . shows
`that there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`§ 314(a). For the reasons set forth below, upon considering the Petition,
`Preliminary Response, and evidence of record, we conclude the information
`presented shows there is a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of at least one claim of the ’759
`patent.
`
`A. Related Matters
`The parties indicate that the ’759 patent is the subject of the following
`
`litigation: Uniloc USA, Inc. v. Apple Inc., No. 2-17-cv-00708 (E.D. Tex.
`filed Oct. 20, 2017). Pet. 5; Paper 4, 2.
`
`Petitioner also states that the ’759 patent was previously at issue in
`Paragon Solutions, LLC v. Timex Corp., No. 1:06-cv-677 (S.D. Ohio 2008),
`vacated, 566 F.3d 1075 (Fed. Cir. 2009). Pet. 5–6.
`
`B. The Challenged Patent
`The ’759 patent discloses a monitoring system including an electronic
`
`positioning device and a physiological monitor for use in a variety of
`
`2
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`physical activities. Ex. 1001, 1:8–15, 6:37–60. Figure 3, shown below,
`illustrates an embodiment of the monitoring system. Id. at 8:49–51.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figure 3 “depicts a human subject performing a physical activity using one
`embodiment of a monitoring system of the present invention,” including
`display unit 7 and data acquisition unit 20. Id. at 2:17–19, 8:51–55.
`
`The electronic positioning device, which may be a global positioning
`system (“GPS”) device, receives electromagnetic signals from three or more
`sources to track at least one of the user’s location, altitude, heading, velocity,
`pace, or distance traveled. Id. at 3:8–10, 7:35–39, 9:16–39. The
`physiological monitor, which may be an oximeter or a heart rate monitor,
`acquires physiological data from the user, such as the user’s blood oxygen
`
`3
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`level or heart rate. Id. at 6:56–60, 9:40–67. The determined position and
`physiological data are transmitted to a separate display unit for real-time
`display to the user or other individual monitoring the user’s performance of
`a physical activity. Id. at 6:39–41, 7:43–46, 51–54. The display unit may
`include one or more alarms that are activated if a measured data value
`departs from a predetermined limit or range. Id. at 16:39–67.
`
`C. The Challenged Claims
`Petitioner challenges claims 1–32 (all claims) of the ’759 patent.
`
`Claims 1 and 29 are independent. Claim 1 is illustrative of the challenged
`claims and is reproduced below:
`1.
`An exercise monitoring system, comprising:
`
`(a) 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; and
`
`(b) a display unit configured for displaying real-time data
`provided by said electronic positioning device and said
`physiological monitor, said display unit separate from said data
`acquisition unit;
`
`wherein said display unit is configured to be worn by the
`subject, worn by someone other than the subject, or attached to
`an apparatus associated with the physical activity being
`performed by the subject so as to be visible to the subject while
`performing the physical activity, and
`
`further wherein said system is configured such that said
`display unit displays real-time data comprising at least one of a
`subject’s location, altitude, velocity, pace, and distance
`traveled.
`
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`4
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`References
`
`Fry2 and Newell3
`
`Basis1
`
`Challenged
`Claim(s)
`35 U.S.C. § 103(a) 1–7, 9, 12, 14,
`17–22, and 26
`35 U.S.C. § 103(a) 20 and 22–23
`Fry, Newell, and Arcelus4
`Fry, Newell, and Richardson5 35 U.S.C. § 103(a) 9 and 29–316
`Fry, Newell, Richardson, and
`35 U.S.C. § 103(a) 32
`Arcelus
`Fry, Newell, and Chance7
`
`Fry, Newell, and French8
`Vock9 and Arcelus
`
`Vock, Arcelus, and
`Richardson
`
`35 U.S.C. § 103(a) 4, 13, 15, 16, 27, and
`28
`35 U.S.C. § 103(a) 24 and 25
`35 U.S.C. § 103(a) 1–5, 8–12, 14, 17,
`and 19–26
`35 U.S.C. § 103(a) 6
`
`
`1 The ’759 patent was filed on November 9, 1999, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) took effect.
`2 US 6,002,982 (filed Nov. 1, 1996, issued Dec. 14, 1999) (Ex. 1004, “Fry”).
`3 US 6,466,232 B1 (filed Dec. 18, 1998, issued Oct. 15, 2002) (Ex. 1005,
`“Newell”).
`4 US 6,149,602 (filed Mar. 29, 1997, issued Nov. 21, 2000) (Ex. 1008,
`“Arcelus”).
`5 US 5,976,083 (filed July 30, 1997, issued Nov. 2, 1999) (Ex. 1007,
`“Richardson”).
`6 Although claim 32 is listed as being included in this grounds (Pet. 8), the
`claim is not addressed in the analysis section (see id. at 32–38).
`7 US 5,564,417 (issued Oct. 15, 1996) (Ex. 1009, “Chance”).
`8 WO 97/17598 (published May 15, 1997) (Ex. 1010, “French”).
`9 US 6,539,336 B1 (filed June 2, 1998, issued Mar. 25, 2003) (Ex. 1006,
`“Vock”).
`
`5
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`References
`
`Vock, Arcelus, and Chance
`
`Basis1
`
`Challenged
`Claim(s)
`35 U.S.C. § 103(a) 4, 13, 15, 16, 27, and
`28
`
`Pet. 8. Petitioner submits a declaration of Dr. Kenneth Fyfe (Ex. 1002,
`“Fyfe Declaration” or “Fyfe Decl.”) in support of its contentions.
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). The presumption may be overcome by providing a
`definition of the term in the specification with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). In the absence of such a definition, limitations are not to be read
`from the specification into the claims. See In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993). Only those terms which are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`6
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`Petitioner contends, generally, that the terms of the claims of the ’759
`
`patent should be interpreted under the broadest reasonable interpretation
`standard. Pet. 9. Petitioner proposes that the terms “data acquisition unit,”
`“display unit,” and “displaying real-time data” should be interpreted
`according to a prior construction by the U.S. Court of Appeals for the
`Federal Circuit in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075
`(Fed. Cir. 2009) (Ex. 1023), because the broadest reasonable construction
`“must be at least as broad as the CAFC’s construction.” Id. at 9–10.
`Petitioner contends that “probe” should be interpreted according to a prior
`construction by the U.S. District Court for the Southern District of Ohio in
`Paragon Solutions, LLC v. Timex Corp., No. 1:06-cv-677 (S.D. Ohio Apr.
`23, 2008) (Claim Construction Opinion) (Ex. 1025). Id. at 11.
`
`Patent Owner objects to Petitioner’s proposed claim constructions,
`stating the “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’).” Prelim. Resp. 6. “Patent
`Owner does not offer competing constructions under the appropriate BRI
`standard.” Id.
`
`1. displaying real-time data
`“There is no dispute that the [Patent Trial and Appeal Board] is not
`
`generally bound by a prior judicial construction of a claim term.” Power
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (citing In re
`Trans Tex. Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)). This
`“does not mean, however, that [the Board] has no obligation to acknowledge
`
`7
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`that interpretation or to assess whether it is consistent with the broadest
`reasonable construction of the term.” Id.
`
`In Paragon Solutions, 566 F.3d at 1075, the Federal Circuit construed
`“displaying real-time data” as “displaying data without intentional delay,
`given the processing limitations of the system and the time required to
`accurately measure the data.” Ex. 1023, 14. In doing so, the Federal Circuit
`reviewed the language of the claims, the Specification, the prosecution
`history, and extrinsic evidence. Id. at 11–14. Of particular interest, the
`Federal Circuit noted, regarding the Specification of the ’759 patent,
`the criticism of prior art is more appropriately read to
`distinguish the invention's “real-time” display from prior art
`methods that stored data for review only after the activity was
`complete, so that the user could not make modifications during
`the course of the activity. Thus, the specification supports a
`construction of “real-time” in this case that precludes
`intentionally delaying the display of data by storing it for later
`review.
`Id. at 12. For purposes of this Decision, we adopt the Federal Circuit’s
`reasoned analysis and construction as our own. As our review of the ’759
`patent and the evidence of record does not reveal a broader construction, we
`determine the Federal Circuit’s construction comports with not only the
`Phillips standard, but also the broadest reasonable interpretation.
`
`For purposes of this Decision, and based on the record before us, we
`determine that no other claim terms require construction. Vivid Techs., 200
`F.3d at 803.
`
`8
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`B. Level of Ordinary Skill in the Art
`Citing its declarant, Dr. Kenneth Fyfe, Petitioner contends that a
`
`person having ordinary skill in the art at the time of the invention would
`have had “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.” Pet. 11 (citing Ex. 1002 ¶ 30). Patent Owner’s declarant,
`Mr. William C. Easttom II, opines that a person having ordinary skill in the
`art at the time of the invention would have had “a bachelor’s degree in
`engineering, computer science, or related technical area with 2 years of
`experience related to mobile devices and/or physiological monitoring.”
`Ex. 2001 ¶ 13.
`
`Petitioner and Patent Owner define comparable levels of ordinary
`skill, specifying similar educational backgrounds and experience.
`Petitioner’s interpretation more closely tracks the claims, which are directed
`to exercise monitoring systems rather than mobile devices in general. At
`this juncture of the proceeding, and for the purposes of this decision, we
`adopt Petitioner’s proposed definition as more representative, but note that
`our analysis would be the same under either definition.
`
`C. Challenge Based on Fry and Newell
`Petitioner argues that claims 1–7, 9, 12, 14, 17–22, and 26 would have
`
`been obvious over Fry and Newell. Pet. 12–29. In support of its showing,
`Petitioner relies upon the Fyfe Declaration. Id. (citing Ex. 1002). We have
`reviewed Petitioner’s assertions and supporting evidence. For the reasons
`
`9
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`discussed below, and based on the record before us, Petitioner demonstrates
`a reasonable likelihood of prevailing in showing that these claims would
`have been obvious over Fry and Newell.
`
`1. Overview of the Prior Art
`a. Fry
`Fry discloses a sports computer that is mountable directly to the
`
`athlete or equipment in use. Ex. 1004, 2:37–42, 51–55. The computer has
`sensors including a heart rate monitor and a GPS antenna and receiver. Id.
`at 4:25–29, 55–60. The data measured by the sensors is presented on a
`display, and may be transferred to a personal computer for later evaluation.
`Id. at 5:54–60, 6:33–36, 58–64.
`
`b. Newell
`Newell discloses a body-mounted wearable computer that
`
`communicates with various body-worn input, output, and sensor devices.
`Ex. 1005, 11:51–67, 12:20–24. Such output devices include flat panel
`displays and eyeglass-mounted displays, and such sensor devices include
`heart rate and GPS sensors. Id. at 5:9–15, 11:57–60, 14:64–67. Information
`obtained by the sensor devices is transmitted to the system, which uses the
`information in creating a model of the user condition. Id. at 13:18–23, 42–
`45. The system uses the user condition to determine an appropriate device
`on which to present the information to the user, and sends the information to
`the corresponding output device for display. Id. at 13:61–14:29.
`
`10
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`2. Claim 1
`Petitioner relies on Fry to teach most of the limitations of claim 1, but
`
`relies on Newell to teach a display unit that is separate from a data
`acquisition unit. Pet. 14–21. For the reasons set forth below, Petitioner
`identifies sufficient evidence indicating that Fry and Newell disclose the
`limitations in this claim.
`
`Claim 1 recites, in relevant part, “a display unit configured for
`displaying real-time data provided by said electronic positioning device and
`said physiological monitor.” Ex. 1001, 28:3–5. Petitioner relies on Fry to
`disclose such real-time display. Pet. 14–17 (citing Ex. 1004, 6:1–19, 33–36,
`Fig. 3; Ex. 1002 ¶ 36; Ex. 1023). Specifically, Petitioner notes that “each of
`[Fry’s] physiological and GPS sensors [is] scanned and the data is stored
`. . . . Then . . . ‘the display is updated by refreshing from memory the data to
`be displayed.’” Id. at 16 (citing Ex. 1004, 6:33–36, Fig. 3) (emphasis
`omitted). Applying the Federal Circuit’s construction of “real-time,”
`Petitioner argues that Fry displays real-time data because the data is
`displayed with “no intentionally introduced delay, and the display is updated
`as quickly as the processing limitations of the system and measurement time
`allow.” Id. at 16–17.
`
`Patent Owner contends that Fry does not display real-time data,
`arguing that “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.’” Prelim. Resp. 7
`(referencing Fry, Fig. 3). According to Patent Owner, there are “multiple,
`time-consuming steps between Fry’s receiving of its GPS data and its . . .
`
`11
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`displaying that data.” Id. at 8. Patent Owner argues that such steps “cannot
`reasonably be considered to be implemented ‘without intentional delay,’”
`and “Fry’s box 350 (scanning ‘other sensors’. . .) and ‘less time-critical
`sensors’ . . . , are expressly extraneous to the function of displaying the GPS
`data.” Id. at 9 (citing Ex. 1004, 6:27–28, Fig. 3); Ex. 2001 ¶ 22.
`
`We are not persuaded by Patent Owner’s arguments for the reasons
`set forth by the Federal Circuit in discussing Timex’s argument regarding
`instantaneous display. See Ex. 1023, 11–12. There, the court noted the
`distinction in the ’759 patent between
`the invention's “real-time” display [and] prior art methods that
`stored data for review only after the activity was complete, so
`that the user could not make modifications during the course of
`the activity. Thus, the specification supports a construction of
`“real-time” in this case that precludes intentionally delaying the
`display of data by storing it for later review.
`Id. at 12 (second emphasis added). To the extent that Fry’s system inputs
`and processes signals from time-critical sensors (block 340)—which
`includes physiological data in the form of the user’s heart rate—and less
`time-critical sensors (block 350) prior to displaying the GPS data, the
`additional signal inputting and processing does not require the GPS data to
`be stored for later review, and, thus, does not intentionally delay its display.
`See Ex. 1004, 6:14–41. Notably, after inputting and processing data from all
`sensors, “the display is updated by refreshing from memory the data to be
`displayed in accordance with the mode selected,” and, “[a]fter updating the
`display. . . , the software loops back to the mode-selection inquiry at block
`310, and the various routines are repeated, or skipped, in accordance with
`
`12
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`mode and the existence of various inputs.” Id. at 6:33–41. We agree with
`Petitioner that Fry, therefore, displays real-time data.
`
`Claim 1 also recites, in relevant part, “said display unit separate from
`said data acquisition unit.” Ex. 1001, 28:5–6. Petitioner notes that Fry
`discloses that “its sports computer is ‘readily applicable to other sports . . .
`including running’ and can be mounted ‘directly to the athlete . . . with
`interfaces to one or more sensors which measure performance
`characteristics,’” and relies on Newell to teach “a body mounted computing
`system with a variety of sensors, including a GPS, heart rate monitor, and
`other physiological monitors.” Pet. 17–18 (citing Ex. 1004, 2:44–46, 51–54,
`Fig. 1; Ex. 1005, 5:9–15, 48–55, 11:57–60, Fig. 1). Petitioner argues that it
`would have been obvious to modify Fry’s system to include a display unit
`that is separate from the data acquisition unit, as taught by Newell. Id. at
`18–20. Specifically, Petitioner argues that one of ordinary skill in the art
`would have made such a modification because such an artisan would
`understand Fry to “effectively direct a skilled artisan to re-arrange the Fry
`components in a manner that is safe, ergonomic, and efficient for runners,”
`as Fry “expressly notes that its system is ‘readily applicable to other sports
`. . . [,] including running.’” Id. at 18 (citing Ex. 1004, 2:44–46; Ex. 1002
`¶¶ 38–39). Petitioner argues that “Newell provides express motivation to
`locate the display of a personal monitor device as an eyeglass-mounted
`heads-up display separate from the other key components that are mounted
`on the user’s body,” and that one of ordinary skill in the art “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
`
`13
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`surroundings” and “that mounting the monitor devices (e.g., GPS and heart
`rate monitor) on the user’s body is the most common sense arrangement.”
`Id. at 18–19 (citing Ex. 1002 ¶ 39).
`
`Patent Owner contends that, because “Petition[er] admits that Fry
`teaches its GPS receiver and display are combined into a single device,”
`“[t]hat 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.’” Prelim. Resp. 10 (citing Pet., 17). Patent Owner also
`contends that “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.’” Id. at
`12. According to Patent Owner, “there is no evidence, explanation, or
`‘factual inquiry’ into why a [person of ordinary skill in the art (‘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.” Id. at 13 (citing In re Nuvasive,
`842 F.3d 1376, 1384–86 (Fed. Cir. 2016)).
`
`We are not persuaded by Patent Owner’s arguments, which overlook
`Petitioner’s articulation of how the combined teachings of Fry and Newell
`render obvious the claimed subject matter. See Pet. 17–20. As correctly
`noted by Petitioner (Pet. 17), Fry discloses that “[alt]hough the descriptions
`herein focus on a bicycling implementation, the invention is readily
`applicable to other sports involving travel over time, regardless of the
`equipment involved, including running.” Ex. 1004, 2:42–46. Fry further
`discloses that, “[i]n a preferred embodiment, the device according to the
`
`14
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`invention includes means for mounting an enclosed mobile computer system
`directly to the athlete or equipment in use.” Id. at 2:51–55 (emphasis
`added). Petitioner contends that, based these disclosures, the ordinary
`artisan would have incorporated the teachings of Newell “to re-arrange the
`Fry components in a manner that is safe, ergonomic, and efficient for
`runners.” Pet. 18. As correctly noted by Petitioner, Newell discloses a
`body-mounted wearable computer including separate body-worn sensor and
`output devices, including an eyeglass-mounted display. Ex. 1005, 11:51–67,
`Fig. 1. Petitioner explains:
`
`A [person having ordinary skill in the art (“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.
`Pet. 19 (citing Ex. 1002 ¶ 39) (emphasis added). Petitioner further explains
`that “mounting the monitor devices (e.g., GPS and heart rate monitor) on the
`user’s body is the most common sense arrangement, not least because it
`avoids the need to carry said components in one’s hands while running.” Id.
`(citing Ex. 1002 ¶ 39). Petitioner’s Declarant testifies:
`
`A PHOSITA would have therefore relied on the
`teachings in Newell to arrange the components in a manner that
`is safe, ergonomic, and efficient for a runner, since the system
`in Newell is designed to include the relevant components on a
`user during movement. Further, a PHOSITA would have
`recognized that forcing an athlete to carry the various sensor
`devices is not practical, so mounting the devices on the user’s
`body in accordance with the teachings of Newell would be a
`natural and common sense place for a PHOSITA to seek
`
`15
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`guidance. A PHOSITA would further recognize that an
`eyeglass-mounted heads-up display as taught by Newell 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 surrounding[s] to view the displayed
`information.
`Ex. 1002 ¶ 39.
`
`For the purposes of this Decision, and on this record, Petitioner,
`therefore, satisfactorily addresses both “the benefits that could have been
`obtained by combining the prior art references” and “the PHOSITA’s
`motivation to combine at the time of the invention.” See Nuvasive, 842 F.3d
`at 1384.
`
`Nor are we persuaded by Patent Owner’s argument that Fry teaches
`away from the combination set forth by Petitioner. See Prelim. Resp. 10. A
`reference teaches away from a claimed invention or a proposed modification
`if “a person of ordinary skill, upon reading the reference, would be
`discouraged from following the path set out in the reference, or would be led
`in a direction divergent from the path that was taken by the applicant.” In re
`Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d
`551, 553 (Fed. Cir. 1994)). Furthermore, “teaching away” requires a
`reference to actually criticize, discredit, or otherwise discourage the claimed
`solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent
`Owner has not identified any such disparagement or other disclosure that
`would have led the ordinary artisan from following the path taken by the
`inventors of the invention claimed in the ’759 patent, and, thus, has not
`persuasively established that Fry teaches away from the combination set
`
`16
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`forth by Petitioner. Additionally, Patent Owner fails to persuasively explain,
`at this stage of the proceeding, how incorporating Newell’s separate
`electronic positioning device and display unit into Fry’s computer would be
`beyond the skill set of a person of ordinary skill in the art.
`
`Accordingly, at this stage of the proceeding, we determine that
`Petitioner has established a reasonable likelihood of prevailing on its
`assertion that Fry and Newell render obvious claim 1.
`
`3. Claims 2–7, 9, 12, 14, 17–22, and 26
`Claims 2–7, 9, 12, 14, 17–22, and 26 depend, directly or indirectly,
`
`from claim 1. Petitioner identifies sufficient evidence indicating that Fry
`and Newell disclose the limitations in these claims and, to the extent
`necessary, provides persuasive argument or evidence to support its
`contentions that one of ordinary skill in the art would have had a reason to
`combine/modify the references to achieve the inventions recited in these
`claims. Pet. 21–29. Patent Owner does not present arguments regarding
`these claims separate from their dependence from claim 1. Prelim Resp. 23.
`On this record, Petitioner demonstrates a reasonable likelihood of prevailing
`in showing that claims 2–7, 9, 12, 14, 17–22, and 26 would have been
`obvious over Fry and Newell.
`
`D. Challenge Based on Fry, Newell, and Arcelus
`
`1. Overview of Arcelus
`Arcelus discloses a portable electrocardiogram viewer worn by the
`
`user. Ex. 1008, 1:10–11. The viewer allows the user to track his/her
`electrocardiogram signal in real time from wireless sources while
`
`17
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`performing athletic activity. Id. at 2:53–67. The viewer includes a display
`that can be attached to the user’s body or a nearby object, exemplary
`locations including the left or right arm or wrist, the waist, a nearby table, a
`bicycle frame, or a treadmill frame. Id. at 4:50–65. In one embodiment, the
`electrocardiogram electrodes and associated electronics are provided in a
`chest belt that transmits signals to the display unit via a radio frequency link.
`Id. at 10:18–53, Fig. 4.
`
`2. Claims 20, 22, and 23
`Claims 20, 22, and 23 depend, directly or indirectly, from claim 1.
`
`Petitioner identifies sufficient evidence indicating that Fry, Newell, and
`Arcelus disclose the limitations in these claims and, to the extent necessary,
`provides persuasive argument or evidence to support its contentions that one
`of ordinary skill in the art would have had a reason to combine/modify the
`references to achieve the inventions recited in these claims. Pet. 29–32.
`Patent Owner does not present arguments regarding these claims separate
`from their dependence from claim 1. Prelim Resp. 23. On this record,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 20, 22, and 23 would have been obvious over Fry, Newell, and
`Arcelus.
`
`E. Challenge Based on Fry, Newell, and Richardson
`
`1. Overview of Richardson
`Richardson discloses a personal fitness monitoring device that
`
`monitors the aerobic fitness of the user as the user exercises, and provides
`the user with information about the current exercise session. Ex. 1007, 1:5–
`
`18
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`13. The device includes a fitness assessment arrangement that receives
`locomotion, heart rate, and personal data to compute an estimate of the
`user’s fitness. Id. at 4:20–38. The locomotion data can be provided by a
`GPS component, which determines distance traveled, speed of traveling, and
`expended energy. Id. at 5:19–23. The heart rate data can be provided by
`sensors positioned within a chest strap, and the locomotion measuring device
`can also be provided in the chest strap. Id. at 15:29–32, 55–67, Figs. 7–8.
`The system may initiate alarms, which “may indicate whether the heart rate
`or speed is out of a selected range.” Id. at 17:39–43.
`
`2. Claim 29
`Independent claim 29 claims an exercise monitoring system and
`
`recites limitations (a)–(c) that are the same as or substantially similar to the
`limitations recited in claim 1, and further recites additional limitations such
`as “(d) an alarm, wherein said alarm is activated when a subject’s velocity or
`pace does not meet a predetermined target.” Compare Ex. 1001, 27:65–
`28:16, with id. at 30:11–27. Similar to claim 1, claim 29 recites “a display
`unit configured . . . for simultaneously displaying real-time data provided by
`said electronic positioning device and said physiological monitor, wherein
`said display unit is separate from said electronic positioning device.” Id. at
`30:20–24.
`
`Petitioner relies on Fry and Newell to satisfy elements (a)–(c) of claim
`29 in the same manner as discussed in section II.C.2 above. Pet. 36–37.
`Petitioner relies on Richardson to teach the use of alarms. Id. at 37. As
`noted above, Richardson discloses a personal fitness monitoring device in
`which alarms “may indicate whether the heart rate or speed is out of a
`
`19
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`selected range.” Ex. 1007, 17:39–43. Petitioner argues that one of ordinary
`skill in the art would have included Richardson’s alarms in the device of Fry
`as modified by Newell to “indicate when a user’s position-based data (e.g.,
`speed) and/or physiological data (e.g., heart rate) exceeds certain pre-set
`bounds” because “[s]uch alarm features were well known in the art as of
`1999 and a PHOSITA would have recognized that such alarms provide
`much more useful data than raw sensor outputs for a fitness monitor system
`like Fry.” Pet. 33 (citing Ex. 1002 ¶ 56).
`
`Patent Owner expressly relies on the same arguments discussed in
`section II.C.2 above to argue patentability over the combination of Fry,
`Newell, and Richardson. Prelim Resp. 14–15. Therefore, on this record,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claim 29 would have been obvious over Fry, Newell, and Richardson.
`
`3. Claims 9, 30, and 31
`Claim 9 depends directly from claim 1, and claims 30 and 31 depend,
`
`directly or indirectly, from claim 29. Petitioner identifies sufficient evidence
`indicating that Fry, Newell, and Richardson disclose the limitations in these
`claims and, to the extent necessary, provides persuasive argument or
`evidence to support its contentions that one of ordinary skill in the art would
`have had a reason to combine/modify the references to achieve the
`inventions recited in these claims. Pet. 35–38. Patent Owner does not
`present arguments regarding these claims separate from their dependence
`from claim 1 or claim 29. Prelim Resp. 23. On this record, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 9,
`30, and 31 would have been obvious over Fry, Newell, and Richardson.
`
`20
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`
`
`F. Challenge Based on Fry, Newell, Richardson, and Arcelus
`Claim 32 depends directly from claim 29. Petitioner identifies
`
`sufficient evidence indicating that Fry, Newell, Richardson, and Arcelus
`disclose the limitatio
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
