UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00294
`PATENT 6,736,759
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`IPR2018-00294
`U.S. Patent 6,736,759
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`Table of Contents
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`2.
`
`ii
`
`INTRODUCTION.................................................................................. 1
`THE ’759 PATENT ............................................................................... 1
`LEVEL OF ORDINARY SKILL IN THE ART ..................................... 2
`PETITIONER DOES NOT PROVE OBVIOUSNESS ........................... 3
`A.
`Claim Construction ...................................................................... 4
`B.
`(Ground 1) No Obviousness for “a display unit
`configured for displaying real-time data provided by
`said electronic positioning device and said physiological
`monitor” (claim 1) ........................................................................ 5
`(Ground 1) No Obviousness for “said display unit
`separate from said data acquisition unit” (claim 1) ..................... 11
`(Ground 3) The Deficiency of the Ground 1 Challenge
`of Claim 1 Taints the Ground 3 Challenge of
`Independent Claim 29 ................................................................ 16
`Ground 7 Fails to Prove Obviousness of Claim 1 ....................... 16
`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” ..................... 17
`“a display unit configured for displaying real-time
`data provided by said electronic positioning
`device and said physiological monitor” (claim 1) ............. 20
`The Petition Should Also Be Denied As To Challenged
`Dependent Claims 2−28 and 30−32. ........................................... 25
`CONCLUSION .................................................................................... 26
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`C.
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`D.
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`E.
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`F.
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`I.
`II.
`III.
`IV.
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`V.
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`

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`IPR2018-00294
`U.S. Patent 6,736,759
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`TABLE OF EXHIBITS
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom (previously filed)
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`iii
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`IPR2018-00294
`U.S. Patent 6,736,759
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. §42.120, Uniloc Luxembourg S.A. (the “Uniloc” or
`“Patent Owner”) submits this 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 ’759 patent observes 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 results in a lack of motivation, which in turn leads to a cessation of exercise.
`EX1001, 1:17−20.
`The ’759 patent also observes 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.
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`1
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`IPR2018-00294
`U.S. Patent 6,736,759
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`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; EX2001 10−12.
`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; EX2001 ¶¶ 10−12.
`
`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
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`IPR2018-00294
`U.S. Patent 6,736,759
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`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.
`Patent Owner relies on the expert declaration of Mr. Easttom as evidentiary
`support for certain arguments presented herein. See, e.g., EX2002 ¶¶ 1−39. Mr.
`Easttom defined a person of ordinary skill in the art in November 1999 as someone
`“with 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.” EX2002 ¶ 13. Mr. Easttom acknowledges that while he disagrees with
`the definition offered by Dr. Fyfe, his opinions expressed in his declaration are
`unaffected by whichever proffered definition is applied. Id. at ¶ 14.
`
`IV. PETITIONER DOES NOT PROVE OBVIOUSNESS
`Petitioner has the burden of proof to establish entitlement to relief. See, e.g.,
`37 C.F.R. §42.108(c). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges under 35 U.S.C.
`§ 103:
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`3
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`Ground
`1
`2
`3
`4
`5
`6
`7
`8
`9
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`Claims
`Claims 1−7, 9, 12, 14, 17−22, 26
`20, 22−23
`9, 29−32
`32
`4, 13, 15, 16, 27−28
`24−25
`1−5, 8−12, 14, 17, 19−26
`6
`4, 13, 15, 16, 27−28
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`IPR2018-00294
`U.S. Patent 6,736,759
`Reference(s)
`Fry1, Newell2
`Fry, Newell, Arcelus3
`Fry, Newell, Richardson4
`Fry, Newell, Richardson, Arcelus
`Fry, Newell, Chance5
`Fry, Newell, French6
`Vock7, Arcelus
`Vock, Arcelus, Richardson
`Vock, Arcelus, Chance
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`A. Claim Construction
`In the Institution Decision, the Board adopted the Federal Circuit’s
`construction of the term “displaying real-time data” to mean “displaying data
`without intentional delay, given the processing limitations of the system and the
`time required to accurately measure the data.” Institution Decision at 8. The Board
`further held that no other claim term required construction. Id. Under the Federal
`Circuit construction adopted by the Board for “displaying real-time data,” the
`
`
`
` 1
`
` U.S. Patent No. 6,002,982
`2 U.S. Patent No. 6,466,232
`3 U.S. Patent No. 6,149,602. With respect to the Arcelus reference, Mr. Easttom
`explained in his declaration why “[c]ombining Arcelus with any of the other asserted
`prior art would not only not be obvious, as the petitioner claims, but would be
`counter intuitive.” See, e.g., EX2001 ¶¶ 16−17.
`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
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`4
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`IPR2018-00294
`U.S. Patent 6,736,759
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`Petition fails to prove obviousness.8
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`B.
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` (Ground 1) No Obviousness for “a display unit configured for
`displaying real-time data provided by said electronic positioning
`device and said physiological monitor” (claim 1)
`In addressing claim construction of the phrase “displaying real-time data,”
`the Board’s Institution Decision refers to the Federal Circuit’s discussion of certain
`arguments presented on appeal. For example, the Board observed that “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.”
`Institution Decision at 12 (emphasis and block quotation in original). The Board
`further stated that:
`
`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.”
`Id. (emphasis added).
`
`
`
` 8
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` Mr. Easttom stated in his declaration that “for purposes of this proceeding I will
`use the petitioner’s adopted definitions in performing my analysis and opinions.”
`EX2001 ¶¶ 4−9.
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`U.S. Patent 6,736,759
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`The Federal Circuit did not, however, state that its construction “displaying
`data without intentional delay” only excludes delay arising from “storing [GPS data]
`for later review.” Had the Court intended to so limit the negative aspect of its
`construction (i.e., “without intentional delay”), and thereby significantly broaden
`claim scope, surely the Court would have made that explicit. The Court did not. The
`only qualification expressed in the construction itself is the instructive phrase “given
`the processing limitations of the system and the time required to accurately measure
`the data [to be displayed].” EX1023, at 14. Thus, while the intrinsic evidence reveals
`that one example form of “intentional delay” may arise where GPS data is stored for
`later review, nothing in the Court’s opinion suggests that is the only possible
`“intentional delay” excluded by the Court’s construction of the “real-time” claim
`language.
`This understanding of the Court’s opinion is reflected in the Federal Circuit’s
`ultimate holding regarding the construction of the claim term:
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`EX1023, at 14.
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`IPR2018-00294
`U.S. Patent 6,736,759
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`As shown above, the Federal Circuit did not construe the term by restricting
`it to one (or any) particular example of “intentional delay,” such that the operative
`question is whether or not GPS data is stored for later review. While this may be
`sufficient to show intentional delay, it is not required. The Court’s only explicit
`instruction of what must be considered when determining whether the construction
`“without intentional delay” is met is found in the following statement: “the
`processing limitations of the system and the time required to accurately measure the
`data.” Accordingly, the preliminary finding in the Institution Decision that Fry
`“does not intentionally delay its display” ostensibly because Fry’s “additional signal
`inputting and processing does not require the GPS data to be stored for later review”
`is not supported by either the Court’s construction or the Court’s reasoning.
`Even if it were sufficient (and it is not) for Petitioner to merely show that Fry
`does not store GPS data for later review, and thus allegedly meets the “without
`intentional delay” interpretation of “real-time,” the Petition fails to prove such a
`proposition. The Petition could not do so because Fry explicitly states that its GPS
`data is stored for later review, and that this is done to allow the execution of other
`computations and scanning independent of and unrelated to that GPS input. Fry
`expressly discloses that all this additional computation and scanning must occur
`before the display is updated.
`Fry discloses in Figure 3 (copied and annotated below) and its accompanying
`description, for example, that GPS input is received (block 330), computed (block
`334), and then stored (block 338).
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`IPR2018-00294
`U.S. Patent 6,736,759
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`
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`EX1004, Fig. 3 (colored annotations added).
`There is no real-time display of that data under the Federal Circuit’s
`construction, even if the claim language is narrowly interpreted to only exclude
`specific examples disclaimed during prosecution. This is because Fry discloses that
`once the GPS data is stored, a handful of intervening process blocks (e.g., blocks
`340, 342, 346, 350, 354) are required before the display is updated with that
`previously stored GPS data. Indeed, Fry identifies updating the display of its device
`as its “least critical function.” Id., 6:32−33; see also EX2001 ¶¶ 20−22. Fry’s
`deliberate design choice to not update the display with the GPS data until after
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`IPR2018-00294
`U.S. Patent 6,736,759
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`servicing a handful of other time-consuming functions, by definition, means that Fry
`explicitly discloses an intentional delay that includes “storing” the GPS data for later
`review (when the display ultimately is updated in block 360).
`After the GPS data is stored for later review, the Fry system then queries,
`computes, and stores distinct data from time critical sensors (at blocks 340, 342, and
`346, respectively). See, e.g., EX1004, Figure 3 and accompanying description
`including, for example, col. 6:1−41. The computation for the time critical sensor
`(performed in block 342) is unrelated to and independent of the distinct computation
`(performed in block 334) for the GPS input. Id. The display of the GPS data is then
`intentionally delayed further still by the execution of scanning processes for other
`sensors (block 350) and the subsequent storing of that data (block 354). Id. It is not
`until after completion of all those intervening and higher-priority processes (and the
`associated delay arising from such execution) that that Fry system, by intentional
`design, finally uses the previously stored GPS data to update the display (in block
`360). Id.
`Fry’s description of the above sequence of numerous intervening processing
`blocks between the storing the GPS data (block 338) and updating the display (block
`360) includes the block quotation that follows:
`
`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
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`IPR2018-00294
`U.S. Patent 6,736,759
`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 routines are
`repeated, or skipped, in accordance with mode and the
`existence of various inputs.
`EX1004, 6:1−41 (emphasis and underlining added).
`As shown by the block quotation above, the GPS data identified in the Petition
`is received at block 330, it is stored in memory at block 338, and it is not retrieved
`from memory for display until block 360, after the execution of a handful of time-
`consuming and higher-priority intervening processing blocks. Those numerous,
`higher-priority processing blocks that Fry purposefully implements before
`ultimately tending to its “least critical function” (displaying the GPS data) cannot
`reasonably be considered to be implemented “without intentional delay,” as required
`under the construction adopted by the Board.
`
` . . .
`
` .
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`10
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`IPR2018-00294
`U.S. Patent 6,736,759
`
`Notably, Petitioner makes no attempt to prove that the intervening processing
`blocks (executed in the time interval between storing GPS data and ultimately
`displaying that data) create a delay that can only be attributed to “the processing
`limitations of the system and the time required to accurately measure the [GPS]
`data.” Petitioner could not do so because Fry does not disclose or suggest that its
`GPS data is displayed just as soon as its computation is complete. See, e.g., EX1004,
`Fig. 3 and accompanying description. Fry’s intervening processing blocks are
`expressly extraneous to the disclosed function of retrieving, computing, and
`displaying the GPS data. See, e.g., EX1004, Fig. 3 (processing block 350 for
`scanning “other sensors” and “less time-critical sensors”); id. at 6:27−28; see also
`EX2001 ¶¶ 19−22.
`For the foregoing reasons, Ground 1 of the Petition should be denied as failing
`to prove obviousness for “a display unit configured for displaying real-time data,”
`as recited in claim 1.
`
`C.
`
`(Ground 1) No 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 unit: “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 the recitation “said display unit
`separate from said data acquisition unit.”
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`IPR2018-00294
`U.S. Patent 6,736,759
`
`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.9
`Newell cannot be relied upon to cure the admitted deficiencies of Fry at least
`because Fry teaches away from such a combination. 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
`
`
` 9
`
` 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
`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.”).
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`U.S. Patent 6,736,759
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`“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
`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 above 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]
`
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`U.S. Patent 6,736,759
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`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
`(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
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`U.S. Patent 6,736,759
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`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”).
`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);
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`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 prove 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
`(“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 Prove Obviousness of Claim 1
`The redundant challenges in Grounds 7−9 should be denied. 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
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`analysis cannot meet Petitioner’s burden to prove obviousness. 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
`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
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`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., 885 F.3d 1367 (Fed. Cir. 2018).
`There, the Federal Circuit proscribed using a conclusory 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.
`In the Institution Decision, the Board states that DSS Tech. is distinguishable
`ostensibly because Petitioner’s declarant identifies reasons to combine a GPS
`receiver and a sensor for skin resistivity in Vock. The Board appears to have
`misunderstood the proposition for which DSS Tech. was cited. The Petition runs
`afoul of DDS Tech. because it proposes a combination of the GPS receiver and a
`sensor for skin resistivity without providing any reasoning other than the conclusory
`statement that users allegedly would “benefit” from such a combination. That the
`components could share a power supply and share a housing could be true of
`anything – a GPS and a toaster, a GPS and a flashlight, etc.
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`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 po