Trials@uspto.gov
`571-272-7822
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`Paper No. 20
`Entered: April 12, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`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.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`1 At the time the petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
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`IPR2018-00294
`Patent 6,736,759 B1
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`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1–32 of U.S. Patent No. 6,736,759 B1 (Ex. 1001, “the ’759 patent”).
`Paper 1 (“Pet.”), 1. Uniloc Luxembourg S.A., a predecessor in interest to
`Uniloc 2017 LLC (“Patent Owner”), filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). On May 21, 2018, we instituted an inter partes review of
`claims 1–32 on all grounds raised in the Petition (Paper 7, 33–34
`(“Decision” or “Dec.”)). Patent Owner filed a Patent Owner Response.
`Paper 9 (“PO Resp.”). Petitioner filed a Reply to the Patent Owner
`Response. Paper 12 (“Pet. Reply”). An oral hearing was held on January
`23, 2019. A transcript of the hearing has been entered into the record. Paper
`19 (“Tr.”).
`
`Per our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response will be deemed
`waived.”2 Nonetheless, Petitioner bears the burden to show, by a
`preponderance of the evidence, that the challenged claims are unpatentable.
`For the reasons that follow, we conclude that Petitioner has proven by a
`preponderance of the evidence that claims 1–32 of the ’759 patent are
`unpatentable.
`
`
`2 See Paper 8, 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (a patent owner’s “response should identify
`all the involved claims that are believed to be patentable and state the basis
`for that belief”).
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`IPR2018-00294
`Patent 6,736,759 B1
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`B. 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.
`
`C. 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
`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.
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`IPR2018-00294
`Patent 6,736,759 B1
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`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
`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.
`
`D. 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
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`(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;
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`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
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`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.
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`E. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted claims and grounds of
`
`unpatentability as follows (Dec. 33):
`References
`
`Basis3
`
`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 Arcelus6
`Fry, Newell, and Richardson7 35 U.S.C. § 103(a) 9 and 29–318
`Fry, Newell, Richardson, and
`35 U.S.C. § 103(a) 32
`Arcelus
`
`3 The ’759 patent was filed on November 9, 1999, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) took effect.
`4 US 6,002,982 (filed Nov. 1, 1996, issued Dec. 14, 1999) (Ex. 1004, “Fry”).
`5 US 6,466,232 B1 (filed Dec. 18, 1998, issued Oct. 15, 2002) (Ex. 1005,
`“Newell”).
`6 US 6,149,602 (filed Mar. 29, 1997, issued Nov. 21, 2000) (Ex. 1008,
`“Arcelus”).
`7 US 5,976,083 (filed July 30, 1997, issued Nov. 2, 1999) (Ex. 1007,
`“Richardson”).
`8 Although claim 32 is listed as being included in this ground (Pet. 8), the
`claim is not addressed in the analysis section (see id. at 32–38).
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`Fry4 and Newell5
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`References
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`Fry, Newell, and Chance9
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`Fry, Newell, and French10
`Vock11 and Arcelus
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`Vock, Arcelus, and
`Richardson
`Vock, Arcelus, and Chance
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`Basis3
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`Challenged
`Claim(s)
`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
`
`35 U.S.C. § 103(a) 4, 13, 15, 16, 27, and
`28
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`Pet. 8. Petitioner submits a declaration of Dr. Kenneth Fyfe (Ex. 1002,
`“Fyfe Declaration” or “Fyfe Decl.”) in support of its contentions.
`
`II. ANALYSIS
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`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`
`
`9 US 5,564,417 (issued Oct. 15, 1996) (Ex. 1009, “Chance”).
`10 WO 97/17598 (published May 15, 1997) (Ex. 1010, “French”).
`11 US 6,539,336 B1 (filed June 2, 1998, issued Mar. 25, 2003) (Ex. 1006,
`“Vock”).
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`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`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 (“POSITA” or “PHOSITA”) 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, Dr. William C. Easttom II,12 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; see also PO Resp. 3
`(citing same).
`
`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. For
`
`
`12 It is our understanding that since the time of submitting his declaration,
`Dr. Easttom has obtained his doctorate.
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`the purposes of this decision, therefore, we adopt Petitioner’s proposed
`definition as more representative, but note that our analysis would be the
`same under either definition.
`
`C. 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.13 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
`
`
`13 This Petition was filed before the effective date of the amendment to 37
`C.F.R. § 42.100 that changed the claim construction standard applied in inter
`partes reviews. Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`FR 51340 (Oct. 11, 2018) (effective November 13, 2018) (to be codified at
`37 C.F.R. pt. 42). Thus, we use the broadest reasonable interpretation claim
`construction standard for this proceeding. We would construe the claim
`terms discussed below the same under Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc).
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`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);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`
`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 does not propose interpretations for any claim terms.
`See PO Resp. 4–5.
`
`We address below the claim term “displaying real-time data,” and,
`based on the record before us, determine that no other claim terms require
`construction. Vivid Techs., 200 F.3d at 803.
`
`1. displaying real-time data
`“There is no dispute that the [Patent Trial and Appeal Board] is not
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`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
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`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
`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.
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`D. Overview of the Prior Art
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`1. 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.
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`2. Newell
`Newell discloses a body-mounted wearable computer that
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`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.
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`3. Arcelus
`Arcelus discloses a portable electrocardiogram viewer worn by the
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`user. Ex. 1008, 1:10–11. The viewer allows the user to track his/her
`electrocardiogram signal in real time from wireless sources while
`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
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`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.
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`4. Richardson
`Richardson discloses a personal fitness monitoring device that
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`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–
`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.
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`5. Chance
`Chance discloses a compact oximeter constructed to be worn on a
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`subject’s body over long periods of activity. Ex. 1009, 1:52–61. The
`oximeter includes several light emitting diodes (LEDs) that generate light of
`different wavelengths introduced into the examined tissue and several
`photodiode detectors that detect specific wavelengths of light. Id. at 1:61–
`65. “The oximeter is adapted to measure the attenuation of light migrating
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`from the source to the detector and also to determine the average migration
`pathlength. The migration pathlength and the intensity attenuation data are
`then used for direct quantitation of a tissue property.” Id. at 2:19–23. The
`oximeter can be used to detect hemoglobin oxygenation. Id. at 4:47–49,
`7:47–50. The system may trigger an alarm based upon established
`standards, for example, in monitoring aviators for possible black-out
`conditions and for apnea. Id. at 8:41–44.
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`6. French
`French discloses a movement skills assessment system that tracks a
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`player’s position continuously in real-time. Ex. 1010, 5. The system
`includes a wireless position tracker coupled to a personal computer. Id. The
`system measures and processes velocity vectors to compare velocity related
`information in all directions and measurement of elapsed times or composite
`speeds. Id. at 6. “In the preferred embodiment, the intensity of physical
`activity is quantified in that energy consumed (calories burned),
`acceleration, and other measurements are presented, based on user-supplied
`data such as weight.” Id.; see also id. at 18–19.
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`7. Vock
`Vock discloses a system for monitoring and quantifying sport
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`movement (associated either with the person or with the vehicle used or
`ridden by the person). Ex. 1006, 1:17–21. The system includes a sensing
`unit that has a number of sensors, such as speed and power sensors. Id. at
`22:20–49. In some embodiments, the system includes a data unit that
`communicates via radio frequency signals with the sensing unit. Id. at
`23:19–24, 24:47–48. The data unit may be provided in the form of a watch,
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`having a display, via which performance data is presented to the user. Id. at
`24:64–67, 25:29–30, 40:38–47. The system may include a GPS sensor to
`determine, for example, absolute position, speed, and height of the user. Id.
`at 39:22–38, 40:63–41:8.
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`E. Challenge Based on Fry and Newell
`Petitioner asserts that the combination of Fry and Newell describes all
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`elements of claims 1–7, 9, 12, 14, 17–22, and 26, and that it would have
`been obvious to combine Fry and Newell. Pet. 12–29.
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`1. Claim 1
`a. Petitioner’s Contentions
`Petitioner relies on Fry to teach most of the limitations of claim 1, but
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`relies on Newell to teach a display unit that is separate from a data
`acquisition unit. Id. at 14–21.
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`Claim 1 recites “[a]n exercise monitoring system.” Ex. 1001, 27:65.
`Petitioner contends that “Fry discloses an exercise monitoring system.” Pet.
`14 (citing Ex. 1004, 1:6–8, 2:44–46). We are persuaded by Petitioner’s
`showing and agree that Fry discloses “[a]n exercise monitoring system.”
`
`Claim 1 recites “(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.” Ex.
`1001, 27:66–28:2. Petitioner contends that Fry discloses an exercise
`monitoring system that includes a GPS receiver and a heart-rate sensor. Pet.
`14 (citing Ex. 1004, 2:55–58, 3:7–10). Petitioner further contends that Fry’s
`exercise monitoring system includes means for mounting the system directly
`to an athlete. Id. (citing Ex. 1004, 2:52–55). We are persuaded by
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`Petitioner’s showing and agree that Fry discloses “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.”
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`Claim 1 recites “(b) 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). 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 (citing
`Ex. 1002 ¶ 36; Ex. 1023). Notwithstanding Patent Owner’s arguments,
`which we discuss below, we are persuaded by Petitioner’s showing and
`agree that Fry describes “a display unit configured for displaying real-time
`data provided by said electronic positioning device and said physiological
`monitor.”
`
`Claim 1 recites “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
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`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 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).
`Notwithstanding Patent Owner’s arguments, which we discuss below, we are
`persuaded by Petitioner’s showing and agree that Fry and Newell describe
`“said display unit separate from said data acquisition unit.”
`
`Claim 1 recites “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
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`subject so as to be visible to the subject while performing the physical
`activity.” Ex. 1001, 28:7–12. Petitioner argues that Newell’s “eyeglass-
`mounted display coupled with the body-mounted monitors provides a
`convenient arrangement to provide information to an athlete during exercise
`with minimal distraction.” Pet. 20 (citing Ex. 1002 ¶ 39). We are persuaded
`by Petitioner’s showing and agree that Newell describes “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.”
`
`Claim 1 recites “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.” Ex. 1001,
`28:13–16. Petitioner contends that Fry discloses displaying sensor data,
`such as geographic position, speed, and physiological conditions, in real-
`time. Pet. 20–21 (citing Ex. 1004, 5:54–60). Notwithstanding Patent
`Owner’s arguments, which we discuss below, we are persuaded by
`Petitioner’s showing and agree that Fry describes “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.”
`
`b. Patent Owner’s Contentions
`Patent Owner presents several arguments challenging the combination
`
`of Fry and Newell. PO Resp. 5–16. First, Patent Owner faults our
`interpretation of “displaying real-time data” in the Decision, which, as noted
`above, tracks the interpretation adopted by the Federal Circuit in Paragon
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`Solutions (Ex. 1023). Id. at 6. Patent Owner argues that “[t]he Federal
`Circuit did not . . . state that its construction ‘displaying data without
`intentional delay’ only excludes delay arising from ‘storing [GPS data] for
`later review.’” Id. (second alteration in original). According to Patent
`Owner, “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.” Id. Patent Owner argues that “[t]he 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.’” Id. at 7.
`
`We are not persuaded by Patent Owner’s arguments. Initially, we
`note that, when construing “displaying real-time data,” the Federal Circuit
`first considered the Specification and determined that “the [S]pecification
`supports a construction of ‘real-time’ in this case that precludes intentionally
`delaying the display of data by storing it for later review.” Ex. 1023, 12
`(emphasis added). The Federal Circuit, thus, likened “intentional delay” to
`“prior art methods that stored data for review only after the activity was
`complete.” Id.
`
`In its analysis of the prosecution history of the ’759 patent, the
`Federal Circuit noted that:
`After claims 1 and 18 were rejected as anticipated by Root, the
`applicants amended the claims to add the “displaying real-time
`data” limitation. In their remarks, the applicants stated,
`“Furthermore, the personal computer depicted in Fig. 7 of Root
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`cannot be used to display real-time data, as required by claim 1.
`Rather, the personal computer in Fig. 7 of Root will merely
`display performance data after the athlete has completed their
`activity.” . . . The applicants’ remarks distinguishing Root
`therefore echo the criticism of the prior art in the specification.
`In the applicants’ view, the invention is preferable because it
`does not intentionally delay the display of data by storing it for
`later review after the athlete has completed his or her activity
`(as in Root). Rather, in this invention, the data is displayed
`without any intentional delay—i.e., in “real time.”
`Id. at 13–14 (emphasis added, citations omitted). Thus, contrary to Patent
`Owner’s assertion, the Federal Circuit relied heavily on the comments made
`by the applicants in amending the independent claims during prosecution, as
`well as the language of the Specification, in construing “displaying real-time
`data,” and interpreted “real-time” by explicitly contrasting the term to “the
`display of data by storing it for later review after the athlete has completed
`his or her activity.” See id.
`
`Continuing, the Federal Circuit determined the extrinsic evidence
`relied upon by the district court to be “too vague to be of significant help,”
`and noted that “definitions of ‘real-time’ in other technical dictionaries
`suggest that a real-time process cannot involve intentional delay or storage
`for later processing.” Id. at 14. The Federal Circuit, therefore, disagreed
`with the district court’s construction of “displaying real-time data” to mean
`“displaying data substantially immediately without contextually meaningful
`delay so that the information is displayed in a time frame experienced by
`people.” Id.; see also id. at 10 (providing the district court construction).
`The Federal Circuit concluded by determining:
`[W]hile the data need not be displayed instantaneously, it must
`be displayed without any intentional delay, taking into account
`the processing limitations of the system and the time required to
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`accurately measure the data. We therefore construe “displaying
`real-time data,” as used in the claims of this case, as “displaying
`data without intentional delay, given the processing limitations
`of the system and the time required to accurately measure the
`data.”
`Id. at 14. Patent Owner’s arguments improperly focus on the Federal
`Circuit’s analysis of the extrinsic evidence and ignore the lengthy
`consideration of the intrinsic evidence, in which the court likened
`“intentional delay” to displaying the measured data after the athlete has
`completed his or her activity. See id. at 11–14.
`
`Moreover, Patent Owner’s arguments ignore our findings in the
`Institution Decision, in which we stated that we were not persuaded by
`Patent Owner’s arguments in its Preliminary Response “for the reasons set
`forth by the Federal Circuit in discussing Timex’s argument regarding
`instantaneous display.” Dec. 12 (citing Ex. 1023, 11–12). As we explained,
`Fry discloses that,
`after inputting and processing data from all sensors, “the
`di