UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________
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`APPLE INC.,
`Petitioner
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`
`v.
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`UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`_______________________
`
`Case No. IPR2018-00294
`Patent No. 6,736,759
`_______________________
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`
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`PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 6,736,759
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`Table of Contents
`Introduction .................................................................................................... 1
`I.
`Summary of the ’759 Patents .......................................................................... 3
`II.
`A. The Alleged Invention of the ’759 Patent ...................................................... 3
`B. Summary of the Prosecution History of the ’759 Patent ................................ 4
`III. Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ......................................... 5
`A. Real Parties-in-Interest and Related Matters .................................................. 5
`B. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) ............................ 6
`C. Payment of Fees Under 37 C.F.R. § 42.103 ................................................... 7
`IV. Requirements for Inter Partes Review Under 37 C.F.R. § 42.104 ................. 7
`A. Grounds for Standing Under 37 C.F.R. § 42.104(A) ..................................... 7
`B. Identification of Challenge Under 37 C.F.R. § 42.104(B) and Relief
`Requested .............................................................................................................. 7
`i. The Grounds for Challenge ......................................................................... 8
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`ii. Claim Construction Under 37 C.F.R. § 42.104(b)(3) ................................. 9
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`a) “data acquisition unit” ............................................................................. 9
`b) “display unit” ......................................................................................... 10
`c) “displaying real-time data” .................................................................... 10
`d) “probe” ................................................................................................... 11
`iii. Level of Skill of a Person Having Ordinary Skill in the Art ..................... 11
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`There is a Reasonable Likelihood that the Challenged Claims of the ’759
`V.
`Patent are Unpatentable .......................................................................................... 12
`A. Ground 1: Fry in view of Newell renders claims 1-7, 9, 12, 14, 17-22, 26,
`and 30-31 obvious ............................................................................................... 12
`B. Ground 2: Fry in view of Newell in further view of Arcelus renders claims
`20 and 22-23 obvious .......................................................................................... 29
`C. Ground 3: Fry in view of Newell in further view of Richardson renders
`claims 9 and 29-32 obvious ................................................................................. 32
`D. Ground 4: Fry in view of Newell in further view of Richardson and Arcelus
`renders claim 32 obvious ..................................................................................... 38
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`Petition for Inter Partes Review of
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`U.S. Patent No. 6,736,759
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`E. Ground 5: Fry in view of Newell in further view of Chance renders claims 4,
`13, 15, 16, and 27-28 obvious ............................................................................. 39
`F. Ground 6: Fry in view of Newell in view of French renders claims 24-25
`obvious ................................................................................................................ 44
`G. Ground 7: Vock in view of Arcelus renders claims 1-5, 7-12, 14, 17, and 19-
`26 obvious ........................................................................................................... 46
`H. Ground 8: Vock in view of Arcelus in further view of Richardson renders
`claim 6 obvious ................................................................................................... 63
`I. Ground 9: Vock in view of Arcelus in further view of Chance renders claims
`4, 13, 15, 16, and 27-28 obvious ......................................................................... 65
`VI. Conclusion .................................................................................................... 69
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`I.
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`INTRODUCTION
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`Petitioner Apple Inc. (“Petitioner”) respectfully requests an Inter Partes Review
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`(“IPR”) of claims 1-32 (collectively, the “Challenged Claims”) of U.S. Patent No.
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`6,736,759 (“’759 Patent”). The ’759 Patent was filed on November 9, 1999 and
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`issued on May 18, 2004 to Jack B. Stubbs, et. al. (“Applicant”).’759 Patent
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`(EX1001). The ’759 Patent broadly describes an exercise monitoring system
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`comprising an electronic positioning device (e.g., GPS), a physiological monitor
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`(e.g., heart rate monitor), and a display for displaying real-time data to the user
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`while exercising. Id. at 2:66-3:13. As emphasized during prosecution, the ’759
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`Patent’s purported points of novelty were (1) physically separating the display unit
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`from the electronic positioning device and the physiological monitor and (2)
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`displaying “real-time” data.
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`These purportedly distinguishing features are well represented in the prior art,
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`including in the two base combinations presented herein.1 The first combination
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`relies primarily on U.S. Patent No. 6,002,982 to Fry (“Fry”), which teaches an
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`exercise monitoring system comprising GPS, a physiological monitor, and real-
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`time display of data from both. Although Fry expressly recognizes that its system
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`1 The 32 Challenged Claims present additional limitations beyond the primary concept of
`separating the display from the data acquisition components and presenting information in real
`time. These additional limitations are, however, minor variations on the base concept and are
`taught by a variety of secondary references across the nine proposed grounds of unpatentability
`presented herein.
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`1
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`is applicable to runners, the sole detailed embodiment relates to cycling. As
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`discussed herein, a person having ordinary skill in the art (PHOSITA) would have
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`recognized that Fry’s system could be easily adapted for runners by arranging the
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`Fry components on the user’s person pursuant to the teachings of U.S. Patent No.
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`6,466,232 to Newell et al. (“Newell”). With this straightforward modification that
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`is expressly motivated by Fry itself, the key concepts in the Challenged Claims are
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`rendered obvious.
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`The second combination addressed herein relies primarily on U.S. Patent No.
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`6,539,336 to Vock et al. (“Vock”) (EX1006), which discloses an exercise
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`monitoring system with GPS, a heart rate monitor, and a separate wrist-mounted
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`display for real-time display of positional data from the GPS. Although Vock does
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`not expressly describe displaying heart rate information, a PHOSITA would have
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`looked to prior art references like U.S. Patent No. 6,149,602 to Arcelus
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`(“Arcelus”), which discloses a chest-mounted heart rate monitor and wrist-
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`mounted display for relaying real-time pulse information to the user. Adding real-
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`time display of heart rate information to Vock, pursuant to the teachings of Arcelus,
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`also captures the key concepts in the Challenged Claims.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`II.
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`SUMMARY OF THE ’759 PATENTS
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`A. THE ALLEGED INVENTION OF THE ’759 PATENT
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`The ’759 Patent claims comprise three main components: 1) an electronic
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`positioning device, e.g., a GPS receiver, 2) a physiological monitor, e.g., a heart
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`rate or blood oxygen sensor, and 3) a physically separate display for displaying
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`data in real-time from the positioning device and the physiological monitor. Id. at
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`3:1-13, 8:8-13. Figure 3 (below) shows an athlete wearing the claimed exercise
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`monitoring system, which consists of data acquisition unit 20 on the athlete’s belt
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`and separate display 7 worn on the athlete’s wrist.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`B.
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`SUMMARY OF THE PROSECUTION HISTORY OF THE ’759
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`PATENT
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`The ’759 patent issued from U.S. Patent Application No. 09/436,515 (“the
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`’515 Application”), which was filed on November 9, 1999. For the purposes of this
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`IPR, it is assumed that all Challenged Claims are entitled to this priority date.
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`In the first significant exchange with the PTO, the Examiner issued a Non-
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`Final Rejection on February 12, 2003, rejecting all claims as anticipated under §
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`102 and/or rendered obvious under § 103 by U.S. Patent No. 6,013,007 to Root et
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`al. (“Root”), and in view of U.S. Patent No. 6,032,108 to Seiple et al. (“Seiple”) for
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`dependent claims 60 and 61. ’759 Patent File History, Office Action at 62-64.
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`(EX1003). The Examiner noted that Root teaches a GPS, a heart rate monitor, and
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`a display for displaying a subject’s velocity, pace, and distance travelled, and the
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`heart rate monitor (but not the GPS) is separate from the display. Id. at 62-63. The
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`Examiner further found that several elements would have been obvious in view of
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`Root, including the use of an oximeter, GPS signals, and alarms. Id. at 63. Finally,
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`the Examiner noted that the heads-up display disclosed in Seiple would have been
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`obvious to combine with Root. Id. at 63-64.
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`In response, the Applicant amended claim 1 to require the electronic
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`positioning device and physiological monitor to be “configured to be worn by a
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`subject performing a physical activity.” Id. at 50-53. The Applicant further
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`amended claim 1 “to require that the display unit is separate from the data
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`acquisition unit and is configured to display real-time data.” Id. (emphasis added).
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`Similar amendments were made to independent claim 18 (now issued claim 29).
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`Id. at 54. Distinguishing the prior art, Applicant argued that Root teaches a “unitary
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`structure in which the data acquisition unit and the display screen are provided as
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`a single unit” and further argued that Root’s personal computer “cannot be worn
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`by someone” during physical activity. Id. at 50-54. (emphasis added). The
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`Examiner then allowed the amended claims and the ’759 Patent issued on May 18,
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`2004. ’759 patent (EX1001).
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`III. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
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`A. REAL PARTIES-IN-INTEREST AND RELATED MATTERS
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`Petitioner is the real party-in-interest. 37 C.F.R. § 42.8(b)(1). Pursuant to 37
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`C.F.R. § 42.8(b)(2), the ’759 Patent is at issue in Uniloc USA, Inc. et al. v. Apple
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`Inc., Case No. 2-17-cv-00708 (E.D. Tex.).
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`Additionally, the ’759 Patent was previously at issue in Paragon Solutions,
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`LLC v. Timex Corp., 1:06-cv-677-MRB (S.D. Ohio). Certain findings in the
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`Paragon court’s Markman Order were appealed to the Court of Appeals for the
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`Federal Circuit (“CAFC”), which issued a comprehensive ruling on claim
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`Petition for Inter Partes Review of
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`construction. Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075 (Fed. Cir. 2009)
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`(EX1023).
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`B.
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`LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. §
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`42.8(B)(3)
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`Petitioner provides the following designation and service information for
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`lead and back-up counsel. 37 C.F.R. § 42.8(b)(3) and (b)(4). Please direct all
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`correspondence regarding this proceeding to lead and back-up counsel at their
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`respective email addresses listed below. 37 C.F.R. § 42.8(b)(4).
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`
`Lead Counsel
`Adam P. Seitz (Reg. No. 52,206)
`adam.seitz@eriseip.com
`ptab@eriseip.com
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
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`Back-Up Counsel
`Paul R. Hart (Reg. No. 59,646)
`paul.hart@eriseip.com
`ptab@eriseip.com
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
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`Chris R. Schmidt (Reg. No. 63,982)
`chris.schmidt@eriseip.com
`ptab@eriseip.com
`Postal and Hand-Delivery Address:
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`C.
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`PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
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`The undersigned submitted payment by deposit account with the filing of
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`this Petition authorizing the Office to charge $32,200. 37 C.F.R. § 42.103.
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`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
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`§ 42.104
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`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A)
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`Petitioner certifies that the ’759 Patent is available for IPR and that the
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`Petitioner is not barred or estopped from requesting IPR challenging the claims of
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`the ’759 Patent. Specifically, Petitioner states: (1) Petitioner is not the owner of the
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`’759 Patent, (2) Petitioner has not filed a civil action challenging the validity of
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`any claim of the ’759 Patent, and (3) this Petition is filed less than one year after
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`the Petitioner was served with a complaint alleging infringement of the ’759
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`Patent.
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`B.
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`IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. §
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`42.104(B) AND RELIEF REQUESTED
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`In view of the prior art, evidence, and claims charts, claims 1-32 of the ’759
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`Patent are unpatentable and should be cancelled. 37 C.F.R. § 42.104(b)(1).
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`i.
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`The Grounds for Challenge
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`Based on the prior art references identified below, IPR of the Challenged
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`Claims should be granted. 37 C.F.R. § 42.104(b)(2).
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`Proposed Grounds of Unpatentability
`Ground 1: Claims 1-7, 9, 12, 14, 17-22, and 26 are obvious
`under § 103(a) over Fry in view of Newell
`Ground 2: Claims 20, and 22-23 are obvious under § 103(a) over
`Fry in view of Newell in further view of Arcelus
`Ground 3: Claims 9, and 29-32 are obvious under § 103(a) over
`Fry in view of Newell in further view of U.S. Patent No.
`5,976,083 to Richardson et al. (“Richardson”)
`Ground 4: Claim 32 is obvious under § 103(a) over Fry in view
`of Newell in further view Richardson and Arcelus
`Ground 5: Claims 4, 13, 15, 16, and 27-28 are obvious under §
`103(a) over Fry in view of Newell in further view of U.S. Patent
`No. 5,564,417 to Chance (“Chance”)
`Ground 6: Claims 24-25 are obvious under § 103(a) over Fry in
`view of Newell in further view of PCT App. No. US/96/17580 to
`French (“French”)
`Ground 7: Claims 1-5, 8-12, 14, 17, 19-26 are obvious under §
`103(a) over Vock in view of Arcelus
`Ground 8: Claim 6 is obvious under § 103(a) over Vock in view
`of Arcelus in further view of Richardson
`Ground 9: Claims 4, 13, 15, 16, and 27-28 are obvious under §
`103(a) over Vock in view of Arcelus in further view of Chance
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`Reference
`Exhibit Nos.
`1004, 1005
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`1005,
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`1005,
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`1004,
`1008
`1004,
`1007
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`1005,
`1004,
`1007, 1008
`1004,
`1005,
`1009
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`1005,
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`1004,
`1010
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`1006, 1008
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`1008,
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`1008,
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`1006,
`1007
`1006,
`1009
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`Section IV identifies where each element of the Challenged Claims is found in the
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`prior art. 37 C.F.R. § 42.104(b)(4). The exhibit numbers of the evidence relied
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`upon to support the challenges are provided above and the relevance of the
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`evidence to the challenges raised is provided in Section IV. 37 C.F.R. §
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`42.104(b)(5). Exhibits 1001-1026 are also attached.
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`ii.
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`Claim Construction Under 37 C.F.R. § 42.104(b)(3)
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`In this proceeding, claim terms of an unexpired patent should be given their
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`“broadest reasonable construction in light of the specification.” 37 C.F.R. §
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`42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016).
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`Petitioner proposes all claim terms not specifically discussed below should be
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`given their broadest reasonable construction in light of the specification. The claim
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`construction analysis is not, and should not be viewed as, a concession by
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`Petitioner as to the proper scope of any claim term in any litigation. Moreover,
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`these assumptions are not a waiver of any argument in any litigation that claim
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`terms in the ’759 Patent are indefinite or otherwise invalid.
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`a)
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`“data acquisition unit”
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`Claims 1, 6, 8-9, 20, 22, 29, and 31 recite a “data acquisition unit,” ’759
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`Patent at 27:65-30:34 (EX1001). The CAFC construed this term to mean “a
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`structure or set of structures including at least the electronic positioning device and
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`the physiological monitor.” Paragon Sols., 566 F.3d at 1086 (EX1023). For this
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`proceeding, Petitioner adopts the CAFC’s construction because a Broadest
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`Reasonable Interpretation (“BRI”) must be at least as broad as the CAFC’s
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`construction.
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`b)
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`“display unit”
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`Claims 1, 10-11, 17-18, 20, 22-23, 29, and 32 recite a “display unit.” ’759
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`Patent at 27:65-30:34 (EX1001). The CAFC construed this term to mean “a
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`structure or set of structures, separate from the data acquisition unit, for displaying
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`real-time data provided by both the electronic positioning device and the
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`physiological monitor independently or over a common transmission path.”
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`Paragon Sols., 566 F.3d at 1087 (EX1023). For this proceeding, Petitioner adopts
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`the CAFC’s construction because a BRI must be at least as broad as the CAFC’s
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`construction.
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`c)
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`“displaying real-time data”
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`Claims 1 and 29 recite a “displaying real-time data.” ’759 Patent at 27:65-
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`30:28 (EX1001). The CAFC construed this term to mean “displaying data without
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`intentional delay, given the processing limitations of the system and the time
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`required to accurately measure the data.” Paragon Sols., 566 F.3d at 1092-93
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`(EX1023). For purposes of this proceeding, Petitioner adopts the CAFC’s
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`construction because a BRI must be at least as broad as the CAFC’s construction.
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`d)
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`“probe”
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`Claim 12 recites a “probe configured for acquiring physiological data from a
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`user.” ’759 Patent at 27:65-30:28 (EX1001). In the Paragon litigation, the parties
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`alternatively proposed “probe” be construed as a “sensor” or a “device.” Joint
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`Markman Chart at 5 (EX1024). The District Court held that the ’759 Patent uses
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`“sensor” interchangeably with “probe” and concluded that “a ‘probe’ [‘sensor’]
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`means a device used to obtain physiological information from a user.” District
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`Court Markman Order at 15-16 (EX1025). For purposes of this proceeding,
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`Petitioner adopts the District Court’s construction.
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`iii. Level of Skill of a Person Having Ordinary Skill in the Art
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`As explained by Dr. Fyfe, exercise monitoring systems that used electronic
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`distance sensors and physiological monitors date back to the 1970s. Fyfe Decl.
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`(EX1002) at ¶¶23-28. From the 1980s through the mid-1990s, a myriad of
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`electronic exercise monitoring systems were being patented and produced. Id.; see
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`also Kaufman (EX1014) at 27:11-17; 4:58-68.
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`A person having ordinary skill in the art (PHOSITA) as of the ’759 Patent
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`priority date in November 1999 would have had at least a bachelor’s degree in
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`mechanical engineering, electrical engineering, or a similar field with at least two
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`years of experience in exercise monitoring device design, body-mounted
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`computing systems, or in motion tracking. More direct industry experience can
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`accommodate less formal education in the field and more formal education in the
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`field can accommodate less direct industry experience. Fyfe Decl. (Ex1002) at
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`¶30.
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`V. THERE IS A REASONABLE LIKELIHOOD THAT THE
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`CHALLENGED CLAIMS OF THE ’759 PATENT ARE UNPATENTABLE
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`A. GROUND 1: FRY IN VIEW OF NEWELL RENDERS CLAIMS
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`1-7, 9, 12, 14, 17-22, 26, AND 30-31 OBVIOUS
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`Fry was filed on November 1, 1996 and published on December 14, 1999.
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`Accordingly, Fry qualifies as prior art as to the ’759 Patent under 35 U.S.C. §
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`102(e) (pre-AIA). Fry (EX1004). Fry was cited as prior art of record, but was not
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`discussed during prosecution of the ’759 Patent. Fry teaches a sports computer
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`with a global positioning system (“GPS”) receiver that enables an athlete to track
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`and analyze geographic position and a physiological monitor that enables an
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`athlete to monitor heart rate, both in real-time. Figure 1 in Fry depicts the exercise
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`monitoring system detachably mounted to a bicycle and further teaches this system
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`is “readily applicable to other sports . . . including running, rowing, kayaking,
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`gliding, etc.” Fry (EX1004) at 2:44-46.
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`As illustrated below, the ’759 Patent and Fry both relate to exercise
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`monitoring and both provide real-time feedback to an athlete during exercise,
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`Petition for Inter Partes Review of
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`relying on electronic positioning and physiological sensors. Fry is thus in the same
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`field of endeavor and is reasonably pertinent to the claims in the ’759 Patent. Fyfe
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`Decl. (EX1002) at ¶35. Therefore, Fry is analogous to the claimed invention in the
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`’759 Patent.
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`Newell was filed on December 18, 1998 and published on October 15, 2002.
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`Accordingly, Newell qualifies as prior art as to the ’759 Patent under 35 U.S.C. §
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`102(e) (pre-AIA). Newell (EX1005). Newell was not cited as prior art of record or
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`discussed during prosecution of the ’759 Patent. Like the ’759 Patent, Newell’s
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`teaching relates to wearable devices used to track a person during physical activity,
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`“e.g., jogging[.]” Id. at 4:3. Newell is thus in the same field of endeavor and is
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`reasonably pertinent to the claims in the ’759 Patent. Fyfe Decl. (EX1002) at ¶37.
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`Therefore, Newell is also analogous to the claimed invention in the ’759 Patent.
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`Fry does not teach the GPS unit is physically separate from the display, as
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`claimed in the ’759 Patent. Newell, however, teaches a personal movement
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`monitoring system comprising an electronic positioning device and a physiological
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`monitor that is separate from the display. See, e.g., Newell (EX1005) at 3:65-4:1
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`As explained in detail below, to accommodate runners, one of skill in the art
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`would have been motivated to implement the Fry system with a display separate
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`from the positioning and physiological monitors in accordance with the teachings
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`of Newell. This straightforward combination teaches precisely what was missing
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,736,759
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`from the prior art of record during prosecution that led to the issuance of the ’759
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`Patent.
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`i.
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`Claim 1
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`An exercise monitoring system, comprising:
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`To the extent the preamble is deemed limiting, Fry discloses an exercise
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`monitoring system. For example, Fry teaches “computer-based systems of the type
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`which display speed” that may be used for “sports involving travel over time . . .,
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`including running, rowing, kayaking, gliding, etc.” Fry at 1:6-8; 2:44-46
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`(EX1004).
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`[1(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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`Fry teaches an exercise monitoring system that “includes means for
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`mounting an enclosed mobile computer system directly to the athlete . . . with
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`interfaces to one or more sensors which measure performance characteristics.” Id.
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`at 2:52-55 (emphasis added). The sensors determine position by way of a “GPS
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`receiver . . . included within and on the device, enabling the geographical
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`information to be gathered and stored therein.” Id. at 2:55-58. Fry also teaches a
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`physiological “heart-rate sensor, preferably in the form of a check or appendage
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`pressure sensor[.]”) Id. at 3:7-10.
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`[1(b)] a display unit configured for displaying real-time data provided by said
`electronic positioning device and said physiological monitor,
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`Fry discloses a display unit configured for displaying real-time data from the
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`GPS and heart rate monitor. As described in the following excerpt, Figure 3
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`illustrates the logic used to update the display in real-time, including how the
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`sensor data are received using “interrupts” and how the display is updated, without
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`intentional delay, every loop:
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`the controller next executes . . . interrupts, . . . 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 3[3]4 and
`stored in memory at block 338.
`. . .
`the controller next inputs signals received from time-based sensors, if
`updates are warranted in response to block 340. If so, such inputs,
`which include vehicle speed, crank rate, the cyclist's heart rate, and
`so forth are decoded at block 342 and stored in memory of block 346.
`Id. at 6:1-19 (emphasis added).
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`Id. at Figure 3. According to the logic flow in Figure 3, each of the
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`
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`physiological and GPS sensors are scanned and the data is stored as indicated in
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`blocks 330-354. Id. Then, at block 360, “the display is updated by refreshing
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`from memory the data to be displayed.” Id. at 6:33-36 (emphasis added). Applying
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`the CAFC construction of “real-time,” as “displaying data without intentional
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`delay, given the processing limitations of the system and the time required to
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`accurately measure the data,” Fry teaches displaying data in real-time because
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`there is no intentionally introduced delay, and the display is updated as quickly as
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`the processing limitations of the system and measurement time allow. CAFC
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`Opinion at 28 (EX1023) (emphasis added); Fyfe Decl. at ¶36 (EX1002).
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`Further supporting the real-time nature of Fry’s “interrupt” teaching, Fry
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`notes that “updating the GPS coordinates may take place on a non-interrupt basis,”
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`but notes that “the received coordinates would have to be maintained in a buffer.”
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`Fry at 6:9-11 (EX1004). A PHOSITA would understand that the buffering required
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`by this alternate implementation would introduce more delay than the primary
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`interrupt teaching, which updates the data as soon as it is received. Fyfe Decl. at
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`¶36 (EX1002).
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`[1(c)] said display unit separate from said data acquisition unit;
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`Fry describes specific component placement for only the sports computer
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`depicted in Figure 1, which illustrates a bicycling application where the GPS
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`receiver and display are combined and mounted on bicycle handlebars and where
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`the physiological monitor
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`is
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`located separately. However, Fry expressly
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`acknowledges that its sports computer is “readily applicable to other sports . . .
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`including running” and can be mounted “directly to the athlete . . . with interfaces
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`to one or more sensors which measure performance characteristics.” Id. at 2:44-46;
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`2:51-54.
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`In order to adapt the sports computer of Fry to enable “mounting [the]
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`enclosed mobile computer system directly to the athlete,” as Fry suggests (id. at
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`2:52-53), a PHOSITA would look to related disclosures that teach body mounted
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`computing systems. Fyfe Decl. at ¶38 (EX1002). Newell teaches just such a body
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`mounted computing system with a variety of sensors, including a GPS, heart rate
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`monitor, and other physiological monitors. Newell at 5:9-15, 5:48-55 (EX1005).
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`Newell further teaches mounting these input devices on the user’s body and
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`implementing a separate heads-up display in the user’s eyeglasses. Id. at FIG. 1,
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`11:57-60.
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`The motivations to make such a modification of the Fry system are many,
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`including express motivations from the references themselves. First, as noted
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`above, Fry provides express motivation to implement the Fry system with a
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`different arrangement of its key components. With regard to its bicycle
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`embodiment, Fry describes mounting the key components on the structure of a
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`bicycle, but expressly notes that its system is “readily applicable to other sports . . .
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`including running.” Fry at 2:44-46 (EX1004). A PHOSITA would understand that
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`these teachings effectively direct a skilled artisan to re-arrange the Fry components
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`in a manner that is safe, ergonomic, and efficient for runners. Fyfe Decl. at ¶¶38-39
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`(EX1002). Second, as noted above, Newell provides express motivation to locate
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`the display of a personal monitor device as an eyeglass-mounted heads-up display
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`separate from the other key components that are mounted on the user’s body.
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`Including that an eyeglass-mounted heads-up display has the benefit of presenting
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`personal information only to the user. Newell at 10:37-42 (EX1005).
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`A PHOSITA would recognize that an eyeglass-mounted heads-up display is
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`well-suited to a running application because it allows the user to maintain a view
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`of their surroundings unlike wrist-mounted displays that require the user to either
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`stop running or to divert their full view from their surroundings to the displayed
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`information. Fyfe Decl. at ¶39 (EX1002). A PHOSITA would further recognize
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`that mounting the monitor devices (e.g., GPS and heart rate monitor) on the user’s
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`body is the most common sense arrangement, not least because it avoids the need
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`to carry said components in one’s hands while running. Id.
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`Further, the modification to Fry would be straightforward, not requiring
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`undue experimentation, and would produce predictable results. Id. at ¶¶39-40.
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`Upon reading the disclosure of Fry, a PHOSITA would have recognized that
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`locating the Fry display in a user’s eyeglasses and the GPS on the user’s body with
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`the heart rate monitor would provide a safer and more intuitive arrangement for a
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`running application. Id. Thus, it would have been natural and an application of
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`nothing more than ordinary skill and common sense to modify Fry with the
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`component arrangement taught by Newell. Id.
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`Further, the ’759 Patent expressly admits that commercial embodiments of
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`eyeglass-mounted or heads-up displays existed in the prior art, and that such a
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`heads-up display may be used by athletes. ’759 Patent at 21:30-67 (EX1001); see
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`also Fyfe Decl. at ¶¶39 (noting the prior art is replete with heads-up displays for
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`athletes) (EX1002). This confirms that a POSITA would have understood that the
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`use of an eyeglass-mounted heads-up display as in the proposed combination
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`would simply involve the routine use of known components for their standard
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`purposes.
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`[1(d)] 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,
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`As discussed above, Newell teaches mounting the display on a pair of
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`glasses that is separate from the user sensor inputs worn by the user during activity.
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`Newell at 5:48-52; 5:9-12, 11:57-60, FIG. 1 (EX1005). The eyeglass-mounted
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`display coupled with
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`the body-mounted monitors provides a convenient
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`arrangement to provide information to an athlete during exercise with minimal
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`distraction. Fyfe Decl. at ¶39 (EX1002).
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`[1(e)] 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 travelled.
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`As explained above for element 1[b],