UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`GARMIN INTERNATIONAL, INC. AND GARMIN USA, INC.
`Petitioners
`
`v.
`
`LOGANTREE, LP
`Patent Owner
`
`____________
`
`Case No. IPR2018-00564
`Patent No. 6,059,576
` ____________
`
`
`
`
`
` PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,059,576
`
`
`
`
`
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`

`

`IPR2018-00564
`U.S. Patent No. 6,059,576
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`
`
`TABLE OF CONTENTS
`I. INTRODUCTION ............................................................................................. 1
`II. SUMMARY OF THE ’576 PATENT ............................................................. 1
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’576 PATENT ..................... 1
`B. SUMMARY OF THE PROSECUTION HISTORY ...................................................... 4
`C. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART .............. 7
`III. REQUIREMENTS UNDER 37 C.F.R. §42.104 ........................................... 8
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. §42.104(A) .................................. 8
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. §42.104(B)(1)-(2) ............. 8
`C. CLAIM CONSTRUCTION UNDER 37 C.F.R. §42.104(B)(3) ................................. 9
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE ....................................... 11
`A. GROUND 1: STEWART IN VIEW OF RUSH RENDERS CLAIMS 20-26, 29, 104-107,
`110, 113-116, 118, 121, 126-128, 134-135, AND 175 OBVIOUS ........................... 11
`B. GROUND 2: STEWART IN VIEW OF RUSH IN FURTHER VIEW OF CONLAN RENDERS
`CLAIMS 119-124, 126, 136, AND 137 OBVIOUS .................................................... 43
`C. GROUND 3: STEWART IN VIEW OF RUSH IN FURTHER VIEW OF CHURCH RENDERS
`CLAIMS 117 OBVIOUS .......................................................................................... 50
`D. GROUND 4: RICHARDSON IN VIEW OF STEWART RENDERS CLAIMS 20 AND 138
`OBVIOUS .............................................................................................................. 52
`V. CONCLUSION ............................................................................................... 70
`VI. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ................................. 71
`A. REAL PARTIES-IN-INTEREST UNDER 37 C.F.R. §42.8(B)(1) ........................... 71
`B. RELATED MATTERS UNDER 37 C.F.R. §42.8(B)(2) ........................................ 71
`C. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(B)(3) ...................... 72
`D. SERVICE INFORMATION UNDER 37 C.F.R. § 42.8(B)(4) ................................. 72
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`IPR2018-00564
`U.S. Patent No. 6,059,576
`
`APPENDIX OF EXHIBITS
`
`Exhibit 1001 U.S. Patent No. 6,059,576 to Brann
`Exhibit 1002 File History of U.S. Patent No. 6,059,576
`Exhibit 1003 File History of Reexamination Request No. 90/013,201
`Exhibit 1004 U.S. Patent No. 5,978,972 to Stewart et al.
`Exhibit 1005 U.S. Provisional Application No. 60/020,271
`Exhibit 1006 U.S. Patent No. 5,546,609 to Rush, III
`Exhibit 1007 U.S. Patent No. 5,197,489 to Conlan
`Exhibit 1008 U.S. Patent No. 5,474,083 to Church et al.
`Exhibit 1009 U.S. Patent No. 5,976,083 to Richardson et al.
`Exhibit 1010 Declaration of Dr. Andrew C. Singer and Appendix A
`Exhibit 1011
`the
`for
`J.R.W. Morris, “Accelerometry – A Technique
`Measurement of Human Body Movements,” J. Biomechanics,
`Vol. 6, Pergamon Press (1973, pp. 729-736)
`Exhibit 1012 U.S. Patent No. 3,797,010 to Adler et al.
`Exhibit 1013 U.S. Patent No. 5,803,740 to Gesink et al.
`Exhibit 1014 UK Patent Application No. GB 2,225,459A to Holder
`Exhibit 1015 C. Verplaetse, “Inertial proprioceptive devices: Self-motion-
`sensing toys and tools,” IBM Systems Journal, Vol. 35, Nos. 3&4
`(1996, pp. 639-650)
`Exhibit 1016 Alan Freedman, The Computer Desktop Encyclopedia, The
`Computer Language Company Inc. (1996)
`Exhibit 1017 Robert C Cantu, “Head injuries in sport,” Br J Sports Med 30
`(289-296; 1996)
`Exhibit 1018 Affidavit of Service dated February 22, 2017
`Exhibit 1019 Exhibit C to Plaintiff’s Original Complaint
`
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`i
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`I.
`
`INTRODUCTION
`
`Petitioners Garmin International, Inc. and Garmin USA, Inc. respectfully
`
`request inter partes review (“IPR”) of claims 20-26, 29, 104-107, 110, 113-122,
`
`126-128, 134-138, and 175 (“the Challenged Claims”) of U.S. Patent No.
`
`6,059,576 (“the ’576 patent”). As demonstrated below, there is a reasonable
`
`likelihood that Petitioners will prevail in establishing the unpatentability of the
`
`Challenged Claims.
`
`II.
`
`SUMMARY OF THE ’576 PATENT
`
`A. Description of the Alleged Invention of the ’576 Patent
`
`The ‘576 patent generally describes “[a]n electronic device, system and
`
`method to monitor and train an individual on proper motion during physical
`
`movement.” EX1001, Abstract. The ‘576 patent purportedly solves problems with
`
`prior motion sensing/monitoring devices that either record motion, but “do not
`
`warn the device wearer when the wearer is nearing, or has reached, a potential
`
`angle of movement” or warn the wearer of an improper movement, but do not
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`analyze the detected motion data. Id., 1:22-54. The alleged key feature of the
`
`“invention is that it gives instant information to the wearer at the moment of
`
`incorrect movement and also records the information for future reference and
`
`analysis.” Id., 6:16-19. Thus, the key feature of the ‘576 Patent’s invention was
`
`merely combining known features of the prior art motion sensing devices.
`
`
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`1
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`The system includes a movement measuring device 12 and a download
`
`device 14 connected to a computer 16:
`
`
`
`Id., Fig. 1; see also, id., 3:22-24.
`
`The movement measuring device 12 “is designed to be physically attached
`
`to a user” and “may be worn by the individual being monitored in a variety of
`
`positions based on the specific movement being observed.” Id., 3:24-31. The
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`measuring device 12 includes internal components including a microprocessor 32,
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`movement sensor 30, and clock 46:
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`2
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`U.S. Patent No. 6,059,576
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`
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`Id., Fig. 4.
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`The movement sensor 30 “detects movement and measures the associated
`
`data such as angle, speed, and distance.” Id., 4:37-40. The movement sensor may
`
`be a multi-axis accelerometer or multiple accelerometers each arranged to measure
`
`movement data in a different plane. Id., 4:41-48.
`
`The microprocessor 32 receives movement data from the sensor 30 and
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`analyzes it to determine whether a recordable event has occurred. Id., 5:40-47. “If
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`a recordable event occurs, the microprocessor 32 retrieves the date/timestamp from
`
`the clock 46 and records the event information along with the date/timestamp in
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`memory 50.” Id., 5:44-47. The device may monitor a wide variety of events. Id.,
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`6:19-21. One exemplary event is “any movement which surpasses any identified
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`angle limit of movement.” Id., 6:22-26. The user enters thresholds and other
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`
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`3
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`U.S. Patent No. 6,059,576
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`parameters defining events via an I/O port connected to an external computer. Id.,
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`5:59-66, 7:6-23.
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`When an event occurs, the device may also provide a visual, audible, and/or
`
`tactile warning to the user via an output indicator 44. Id., 5:20-27, 7:32-35. “The
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`output indicators 44 consist of any combination of audible, visual, or tactile
`
`indicators for communicating with the wearer of the device.” Id., 5:20-23.
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`Data may be downloaded from the device 12 to the computer 16 wirelessly
`
`or via the download device 14, which may be a docking station, for example. Id.,
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`8:30-33, Fig. 1. Computer 16 includes software “used to interpret the data and
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`produce a number of reports and histories.” Id., 8:40-43.
`
`B.
`
`Summary of the Prosecution History
`
`The ’576 patent issued from an application filed on November 21, 1997.
`
`EX1001. For the purposes of this IPR, it is assumed that all Challenged Claims are
`
`entitled to this priority date. During original prosecution, the three original
`
`independent claims were amended to limit the device to a “portable, self-
`
`contained” device that is capable of measuring “unrestrained movement in any
`
`direction.” EX1002, 49-53. The examiner then allowed the ’576 patent to issue
`
`with 29 claims. Id., 23.
`
`Fourteen years later, the Patent Owner (“PO”) filed a reexamination request
`
`because PO believed a substantial new question of patentability existed due to
`
`
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`4
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`newly found prior art. EX1003, 481. The reexamination request also included
`
`over one hundred new dependent claims. Id., 448-469. PO cited several
`
`references including U.S. Patent No. 6,266,623 to Vock et al. (“Vock”) and its
`
`parent, U.S. Patent No. 5,636,146 to Flentov et al. Id. The Examiner agreed that
`
`the cited references raised a substantial new question of patentability and
`
`subsequently rejected Claims 1 and 20 as anticipated by Vock, and Claims 1, 13,
`
`and 20 (among others) as obvious in view of Vock and a secondary reference, U.S.
`
`Patent No. 5,429,140 to Burdea et al. Id., 254-297.
`
`In the subsequent response, PO amended each of the independent claims to
`
`include the following limitation:
`
`detecting a first user-defined event based on the movement data
`and at least one of the user-defined operational parameters, and
`storing first event information related to the detected first user-
`defined event along with first time stamp information reflecting
`a time at which the movement data causing the first user-
`defined event occurred
`
`Id., 168, 170, 172.
`
`The Examiner rejected each of the amended claims. Id., 141. Regarding the
`
`newly added limitation above, the Examiner explained:
`
`The Vock device is for “detecting a first user-defined event
`[such as a first run down the mountain] based on at least one of
`
`
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`5
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`U.S. Patent No. 6,059,576
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`the user-defined operation parameters and the movement data”
`that records the physical activity that occurs from the top of the
`run to the bottom of the run. . . .
`
`The at least one user-defined operational parameter is a
`predetermined threshold when the user at the top of the run
`predetermines when the threshold occurs at the end of the run.
`At the end of the run, the user pushes button 58 a second time
`to stop recording movement data. When the user stops
`recording movement data, the microprocessor, in response
`thereto stores the movement data along with the time stamp as
`taught by Burdea.
`
`Id., 144.
`
`In response, PO argued that the Examiner’s identified “detection of a first
`
`user-defined event” is not made by the microprocessor based on movement data.
`
`82, 88 (PO explaining that its position regarding Flentov also applied to Vock).
`
`Instead, PO argued that Vock teaches, “the detection of the event is solely based on
`
`the button 58 being pushed and not based on any movement data, let alone a
`
`microprocessor making the detection based on such movement data.” Id., 83,
`
`88(emphasis in original).
`
`PO also argued that the proposed combination of Vock with Burdea does not
`
`teach the limitation “storing first event information related to the detected first
`
`user-defined event along with first timestamp information reflecting a time at
`
`
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`6
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`U.S. Patent No. 6,059,576
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`which the movement data causing the first user-defined event occurred”
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`(“timestamp limitation”). Specifically, the PO argued, “proposed combination of
`
`[Flentov/Vock] and Burdea would reflect the time at which the data captured
`
`during the skier’s run down the hill (i.e., at the end of the session) is updated to a
`
`database, not a time at which the movement data causing the end of the run
`
`(alleged event) occurred.” Id., 84 (emphasis in original). Thus, “the timestamp
`
`information in the proposed modification has no relationship to the ski data itself
`
`or the time at which the skier pushes the button.” Id., 85.
`
`The Examiner agreed and subsequently issued the reexamination certificate
`
`based on the following reasons:
`
`[T]here is no teaching or fair suggestion to detect, using the
`microprocessor, a first user-defined even based on
`the
`movement data and at least one user-defined operational
`parameters regarding the movement data and storing in memory
`first event information related to the detected first user-defined
`event along with first time stamp information reflecting a time
`at which the movement data causing the first user-defined event
`occurred.
`
`Id., 17.
`
`C.
`
`Level of Skill of a Person Having Ordinary Skill in the Art
`
`As of November 21, 1997, a person having ordinary skill in the art
`
`(PHOSITA) would be a person with a Bachelor of Science Degree in Electrical
`
`
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`7
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`Engineering or Computer Engineering or equivalent, and at least two years of
`
`experience in embedded signal processing systems or a related field. EX1010, ¶38.
`
`III. REQUIREMENTS UNDER 37 C.F.R. §42.104
`
`A. Grounds for Standing Under 37 C.F.R. §42.104(a)
`
`Petitioners certify that the ’576 patent is eligible for IPR; Petitioners are not
`
`barred or estopped from requesting IPR; and this Petition is filed less than one year
`
`after the Petitioners and any other real parties-in-interest were served with a
`
`complaint alleging infringement of the ’576 patent.
`
`B.
`
`Identification of Challenge Under 37 C.F.R. §42.104(b)(1)-(2)
`
`Petitioners request that claims 20-26, 29, 104-107, 110, 113-122, 126-128,
`
`134-138, and 175 be found unpatentable on the following grounds:
`
`Proposed Grounds of Unpatentability
`Ground 1: Claims 20-26, 29, 104-107, 110, 113-116, 118, 121,
`126-128, 134-135, and 175 are obvious under § 103(a) over U.S.
`Patent No. 5,978,972 to Stewart et al. (“Stewart”) in view of U.S.
`Patent No. 5,546,609 to Rush, III (“Rush”)
`Ground 2: Claims 119, 120, 122, 136, and 137 are obvious under §
`103(a) over Stewart in view of Rush in further view of U.S. Patent
`No. 5,197,489 to Conlan (“Conlan”)
`Ground 3: Claim 117 is obvious under § 103(a) over Stewart in
`view of Rush in further view of U.S. Patent No. 5,474,083 to
`Church et al. (“Church”)
`Ground 4: Claims 20 and 138 are obvious under § 103(a) over U.S.
`
`Exhibits
`
`EX1004,
`EX1005,
`EX1006
`
`EX1004,
`EX1005,
`EX1006,
`EX1007
`EX1004,
`EX1005,
`EX1006,
`EX1008
`EX1009,
`
`
`
`8
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`Proposed Grounds of Unpatentability
`Patent No. 5,976,083 to Richardson et al. (“Richardson”) in view of
`Stewart.
`
`Exhibits
`EX1004,
`EX1005
`
`
`
`C. Claim Construction Under 37 C.F.R. §42.104(b)(3)
`
`The ’576 patent expired on November 21, 2017. “The Board’s review of the
`
`claims of an expired patent is similar to that of a district court’s review.” In re
`
`Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). Thus, the standard set forth in
`
`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) applies,
`
`in that “words of a claim ‘are generally given their ordinary and customary
`
`meaning’ as understood by a person of ordinary skill in the art in question at the
`
`time of the invention.” Under the Phillips standard, claim terms are given their
`
`ordinary and customary meaning, as would have been understood by a person of
`
`ordinary skill in the art at the time of the invention, in light of the language of the
`
`claims, the specification, and the prosecution history of record. Phillips v. AWH
`
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005); Thorner v. Sony Comput. Entm’t Am.
`
`LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`
`Petitioners propose the following specific construction and further propose
`
`all claim terms not specifically discussed below should be given their ordinary and
`
`
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`9
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`U.S. Patent No. 6,059,576
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`customary meaning in light of the specification.1
`
`Claim 107 recites
`
`the
`
`limitation, “wherein said storing comprises
`
`continuously storing said movement data after battery power is lost from a power
`
`source of the portable, self-contained movement measuring device.” Claim 107
`
`was added as claim 122 during the reexamination proceeding. EX1003, 190.
`
`When adding this claim, PO cited to the col. 5, lines 47-51 of the ’576 patent
`
`specification as providing the written description for this limitation. Id., 210. This
`
`portion of the ‘576 patent specification discloses storing movement data in a
`
`memory 50, which “[i]n a preferred embodiment . . . is electrically erasable
`
`programmable read-only memory (EEPROM) so that, in the event the device
`
`should lose power, the information recorded in memory 50 will not be lost.”
`
`EX1001, 5:44-51. A PHOSITA at the time of the ‘576 patent would understand
`
`EEPROM to be a form of memory that holds its contents without power. EX1010,
`
`¶43 (citing EX1016, 276).
`
`Thus, when read in light of the specification, a PHOSITA at the time of the
`
`‘576 patent would understand that the limitation “continuously storing said
`
`
`1 The claim construction analysis is not, and should not be viewed as, a waiver of any
`
`argument in any litigation that claim terms in the ‘576 patent are indefinite or otherwise
`
`invalid.
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`10
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`U.S. Patent No. 6,059,576
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`movement data after battery power is lost from a power source” must at least
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`include “storing movement data in a memory that does not lose its contents after
`
`battery power is lost from a power source.” Id., ¶44.
`
`IV. THERE IS A REASONABLE LIKELIHOOD THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`
`A. Ground 1: Stewart in view of Rush Renders Claims 20-26, 29, 104-
`107, 110, 113-116, 118, 121, 126-128, 134-135, and 175 Obvious
`
`Stewart was filed on June 11, 1997 and claims priority to U.S. Provisional
`
`Application No. 60/020,271 (“Stewart Provisional”), which was filed on June 14,
`
`1996. EX1004. Accordingly, Stewart has an effective filing date of June 14, 1996
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`based on the filing date of the Stewart Provisional.2 Petitioners have provided
`
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`2 In the event that PO attempts to show that it is entitled to a priority date prior to June 11,
`
`1997 but subsequent to June 14, 1996, Petitioners will show that the Stewart Provisional
`
`provides support for Stewart under §112(1). Petitioners have no burden to establish that
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`Stewart is entitled to the earlier June 14, 1996 priority date unless and until PO makes an
`
`argument that it is entitled to a priority date preceding June 11, 1997. See Dynamic
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`Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015)
`
`(“[Petitioner] did not have the burden of producing evidence relating to the [prior art]
`
`provisional application until after [Patent Owner] made its argument regarding reduction
`
`to practice.”).
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`U.S. Patent No. 6,059,576
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`cites to both Stewart (EX1004) and the Stewart Provisional (EX1005) to
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`demonstrate that the relevant subject matter relied upon by Petitioners was carried
`
`over from the Stewart Provisional. Infra. Stewart therefore qualifies as prior art
`
`with regard to the ’576 patent under 35 U.S.C. §102(e) (pre-AIA) under both the
`
`June 11, 1997 and June 14, 1996 dates.
`
`Stewart was not cited or considered during the original prosecution of the
`
`‘576 patent or during its subsequent reexamination proceeding. Supra, II.B.
`
`Stewart discloses “a portable system designed to measure and record acceleration
`
`data in real time in both translational and angular directions of an individual’s head
`
`during normal activity.” EX1004, 4:28-31. Stewart’s primary embodiment is
`
`directed to monitoring the wearer’s head, but “monitoring of other body parts, or
`
`the body in general is envisioned.” Id., 4:32-33. Stewart’s monitoring device
`
`includes, among other things, accelerometers, a processor, and a memory for
`
`storing the accelerometer data. Id., Abstract, Fig. 1. Stewart teaches the allegedly
`
`patentable feature of detecting an event based on movement data. Specifically,
`
`Stewart’s processor detects an event, such as a spearing movement in football, by
`
`comparing accelerometer data to a predetermined threshold. Id., 5:4-7; 14:6-11.
`
`The ‘576 patent “relates to the field of electronic training and safety devices
`
`used to monitor human physical activity.” EX1001, 1:6-7. Moreover, the
`
`Challenged Claims are more generally directed to “monitor[ing] physical
`
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`12
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`U.S. Patent No. 6,059,576
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`movement of a body part.” Id., Claim 20. Therefore, the field of endeavor of the
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`‘576 patent must at least include systems, devices, and/or methods used to monitor
`
`human physical activity. As discussed above, Stewart discloses systems, devices,
`
`and methods of monitoring the user’s head and other body parts during physical
`
`activities. Therefore, Stewart is the in same field of endeavor and is analogous to
`
`the claimed invention of the ’567 patent.
`
`Rush issued on August 20, 1996 and therefore qualifies as prior art with
`
`regard to the ‘576 patent under 35 U.S.C. §102(b) (pre-AIA). EX1006. Rush was
`
`not cited or considered during the original prosecution of the ‘576 patent or during
`
`its subsequent reexamination proceeding. Supra, II.B. Rush describes a
`
`monitoring device mounted in a football helmet that “provide[s] a signal or
`
`indication that the wearer has participated in activity which can be potentially
`
`dangerous to the wearer.” Id., 1:21-23. The football helmet includes a sensor used
`
`to detect axial impacts indicative of events such as spearing movements. Id., 9:48-
`
`30. The sensor is “adjustable so that the magnitude of the axial impact experienced
`
`may be varied to accommodate players of different ages and sizes and to minimize
`
`accidental actuation of the signal.” Id., 9:54-58; see also, id., 9:16-19. The wearer
`
`and/or coaches are alerted immediately upon detection of the spearing movement
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`via audible and/or visible signals. Id., 3:13-18, 9:42-54, 10:31-41.
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`In addition to alerting the user when a spearing movement is detected,
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`13
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`Rush’s monitoring device also transmits a signal to a recording device (e.g., hard
`
`disk drive) that “record[s] instances in which the potential injurious activity has
`
`taken place” including “the time and date of each instance.” Id., 10:20-30. Thus,
`
`Rush teaches the alleged “key feature” of the ‘576 patent invention of giving
`
`instant information to the wearer at the moment of incorrect movement and also
`
`recording the information for future reference. Supra, Section II.A. Additionally,
`
`Rush’s disclosure of storing a time/date at which the movement data causing the
`
`detection of the spearing event occurred teaches the allegedly patentable timestamp
`
`limitation. Supra, Section II.B. Since Rush is directed to an electronic device used
`
`to monitor human physical activity, it is in the same field of endeavor and is
`
`analogous to the claimed invention of the ’576 patent.
`
`Claim 20
`
`1.
`20[pre] A method to monitor physical movement of a body part comprising the
`steps of:
`
`Stewart discloses a “method of recording and storing data relating to
`
`translational and angular accelerations of the person's head due to impact forces
`
`acting thereon.” EX1004, 1:26-28 (EX1005, 9:8-13). “While developed
`
`specifically for the head, monitoring of other body parts, or the body in general
`
`is envisioned.” Id., 4:32-33 (emphasis added) (EX1005, 16:6-9). Stewart’s
`
`
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`14
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`IPR2018-00564
`U.S. Patent No. 6,059,576
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`method is used to monitor physical movements of a body part during activities
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`such as boxing, football, hockey, high jumping, sprinting, swimming, etc.
`
`The present invention is applicable for use with other parts of
`the body. For instance, other applications could include the
`study of the acceleration of body parts in relation to each other
`(e.g., among pole vaulters, high jumpers, or gymnasts), or to
`understand factors affecting acceleration in sprinters and
`swimmers (e.g., starting and turns).
`
`Id., 5:12-17 (EX1005, 17:28-34).
`
`For instance, in this embodiment, the helmet 30 is a boxing
`helmet. Other helmets which the present invention is applicable
`to, but in no way is limited to, are football helmets, lacrosse
`helmets, hockey helmets, bicycle helmets, and motorcycle
`helmets.
`
`Id., 6:1-7 (EX1005, 19:15-22).
`
`[20(a)] attaching a portable, self-contained movement measuring device to said
`body part for measuring unrestrained movement in any direction;
`
`Stewart discloses “a portable system designed to measure and record
`
`acceleration data in real time in both translational and angular directions of an
`
`individual’s head during normal activity.” Id., 4:28-31 (emphasis added)
`
`(EX1005, 16:3-6). Stewart’s system includes a portable device that is self-
`
`contained within a piece of conventional sporting gear, such as a helmet, and
`
`attached to a body part, such as the user’s head:
`
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`U.S. Patent No. 6,059,576
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`
`
`Id., Fig. 2A (EX1005, Fig. 2A).
`
`The HAT is designed as a standard component of otherwise
`conventional sporting gear, in particular the helmet.
`
`Id., 4:45-46 (EX1005, 16:23-25); see also, id., 5:63-67, 7:65-8:6 (EX1005, 19:9-
`
`12, 23:28-24:1)
`
`In one embodiment, the device includes three orthogonal accelerometers 10-
`
`12 that “provide data which corresponds directly to [the] motion of the head in
`
`three dimensional space . . . .” Id., 6:13-16 (emphasis added) (EX1005, 19:32-
`
`34); see also, id., 6:21-57 (EX1005, 20:3-21:9). Placing the device in a
`
`conventional piece of sporting gear allows the accelerometers to measure
`
`unrestrained movement in three dimensions (i.e., “any direction”) and allows “the
`
`sports person to wear in the relevant everyday sports activity without hindering,
`
`inhibiting, or otherwise affecting the ability of the user to perform the sport.” Id.,
`
`6:24-28 (EX1005, 20:7-12); see also, id., 6:13-16 (EX1005, 19:31-34).
`
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`U.S. Patent No. 6,059,576
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`[20(b)] measuring data associated with said physical movement;
`
`Stewart’s device includes at least three and at most nine accelerometers that
`
`measure data associated with the physical movement:
`
`It includes at least three orthogonally-placed accelerometers
`and means to record the output therefrom in real time. As many
`as three sets of three orthogonally-placed accelerometers
`can be used to measure uniquely the translational, angular
`and normal components of acceleration of the head. In one
`embodiment, three orthogonally-placed accelerometers are
`sufficient to provide some translational and angular acceleration
`information
`regarding
`the head by
`integration. The
`translational, angular and normal components of acceleration
`become more detailed (and thus separable) by the use of more
`accelerometers. At most, nine accelerometers are placed in the
`helmet so as to define all angular and translational accelerations
`of the head.
`
`Id., 4:46-59 (emphasis added) (EX1005, 16:25-17:3).
`
`Multi-axis accelerometers might also be used. Accelerometers
`which perform on-board calculation of velocity and
`displacement might also be used to track events and permit
`additional kinematic and kinetic analyses to be performed.
`
` Id., 7:34-38 (EX1005, 22:26-31); see also, id., 6:29-57, Figs. 1, 2A, 2B, 5
`
`(EX1005, 20:13-21:9, Figs. 1, 2A, 2B, 5).
`
`
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`U.S. Patent No. 6,059,576
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`[20(c)] interpreting, using a microprocessor included in the portable, self-
`contained movement measuring device, said physical movement data based on
`user-defined operational parameters and a real-time clock;
`
`Stewart’s device includes a processor that “comprises any conventional
`
`processor device, including a microcontroller or a microprocessor, and controls the
`
`operation of the HAT system.” Id., 8:58-62 (EX1005, 25:26-29); see also, id., Fig.
`
`1 (EX1005, Fig. 1). Stewart’s processor receives accelerometer data (i.e.,
`
`“physical movement data”) via an A/D converter. Id., 8:64-9:3, Fig. 1 (EX1005,
`
`25:31-26:2, Fig. 1).
`
`Stewart discloses user-defined commands that “set the general parameters of
`
`the data storage operation of the HAT.” EX1004, 11:53-54 (EX1005, 32:1-2).
`
`The processor receives commands through a wired or wireless interface, or
`
`commands may “be entered locally, such as through a keypad mounted on the
`
`helmet, an electronic key, or other means to establish general parameters regarding
`
`the sampling of the accelerometers, e.g., when to start, the sampling rate, and when
`
`to stop.” Id., 11:51-63 (EX1005, 32:10-14). The user-defined commands cause
`
`the processor to start and stop recording data at specific times. Id., 12:35-37 (“‘n
`
`R-- INTERVAL C!’: sets the number of minutes n between each round of data
`
`being collected.”) (EX1005, 33:22-24); 12:43-44 (“‘GO’: prompts the user for the
`
`present time and start time for data collection.”) (EX1005, 33:37-34:1).
`
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`U.S. Patent No. 6,059,576
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`A PHOSITA at the time of the invention would recognize Stewart’s
`
`disclosure of user-defined time commands necessarily requires the processor to
`
`access a real-time clock (“RTC”) to determine when to start and stop recording
`
`data based on the commands received from the user. EX1010, ¶49, ¶¶51-53.
`
`Regarding the “GO” command, for example, a PHOSITA would understand that
`
`the processor could not perform the function of setting the present time to a time
`
`provided by the user without a RTC. Id., ¶51. Once the user sets the present-time,
`
`if the processor is to infer a start time of data collection, by necessity a RTC must
`
`be present to measure that start time. Id. Thus, the processor could not perform
`
`the functions of setting the present time to a time provided by the user and starting
`
`data collection at the user-specified time without a RTC. Id. As such, a PHOSITA
`
`would recognize that Stewart’s disclosure of the user programming the processor
`
`to start and stop data collection at specific times inherently discloses a RTC. Id.,
`
`¶54.
`
`“[I]nherency may supply a missing claim limitation in an obviousness
`
`analysis.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194-95 (Fed.
`
`Cir. 2014). To do so, the limitation at issue must “necessarily be present” in the
`
`prior art (Id., 1195-96), and one of ordinary skill in the art would have known and
`
`expected that the limitation was necessarily present in the prior art at the time the
`
`invention was made (Millennium Pharms., Inc. v. Sandoz, Inc., 862 F.3d 1356,
`
`
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`1367 (Fed. Cir. 2017). Here, because Stewart discloses a processor that allows the
`
`user to set the present time and starts/stops data collection at specific times, a
`
`PHOSITA would expect and understand that the processor necessarily includes a
`
`RTC. EX1010, ¶¶51-53.
`
`Stewart’s processor interprets the accelerometer data based on the user-
`
`defined time commands and the RTC. As discussed above, the processor
`
`necessarily uses a current time reading provided by a RTC to determine when data
`
`should be collected. Id., ¶57. For example, the “GO” command, defines the time
`
`when the processor should start collecting data and necessarily requires the
`
`processor to compare the current time, as supplied by a RTC, with the start time
`
`designated by the user. Id. As part of the data collection process, the processor
`
`interprets the data in by integrating it to “determine the translational, angular and
`
`normal components of acceleration of the sportsperson’s head.” EX1004, 5:7-11
`
`(EX1005, 17:24-26). The processor may also interpret the accelerometer data by
`
`comparing it to a predetermined threshold. Id., 5:4-7 (“For this purpose HAT
`
`could be modified to record in real-time detailed data only when the accelerations
`
`exceed a defined threshold.”) (emphasis added), 14:6-11 (“[I]n boxing, it is
`
`possible to correlate certain responses of the accelerometers 10-12 with desirable
`
`punches exceeding a predetermined threshold. . . It might also be possible to
`
`determine if a football player is improperly using his helmet (e.g., illegal
`
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`IPR2018-00564
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`spearing).”) (emphasis added) (EX1005, 17:19-21, 37:10-16). Therefore, if