Trials@uspto.gov
`571-272-7822
`
`Paper 29
`Entered: August 30, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`LOGANTREE, LP,
`Patent Owner.
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 29
`Entered: August 30, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`LOGANTREE, LP,
`Patent Owner.
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, MITCHELL G. WEATHERLY, and
`JAMES A. WORTH, Administrative Patent Judges.
`SCANLON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) challenges claims 1–5, 8–11, 20, 25, 30–32,
`36, 39–42, 45–51, 61–65, 144, and 147 of U.S. Patent No. 6,059,576 C1
`(Ex. 1001, “the ’576 patent”), which is assigned to LoganTree, LP (“Patent
`Owner”). We have jurisdiction under 35 U.S.C. § 6, and this Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has not shown by a
`preponderance of the evidence that claims 1–5, 8–11, 20, 25, 30–32, 36,
`39–42, 45–51, 61–65, 144, and 147 of the ’576 patent are unpatentable.
`A. Procedural History
`Petitioner filed a Petition (Paper 3, “Pet.”) requesting an inter partes
`review of the challenged claims. Patent Owner did not file a Preliminary
`Response.
`We instituted a trial as to all challenged claims. Paper 10 (“Decision
`on Institution” or “Dec. Inst.”).
`After institution, Patent Owner filed a Patent Owner Response
`(Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 21, “Reply”), and
`Patent Owner filed a Sur-reply (Paper 22, “Sur-reply”).
`Petitioner relies on the Declaration of Dr. Thomas W. Kenny
`(Ex. 1100) in support of its contentions. Patent Owner relies on the
`Declaration of Vijay K. Madisetti (Ex. 2001) in support of its contentions.
`An oral hearing was held on June 2, 2023. A transcript of the hearing
`is included in the record. Paper 28 (“Tr.”).
`B. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 112. Patent
`Owner identifies itself as the real party in interest. Paper 8, 1.
`
`2
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`C. Related Matters
`The parties identify the following proceedings as related matters
`involving the ’576 patent: LoganTree LP v. Apple, Inc., Case No. 6:21-cv-
`00397 (W.D. Tex.);1 LoganTree LP v. LG Electronics, Inc., Case No. 4:21-
`cv-00332 (E.D. Tex.); LoganTree LP v. Huawei Technologies USA Inc.,
`Case No. 4:21-cv-00119 (E.D. Tex.); and LoganTree LP v. Fossil Group,
`Case No. 1:21-cv-00385 (D. Del.). Pet. 112–113 (citing Exs. 1031–1037);
`Paper 8, 2.
`In addition, Petitioner states that it has filed another petition for inter
`partes review of the ’576 patent, IPR2022-00040.2 Pet. 113. Petitioner
`states that two other inter partes review proceedings challenging the
`’576 patent (IPR2017-00256 and IPR2017-00258) terminated after the filing
`of a petition but before any decision on institution, and final written
`decisions were entered in two more inter partes review proceedings
`challenging the ’576 patent (IPR2018-00564 and IPR2018-00565). Id.
`Patent Owner also identifies these proceedings. Paper 8, 3.
`D. The ’576 Patent3
`The ’576 patent is titled “Training and Safety Device, System and
`Method to Aid in Proper Movement During Physical Activity” and relates to
`“the field of electronic training and safety devices used to monitor human
`
`1 This proceeding was transferred from the Western District of Texas to the
`Northern District of California on May 16, 2022, and is now styled
`LoganTree LP v. Apple, Inc., Case No. 5:22-cv-02892 (N.D. Cal.).
`Paper 6, 2.
`2 The Board instituted a trial in this proceeding on September 1, 2022.
`IPR2022-00040, Paper 10.
`3 An ex parte reexamination certificate issued on March 17, 2015, with all
`claims either amended from their original form or newly added during
`reexamination. Ex. 1001, code (45) C1, cols. 1–12 C1.
`
`3
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`physical activity.” Ex. 1001, code (54), 1:6–7. More specifically, the
`’576 patent discloses a method that detects, measures, records, and/or
`analyzes the time, date, and other data associated with movement of the
`device and produces meaningful feedback regarding the measured
`movement. Id. at 1:8–11.
`The ’576 patent discloses that certain prior art devices recorded the
`number of times that a predetermined angle was exceeded but were not
`convenient to operate and served to report rather than analyze the
`information. Id. at 1:45–54. The ’576 patent discloses that it is also
`important to measure angular velocity to monitor and analyze improper
`movement. Id. at 1:55–67.
`The ’576 patent discloses an electronic device that tracks and
`monitors an individual’s motion through the use of a movement sensor
`capable of measuring data associated with the wearer’s movement. Id.
`at 2:10–13. The device of the ’576 patent includes a user-programmable
`microprocessor, which receives, interprets, stores and responds to the
`movement data based on customizable operation parameters; a clock
`connected to the microprocessor; memory for storing the movement and
`analysis data; a power source; a port for downloading the data from the
`device to other computation or storage devices contained within the system;
`and various input and output components. Id. at 2:13–21.
`Figure 4 of the ’576 patent is a block diagram of the movement
`measuring device (id. at 3:11–12):
`
`4
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`
`
`Figure 4 depicts a block diagram of the components of the device.
`The self-contained device can be worn at various positions along the
`torso or appendages being monitored depending on the specific physical task
`being performed. Id. at 2:21–24. The device also monitors the speed of the
`movements made while the device is being worn. Id. at 2:24–25. When a
`pre-programmed event is recognized, the device records the time and date of
`the event while providing feedback to the wearer via visual, audible and/or
`tactile warnings. Id. at 2:25–29. Periodically, data from the device may be
`downloaded into an associated computer program, which analyzes the data.
`Id. at 2:29–31. The program can then format various reports to aid in
`recognizing and correcting trends in incorrect physical movement. Id. at
`2:31–33.
`
`5
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`E. Challenged Claims
`As noted above, Petitioner challenges claims 1–5, 8–11, 20, 25,
`30–32, 36, 39–42, 45–51, 61–65, 144, and 147. Of these claims, claims 1
`and 20 are independent. Claim 1, as amended in the reexamination
`proceeding, is illustrative of the subject matter and is reproduced below,
`with bracketed numbering added to track those used in the Petition:
`1. [1pre] A portable, self-contained device for monitoring
`movement of body parts during physical activity, said device
`comprising:
`[1a] a movement sensor capable of measuring data associated
`with unrestrained movement in any direction and generating
`signals indicative of said movement;
`[1b] a power source;
`[1c] a microprocessor connected to said movement sensor and
`to said power source, [1d] said microprocessor capable of
`receiving, interpreting, storing and responding to said
`movement data based on user-defined operational
`parameters, [1e] detecting a first user-defined event based on
`the movement data and at least one of the user-defined
`operational parameters regarding the movement data, and
`[1f] 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;
`[1g] at least one user input connected to said microprocessor for
`controlling the operation of said device;
`[1h] a real-time clock connected to said microprocessor;
`[1i] memory for storing said movement data; and
`[1j] an output indicator connected to said microprocessor for
`signaling the occurrence of user-defined events;
`[1k] wherein said movement sensor measures the angle and
`velocity of said movement.
`
`6
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`Ex. 1001, 1:25–50 C1 (emphasis omitted); Pet. vii.
`F. Instituted Grounds of Unpatentability
`We instituted inter partes review of the challenged claims based on
`the following grounds of unpatentability asserted by Petitioner:4
`35
`U.S.C. § Reference(s)/Basis
`103(a) Ono,5 Hutchings6
`103(a) Ono, Hutchings,
`Amano7
`103(a) Ono, Hutchings,
`Conlan8
`103(a) Ono, Hutchings,
`Conlan, Hickman9
`103(a) Ono, Hutchings,
`Kaufman10
`Ono, Hutchings,
`Amano, Conlan,
`Kaufman
`Ono, Hutchings,
`Amano, Conlan,
`Kaufman, Hickman
`
`1
`
`2
`
`3A
`
`3B
`
`Ground Claim(s) Challenged
`1, 3–5, 8, 10, 20, 25, 30,
`39, 41, 42, 61–65
`1, 3–5, 8–11, 20, 25, 30,
`36, 39–42, 61–65
`1–5, 8, 10, 20, 25, 30, 31,
`39, 41, 42, 45–47, 49, 61–
`65
`48, 50, 51
`1, 3–5, 8, 10, 20, 25, 30,
`39, 41, 42, 61–65, 144,
`147
`1–5, 8–11, 20, 25, 30–32,
`36, 39–42, 45–47, 49, 61–
`65, 144, 147
`
`4
`
`5A
`
`5B
`
`48, 50, 51
`
`103(a)
`
`103(a)
`
`
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’576 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, we apply the pre-AIA version of 35 U.S.C. § 103.
`5 US 4,962,469, issued Oct. 9, 1990 (Ex. 1101).
`6 US 5,899,963, issued May 4, 1999 (Ex. 1102).
`7 US 5,941,837, issued Aug. 24, 1999 (Ex. 1103).
`8 US 5,573,013, issued Nov. 12, 1996 (Ex. 1010).
`9 US 6,059,692, issued May 9, 2000 (Ex. 1104).
`10 US 5,857,939, issued Jan. 12, 1999 (Ex. 1105).
`
`7
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`Ground Claim(s) Challenged
`1–5, 8–11, 20, 25, 30, 31,
`36, 39–42, 45–47, 49, 61–
`65
`
`6A
`
`6B
`
`48, 50, 51
`
`7
`
`8A
`
`1, 3–5, 8–11, 20, 25, 30,
`36, 39–42, 61–65, 144,
`147
`1–5, 8, 10, 20, 25, 30, 31,
`39, 41, 42, 45–47, 49, 61–
`65, 144, 147
`
`8B
`
`48, 50, 51
`
`Dec. Inst. 24; Pet. 13–14.
`
`35
`U.S.C. § Reference(s)/Basis
`103(a) Ono, Hutchings,
`Amano, Conlan
`Ono, Hutchings,
`Amano, Conlan,
`Hickman
`103(a) Ono, Hutchings,
`Amano, Kaufman
`
`103(a)
`
`103(a) Ono, Hutchings,
`Conlan, Kaufman
`Ono, Hutchings,
`Conlan, Kaufman,
`Hickman
`
`103(a)
`
`II. ANALYSIS
`A. Legal Standards
`To prevail in its challenge, 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) (2020). “In an IPR, the petitioner has the
`burden from the onset to show with particularity why the patent it challenges
`is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363
`(Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). This burden of persuasion
`never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden
`of proof in inter partes review).
`
`8
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`A patent 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 the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 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
`indicia of non-obviousness (also called secondary considerations), such as
`commercial success, long-felt but unsolved needs, and failure of others.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We analyze grounds
`based on obviousness in accordance with the above-stated principles.11
`B. Level of Ordinary Skill in the Art
`In determining whether an invention would have been obvious at the
`time it was made, 35 U.S.C. § 103 requires us to resolve the level of
`ordinary skill in the pertinent art at the time of the effective filing date of the
`claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in
`the art is a hypothetical person who is presumed to have known the relevant
`art. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that
`may be considered in determining the level of ordinary skill in the art
`include, but are not limited to, the types of problems encountered in the art,
`the sophistication of the technology, and educational level of active workers
`in the field. Id. In a given case, one or more factors may predominate. Id.
`
`
`11 The record does not include any evidence of objective indicia of non-
`obviousness.
`
`9
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`Petitioner contends that a person having ordinary skill in the art
`would have had a Bachelor of Science degree in an academic
`discipline emphasizing the design of electrical, computer, or
`software technologies, in combination with training or at least
`one to two years of related work experience with capture and
`processing of data or information, including but not limited to
`physical activity monitoring technologies. Alternatively, the
`person could have also had a Master of Science degree in a
`relevant academic discipline with less than a year of related
`work experience in the same discipline.
`Pet. 15–16 (citing Ex. 1100 ¶ 22).
`Patent Owner argues that a person of ordinary skill in the art “would
`have had a bachelor’s degree in in electrical engineering or computer
`engineering or equivalent, and two years of experience in embedded signal
`processing and/or systems, or equivalent.” PO Resp. 16 (citing Ex. 2001
`¶ 43). Patent Owner adds that “[a]dditional industry experience or technical
`training may offset less formal education, while advanced degrees or
`additional formal education may offset lesser levels of industry experience.”
`Id.
`
`In the Decision on Institution, we adopted Petitioner’s proposed level
`of ordinary skill in the art, stating it was “consistent with the evidence of
`record, including the asserted prior art.” Dec. Inst. 8. In proposing a
`different level of ordinary skill in the art, Patent Owner does not explain
`why its proposed skill level is more appropriate.12 PO Resp. 16. In addition,
`the parties’ proposed definitions are materially similar.
`
`
`12 Petitioner does not address the level of ordinary skill in the art in its
`Reply.
`
`10
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`Accordingly, for the purposes of this Decision, we apply Petitioner’s
`definition, although our conclusions with respect to obviousness would be
`the same if we were to apply Patent Owner’s definition.
`C. Claim Construction
`In inter partes reviews, the Board interprets claim language using the
`district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). Under
`that standard, we generally give claim terms their ordinary and customary
`meaning, as would be 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. See Phillips, 415 F.3d at
`1313–14. Although extrinsic evidence, when available, may also be useful
`when construing claim terms under this standard, extrinsic evidence should
`be considered in the context of the intrinsic evidence. See id. at 1317–19.
`Petitioner argues that one of ordinary skill in the art would have
`understood that the term “a movement sensor” encompasses one or more
`sensors capable of detecting movement and measuring movement data
`associated with the detected movement. Pet. 17–18 (citing Ex. 1100 ¶ 52).
`Petitioner contends that the prosecution history of the ’576 patent supports
`this construction. Id. at 18 (citing Ex. 1100 ¶¶ 49–51, 53; Ex. 1007, 248,
`250–51, 491–99).
`Patent Owner disagrees, arguing that “movement sensor” is a
`straightforward claim term and should be given its plain and ordinary
`meaning. PO Resp. 17. Patent Owner also argues that “Petitioner has not
`suggested that its interpretation would resolve the question of the relevance
`of any of its references.” Id. (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`11
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).
`We determine that we need not expressly construe “movement
`sensor” to resolve the parties’ disputes because doing so would have no
`effect on the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d
`1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those
`terms . . . that are in controversy, and only to the extent necessary to resolve
`the controversy.’”) (quoting Vivid Techs, 200 F.3d at 803 (Fed. Cir. 1999)).
`To the extent the parties raise claim construction issues in addressing the
`asserted grounds, we address such issues below.
`D. Ground 1: Asserted Obviousness Based on Ono and Hutchings
`Petitioner asserts that claims 1, 3–5, 8, 10, 20, 25, 30, 39, 41, 42, and
`61–65 of the ’576 patent are unpatentable under 35 U.S.C. § 103(a) based on
`Ono and Hutchings. Pet. 18–78. Patent Owner provides arguments
`addressing this asserted ground of unpatentability. PO Resp. 18–36. We
`first summarize the references and then address the parties’ contentions.
`1. Ono
`Ono “relates to an exercise measuring instrument in which exercise in
`walking, jogging, running, and the like is measured utilizing an acceleration
`sensor.” Ex. 1101, 1:5–8. Ono’s exercise measuring instrument can be an
`electronic wrist watch having a mode-selecting switch, a stride-length
`selecting switch, and an accelerometer sensor. Id. at 3:10–19, Fig. 1. We
`reproduce Figure 14 below.
`
`12
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`
`Figure 14 is a block diagram depicting the components of an embodiment of
`the exercise measuring instrument. Id. at 2:59–60, 13:18–19. An output
`signal from acceleration sensor 40 is applied to waveform-shaping
`section 47, which shapes the output signal into a pulse signal. Id.
`at 8:60–65. The pulse signal is counted by counter 48, and the resulting
`count data is supplied to control section 49. Id. at 8:65–67. When a user
`inputs a system-start signal via key-input section 51, control section 49
`calculates the number of steps based on the count data and also calculates
`the distance walked based on the number of steps and the stride-length data.
`Id. at 9:2–11. Control section 49 sends the calculated data to display
`section 102 through display control circuit 56. Id. at 9:12–14, 13:19–22.
`Oscillator circuit 53 delivers a reference signal to dividing circuit 54
`and timing-signal generating circuit 55. Id. at 9:16–18. Dividing circuit 54
`divides the reference signal and outputs a one-Hertz signal to control
`
`13
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`section 49, which processes the signal to obtain time data such as “present-
`time data comprising minute-data, hour-data, date-data and month-data.” Id.
`at 9:18–29.
`The instrument also includes RAM 101, which includes time-counting
`register T for storing the present-time data. Id. at 13:30–33, Fig. 15. In
`addition, RAM 101 includes registers for storing measurement time, stride
`lengths for the walking, exercise- walking, and jogging modes, target
`number of steps, target distance, target calorie consumption, sex, weight,
`age, walking speeds, walking pitches, accumulative number of steps taken,
`accumulative distance walked, and accumulative calories consumed. Id.
`at 13:49–14:5, Fig. 15.
`Ono discloses alarm-driving section 103 for generating an alarm and
`speaker 104. Id. at 13:23–25. For instance, and alarm sound is generated if
`the distance walked reaches the target distance or the accumulative number
`of steps reaches a target number. Id. at 16:2–4; 16:11–13.
`2. Hutchings
`Hutchings relates to measuring instruments generally and more
`specifically to “a system and method for determining the speed, distance and
`height traversed by a person or an object while in motion.” Ex. 1102,
`1:15–18. We reproduce Figure 6 below.
`
`14
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`
`
`
`Figure 6 is a block diagram depicting the components of a measuring
`instrument. Id. at 4:4–6, 8:44–45. The system includes unit 48 comprising
`linear accelerometers that measure accelerations Ax, Ay, and Az in three
`dimensions and unit 50 comprising rotational sensors that measure θx, θy,
`and θz signals to thus provide the angle of rotation along each axis of the
`translational coordinate. Id. at 8:49–59.
`The outputs of unit 48 and unit 50 are coupled to processor 52, which
`determines the components of motion in the reference frame in accordance
`with equations 3–5 and 9–10. Id. at 7:13–15, 7:64–65, 8:59–62.
`Microprocessor 56 measures the distance traversed during each step and the
`maximum height jumped during the step. Id. at 9:13–15. This data can be
`transmitted by transmitter 58 to remote receiver unit 60. Id. at 9:21–24.
`Remote receiver unit 60, which may be located in a user’s wrist watch,
`
`15
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`contains receiver 62, microprocessor 64, mode select switch 66, and
`display 68. Id. at 9:30–32.
`3. Independent Claims 1 and 20
`Petitioner contends that the combination of Ono and Hutchings
`discloses each limitation of independent claims 1 and 20. Pet. 27–64,
`70–73. To support its arguments, Petitioner identifies certain passages in the
`cited references and explains the significance of each passage with respect to
`the corresponding claim limitation. Id. Petitioner also articulates reasons to
`combine the relied-upon aspects of Ono and Hutchings. Id. at 24–26.
`Claim 1 recites limitation [1f]:
`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.
`Similarly, claim 20 recites limitation [20f]:
`storing, in said 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.
`Our analysis of these related limitations resolves the dispute for all
`challenged claims.
`Regarding limitation [1f], Petitioner asserts that Ono discloses storing
`“the user-defined operational parameters and the movement data used to
`detect the user-defined event, both of which are event information related to
`the detected user-defined event.” Pet. 50 (citing Ex. 1101, 13:44–14:15,
`14:65–16:27, Fig. 15; Ex. 1100 ¶ 93; Pet. 44–47). Petitioner argues that
`Ono’s “modes, the step-counting start/stop, the stride lengths, the target
`distance, and the target number of steps set by the user are user-defined
`operational parameters that affect the operations performed by the device.”
`
`16
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`Id. at 39 (citing Ex. 1101, 13:44–61, 14:65–16:27; Ex. 1001, 7:6–16, 8:56–
`10:23, Fig. 5; Ex. 1100 ¶ 81). Petitioner also argues that “[t]he number of
`steps taken in the last 10 seconds, mean walking speed, steps/minute,
`distance-walked, and accumulative number of steps taken collectively form
`movement data that the microprocessor receives, interprets, stores, and
`responds to.” Id. at 38 (citing Ex. 1101, 8:57–9:14, 13:18–29, 13:44–45,
`14:65–16:27, Fig. 18; Ex. 1100 ¶ 80).
`Petitioner also asserts that Ono discloses storing time stamp
`information with the event information. Id. Specifically, Petitioner argues
`that Ono discloses that its memory includes a time-counting register for
`storing the present-time data and a time-counting process for counting the
`present time. Id. at 50–51 (citing Ex. 1101, 12:10–12, 13:31–33). Referring
`to Figure 18, Petitioner asserts that Ono describes the time-counting process
`as step a2 and the detection of user-defined events as steps a17, a18, a20, a21.
`Id. at 51 (citing Ex. 1101, 15:1–5, Fig. 18). Thus, according to Petitioner,
`“Ono determines and stores the present time data at which the movement
`data causing the user-defined event occurred.” Id. (citing Ex. 1100 ¶ 94;
`Pet. 73–75). Petitioner also points to Ono’s Figure 15 as showing that Ono
`stores “the event information related to the detected user-defined event along
`with the present time data at which the movement data causing the user-
`defined event occurred.” Id. at 52–53 (citing Ex. 1101, 13:44–14:15, 14:65–
`16:27, Fig. 15; Ex. 1100 ¶ 95).
`Alternatively, Petitioner argues that “Ono supports instances where
`the user stops the step-counting mode operation using switch S2 after the
`processor detects that” the target distance or the target number of steps has
`been reached and notifies the user by generating an alarm sound. Id. at 53
`(citing Ex. 1101, 16:28–37, 17:3–59, Figs. 18, 20; Ex. 1100 ¶ 96). Petitioner
`
`17
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`illustrates this assertion with annotated versions of Ono’s Figures 18 and 20,
`which are reproduced below.
`
`
`
`
`Pet. 54–55. For this annotated Figure 18, Petitioner adds (1) a red line
`defining a path from step a21 to step a23, passing through step a22, step a24,
`and step a1, (2) a blue box enclosing steps a17 and a18, (3) another blue box
`enclosing steps a20 and a21, and (4) text stating “detect a user-defined event
`based on the movement data and the user-defined operational parameters”
`with blue arrows pointing to the two blue boxes. Id. at 54. For this
`annotated Figure 20, Petitioner adds a red line defining a path from the
`“Switch Processing” box step C15, passing through step C1, step C8, step C9,
`step C11, step C13, and step C14. Id. at 55.
`Petitioner argues further that when the user stops the step-counting
`mode or the run mode of the Ono-Hutchings device, the processor stores
`various data, including the date and duration, for later retrieval and display.
`Id. at 55–56 (citing Ex. 1101, 13:65–14:29, 16:24–25, 17:10–50, 18:20–24,
`20:37–53, Figs. 15, 20, 23; Pet. 34–44; Ex. 1100 ¶ 97; Ex. 1102, 10:14–18).
`
`18
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`According to Petitioner, when “the user stops the step-counting or run mode
`after the microprocessor detects a user-defined event . . . , the
`microprocessor stores at least the date, duration, total step count, total
`distance-walked, and calorie-consumption in registers D of RAM 101 for
`later retrieval and display in the data-recall mode.” Id. at 56 (citing Ex. 1100
`¶ 98). Thus, Petitioner asserts that the stored total step count, total distance-
`walked, and calorie-consumption would be event information related to the
`detected user-defined event, and the date and duration would be time stamp
`information reflecting a time at which the movement data causing the user-
`defined event occurred. Id. (citing Ex. 1100 ¶ 98; Hewlett-Packard Co. v.
`Mustek Sys., Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003); Unwired Planet,
`LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016)).
`Petitioner asserts that the combination of Ono and Hutchings discloses
`limitation [20f] for the same reasons asserted in connection with limitation
`[1f]. Id. at 73.
`In the Response, Patent Owner divides limitation [1f] into first and
`second portions and addresses its arguments with respect to limitation [1f]
`(and thus limitation [20f]) accordingly. PO Resp. 25. We address each
`portion in turn.
`
`a) First portion: Storing Event Information
`Patent Owner first challenges Petitioner’s assertions regarding the first
`portion of both limitation [1f] (“storing first event information related to the
`detected first user-defined event”) and limitation [20f] (“storing, in said
`memory, first event information related to the detected first user-defined
`event”). PO Resp. 25–26, 34. In particular, Patent Owner argues that, in
`relying on the same alleged disclosures in Ono for both the movement data
`and the user-defined operational parameters of limitation [1d] and the first
`
`19
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`event information related to the detected first user-defined event of
`limitation [1f], Petitioner conflates these two limitations [1d] and [1f] so as
`to improperly “moot, or read out,” the first portion of limitation [1f]. Id.
`at 26 (citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
`Cir. 2006); Exmark Mfg. v. Briggs & Stratton Corp., No. 2019-1878, at *8
`(Fed. Cir. Oct. 6, 2020); Microstrategy v. Bus. Objects, 238 F. App’x 605,
`609 (Fed. Cir. 2007)). According to Patent Owner, “Petitioner must point to
`something else beyond the stored movement data and user-defined
`operational parameters in Ono or Hutchings for its disclosure.” Id.
`In reply, Petitioner argues that its “reliance on the same disclosures of
`Ono for elements [1d] and [1f] is in no way improper, but rather is consistent
`with ‘the principle that in [an] obviousness analysis, a single element,
`feature, or mechanism can ordinarily satisfy multiple claim limitations,
`including by performing multiple claimed functions.’” Reply 15–16 (citing
`Google LLC v. Pers. Audio, LLC, 743 F. App’x 978, 985 (Fed. Cir. 2018))
`(alteration in original).
`We agree with Petitioner. On the record before us, we see no reason
`to forgo the principle articulated in Google that a single feature (or in this
`case a single group of features) can satisfy multiple claim limitations.
`Contrary to Patent Owner’s contention, Petitioner position does not moot,
`read out, or render meaningless the first portion of limitation [1f]. Instead,
`Ono’s teachings relied on by Petitioner still must disclose the claimed
`subject matter in order to satisfy the first portion.
`Patent Owner, however, also argues that Ono discloses storing
`user-defined operational parameters and movement data that may be used to
`detect a user-defined event, but does not disclose storing event information
`relating to a detected user-defined event. PO Resp. 25. Patent Owner adds
`
`20
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`that “Ono does not disclose [the first portion of limitation [1f]] because no
`new or separate ‘first event information’ is stored upon the detection of that
`user-defined event.” Id.; see also Sur-reply 8 (asserting it is “illogical” that
`“one can store information related to a ‘detected event’ without ever having
`detected any event”).
`Petitioner disagrees, arguing that limitations [1f] and [20f] do “not
`require first event information be stored ‘upon the detection’ of the first
`user-defined event,” but “merely require that the stored first event
`information is ‘related to’ the detected first user-defined event.” Reply 9.
`Petitioner argues further that “[t]he fact that Ono stores the event
`information used to detect the user-defined event prior to detecting the user-
`defined event does not make it any less ‘related to’ the detected user-defined
`event or any less of an indication that the predetermined threshold is met.”
`Id. at 10.
`At the core, the parties dispute whether claims 1 and 20 require the
`first event information to be stored upon the first user-defined event being
`detected. Petitioner is correct that limitations [1f] and [20f] do not explicitly
`require storing the first event information “upon the detection” of the first
`user-defined event, and, as a general rule, method steps are not ordinarily
`construed to require an order unless the claim actually recites one.
`Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1398
`(Fed. Cir. 2014) (citing Interactive Gift Express, Inc. v. Compuserve Inc.,
`256 F.3d 1323, 1342 (Fed. Cir. 2001)); see also Tr. 19:22–25 (Petitioner
`arguing “as a general rule of claim construction, the claim is not limited to
`the performance of the steps in the order recited, unless the claim explicitly
`or implicitly requires a specific order”). “However, a claim ‘requires an
`ordering of steps when the claim language, as a matter of logic or grammar,
`
`21
`
`
`
`IPR2022-00037
`Patent 6,059,576 C1
`requires that the steps be performed
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
