`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioners,
`
`
`v.
`
`
`LOGANTREE LP
`Patent Owner
`______________
`
`Case IPR2022-00037
`Patent 6,059,576
`______________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ....................................................................................................... 1 
`
`A.  Overview of the ’576 Patent .............................................................................. 1 
`
`B.  Overview of the Prosecution History ................................................................ 4 
`
`C. 
`
`Summary of the Cited References ..................................................................... 8 
`
`II.  POSITA AND CLAIM CONSTRUCTION .............................................................. 16 
`
`A.  Level of a Person of Ordinary Skill in the Art (“POSITA”) ........................... 16 
`
`B.  Claim Construction .......................................................................................... 16 
`
`III.  PETITIONER’S ARGUMENTS .............................................................................. 18 
`
`C.  GROUND 1 (Ono and Hutchings) .................................................................. 18 
`
`D.  GROUND 2 (Ono, Hutchings, and Amano) ................................................... 36 
`
`E.  GROUND 3A (Ono, Hutchings, and Conlan) ................................................. 39 
`
`F.  GROUND 3B (Ono, Hutchings, Conlan, and Hickman) ................................ 43 
`
`G.  GROUND 4 (Ono, Hutchings, and Kaufman) ................................................ 45 
`
`H.  GROUND 5A (Ono, Hutchings, Amano, Conlan, and Kaufman) .................. 48 
`
`I. 
`
`J. 
`
`GROUND 5B (Ono, Hutchings, Amano, Conlan, Kaufman, and Hickman) .. 50 
`
`GROUND 6A (Ono, Hutchings, Amano, and Conlan) ................................... 50 
`
`K.  GROUND 6B (Ono, Hutchings, Amano, Conlan, and Hickman) ................... 50 
`
`L.  GROUND 7 (Ono, Hutchings, Amano, and Kaufman) ................................... 50 
`
`
`
`i
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`

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`M.  GROUND 8A (Ono, Hutchings, Conlan, and Kaufman) ................................ 50 
`
`N.  GROUND 8B (Ono, Hutchings, Conlan, Kaufman, and Hickman)................ 50 
`
`IV.  CONCLUSION ......................................................................................................... 51 
`
`
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`
`Cases
`
`
`Amgen v. F. Hoffmann-La Roche, 580 F.3d 1340, 1362 (Fed. Cir. 2009)
`
`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)
`
`CallWave Commc’ns, LLC v. AT&T Mobility, LLC, 2014 WL 7205657 (D. Del. 2014)
`
`Exmark Mfg. v. Briggs & Stratton Corp., No. 2019-1878, (Fed. Cir. Oct. 6, 2020)
`
`Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014)
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
`
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006)
`
`Micro Chemical, Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1546 (Fed. Cir.
`1997)
`
`Microstrategy v. Bus. Objects, 238 F. App’x 605, 609 (Fed. Cir. 2007)
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017)
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)
`
`Summit 6, LLC v. Samsung Elec. Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015)
`
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`
`Regulations
`
`
`37 C.F.R § 42.120
`37 C.F.R. § 42.100(b)
`37 C.F.R. § 42.104(b)(4)
`37 C.F.R. § 42.104(b)(4)–(5)
`37 C.F.R. § 42.22(a)(2)
`35 U.S.C. § 312(a)(3), 37
`C.F.R. § 42.22(a)(2)
`
`
`
`
`
`40
`
`35
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`16
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`26
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`17
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`18
`
`19
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`19
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`26
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`17
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`16
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`16
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`17
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`17
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`1
`16
`20
`22
`22
`23
`23,31
`
`
`
`iii
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`

`

`
`
`EXHIBIT LIST
`
`EXHIBIT NO
`2001
`
`DESCRIPTION
` Declaration of Vijay K. Madisetti, Ph.D.
`
`
`
`iv
`
`

`

`Pursuant to 37 C.F.R § 42.120, Patent Owner, LoganTree, LP submits the following
`
`Response to Inter Partes Review No. 2022-00037, instituted against its U.S. Patent No. 6,059,576
`
`(’576 patent). Because, as set forth below, Petitioner, Apple, Inc. has not met its burden of proof
`
`and because LoganTree presents the Board with facts that demonstrate the patentability of the
`
`challenged claims, the claims must be confirmed.
`
`I.
`
`INTRODUCTION
`
`A. Overview of the ’576 Patent
`The ’576 patent is directed to a portable, self-contained device for monitoring movement
`
`of body parts during physical activity. EX1001, 2:6-9. The device includes a movement sensor for
`
`measuring data associated with unrestrained movement in any direction and generating signals
`
`indicative of the movement. Id. at 4:37-48. The movement sensor is connected to a microprocessor
`
`which receives the signals generated by the movement sensor for analysis and subsequent
`
`processing. Id. at 4:52-55. The microprocessor is connected to a real-time clock to receive time
`
`stamp information. Id. at 5:35-37.
`
`Using the microprocessor, the ’576 patent interprets the physical movement data measured
`
`by the sensor using the user-programmed operational parameters and the real-time clock. Id. at
`
`5:40-47. The ’576 patent stores the physical movement data in a memory. Id. at 5:57-59. The
`
`microprocessor detects a user-defined event using the movement data and the user-programmed
`
`operational parameters. Id. at 40-47. The microprocessor also stores event information related to
`
`the detected user-defined event, along with time stamp information reflecting a time at which the
`
`movement data causing the first user-defined event occurred. Id.
`
`
`
`1
`
`

`

`Figure 4 of the ’576 patent represents a high-level block diagram of components of the
`
`device:
`
`
`
`
`
`Independent Claim 11 recites (with annotations):
`
`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,
`
`
`1 Petitioner challenges independent claims 1 (a device) and 20 (a method), along with various
`dependent children of those claims. Most of the challenged claims depend on claim 1. Claims
`1 and 20 have several similarities, and so Claim 1 is treated as representative for the sole
`purpose of this introductory overview.
`
`
`
`2
`
`

`

`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.
`
`In providing expert testimony for LoganTree, Dr. Madisetti created a version of Figure 4
`
`of the ’576 Patent (Figure A1) in a manner that is useful in interpreting the claims and the prior art
`
`of record by a person of ordinary skill in the art (“POSITA”). Madisetti Declaration, EX2001 at
`
`¶36 and Figure A1. This figure is reproduced below:
`
`
`
`3
`
`
`
`

`

`As illustrated in Figure A1, element 1a requires that the sensor 30 measure data associated
`
`with unrestricted movement of the body part. EX2001 at ¶37. This data is represented by A, B, C,
`
`and D.
`
`As is further illustrated, element 1d requires a microprocessor 32 be capable of interpreting
`
`this measured data. Id. at ¶38. This interpretation is performed by the microprocessor 32 based on
`
`user 34 defined operational parameters. Id. A real-time clock 46 provides the time stamps
`
`corresponding to the data A, B, C and D, respectively, where time stamp TS_A corresponds to
`
`data A, for example.
`
`From Figure A1, it is clear that element 1e requires detecting an event by the
`
`microprocessor 32 (not by the user) in the measured movement data, the detection being based on
`
`at least one user-defined operational parameter. Id. at ¶39. As illustrated by example of Figure A1,
`
`this event corresponds to data A (interpreted as being associated with time stamp TS_A). Id. The
`
`data values B, C, and D and their associated time stamps do not generate (at the microprocessor)
`
`a detected event, in this example. Id. The event corresponding to A is denoted by a diamond shape
`
`in red along with its associated time stamp TS_A in memory 50. Id.
`
`As further shown in Figure A1, Element 1f requires that this event and the time stamp
`
`associated with that event’s movement data (TS_A) be also stored in memory 50. Id. at ¶40.
`
`B. Overview of the Prosecution History
`The prosecution history of the ’576 Patent—especially the Ex Parte Reexamination—is
`
`unusually significant here because Apple’s Petition repeats many of the unpatentability arguments
`
`that were already considered by the examiner, and overcome by LoganTree through arguments
`
`and amendments during prosecution.
`
`
`
`4
`
`

`

`The Original Prosecution:
`
`The ’576 Patent was originally filed on November 21, 1997. Of particular relevance, Claim
`
`1 was amended with changes to Elements 1pre and 1a, and the addition of element 1k:
`
`1a:
`
`1pre: A portable, self-contained device for monitoring [detecting] movement of body parts
`during physical activity, said device comprising:
`a movement sensor capable of measuring data associated with unrestrained movement in
`any direction [of said device] and generating signals indicative of said movement;
`wherein said movement sensor measures the angle and velocity of said movement.
`
`Id. at 40.
`
`1k:
`
`With those changes, the ’576 Patent issued on May 9, 2000. Notably, the claims did not
`
`yet include elements 1e and 1f (or their counterparts in claims 13 and 20).
`
`The Ex Parte Reexamination:
`
`On April 4, 2014, PO filed a Request for Ex Parte Reexamination. See Reexamination
`
`History, EX1107 at 436. After a June 3, 2014 phone interview, id. at 317, the Examiner determined
`
`that PO had raised substantial new questions of patentability based on references Flentov, Gaudet,
`
`and Vock, and ordered a reexamination. Id. at 303, 307. The end result of the Reexamination was
`
`PO amended the claim language to add Elements 1e and 1f (and made similar additions to Claims
`
`13 and 20):
`
`1f:
`
`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
`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. at 34, 168.
`
`The Reexamination proceedings placed significant importance on determining exactly
`
`which time Element 1f’s “time stamp information” is supposed to reflect. Much of the discussion
`
`
`
`5
`
`

`

`between the Examiner and PO focused on the distinction between the “time at which the movement
`
`data causing the first event occurred” (as claimed in Element 1f) and the update time at which data
`
`was saved (as disclosed in the prior art). The reexamination also placed significant importance on
`
`Element 1e’s detection of the user-defined event that is the basis of Element 1f. Specifically, the
`
`Examiner and PO focused on the distinction between the microprocessor detecting a first user-
`
`defined event based on the movement data and at least one of the user-defined operational
`
`parameters (as claimed in Element 1e) and an event being detected by some other means, such as
`
`the user pressing a button on the device (as disclosed in the prior art). Key exchanges from the
`
`Reexamination are briefly summarized below:
`
`In a September 4, 2014 interview, PO distinguished the ’576 Patent from the Burdea
`
`reference by emphasizing that the ’576 Patent’s time stamp must be related to the movement time,
`
`and distinguishing this from prior art where the stamp was related to “the update time”:
`
`“That is, the time stamp described in Burdea is related to the update time
`at which the patient data (allegedly the claimed movement data) is updated
`at the database 114.
`
`On the other hand, in the claimed invention, the time stamp is related to the
`movement time at which the movement sensor senses the movement.”
`
`Id. at 240 (emphasis added).
`
`In an October 14, 2014 amendment and argument, PO made a similar argument
`
`distinguishing Flentov and Vock:
`
`“Assuming arguendo that the air time or loft time in Flentov/Vock correspond
`to the claimed user-defined event ... the time stamp associated with the stored
`air/loft time data would reflect the time at which the air/loft time data are
`stored in the database - not the time at which the air/loft time occurred.”
`
`Id. at 218–219 (emphasis added).
`
`In a December 15, 2014 interview, PO reiterated the significance of that distinction (the
`
`time stamp reflecting when the movement data occurred rather than when the data was saved)
`
`
`
`6
`
`

`

`and discussed possible additional amendments to solidify the distinction—and the Examiner
`
`agreed:
`
`“Additional clarifying amendments were discussed to tie the claimed first time
`stamp information such that it reflects a time at which the movement data
`causing the first user-defined event occurred.
`
`The Examiners agreed that if a formal response is filed with clarifying
`amendments along the lines discussed during the interview, the Examiners
`would reconsider their current position regarding the combination of
`references (i.e., Flentov/Vock with Burdea).”
`
`Id. at 93 (from the PO’s “statement of substance of interview”).
`
`Additionally, PO discussed the microprocessor detecting the user-defined event based on
`
`the movement data, and distinguished detection by a user pressing a button (as disclosed in the
`
`Flentov reference from Element 1e/1f):
`
`“Regarding the Examiner’s position that the Flentov reference teaches
`detecting a first user-defined event based on (i) one of the user-defined
`operational parameters and (ii) the movement data, PO’s representative
`explained that the detection of the asserted event in Flentov is not based on
`the movement data.”
`
`Id. at 92 – 93.
`
`In a February 18, 2015 argument, PO explained that it had made the clarifying amendments
`
`discussed during the interview, and reiterated its argument:
`
`“Examiner’s proposed combination of Flentov and Burdea would reflect the
`time at which the data captured during the skier’s rum 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. at 80. PO again elaborated on the distinction between the microprocessor detecting an event
`
`(as claimed in Element 1e) and an event being detected by another means like the user pressing a
`
`button on the device (as disclosed in the prior art):
`
`“PO respectfully submits that even if Flentov is interpreted this way, it still
`does not teach the claimed detection operation because the Examiner is
`overlooking the fact that the claims require the microprocessor to detect a
`
`
`
`7
`
`

`

`first user-defined event based on the movement data and at least one of
`the user-defined operational parameters.
`
`That is, the event is detected by the microprocessor based on the movement
`data, not the user. On the other hand, in Flentov, even assuming arguendo
`that the skier’s movement data is taken into account for detecting the end of
`the run, the movement data is taken into account by the user, not the
`microprocessor as claimed.
`
`Therefore, Flentov does not and cannot teach the claimed microprocessor
`... detecting a first user-defined event based on the movement data and at
`least one of the user-defined operational parameters.”
`
`Id. at 83 (emphasis in original). In light of these amendments and arguments, on March 17, 2015,
`
`the Examiner issued the Reexamination Certificate. Id. at 1.
`
`C.
`Summary of the Cited References2
`PO summarizes Petitioner’s cited references here for overview purposes. PO will address
`
`the Petitioner’s individual arguments for each ground, and specifics of the relevant portions of
`
`each reference, in greater detail in Section III, infra.
`
`Ono (EX1101)
`
`U.S. Patent No. 4,962,469 (“Ono”) is directed to “an exercise measuring instrument” that
`
`measures “walking, jogging, running, and the like...utilizing an acceleration sensor.” Ono,
`
`EX1101, 1:5-10. Essentially, Ono is a wristwatch pedometer (left) that counts steps with a single
`
`one-axis accelerometer (right):
`
`
`2 In the context of Petitioner’s references, PO uses claim terms (including “movement data,”
`“microprocessor,” “movement sensor,” etc.) solely for the purpose of previewing Petitioner’s
`flawed arguments; this should not be construed as a concession that the references actually
`disclose such items.
`
`
`
`8
`
`

`

`Id. at fig.1, fig.3.
`
`
`
`
`
`
`
`
`
`
`
`Ono does not disclose many of the limitations of the challenged claims. For summary
`
`purposes here, the key deficiencies are summarized below:
`
` Element 1a: Ono’s single one-axis acceleration sensor (40, also illustrated in fig.3,
`
`supra) is not capable of measuring unrestrained movement in any direction, as required
`
`in Element 1a. See EX2001 at ¶45.
`
` Element 1f (first half): Among other deficiencies, Ono does not store “first event
`
`information related to the detected first user-defined event.” To the extent Ono does
`
`detect an event, it responds by sounding an alarm, not by “storing first event
`
`information related to” the event, as required by Element 1f. See EX2001 at ¶48; see
`
`also Ono, EX1101 at 16:5–13; Paper 3, Petition at 36–38. Petitioner attempts to get
`
`around this by repeating its cites to Ono’s disclosures that Petitioner also contends as
`
`corresponding to Element 1d (stored movement data and user-defined operational
`
`parameters). See Paper 3, Petition at 49–50. Petitioner effectively conflates different
`
`
`
`9
`
`

`

`claim elements and argues that any reference disclosing Element 1d would inherently
`
`disclose this portion of Element 1f as well—an improper result. See EX2001 at ¶48.
`
` Element 1f (second half): Among other deficiencies, Ono does not store “first time
`
`stamp information reflecting a time at which the movement data” causing the event
`
`occurred—instead, Petitioner cites to time information that has nothing to do with the
`
`user-defined event. See EX2001 at ¶50.
`
`Hutchings (EX1102)
`
`U.S. Patent No. 5,899,963 (“Hutchings”) describes a “device that measures the distance
`
`traveled, speed, and height jumped of a moving object or a person while running or walking” using
`
`“[a]ccelerometers and rotational sensors.” Hutchings, EX1102 at Abstract. Essentially, Hutchings
`
`contains multiple accelerometers and rotational sensors that can be embedded in a shoe or a
`
`wristwatch, along with an electronic circuit that performs mathematical calculations to determine
`
`the distance and height:
`
`
`
`10
`
`
`
`

`

`Id. at Abstract, 4:49–63, fig.1, fig.6.
`
`Petitioner does not argue that Hutchings discloses many of the claim elements. Instead,
`
`Petitioner mainly uses it in an attempt to patch holes in Ground 1 regarding Ono’s motion sensor
`
`in Elements 1a and 1k. As discussed in in Section III(D), infra, Hutchins does not sufficiently
`
`patch the deficiencies in Ono.
`
`Amano (EX1102)
`
`U.S. Patent No. 5,941,837 (“Amano”) is directed to “a health management device for
`
`monitoring the user’s state of health based on information obtained from the condition of
`
`circulation in the user’s body” and “an exercise support device which provides appropriate
`
`suggestions and guidance to the user, or provides an exercise plan deemed appropriate to create a
`
`state of health in the user”:
`
`
`
`
`
`Amano, EX1103 at 1:8–13, fig.5A, fig.5B.
`
`Petitioner primarily uses Amano to argue for disclosure of the “real-time clock” and
`
`“output indicator” in Element 1f (and 20c) and claims 9, 11, 36, and 40. See Paper 3, Petition at
`
`
`
`11
`
`

`

`79–83. Amano is missing many of the other elements of the claimed invention. For example, it
`
`doesn’t appear to disclose user-defined operational parameters, as required by Elements 1d or 1e,
`
`or storing information related to detected user-defined events along with time stamp information.
`
`See EX2001 at ¶62.
`
`Conlan (EX1010)
`
`U.S. Patent No. 5,573,013 to Conlan (“Conlan”) is directed to a hybrid analog/digital
`
`activity monitor to be worn on the wrist of a subject. See EX1010 at Abstract. Conlan includes a
`
`“pair of buttons” that a user can use to tell the device about a particular condition the user feels
`
`(such as “dizziness or pain”):
`
`
`
`
`
`Conlan, EX1010 at fig.6, fig.5. Pressing a button will cause the corresponding occurrence to be
`
`recorded in the internal memory of the monitor. Id. at 6:38–46. In this way, it inverts the claimed
`
`invention: rather than the device detecting events and signaling their occurrence to the user (as
`
`claimed in the ’576 Patent), Conlan has the user detect events (such as dizziness or pain) and the
`
`user signals the occurrence to the device.
`
`Although Conlan has a digital processor (43), much of the actual processing is done by the
`
`analog processing circuits (42, 44, 51) external to the digital processor:
`
`
`
`12
`
`

`

`Conlan, EX1010 at fig.8. For example, in Conlan, the analog “activity monitor [51] also includes
`
`a window detector which ... provides an activity count each time the signal ... crosses the
`
`thresholds.” Id. at 3:59–63; see also id. at 8:13–17 (much of the processing is offloaded to the
`
`“Low pass filter 44” which “can be configured ... to obtain three different high frequency cutoff
`
`
`
`frequencies”).
`
`Petitioner mainly uses Conlan in an attempt to patch holes in Ground 1 regarding the
`
`storage, event detection, and timestamping capabilities required of the microprocessor (e.g., in
`
`Elements 1d and 1f, see Paper 3, Petition at 89–94), but Conlan too has serious deficiencies in each
`
`of these areas, as will be discussed in greater detail in the arguments related to Petitioner’s Ground
`
`3 (Ono, Hutchings, and Conlan) in Section III(E), infra.
`
`
`
`13
`
`

`

`Hickman (EX1104)
`
`U.S. Patent No. 6,059,692 (“Hickman”) is directed to a multi-part exercise and health
`
`system, controlled by a computer, that serves as a “virtual personal trainer.” See Hickman,
`
`EX1104, 2:9-14.
`
`
`
`Id. at Fig.1. Hickman uses a local computer to control other computers, as well as an external
`
`exercise apparatus such as a weight trainer or stationary bike. Id. at Abstract. The purpose of this
`
`device is to “store data and other parameters concerning the exercise or other activities which can
`
`be used to monitor the progress and to vary the exercise program or script.” Id. at 2:26-29.
`
`Petitioner primarily uses Hickman to argue for disclosure of various “external software” related
`
`dependent claims.
`
`
`
`14
`
`

`

`Kaufman (EX1105)
`
`U.S. Patent No. 5,857,939 (“Kaufman”) is directed to “an audible exercise monitoring
`
`device and repetition counter” “for monitoring the repetitive performance of an exercise.”
`
`Kaufman, EX1105 at 1:6–7, Abstract. Kaufman’s disclosures focuses heavily on the speech-
`
`related aspects of the claimed invention:
`
`See id. at fig.1. Petitioner primarily uses Kaufman to argue for the disclosure of various limitations
`
`related to “user-defined operational parameters.”
`
`
`
`
`
`15
`
`

`

`II.
`
`POSITA AND CLAIM CONSTRUCTION
`
`A. Level of a Person of Ordinary Skill in the Art (“POSITA”)
`A POSITA, as of the filing date of November 21, 1997 of the ’576 Patent, would have had
`
`a bachelor’s degree in electrical engineering or computer engineering or equivalent, and two years
`
`of experience in embedded signal processing and/or systems, or equivalent. EX2001 at ¶43.
`
`Additional industry experience or technical training may offset less formal education, while
`
`advanced degrees or additional formal education may offset lesser levels of industry experience.
`
`Dr. Madisetti possessed and exceeded such experience and knowledge before and at the
`
`date of the claimed invention and is qualified to opine on the ’576 Patent and the alleged prior art
`
`references. Id.
`
`B. Claim Construction
`The ’576 Patent’s claims should be construed as they would be in a district court pursuant
`
`to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), rather than being given the “broadest
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`reasonable interpretation.” 37 C.F.R. § 42.100(b).
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`“Movement sensor” is a straightforward claim term that should be given its “plain and
`ordinary meaning.”
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`A basic principle of claim construction is that “the words of a claim are generally given
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`their ordinary and customary meaning,” as understood by a person of ordinary skill in the art in
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`question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005)
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`(en banc) (internal quotation marks and citation omitted). This general rule especially holds where
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`the claim terms at issue are straightforward. See Summit 6, LLC v. Samsung Elec. Co., Ltd., 802
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`F.3d 1283, 1291 (Fed. Cir. 2015) (noting that the district court did not err in declining to construe
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`a term when the term was straightforward); see also CallWave Commc’ns, LLC v. AT&T Mobility,
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`LLC, 2014 WL 7205657, at *9 (D. Del. 2014) (finding construction unnecessary where a claim
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`term “uses ordinary English words, which may be given their plain and ordinary meaning.”).
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`“Movement sensor” is a straightforward claim term that uses ordinary English words, and it should
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`be given its “plain and ordinary meaning.”
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`The exceptions to the “plain and ordinary meaning” presumption do not apply.
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`There are “only two exceptions to [the] general rule” of plain and ordinary meaning: “1)
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`when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee
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`disavows the full scope of the claim term either in the specification or during prosecution.” Golden
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`Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner v. Sony
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`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Petitioner entirely fails to point
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`to any evidence that PO has acted as its own lexicographer or that PO has disavowed the full scope
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`of the term “movement sensor,” and so these exceptions do not apply. See Paper 3, Petition at 17–
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`18.
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`Petitioner has failed to justify the necessity of construction to resolve the issues in this
`dispute.
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`It is unclear why the Petitioner believes construction is necessary—Petitioner has not
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`suggested that its interpretation would resolve the question of the relevance of any of its references.
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`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
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`terms need be construed that are in controversy, and only to the extent necessary to resolve the
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`controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
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`1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an IPR review). But to the extent
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`Petitioner’s proposed construction is broader than the plain and ordinary meaning (with the intent
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`of covering more references), this would be an improper application of the “broadest reasonable
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`interpretation” standard. 37 C.F.R. § 42.100(b). Instead, the “plain and ordinary meaning” is
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`proper.
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`III.
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`PETITIONER’S ARGUMENTS
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`C. GROUND 1 (Ono and Hutchings)
`Petitioner bases Ground 1 mainly on Ono, a simple wristwatch pedometer that counts steps
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`with a single one-axis accelerometer. See Paper 3, Petition at 27–64; See EX2001 at ¶45. As
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`described in more detail in the overview provided in Section I(C), supra, Ono’s design is based on
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`a sensor-centric architecture that emphasizes low power, low cost, and low complexity by limiting
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`to a fairly unsophisticated sensor architecture. See EX2001 at ¶58.
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`In contrast, Hutchings is a complex athletic tracking device with multiple accelerometers,
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`gyroscopes, and processors that can calculate speed and distance based on the outputs of those
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`sensors. See Section I(C), supra (overviewing Hutchings and the other references). At the filing
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`date of the ’576 Patent, a POSITA would have understood the Hutchings device to have a complex,
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`microprocessor-centric architecture with some clear drawbacks—including significant power and
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`processing requirements that would negatively impact battery life. See EX2001 at ¶59. Petitioner
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`does not argue that Hutchings discloses many of the claim elements. Instead, Petitioner mainly
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`attempts to use Hutchings to patch some of the holes in Ground 1 regarding Ono’s motion sensor
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`in Elements 1a and 1k. See Paper 3, Petition at 27–64.
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`A POSITA would not have combined Ono and Hutchings.
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`Petitioner has not set forth clear-and-convincing evidence to show that either Ono or
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`Hutchings taught, suggested, motivated, or otherwise gave a reason to a POSITA to combine the
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`two references in the manner Petitioner suggests. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
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`(2007) (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and
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`must be cautious of arguments reliant upon ex post reasoning.”). An evaluation of a challenged
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`invention for obviousness “must involve more than indiscriminately combining prior art.” Micro
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`Chemical, Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1546 (Fed. Cir. 1997) (citation
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`omitted).
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`Ono does not teach or suggest to a POSITA that it should be modified to include
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`Hutchings’s multidimensional sensors (with their computational requirements), because a
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`POSITA would understand that doing so would significantly increase the complexity and cost of
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`the device while also having a dramatic negative impact on battery life—unacceptable trade-offs
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`for a simple pedometer device that is intended to be used over the course of days or even months.
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`See EX2001 at ¶60. Although Ono is Petitioner’s primary reference for Ground 1, Petitioner cites
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`to only two passages from Ono to support its “motivation to combine” argument. See Paper 3,
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`Petition at 25 (citing Ono, EX1101 at 13:40-42, 18:28-19:6). Neither of these passages mentions
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`changing the sensor architecture, and Petitioner fails to explain how either of these would motivate
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`a POSITA to modify Ono with a significantly more complex set of sensors that would require
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`more processing power and memory while draining the batteries much faster. Paper 3, Petition at
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`25.
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`Nor has Petitioner provided clear-and-convincing evidence that a POSITA would have had
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`a reasonable expectation of success in modifying Ono’s device to add Hutchings’s sensors. See
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Petitioner simply argues—
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`without explanation—that a POSITA “would have expected success” in making this combination
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`and that the “respective teachings would work together in combination just as they did apart. ...”
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`Paper 3, Petition at 26. But as Dr. Madisetti explains, Ono and Hutchings have fundamentally
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`different (and incompatible) architectures. See EX2001 at ¶61. Ono uses a simpler (and lower-
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`power) sensor-centric architecture (offloading much of the work onto analog circuits and counters
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`external to the processor), while Hutchings uses a (fundamentally incompatible) more complex
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`and power-intensive microprocessor-centric architecture. See id.. Considering the significant
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`differences in these architectures, a POSITA would not have expected success in this combination,
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`and any attempt at a combination would certainly not be a simple combination where the parts
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`“would work together in combination just as they did apart.” See id. (quoting Paper 3, Petition at
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`26).
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`[1pre] (“A portable, self-contained device for monitoring movement of body parts during
`physical activit