IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Theodore L. Brann
`In re Patent of:
`U.S. Patent No.: 6,059,576
`
`Issue Date:
`May 9, 2000
`
`Appl. Serial No.: 08/976,228
`
`Filing Date:
`November 21, 1997
`Title:
`TRAINING AND SAFETY DEVICE, SYSTEM AND
`METHOD TO AID IN PROPOER MOVEMENT DURING
`PHYSICAL ACTIVITY
`
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,059,576
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`1
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`
`Theodore L. Brann
`In re Patent of:
`U.S. Patent No.: 6,059,576
`
`Issue Date:
`May 9, 2000
`
`Appl. Serial No.: 08/976,228
`
`Filing Date:
`November 21, 1997
`Title:
`TRAINING AND SAFETY DEVICE, SYSTEM AND
`METHOD TO AID IN PROPOER MOVEMENT DURING
`PHYSICAL ACTIVITY
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 6,059,576
`
`
`
`
`1
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`Apple is concurrently filing two petitions (IPR2022-00037 and IPR2022-
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`00040) challenging U.S. Patent No. 6,059,576 (the “’576 Patent”). Pursuant to the
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`November 2019 Trial Practice Guide Update, this paper provides: “(1) a ranking of
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`the petitions in the order in which [Petitioner] wishes the Board to consider the
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`merits, if the Board uses its discretion to institute any of the petitions, and (2) a
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`succinct explanation of the differences between the petitions, why the issues
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`addressed by the differences are material, and why the Board should exercise its
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`discretion to institute additional petitions.” Trial Practice Guide, 59-61.
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`I.
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`Ranking of Petitions
`Although Apple believes that institution of both petitions would promote the
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`AIA’s goals of providing an effective and efficient alternative to district court
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`litigation with respect to claims that Patent Owner has serially asserted, Apple
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`respectfully requests that the Board consider the petitions in the following order:
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`Rank
`1
`2
`
`Petition
`IPR2022-00037
`IPR2021-00040
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`Primary Reference(s)
`Ono
`Allum and Gesink
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`II. Material Differences Between the Two Petitions
`Both petitions demonstrate the obviousness of claims of the ’576 Patent, but
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`they do so on the basis of different combinations of references that address the
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`respectively challenged claims in materially different ways. At bottom, the
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`petitions are non-redundant in their reliance on these different references.
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`2
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`IPR2022-00037 relies on Ono as its primary reference. Ono describes “an
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`electronic wrist watch to which a pedometer is installed,” which can be used to
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`monitor and analyze physical activities including walking, jogging, and running.
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`APPLE-1101, 1:5-10, 2:30-32, 3:10-11, FIG. 1. For example, an included
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`processor calculates a number of steps, number of steps per minute, mean walking
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`speed, and distance walked based on movement data and user-defined parameters;
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`based on the data and parameters, the processor determines when the wearer
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`reaches a user-defined target distance, and generates an alarm. APPLE-1101,
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`8:60-9:12, 12:17-35, 13:23-25, 14:44-45, 15:10-16:4, 17:26-34, FIG. 18.
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`In contrast, IPR2022-00040 relies on each of Allum and Gesink as primary
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`references. Allum, for example, describes a body-worn device that measures the
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`“body sway angle and body sway angular velocity” for “subjects who are prone to
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`abnormal falling or who wish to improve their movement control.” APPLE-1008,
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`3:59-62, 8:66-9:1, FIG. 2. An included microprocessor collects and interprets
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`movement data from the device’s sensors, and detects whether a subject’s “body
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`sway is approaching or has exceeded the limits of safety, i.e., the subject’s angular
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`sway has approached within a certain percentage of the angular cone of stability.”
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`APPLE-1008, 14:7-11. If so, a “fall warning” is provided by visual, auditory,
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`and/or tactile feedback systems. Id., 15:48-50, 7:56-64.
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`3
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`As is apparent, Ono and Allum offer distinct disclosures that, in combination
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`with various secondary references, demonstrate the obviousness of the ’576 Patent
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`in materially different ways. Additionally, the motivations to combine the distinct
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`sets of references presented in the two Petitions materially differ. In at least these
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`ways, Apple’s two petitions offer non-redundant, non-duplicative, and
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`substantially dissimilar challenges. In summary, each petition provides strong
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`showings of obviousness, without repeating the same theories. As such, Apple
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`respectfully requests that the Board institute trial on both petitions.
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`III. Additional Considerations Supporting Institution of Both Petitions
`LoganTree asserts a large number of ’576 Patent claims (33) against Apple.
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`Apple attempted to fully address all 33 claims in a single petition, but word-count
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`constraints necessitated the splitting of grounds into two petitions, both of which
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`meritoriously address the asserted claims, but in materially different ways. Apple
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`respectfully submits that Apple’s filing of two IPR petitions resulted from
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`LoganTree’s choice to assert 33 claims, and that, for at least that reason, the Board
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`would be justified in exercising its discretion to institute both petitions.1
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`1 Notably, FitBit Inc. and Garmin Int’l Inc. each addressed similar numbers of ’576
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`Patent claims in two petitions, and the Board instituted both of Garmin’s petitions.
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`See IPR2017-00256, IPR2017-00258, IPR2018-00564, IPR2018-00565.
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`4
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`Indeed, the institution of both petitions would promote the AIA’s objectives
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`of providing an effective and efficient alternative to district court litigation with
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`respect to claims that LoganTree has serially asserted, and for at least that reason
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`would be in the public interest. See, e.g., Sen. Rep. No. 110-259 (2008)(Leahy,
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`Judiciary Committee Report)(“The legislation is designed to…improve patent
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`quality and limit unnecessary and counterproductive litigation costs”), H.R. Rep.
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`No. 112-98, pt. 1, pp. 39-40.
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`In more detail, LoganTree asserted the ’576 Patent against a first defendant
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`less than six months after the ’576 Patent’s emergence from a LoganTree-initiated
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`reexamination that resulted in the addition of over 100 claims. APPLE-1007, 1,
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`470-473. Over the past six years, LoganTree has serially asserted the ’576 Patent’s
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`broad claims against numerous defendants who have brought a variety of
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`technologies to the market—Apple being just one of several companies targeted
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`throughout the country. See APPLE-1004, APPLE-1004, APPLE-1031, APPLE-
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`1032, APPLE-1033, APPLE-1034, APPLE-1035, APPLE-1036, APPLE-1037.
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`Indeed, the unreasonably broad scope of the ’576 Patent’s numerous asserted
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`claims is evidenced by Apple’s demonstration of the obviousness of those claims
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`through the materially different combinations of prior art references leveraged in
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`Apple’s two petitions. For at least these additional reasons, Apple respectfully
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`submits that the Board should exercise its discretion to institute both petitions.
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`5
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`Dated: October 15, 2021
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`Respectfully submitted,
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`
` /Andrew B. Patrick/
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Usman A. Khan, Reg. No. 70,439
`Kim Leung, Reg. No. 64,399
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 57602
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the under-signed
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`certifies that on October 15, 2021, a complete and entire copy of this Notice
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`Ranking Petitions was provided via USPS, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`LOGAN TREE, LP
`C/O THEODORE L. BRANN
`P O BOX 2345
`BOERNE, TX 78006
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` /Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 57602
`(617) 956-5938
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`7
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