UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`APPLE INC.,
`Petitioners,
`
`
`v.
`
`
`LOGANTREE LP
`Patent Owner
`______________
`Case IPR2022-00040
`Patent 6,059,576
`______________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`
`
`TABLE OF CONTENTS ..................................................................................................... i
`
`TABLE OF AUTHORITIES ............................................. Error! Bookmark not defined.
`
`EXHIBIT LIST .................................................................................................................. iv
`
`I.
`
`INTRODUCTION ................................................................................................. 1
`
`A. Overview of the ’576 Patent .............................................................................. 1
`
`B. Overview of the Prosecution History ................................................................ 5
`
`C.
`
`Summary of the Cited References ..................................................................... 9
`
`II.
`
`POSITA AND CLAIM CONSTRUCTION ....................................................... 17
`
`A. Level of a Person of Ordinary Skill in the Art (“POSITA”) ........................... 17
`
`B. Claim Construction .......................................................................................... 18
`
`III. PETITIONER’S ARGUMENTS ........................................................................ 20
`
`C. GROUND 1: Allum, Raymond, and Conlan do not Render Claims 1-5, 8-11,
`
`20, 26, 30, 36, 39-42, 45-51, 61-63, 144, and 147 Obvious ................................................. 20
`
`D. GROUND 1A/2 (Allum, Raymond, Conlan, and de Remer) .......................... 39
`
`E. GROUND 3 (Allum, Raymond, Conlan, and Gaudet) .................................... 40
`
`F. GROUND 4 (Gesink and Raymond) ............................................................... 42
`
`IV. CONCLUSION ................................................................................................... 46
`
`CERTIFICATE OF COMPLIANCE .................................................................................. 1
`
`
`
`i
`
`

`

`CERTIFICATE OF SERVICE ........................................................................................... 2
`CERTIFICATE OF SERVICE0000... cccecccssccssecseecscesecesecesecseecsaeceeeseeeseessesseecsaecaeeseeeseasaesaees 2
`
`
`
`
`
`ii
`i
`
`

`

`
`
`
`
`
`
`iii
`i
`
`

`

`
`
`
`
`EXHIBIT LIST
`EXHIBIT LIST
`
`iv
`
`

`

`Pursuant to 37 C.F.R § 42.120, Patent Owner, LoganTree, LP (“LoganTree”) submits the
`
`following Response to Inter Partes Review No. 2022-00040, instituted against its U.S. Patent
`
`No. 6,059,576 (“the ’576 patent”). Because, as set forth below, Petitioner, Apple, Inc. (“Apple”
`
`or “Petitioner”) 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,
`
`
`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
`
`

`

`1d-1: said microprocessor capable of receiving, interpreting, storing and responding to said
`movement data based on user-defined operational parameters,
`1d-2: 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
`1d-3: 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;
`1e: at least one user input connected to said microprocessor for controlling the operation of
`said device;
`1f: a real-time clock connected to said microprocessor;
`1g: memory for storing said movement data; and
`1h: an output indicator connected to said microprocessor for signaling the occurrence of
`user-defined events;
`1i: 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.
`
`
`
`4
`
`

`

`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.
`
`Overview of the Prosecution History
`
`B.
`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.
`
`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:
`
`1pre: A portable, self-contained device for monitoring [detecting] 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 [of said device] and generating signals indicative of said movement;
`1k: wherein said movement sensor measures the angle and velocity of said movement.
`
`Id. at 40.
`
`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).
`
`
`
`5
`
`

`

`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):
`
`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;
`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
`
`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:
`
`
`
`6
`
`

`

`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)
`
`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”).
`
`
`
`7
`
`

`

`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 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.”
`
`
`
`8
`
`

`

`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.
`
`Summary of the Cited References2
`
`C.
`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.
`
`Allum (EX1008)
`
`U.S. Patent No. 5,919,149 (“Allum”) is directed to a “diagnostic and rehabilitory tool”
`
`that measures “postural sway of a human subject... using displacement or motion transducers
`
`using displacement or motion transducers” and provides feedback to the subject. Allum, EX1008
`
`at Abstract 1:12-16, 3:60; see also EX2001 at ¶45. Essentially, Allum is a full-body, posture-
`
`correcting device (left) that detects motion using angular rate transducers attached to the
`
`subject’s body, then relays that information to a microprocessor which exports the data to the
`
`device’s various feedback systems (right):
`
`
`2 In the context of Petitioner’s references, PO uses claim terms (including “movement data”
`and “movement sensor”) solely for the purpose of rebutting Petitioner’s arguments; this
`should not be construed as a concession that the references actually disclose these items.
`9
`
`
`
`

`

`Allum, EX1008 at fig.2, fig.1; see also EX2001 at ¶46. The purpose of Allum is to monitor and
`
`alert subjects who cannot control their balance well to avoid the danger of falling. Allum,
`
`
`
`EX1008 at 6:1–8; see also EX2001 at ¶47.
`
`Raymond (EX1009)
`
`U.S. Patent No. 5,778,882 (“Raymond”) is directed to a “health monitoring system” that
`
`is composed of a “plurality of physiological and subjective data collection devices.” Raymond,
`
`EX1009, 1:47, 1:53-54. Essentially, Raymond is a conglomeration of sensors connected to a
`
`central hardware for the “recording of the physiological data.” Id. at 29:66-67.
`
`
`
`
`
`10
`
`

`

`
`
`Raymond, EX1009 at fig.3, fig.16. The device relies on “subjective data collection” (right) which
`
`refers “to [the] data which is input by the patient to the data logger.” Id. at 5:40-41. The
`
`“resulting health history is a combined format of objective physical parameters (left) and
`
`subjective patient data which is time-indexed for subsequent retrieval and analysis.” Id. at 2:26-
`
`30. As a general matter, Petitioner relies on Raymond to fill in Allum’s failure to disclose
`
`timestamping; however, Raymond stamps subjective user-inputted data and not the actual
`
`movement data as is required by the elements of Claims 1 and 20. See Paper 3, Petition at 24–63.
`
`Although Petitioner mainly uses Raymond in combination with Allum and Conlan in reference
`
`to the timestamping, the few specific citations to Raymond are addressed in detail below.
`
`
`
`
`
`11
`
`

`

`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
`
`

`

`De Remer (EX1013)
`
`U.S. Patent No. 5,412,801 (“de Remer”) is directed to an invention “creating a control
`
`record for use in future machine recovery of gaps in a complete series of journal data formed by
`
`a computing machine from a complete series of transactional data.” De Remer, EX1013 at
`
`Abstract. Petitioner argues that de Remer is relevant insomuch as it teaches the Allum,
`
`Raymond, and Conlan wearable devices that a time stamp would include both the time and date.
`
`Yet, de Remer is only concerned with helping complex business operations systems “recover
`
`from a loss of data” in the “field of remote reliable database change log duplication.” Id. at 1:6-
`
`12. Indeed, there is no coherent relation between timestamping files being stored for the purposes
`
`of filling “gaps” in lost business records and timestamping movement data for the purpose of
`
`associating time stamp information with a user-defined event in a movement tracker.
`
`
`
`14
`
`

`

`
`
`Gaudet (EX1012)
`
`U.S. Patent No. 6,018,705 to Gaudet et al. (“Gaudet”) is directed to an invention relating
`
`to the “monitoring of the orthopedic motion of a person” by “measuring [the] foot contact time,
`
`foot loft time, [and the] speed and/or pace of a person in locomotion.” Gaudet, EX1012, 1:6-10.
`
`Gaudet uses an accelerometer to determine both “instances at which a foot of a user in
`
`locomotion leaves a surface… and impacts the surface.” Id. at 2:8-10. The accelerometers are
`
`mounted in the manner shown below, and each individual accelerometer is used to detect
`
`acceleration across a single “particular axis.” Id. at 4:53. Petitioner combines Gaudet with
`
`Allum, Raymond, and Conlan to argue that it would have been obvious to a POSITA to use the
`
`Allum device to determine a subject’s walking distance, as instructed by Gaudet.
`
`
`
`15
`
`

`

`
`
`Gesink (EX1014)
`
`
`
`U.S. Patent No. 5,803,740 (“Gesink”) is directed to a device “designed to be attached
`
`to… clothing” with the purpose of helping “visually impaired individuals develop desirable
`
`ambulatory motion habits.” Gesink, EX1014 at Abstract. In response to audible prompts from
`
`the Gesink device, the user must “enter[] commands to the learning aid through a keypad”
`
`“indicating the type of ambulatory movement he/she would like the aid to be monitoring,” and
`
`the device then generates messages over its speaker to guide the user’s walking motions. Id at
`
`Abstract, 4:28.
`
`
`
`16
`
`

`

`
`
`
`
`Gesink requires the user to use the keypad (right) to “indicat[e] the type of ambulatory
`
`movement he/she would like the aid to be monitoring.” Id. at 4:27-28. Indeed, the device must be
`
`“placed in [a] data collection mode by the entry of a phantom command” and does not, on its
`
`own, monitor user movement. Even so, in data collection mode, with no citation from Petitioner
`
`protesting otherwise, Gesink does not have a real-time clock, does not time stamp movement, in
`
`fact, does not even store raw movement data, and generally, only serves as a tally which
`
`“adds/subtracts” the subject’s “rotation data… “in an internal register” to display an “indication
`
`of the extent the [device] has rotated… since the initiation of the start command.” Id. at 12:33-
`37.
`
`II.
`
`POSITA AND CLAIM CONSTRUCTION
`
`A. Level of a Person of Ordinary Skill in the Art (“POSITA”)
`
`
`
`17
`
`

`

`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.
`
`Claim Construction
`
`B.
`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
`
`reasonable interpretation.” 37 C.F.R. § 42.100(b).
`
`“Movement sensor” is a straightforward claim term that should be given its “plain and
`ordinary meaning.”
`
`A basic principle of claim construction is that “the 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. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
`
`2005) (en banc) (internal quotation marks and citation omitted). This general rule especially
`
`holds where the claim terms at issue are straightforward. See Summit 6, LLC v. Samsung Elec.
`
`Co., Ltd., 802 F.3d 1283, 1291 (Fed. Cir. 2015) (noting that the district court did not err in
`
`declining to construe a term when the term was straightforward); see also CallWave Commc’ns,
`
`LLC v. AT&T Mobility, LLC, 2014 WL 7205657, at *9 (D. Del. 2014) (finding construction
`
`unnecessary where a claim term “uses ordinary English words, which may be given their plain
`
`
`
`18
`
`

`

`and ordinary meaning.”). “Movement sensor” is a straightforward claim term that uses ordinary
`
`English words, and it should be given its “plain and ordinary meaning.”
`
`The exceptions to the “plain and ordinary meaning” presumption do not apply.
`
`There are “only two exceptions to [the] general rule” of plain and ordinary meaning: “1)
`
`when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee
`
`disavows the full scope of the claim term either in the specification or during prosecution.”
`
`Golden Bridge Tech., Inc. v. Apple Inc., 758 F.3d 1362, 1365 (Fed. Cir. 2014) (quoting Thorner
`
`v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). Petitioner entirely
`
`fails to point to any evidence that PO has acted as its own lexicographer or that PO has
`
`disavowed the full scope of the term “movement sensor,” and so these exceptions do not apply.
`
`See Paper 3, Petition at 17–18.
`
`Petitioner has failed to justify the necessity of construction to resolve the issues in this
`dispute.
`
`It is unclear why the Petitioner believes construction is necessary—Petitioner has not
`
`suggested that its interpretation would resolve the question of the relevance of any of its
`
`references. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(“[O]nly those terms need be construed that are in controversy, and only to the extent necessary
`
`to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an IPR review). But
`
`to the extent Petitioner’s proposed construction is broader than the plain and ordinary meaning
`
`(with the intent of covering more references), this would be an improper application of the
`
`“broadest reasonable interpretation” standard. 37 C.F.R. § 42.100(b). Instead, the “plain and
`
`ordinary meaning” is proper.
`
`
`
`19
`
`

`

`III.
`
`PETITIONER’S ARGUMENTS
`
`C. GROUND 1: Allum, Raymond, and Conlan do not Render Claims 1-5,
`8-11, 20, 26, 30, 36, 39-42, 45-51, 61-63, 144, and 147 Obvious
`
`Petitioner bases Ground 1 mainly on Allum, a diagnostic and rehabilitory tool which can
`
`monitor the balance of subjects who are in danger of falling. See Paper 3, Petition at 25–63; see
`
`also EX2001 at ¶45; Section I(C), supra. Petitioner also cites to Raymond and Conlan for this
`
`ground. Petitioner does not argue that these references disclose many of the claim elements—
`
`instead, Petitioner mainly attempts to use them to patch some of the holes in Ground 1 regarding
`
`Allum. See Paper 3, Petition at 25–63. But as discussed below, there are fundamental differences
`
`between Allum on one hand, and Raymond and Conlan on the other.
`
`A POSITA would not have combined Allum, Raymond and Conlan.
`
`Petitioner does not argue that Allum discloses the Claim 1 element which requires at least
`
`one user input connected to the microprocessor for controlling the operation of said device. Paper
`
`3, Petition at 33-35. Nor does Petitioner contend that Raymond fills this missing element from
`
`Allum. See id. Instead, Petitioner argues that a POSITA would have been further motivated to
`
`modify Allum with a third reference and include Conlan’s “pair of buttons” that a user can use to
`
`tell the device about a particular condition the user feels (such as “dizziness or pain”) that are
`
`disclosed in Conlan into Allum’s device. See id. at 33-35; see also APPLE-1010 at 6:38-46.
`
`However, Petitioner has not set forth clear-and-convincing evidence to show that either
`
`Allum or Conlan taught, suggested, or gave a reason to a POSITA to combine the three references
`
`in the manner Petitioner suggests. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
`
`factfinder should be aware, of course, of the distortion caused by hindsight bias and must be
`
`cautious of arguments reliant upon ex post reasoning.”); see also Micro Chemical, Inc. v. Great
`
`
`
`20
`
`

`

`Plains Chemical Co., 103 F.3d 1538, 1546 (Fed. Cir. 1997) (an evaluation of a challenged
`
`invention for obviousness “must involve more than indiscriminately combining prior art.”)
`
`(citation omitted). Allum discloses a design scheme where the device tells the user (or the user’s
`
`healthcare provider) about the user’s conditions that the user himself or herself has not detected,
`
`and likely not capable of detecting. See APPLE-1008 at 3:61-62 (describing purpose as for
`
`“subjects who are prone to abnormal falling or who wish to improvement their movement
`
`control.”). See APPLE-1008 at 3:61-62. On the other hand, the pushbuttons in Conlan that
`
`Petitioner cites are designed for the user to tell the device about the user’s condition, the exact
`
`opposite of the design scheme and stated purpose of Allum’s device. See, e.g., APPLE-1010 at
`
`6:38-46. As Dr. Madisetti explains, Allum does not teach or suggest to a POSITA that it should be
`
`modified to include Conlan’s pushbuttons for user input because the design scheme of Allum
`
`neither requires, nor provides a means for, user input about his or her own stability condition. See
`
`EX2001 at ¶48.
`
`Nor has Petitioner provided clear-and-convincing evidence that a POSITA would have
`
`had reasonable expectation of success in modifying Allum’s device to add Conlan’s pushbuttons.
`
`See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006). Petitioner simply
`
`argues there would have been a “foreseeable chance of success” for a POSITA to modify Allum
`
`by including Conlan’s pushbuttons because both Allum and Conlan utilize “conventional”
`
`processor and circuitry components. See Paper 3, Petition at 24. However, that simplistic
`
`argument ignores the design scheme and purpose of Allum’s device and Conlan’s pushbuttons as
`
`set forth above. As Dr. Madisetti explains, a POSITA would have read Allum to suggest that a
`
`designer should refrain from including user inputs for at least two reasons. First, the patients who
`
`would use the Allum device are inherently “prone to abnormal falling” as Allum suggests, and
`
`
`
`21
`
`

`

`likely may not be able to sense or feel instability, as would be required to provide input via the
`
`Conlan pushbuttons. See EX2001 at ¶49. Moreover, because the Allum device is designed to rely
`
`on objective data measured by “body sway sensors” to determine whether a user has approached
`
`dangerously close to, or exceeded, the threshold “cone of stability,” the addition of inputs from
`
`users who are inherently incapable of normal fall control would not serve the purposes of the
`
`device, but rather distract and confuse the device’s designed monitoring and warning operations.
`
`See EX2001 at ¶50. Because Allum teaches away from including inputs based on user feelings, a
`
`POSITA would not have been motivated to modify Allum’s design to add the Conlan
`
`pushbuttons. See Medichem, 437 F.3d at 1164.
`
`
`
`[1pre] (“A portable, self-contained device for monitoring movement of body parts during
`physical activity, said device comprising:”)
`
`For the limited purpose of this ground and to the extent the preamble is limiting, PO does
`
`not dispute that Allum discloses this element.
`
`[1a] (“a movement sensor capable of measuring data associated with unrestrained
`movement in any direction and generating signals indicative of said movement;”)
`
`For the limited purpose of this ground, PO does not dispute that Allum discloses this
`
`element.
`
`[1b] (“a power source;”)
`
`For the limited purpose of this ground, PO does not dispute that Allum