Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: May 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`UNILOC LUXEMBOURG,S.A.,
`Patent Owner.
`
`Case IPR2018-00294
`Patent 6,736,759 Bl
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH,and
`SEANP. O’HANLON,Administrative Patent Judges.
`
`O’HANLON,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 US.C. § 314(a)
`
`
`571-272-7822
`
`Paper No. 7
`Entered: May 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`UNILOC LUXEMBOURG,S.A.,
`Patent Owner.
`
`Case IPR2018-00294
`Patent 6,736,759 Bl
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH,and
`SEANP. O’HANLON,Administrative Patent Judges.
`
`O’HANLON,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 US.C. § 314(a)
`
`
`
`IPR2018-00294
`Patent 6,736,759 Bl
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`I. INTRODUCTION
`
`AppleInc. (‘Petitioner’) filed a Petition for inter partes review of
`U.S. Patent No. 6,736,759 B1 (Ex. 1001, “the ’759 patent”). Paper 1
`
`(‘Pet.”), 1. Uniloc Luxembourg S.A.(“Patent Owner’’)filed a Preliminary
`
`Response. Paper 6 (“Prelim. Resp.”).
`Institution of an inter partes review is authorized by statute only when
`“the information presentedin the petition .
`.
`. and any response. .
`. shows
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respectto at least 1 of the claims challengedin the petition.” 35 U.S.C.
`§ 314(a). For the reasons set forth below, upon considering the Petition,
`Preliminary Response, and evidence of record, we conclude the information
`presented showsthere is a reasonable likelihood that Petitioner would
`prevail in establishing the unpatentability of at least one claim of the *759
`
`patent.
`
`A. Related Matters
`
`Theparties indicate that the ’759 patent is the subject of the following
`litigation: Uniloc USA, Inc. v. Apple Inc., No. 2-17-cv-00708 (E.D. Tex.
`
`filed Oct. 20, 2017). Pet. 5; Paper4, 2.
`Petitioner also states that the °759 patent was previously at issue in
`Paragon Solutions, LLC v. Timex Corp., No. 1:06-cv-677 (S.D. Ohio 2008),
`vacated, 566 F.3d 1075 (Fed. Cir. 2009). Pet. 5-6.
`
`B. The Challenged Patent
`
`The ’759 patent discloses a monitoring system including anelectronic
`positioning device and a physiological monitor for use in a variety of
`
`2
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`physical activities. Ex. 1001, 1:8-15, 6:37-60. Figure 3, shown below,
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`illustrates an embodiment of the monitoring system. Jd. at 8:49-51.
`
`we 8
`
`4
`
`:
`vn. Oe
`
`at) \
`
`PESTLEBLLTPPTPTDIPUYTFIIDITI
`FIG. 2
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`Figure 3 “depicts a human subject performing a physicalactivity using one
`embodiment of a monitoring system ofthe present invention,” including
`display unit 7 and data acquisition unit 20. Id. at 2:17-19, 8:51-55.
`The electronic positioning device, which may beaglobal positioning
`system (“GPS”) device, receives electromagnetic signals from three or more
`sources to track at least one of the user’s location, altitude, heading, velocity,
`
`pace,or distancetraveled. Jd. at 3:8-10, 7:35—-39, 9:16-39. The
`physiological monitor, which may be an oximeter ora heart rate monitor,
`acquires physiological data from the user, such as the user’s blood oxygen
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`level or heart rate. Jd. at 6:56—-60, 9:40-67. The determined position and
`
`physiological data are transmitted to a separate display unit for real-time _
`display to the user or other individual monitoring the user’s performance of
`a physical activity. Id. at 6:39-41, 7:43-46, 51-54. The display unit may
`include one or morealarmsthat are activated if a measured data value
`
`departs from a predeterminedlimit or range. Jd. at 16:39-67.
`
`C. The Challenged Claims
`
`Petitioner challenges claims 1—32 (all claims) of the *759 patent.
`Claims 1 and 29 are independent. Claim1isillustrative of the challenged
`
`claims and is reproduced below:
`1.
`An exercise monitoring system, comprising:
`(a) a data acquisition unit comprising an electronic
`positioning device and a physiological monitor, said data
`acquisition unit configured to be worn bya subject performing
`a physical activity; and
`(b) a display unit configured for displaying real-time data
`provided bysaid electronic positioning device and said
`physiological monitor, said display unit separate from said data
`acquisition unit;
`wherein said display unit is configured to be worn by the
`subject, worn by someoneotherthan the subject, or attached to
`an apparatus associated with the physical activity being
`performed by the subject so as to be visible to the subject while
`performing the physicalactivity, and
`further wherein said system is configured suchthat said
`display unit displays real-time data comprising at least one of a
`subject’s location, altitude, velocity, pace, and distance
`traveled.
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
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`
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`References
`
`Basis!
`
`Challenged
`Claim(s)
`
`
`
`Fry” and Newell? 35 U.S.C. § 103(a)|1-7, 9, 12, 14,
`17-22, and 26
`
`
`
`
`
`
`
`
`Fry, Newell, and Arcelus* 35 U.S.C. § 103(a)|20 and 22-23
`
`Fry, Newell, and Richardson’|35 U.S.C. § 103(a)|9 and 29-316
`Fry, Newell, Richardson, and|35 U.S.C. § 103(a)|32
`Arcelus
`
`Fry, Newell, and Chance’ § 103(a)|4, 13, 15, 16, 27, and35 U.S.C.
`
`28
`
`Fry, Newell, and French® 35 U.S.C. § 103(a)|24 and 25
`
`
`Vock? and Arcelus 35 U.S.C. § 103(a)|1-5, 8-12, 14, 17,
`and 19-26
`
`
`
`
`
`
`
`
`
`
`
`
`Vock, Arcelus, and
`Richardson
`
`35 U.S.C. § 103(a)
`
`
`
`1 The ’759 patent was filed on November9, 1999, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) tookeffect.
`2 US 6,002,982(filed Nov. 1, 1996, issued Dec. 14, 1999) (Ex. 1004, “Fry”).
`3 US 6,466,232 Bl (filed Dec. 18, 1998, issued Oct. 15, 2002) (Ex. 1005,
`‘“Newell”).
`4 US 6,149,602 (filed Mar. 29, 1997, issued Nov. 21, 2000) (Ex. 1008,
`“Arcelus”).
`5 US 5,976,083 (filed July 30, 1997, issued Nov. 2, 1999) (Ex. 1007,
`“Richardson”).
`6 Although claim 32 is listed as being includedin this grounds(Pet. 8), the
`claim is not addressed in the analysis section (see id. at 32-38).
`7 US 5,564,417 (issued Oct. 15, 1996) (Ex. 1009, “Chance”).
`8 WO 97/17598 (published May: 15, 1997) (Ex. 1010, “French”).
`9 US 6,539,336 BI (filed June 2, 1998, issued Mar. 25, 2003) (Ex. 1006,
`“Vock’”).
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`‘ References
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`
`
`Vock, Arcelus, and Chance 35 U.S.C. § 103(a)|4, 13, 15, 16, 27, and
`
`
`
`28
`
`Challenged
`Claim(s)
`
`
`
`
`Pet. 8. Petitioner submits a declaration of Dr. Kenneth Fyfe (Ex. 1002,
`
`“Fyfe Declaration” or “Fyfe Decl.”) in support ofits contentions.
`
`II. ANALYSIS
`
`A, Claim Construction
`
`In an inter partes review,a claim in an unexpiredpatentshall be given
`its broadest reasonable construction in light of the specification of the patent
`
`in which it appears. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLCv.
`Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use of the broadest
`reasonableinterpretation standard). Consistent with the broadest reasonable
`construction, claim terms are presumedto havetheir ordinary and customary
`meaning as understoodbya person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). The presumption may be overcomeby providing a
`definition of the term in the specification with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). In the absenceof such a definition, limitations are not to be read
`from the specification into the claims. See Jn re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993). Only those terms whichare in controversy need be
`construed,and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
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`Petitioner contends, generally, that the terms of the claims of the *759
`patent should beinterpreted under the broadest reasonable interpretation
`standard. Pet. 9. Petitioner proposes that the terms “data acquisition unit,”
`“display unit,” and “displaying real-time data” should be interpreted
`according to a prior construction by the U.S. Court of Appeals for the
`Federal Circuit in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075
`(Fed. Cir. 2009) (Ex. 1023), because the broadest reasonable construction
`“must be at least as broad as the CAFC’s construction.” Jd. at 9-10.
`
`Petitioner contends that “probe” should be interpreted accordingto a prior
`construction by the U.S. District Court for the Southern District of Ohio in
`Paragon Solutions, LLC v. Timex Corp., No. 1:06-cv-677 (S.D. Ohio Apr.
`23, 2008) (Claim Construction Opinion) (Ex. 1025). Jd. at 11.
`Patent Ownerobjects to Petitioner’s proposed claim constructions,
`stating the “the proper inquiry is not an ‘at least as broad as’ determination.
`Rather, a proper construction shouldreflect the full scope of the claim under
`the broadest reasonable interpretation (‘BRI’).” Prelim. Resp. 6. “Patent
`Ownerdoes not offer competing constructions under the appropriate BRI
`
`standard.” Id.
`
`1. displaying real-time data
`
`“There is no dispute that the [Patent Trial and Appeal Board]is not
`generally boundbya prior judicial construction of a claim term.” Power
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (citing Jn re
`Trans Tex. Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)). This
`“does not mean, however, that [the Board] has no obligation to acknowledge
`
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`that interpretation or to assess whetherit is consistent with the broadest
`
`reasonable construction of the term.” Jd.
`
`In Paragon Solutions, 566 F.3d at 1075, the Federal Circuit construed
`“displaying real-time data” as “displaying data without intentional delay,
`given the processing limitations of the system and the time required to
`accurately measure the data.” Ex. 1023, 14. In doing so, the Federal Circuit
`reviewed the languageof the claims, the Specification, the prosecution
`history, and extrinsic evidence. Jd. at 11-14. Ofparticularinterest, the
`Federal Circuit noted, regarding the Specification of the ’759 patent,
`the criticism of prior art is more appropriately read to
`distinguish the invention's “real-time” display from priorart
`methodsthat stored data for review only after the activity was
`complete, so that the user could not make modifications during
`the course of the activity. Thus, the specification supports a
`constructionof“real-time”in this case that precludes
`intentionally delaying the display of data by storingit for later
`review.
`
`Id. at 12. For purposes of this Decision, we adopt the Federal Circuit’s
`reasonedanalysis and construction as our own. Asour review ofthe *759
`patent andthe evidence of record doesnot reveal a broader construction, we
`determine the Federal Circuit’s construction comports with not only the
`Phillips standard, but also the broadest reasonable interpretation.
`For purposesof this Decision, and based onthe record before us, we
`determine that no other claim terms require construction. Vivid Techs., 200
`
`F.3d at 803.
`
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`B. Level ofOrdinary Skill in the Art
`
`Citing its declarant, Dr. Kenneth Fyfe, Petitioner contends that a
`person having ordinary skill in the art at the time of the invention would
`have had “at least a bachelor’s degree in mechanical engineering, electrical
`engineering, or a similar field with at least two years of experience in
`exercise monitoring device design, body-mounted computing systems,or in
`motiontracking.” Pet. 11 (citing Ex. 1002 4 30). Patent Owner’s declarant,
`Mr. William C. Easttom II, opines that a person having ordinary skill in the
`art at the time of the invention would have had “a bachelor’s degree in
`engineering, computer science,or related technical area with 2 years of
`experience related to mobile devices and/or physiological monitoring.”
`
`Ex. 2001 ¢ 13.
`Petitioner and Patent Owner define comparable levels of ordinary
`
`skill, specifying similar educational backgrounds and experience.
`Petitioner’s interpretation moreclosely tracks the claims, which are directed
`to exercise monitoring systemsrather than mobile devices in general. At
`this juncture of the proceeding, and for the purposes ofthis decision, we
`adopt Petitioner’s proposed definition as more representative, but note that
`our analysis would be the same undereither definition.
`
`C. Challenge Based on Fry and Newell
`
`Petitioner argues that claims 1-7, 9, 12, 14, 17-22, and 26 would have
`been obvious over Fry and Newell. Pet. 12-29. In support of its showing,
`Petitioner relies upon the Fyfe Declaration. Jd. (citing Ex. 1002). We have
`reviewed Petitioner’s assertions and supporting evidence. For the reasons
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`discussed below, and based on the record before us, Petitioner demonstrates
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`a reasonablelikelihood of prevailing in showing that these claims would
`
`have been obvious over Fry and Newell.
`
`1. Overview of the Prior Art
`
`a. Fry
`
`Fry discloses a sports computerthat is mountable directly to the
`athlete or equipmentin use. Ex. 1004, 2:37-42, 51-55. The computer has
`sensors including a heart rate monitor and a GPS antennaand receiver. Jd.
`at 4:25-29, 55-60. The data measured by the sensorsis presented on a
`display, and maybetransferred to a personal computer for later evaluation.
`
`Id. at 5:54-60, 6:33-36, 58-64.
`
`b. Newell
`
`Newell discloses a body-mounted wearable computer that
`communicates with various body-worn input, output, and sensor devices.
`Ex. 1005, 11:51-67, 12:20-24. Such output devices includeflat panel
`displays and eyeglass-mounted displays, and such sensor devices include
`heart rate and GPSsensors. Jd. at 5:9-15, 11:57-60, 14:64-67. Information
`obtained by the sensordevicesis transmitted to the system, whichusesthe
`information in creating a model of the user condition. Jd. at 13:18-23, 42-—
`45. The system uses the user condition to determine an appropriate device
`on whichto present the information to the user, and sendsthe information to
`the corresponding output device for display. Jd. at 13:61-14:29.
`
`10
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`2. Claim 1
`
`Petitioner relies on Fry to teach mostof the limitations of claim 1, but
`relies on Newell to teach a display unit that is separate from a data
`acquisition unit. Pet. 14-21. For the reasonsset forth below,Petitioner
`identifies sufficient evidence indicating that Fry and Newell disclose the
`
`limitations in this claim.
`
`Claim 1 recites, in relevantpart, “a display unit configured for
`displaying real-time data provided by said electronic positioning device and
`said physiological monitor.” Ex. 1001, 28:3—5. Petitioner relies on Fry to
`disclose such real-time display. Pet. 14-17 (citing Ex. 1004, 6:1-19, 33-36,
`Fig. 3; Ex. 1002 § 36; Ex. 1023). Specifically, Petitioner notes that “each of
`(Fry’s] physiological and GPS sensors [is] scanned and the data is stored
`_... Then... ‘the display is updated by refreshing from memory the data to
`be displayed.” Jd. at 16 (citing Ex. 1004, 6:33-36, Fig. 3) (emphasis
`omitted). Applying the Federal Circuit’s construction of “real-time,”
`Petitioner argues that Fry displays real-time data becausethe datais
`displayed with “no intentionally introduced delay, and the display is updated
`as quickly as the processinglimitations ofthe system and measurement time
`allow.” Id. at 16-17.
`
`Patent Ownercontends that Fry does notdisplay real-time data,
`arguing that “the data identified in the Petition is received by the device of
`Fry at ‘block 330’, butit is not acted on for display (which in the Fry device,
`is its ‘least critical function’) until ‘block 360.’” Prelim. Resp. 7
`(referencing Fry, Fig. 3). According to Patent Owner,there are “multiple,
`time-consuming steps between Fry’s receiving of its GPS data andits...
`
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`displaying that data.” Jd. at 8. Patent Ownerarguesthat such steps “cannot
`reasonably be considered to be implemented ‘withoutintentional delay,””
`and “Fry’s box 350 (scanning ‘other sensors’. . .) and ‘less time-critical
`sensors’ ..., are expressly extraneousto the function of displaying the GPS
`
`22.
`data.” Jd. at 9 (citing Ex. 1004, 6:27—28, Fig. 3); Ex. 2001
`Weare not persuaded by Patent Owner’s argumentsfor the reasons
`set forth by the Federal Circuit in discussing Timex’s argument regarding
`instantaneous display. See Ex. 1023, 11-12. There, the court noted the
`
`distinction in the ’759 patent between
`the invention's “real-time” display [and] prior art methodsthat
`stored data for review only after the activity was complete, so
`that the user could not make modifications during the course of
`the activity. Thus, the specification supports a construction of
`“real-time” in this case that precludes intentionally delaying the
`display of data by storing itfor later review.
`Id. at 12 (second emphasis added). To the extent that Fry’s system inputs
`and processessignals from time-critical sensors (block 340)—which
`includes physiological data in the form of the user’s heart rate—andless
`time-critical sensors (block 350) prior to displaying the GPS data, the
`additional signal inputting and processing doesnot require the GPSdata to
`be stored for later review, and, thus, does notintentionally delayits display.
`See Ex. 1004, 6:14-41. Notably, after inputting and processing data from all
`sensors, “the display is updated by refreshing from memorythedata to be
`displayed in accordance with the modeselected,” and, “[a]fter updating the
`display. .
`.
`, the software loops backto the mode-selection inquiry at block
`310, and the various routines are repeated, or skipped, in accordance with
`
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`mode andthe existence of various inputs.” Jd. at 6:33-41. We agree with
`
`Petitioner that Fry, therefore, displays real-time data.
`
`Claim 1 alsorecites, in relevant part, “said display unit separate from
`
`said data acquisition unit.” Ex. 1001, 28:5—6. Petitioner notes that Fry
`
`discloses that “its sports computeris ‘readily applicable to other sports...
`including running’ and can be mounted‘directly to the athlete . .. with
`interfaces to one or more sensors which measure performance
`characteristics,” and relies on Newell to teach “a body mounted computing
`system with a variety of sensors, including a GPS,heart rate monitor, and
`other physiological monitors.” Pet. 17-18 (citing Ex. 1004, 2:4446, 51-54,
`Fig. 1; Ex. 1005, 5:9-15, 48-55, 11:57—-60, Fig. 1). Petitioner argues thatit
`would have been obvious to modify Fry’s system to include a display unit
`that is separate from the data acquisition unit, as taught by Newell. Jd. at
`18-20. Specifically, Petitioner argues that one ofordinary skill in the art
`would have made such a modification because such an artisan would
`
`understand Fryto “effectively direct a skilled artisan to re-arrange the Fry
`components in a mannerthatis safe, ergonomic, and efficient for runners,”
`as Fry “expressly notes that its system is ‘readily applicable to other sports
`_..[,] including running.” Jd. at 18 (citing Ex. 1004, 2:44-46; Ex. 1002
`{{ 38-39). Petitioner argues that “Newell provides express motivation to
`locate the display of a personal monitor device as an eyeglass-mounted
`heads-up display separate from the other key componentsthat are mounted
`on the user’s body,” andthat one ofordinary skill in the art “would
`recognize that an eyeglass-mounted heads-up display is well-suited to a
`running application becauseit allows the user to maintain a view oftheir
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`surroundings”and “that mounting the monitor devices (e.g., GPS and heart
`rate monitor) on the user’s body is the most commonsensearrangement.”
`
`Id. at 18-19 (citing Ex. 1002 4 39).
`
`Patent Owner contendsthat, because “Petition[er] admits that Fry
`
`teaches its GPS receiver and display are combinedinto a single device,”
`“{t]hat admission confirms that Fry does not disclose, and in fact expressly
`teaches away from,therecitation ‘said display unit separate from said data
`acquisition unit.’” Prelim. Resp. 10 (citing Pet., 17). Patent Owneralso
`contendsthat “the Petition lacks the required ‘factual inquiry’ into reasons
`for combining the references and lacks any ‘explanation as to how or why
`the references would be combinedto producethe claimed invention.’” Jd. at
`12. According to Patent Owner,“there is no evidence, explanation, or
`‘factual inquiry’ into why a [personofordinaryskill in the art “POSITA’)]
`would look to make modificationsin the first place, or why a POSITA
`would look to an eyeglass-mounted display instead of the plethora of
`alternatives, such as an all-in-one watch.” Jd. at 13 (citing Jn re Nuvasive,
`
`842 F.3d 1376, 1384-86 (Fed. Cir. 2016)).
`We are not persuaded by Patent Owner’s arguments, which overlook
`Petitioner’s articulation of how the combinedteachings of Fry and Newell
`
`render obvious the claimed subject matter. See Pet. 17-20. As correctly
`noted byPetitioner (Pet. 17), Fry discloses that “[alt]hough the descriptions
`herein focus on a bicycling implementation, the invention is readily
`applicable to other sports involving travel over time, regardless of the
`equipmentinvolved, including running.” Ex. 1004, 2:42-46. Fry further
`discloses that, “[i]n a preferred embodiment, the device according to the
`
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`invention includes means for mounting an enclosed mobile computer system
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`directly to the athlete or equipmentin use.” Id. at 2:51-55 (emphasis
`
`added). Petitioner contends that, based these disclosures, the ordinary
`
`artisan would have incorporated the teachings of Newell “to re-arrange the
`
`Fry components in a mannerthatis safe, ergonomic, andefficient for
`runners.” Pet. 18. As correctly noted by Petitioner, Newell discloses a
`body-mounted wearable computer including separate body-worn sensor and
`output devices, including an eyeglass-mounted display. Ex. 1005, 11:51-67,
`
`Fig. 1. Petitioner explains:
`A [person having ordinary skill in the art (““PHOSITA”)]
`would recognize that an eyeglass-mounted heads-up display is
`well-suited to a running application because it allows the user
`to maintain a view oftheir surroundings unlike wrist-mounted
`displays that require the user to either stop running or to divert
`theirfull view from their surroundingsto the displayed
`information.
`Pet. 19 (citing Ex. 1002 § 39) (emphasis added). Petitioner further explains
`that “mounting the monitor devices (e.g., GPS and heart rate monitor) on the
`user’s body is the most commonsense arrangement, not least becauseit
`avoids the needto carry said componentsin one’s hands while running.” Jd.
`(citing Ex. 1002 39). Petitioner’s Declarant testifies:
`A PHOSITA would have therefore relied on the
`teachings in Newell to arrange the components in a mannerthat
`is safe, ergonomic,and efficient for a runner, since the system
`in Newell is designed to include the relevant components on a
`user during movement. Further, a PHOSITA would have
`recognized that forcing an athlete to carry the various sensor
`devicesis not practical, so mounting the devices onthe user’s
`body in accordance with the teachings ofNewell would be a
`natural and commonsense place for a PHOSITA to seek
`
`15
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`guidance. A PHOSITA would further recognize that an
`eyeglass-mounted heads-up display as taught by Newellis well-
`suited to a running application becauseit allowsthe user to
`maintain a view of their surroundings unlike wrist-mounted
`displays that require the userto either stop running orto divert
`their full view from their surrounding[s] to view the displayed
`information.
`
`Ex. 1002 { 39.
`For the purposesofthis Decision, and on this record, Petitioner,
`therefore, satisfactorily addresses both “the benefits that could have been
`
`obtained by combiningthepriorart references” and “the PHOSITA’s
`motivation to combineat the time of the invention.” See Nuvasive, 842 F.3d
`
`at 1384.
`
`Nor are we persuaded by Patent Owner’s argumentthat Fry teaches
`away from the combination set forth by Petitioner. See Prelim. Resp. 10. A
`reference teaches away from a claimed invention or a proposed modification
`if “a person ofordinary skill, upon reading the reference, would be
`discouraged from following the path set out in the reference, or would beled
`in a direction divergent from the path that was taken by the applicant.” Jn re
`Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)(citing In re Gurley, 27 F.3d
`$51, 553 (Fed. Cir. 1994)). Furthermore, “teaching away”requires a
`reference to actually criticize, discredit, or otherwise discourage the claimed
`solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Patent
`
`Ownerhasnot identified any such disparagementor other disclosure that
`would haveled the ordinary artisan from tollowing the path taken by the
`inventors ofthe invention claimed in the ’759 patent, and, thus, has not
`persuasively established that Fry teaches away from the combinationset
`
`16
`
`
`
`IPR2018-00294
`Patent 6,736,759 Bl
`
`forth by Petitioner. Additionally, Patent Ownerfails to persuasively explain,
`at this stage of the proceeding, how incorporating Newell’s separate
`electronic positioning device and display unit into Fry’s computer would be
`beyondthe skill set of a person of ordinary skill in the art.
`Accordingly, at this stage of the proceeding, we determine that
`Petitioner has established a reasonablelikelihood of prevailing on its
`
`assertion that Fry and Newell render obvious claim 1.
`
`3. Claims 2-7, 9, 12, 14, 17-22, and 26
`
`Claims 2-7, 9, 12, 14, 17-22, and 26 depend,directly orindirectly,
`
`from claim 1. Petitioner identifies sufficient evidence indicating that Fry
`and Newell disclose the limitations in these claimsand, to the extent
`
`necessary, provides persuasive argument or evidence to support its
`contentions that one of ordinary skill in the art would have had a reason to
`combine/modify the references to achievethe inventions recited in these
`claims. Pet. 21-29. Patent Owner doesnot present arguments regarding
`these claims separate from their dependence from claim 1. Prelim Resp. 23.
`On this record, Petitioner demonstrates a reasonablelikelihood ofprevailing
`in showing that claims 2-7, 9, 12, 14, 17-22, and 26 would have been
`
`obvious over Fry and Newell.
`
`D. Challenge Based on Fry, Newell, and Arcelus
`
`1. Overview ofArcelus
`
`Arcelusdiscloses a portable electrocardiogram viewer wornbythe
`user. Ex. 1008, 1:10-11. The viewerallows the user to track his/her
`electrocardiogram signal in real time from wireless sources while
`
`17
`
`
`
`IPR2018-00294
`Patent 6,736,759 Bl
`
`performingathletic activity. Id. at 2:53-67. The viewer includes a display
`
`that can be attachedto the user’s body or a nearby object, exemplary
`
`locations includingtheleft or right arm or wrist, the waist, a nearby table, a
`bicycle frame, or a treadmill frame. Jd. at 4:50-65. In one embodiment, the
`electrocardiogram electrodes and associated electronics are provided in a
`chest belt that transmits signals to the display unit via a radio frequency link.
`
`Id. at 10:18—53, Fig. 4.
`
`2. Claims 20, 22, and 23
`
`Claims 20, 22, and 23 depend,directly or indirectly, from claim 1.
`
`Petitioner identifies sufficient evidence indicating that Fry, Newell, and
`
`Arcelus disclose the limitations in these claims and,to the extent necessary,
`
`provides persuasive argument or evidence to support its contentionsthat one
`of ordinary skill in the art would have had a reason to combine/modify the
`references to achieve the inventionsrecited in these claims. Pet. 29-32.
`
`Patent Owner doesnot present arguments regarding these claims separate
`from their dependence from claim 1. Prelim Resp. 23. Onthis record,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`
`claims 20, 22, and 23 would have been obvious over Fry, Newell, and
`
`Arcelus.
`
`-_E. Challenge Based on Fry, Newell, and Richardson
`
`1. Overview ofRichardson
`
`Richardson discloses a personal fitness monitoring device that
`
`monitors the aerobic fitness of the user as the user exercises, and provides
`
`the user with information about the current exercise session. Ex. 1007, 1:5—
`
`18
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`13. The device includesa fitness assessment arrangementthat receives
`
`locomotion, heart rate, and personal data to compute an estimate of the
`
`user’s fitness. Jd. at 4:20-38. The locomotion data can be provided by a
`
`GPS component, which determinesdistance traveled, speed of traveling, and
`expended energy. Jd. at 5:19-23. The heart rate data can be provided by
`sensors positioned within a chest strap, and the locomotion measuring device
`can also be providedin the chest strap. Jd. at 15:29-32, 55-67, Figs. 7-8.
`The system mayinitiate alarms, which “mayindicate whether the heart rate
`or speedis out of a selected range.” Jd. at 17:39-43.
`
`2. Claim 29
`
`Independentclaim 29 claims an exercise monitoring system and
`recites limitations (a){c) that are the same asor substantially similar to the
`limitations recited in claim 1, and further recites additional limitations such
`as “(d) an alarm, whereinsaid alarm is activated when a subject’s velocity or
`pace does not meet a predeterminedtarget.” Compare Ex. 1001, 27:65—
`28:16, with id. at 30:11-27. Similar to claim 1, claim 29 recites “a display
`unit configured .
`.
`. for simultaneously displaying real-time data provided by
`said electronic positioning device and said physiological monitor, wherein
`said display unit is separate from said electronic positioning device.” Jd. at
`
`30:20-24.
`
`Petitioner relies on Fry and Newellto satisfy elements (a)(c) of claim
`29 in the same manneras discussedin section II.C.2 above. Pet. 36-37.
`
`Petitioner relies on Richardson to teach the use of alarms. Jd. at 37. As
`
`noted above, Richardson discloses a personalfitness monitoring device in
`which alarms “may indicate whether the heart rate or speedis out of a
`
`19
`
`
`
`IPR2018-00294
`Patent 6,736,759 Bl
`
`selected range.” Ex. 1007, 17:39-43. Petitioner argues that one of ordinary
`skill in the art would have included Richardson’s alarmsin the device of Fry
`
`as modified by Newellto “indicate when a user’s position-based data (e.g.,
`
`speed) and/or physiological data (e.g., heart rate) exceeds certain pre-set
`bounds” because “[s]uch alarm features were well knownin the art as of
`
`1999 and a PHOSITA would have recognized that such alarms provide
`
`much more useful data than raw sensor outputs for a fitness monitor system
`
`like Fry.” Pet. 33 (citing Ex. 1002 4 56).
`Patent Owner expressly relies on the same arguments discussed in
`
`sectionII.C.2 above to argue patentability over the combination ofFry,
`
`Newell, and Richardson. Prelim Resp. 14-15. Therefore, on this record,
`
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`
`claim 29 would have been obvious over Fry, Newell, and Richardson.
`
`3. Claims 9, 30, and 31
`
`Claim 9 dependsdirectly from claim 1, and claims 30 and 31 depend,
`directly or indirectly, from claim 29. Petitioner identifies sufficient evidence
`indicating that Fry, Newell, and Richardson disclose the limitations in these
`claims and,to the extent necessary, provides persuasive argumentor
`evidence to support its contentions that one ofordinary skill in the art would
`have had a reason to combine/modify the references to achieve the
`
`inventionsrecited in these claims. Pet. 35-38. Patent Owner does not
`
`present arguments regarding these claims separate from their dependence
`from claim 1 or claim 29. Prelim Resp. 23. Onthis record, Petitioner
`
`demonstrates a reasonable likelihood of prevailing in showingthat claims 9,
`
`30, and 31 would have been obvious over Fry, Newell, and Richardson.
`
`20
`
`
`
`IPR2018-00294
`Patent 6,736,759 Bl
`
`F. Challenge Based on Fry, Newell, Richardson, and Arcelus
`
`Claim 32 dependsdirectly from claim 29. Petitioner identifies
`
`sufficient evidence indicating that Fry, Newell, Richardson, and Arcelus
`
`disclose the limitations in this claim. Pet. 38-39. Patent Owner does not
`
`present arguments regardingthis claim separate from its dependence from
`claim 29. Prelim Resp. 23. On this record, Petitioner demonstrates a
`
`reasonable likelihood of prevailing in showing that claim 32 would have
`
`been obvious over Fry, Newell, Richardson, and Arcelus.
`
`G. Challenge Based on Fry, Newell, and Chance
`
`1. Overview of Chance
`
`Chancediscloses a compact oximeter constructed to be worn on a
`subject’s body overlong periods of activity. Ex. 1009, 1:52-61. The
`oximeterincludes several light emitting diodes (LEDs) that generatelight of
`different wavelengths introduced into the examinedtissue andseveral
`photodiode detectors that detect specific wavelengthsoflight. Jd. at 1:61—
`65. “The oximeteris adapted to measurethe attenuation oflight migrating
`from the sourceto the detector and also to determine the average migration
`
`pathlength. The migration pathlength and the intensity attenuation data are
`then used for direct quantitation of a tissue property.” Jd. at 2:19-23. The
`oximeter can be use
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