Trials@uspto.gov
`571-272-7822
`
`Paper No. 20
`Entered: April 12, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`Vv.
`
`UNILOC2017 LLC;!
`Patent Owner.
`
`Case IPR2018-00294
`Patent 6,736,759 Bl
`
`‘Before SALLY C. MEDLEY, JOHN F. HORVATH,and
`SEAN P. O’HANLON,Administrative Patent Judges.
`
`O’HANLON,Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 USC. § 318(a) and 37 C.F.R. § 42.73
`
`' At the time the petition wasfiled, Uniloc Luxembourg S.A. wasthe patent
`owner.
`
`

`

`IPR2018-00294
`Patent 6,736,759 Bl
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`I. INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1-32 of U.S. Patent No. 6,736,759 B1 (Ex. 1001, “the ’759 patent”).
`
`Paper | (“Pet.”), 1. Uniloc Luxembourg S.A., a predecessorin interest to
`
`Uniloc 2017 LLC (“Patent Owner’), filed a Preliminary Response. Paper 6
`
`(Prelim. Resp.”). On May 21, 2018, weinstituted an inter partes review of
`
`claims 1-32 on all groundsraised in the Petition (Paper 7, 33-34
`
`(“Decision”or “Dec.”)). Patent Ownerfiled a Patent Owner Response.
`
`Paper 9 (“PO Resp.”). Petitioner filed a Reply to the Patent Owner
`
`Response. Paper 12 (“Pet. Reply”). An oral hearing was held on January
`23,2019. A transcript of the hearing has been entered into the record. Paper
`
`19 (“Tr.”).
`
`Per our Scheduling Order, we notified the parties that “any arguments
`
`for patentability not raised in the [Patent Owner] response will be deemed
`
`waived.” Nonetheless, Petitioner bears the burden to show,by a
`
`preponderance ofthe evidence, that the challenged claims are unpatentable.
`
`For the reasons that follow, we conclude that Petitioner has proven by a
`
`preponderanceof the evidence that claims 1-32 of the ’759 patent are
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`unpatentable.
`
`* See Paper 8, 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (a patent owner’s “response should identify
`all the involved claimsthat are believed to be patentable andstate the basis
`for that belief’).
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`

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`IPR2018-00294
`Patent 6,736,759 Bl
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`B. Related Matters
`
`The parties 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; Paper 4,2.
`
`Petitioner also states that the °759 patent waspreviously 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.
`
`C. The Challenged Patent
`
`The ’759 patent discloses a monitoring system including an electronic
`
`positioning device and a physiological monitor for use in a variety of
`
`physical activities. Ex. 1001, 1:8-15, 6:37-60. Figure 3, shown below,
`
`illustrates an embodimentof the monitoring system. Jd. at 8:49-51.
`
`SIIVILTIVULILTTTTTVTVTATOPITTIIIVTTTT4
`Fig. 2
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`

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`IPR2018-00294
`Patent 6,736,759 B1
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`Figure 3 “depicts a human subject performing a physical activity using one
`
`embodiment of a monitoring system ofthe present invention,” including
`
`display unit 7 and data acquisition unit 20. Jd. at 2:17-19, 8:51-S5.
`The electronic positioning device, which may be a global positioning
`system (“GPS”) device, receives electromagnetic signals from three or more
`sources to trackat least one of the user’s location,altitude, heading, velocity,
`pace, or distance traveled. Jd. at 3:8-10, 7:35-39, 9:16-39. The
`
`physiological monitor, which may be an oximeteror a heart rate monitor,
`
`acquires physiological data from the user, such as the user’s blood oxygen
`
`level or heart rate. Id. at 6:56—60, 9:40-67. The determined position and
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`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.
`
`D. 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 andis 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 by a subject performing
`a physical activity; and
`(b) a display unit configured for displaying real-time data
`providedbysaid electronic positioning device and said
`physiological monitor, said display unit separate from said data
`acquisition unit;
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`IPR2018-00294
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`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 such that said
`display unit displays real-time data comprising at least one of a
`subject’s location, altitude, velocity, pace, and distance
`traveled.
`
`E. Instituted Grounds of Unpatentability
`
`Weinstituted trial based on all asserted claims and grounds of
`
`unpatentability as follows (Dec. 33):
`
`References
`
`Basis®
`
`35 U.S.C. § 103(a)|20 and 22-23
`
`
`
`
`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®
`Fry, Newell, and Richardson’|35 U.S.C. § 103(a)|9 and 29-318
`Fry, Newell, Richardson, and|35 U.S.C. § 103(a)|32
`Arcelus
`
`
`3 The ’759 patent was filed on November9, 1999, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) took effect.
`4 US 6,002,982 (filed Nov. 1, 1996, issued Dec. 14, 1999) (Ex. 1004, “Fry”).
`> US 6,466,232 B1 (filed Dec. 18, 1998, issued Oct. 15, 2002) (Ex. 1005,
`“Newell”).
`® US 6,149,602 (filed Mar. 29, 1997, issued Nov. 21, 2000) (Ex. 1008,
`“Arcelus”).
`TUS 5,976,083 (filed July 30, 1997, issued Nov. 2, 1999) (Ex. 1007,
`“Richardson’”).
`8 Although claim 32 islisted as being included in this ground (Pet. 8), the
`claim is not addressed in the analysis section (see id. at 32-38).
`
`

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`IPR2018-00294
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`Challenged
`Claim(s)
`Fry, Newell, and Chance’ 35 U.S.C. § 103(a)|4, 13, 15, 16, 27, and
`28
`
`
`
`Basis°
`
`
`
`
`
`
`
`
`
`
`References
`
`
`
`
`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
`Vock, Arcelus, and Chance
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`.
`
`4, 13, 15, 16, 27, and
`28
`
`Pet. 8. Petitioner submits a declaration of Dr. Kenneth Fyfe (Ex. 1002,
`
`“Fyfe Declaration” or “Fyfe Decl.’’) in support of its contentions.
`
`Il. ANALYSIS
`
`A. Principles ofLaw
`
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims are
`
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obviousat the time of the invention to a person
`
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`
`? US 5,564,417 (issued Oct. 15, 1996) (Ex. 1009, “Chance”).
`'0 WO 97/17598 (published May 15, 1997) (Ex. 1010, “French”).
`1! US 6,539,336 BI (filed June 2, 1998, issued Mar. 25, 2003) (Ex. 1006,
`“Vock”).
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`406 (2007). The question of obviousnessis resolved on the basis of
`
`underlying factual determinations including (1) the scope and contentof the
`
`prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`
`1, 17-18 (1966).
`
`B. Level of Ordinary Skill in the Art
`
`Citing its declarant, Dr. Kenneth Fyfe, Petitioner contends that a
`
`person having ordinary skill in the art ““POSITA”or “PHOSITA”)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 motion tracking.” Pet. 11 (citing Ex.
`1002 J 30). Patent Owner’s declarant, Dr. 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, computerscience,or
`
`related technical area with 2 years of experience related to mobile devices
`
`and/or physiological monitoring.” Ex. 2001 § 13; see also PO Resp. 3
`
`(citing same).
`
`Petitioner and Patent Owner define comparablelevels of ordinary
`
`skill, specifying similar educational backgrounds and experience.
`
`Petitioner’s interpretation more closely tracks the claims, whichare directed
`
`to exercise monitoring systemsrather than mobile devices in general. For
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`!2 It is our understanding that since the time of submitting his declaration,
`Dr. Easttom has obtainedhis doctorate.
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`the purposes of this decision, therefore, we adopt Petitioner’s proposed
`
`definition as more representative, but note that our analysis would be the
`
`same undereither definition.
`
`C. Claim Construction
`
`In an inter partes review, a claim in an unexpired patent shall 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
`
`reasonable interpretation 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 overcomebyproviding 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 absence ofsuch a definition, limitations are notto be read
`from the specification into the claims. See In re Van Geuns, 988 F.2d 1181,
`
`1184 (Fed. Cir. 1993). Only those terms which are in controversy need be
`
`13 This Petition was filed before the effective date of the amendmentto 37
`C.F.R. § 42.100 that changed the claim construction standard applied in inter
`partes reviews. Changes to the Claim Construction Standard for Interpreting
`Claimsin Trial Proceedings Before the Patent Trial and Appeal Board, 83
`FR 51340 (Oct. 11, 2018) (effective November 13, 2018)(to be codified at
`37 C.F.R. pt. 42). Thus, we use the broadest reasonable interpretation claim
`construction standard for this proceeding. We would construe the claim
`terms discussed below the same under Phillips v. AWH Corp.; 415 F.3d
`1303 (Fed. Cir. 2005) (en banc).
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`

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`IPR2018-00294
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`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);
`
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`
`partes review).
`
`Petitioner contends, generally, that the terms of the claims of the ’759
`
`patent should be interpreted 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 theCAFC’s construction.” Jd. at 9-10.
`
`Petitioner contends that “probe” should be interpreted according to 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 Ownerdoesnot propose interpretations for any claim terms.
`
`See PO Resp. 4-5.
`
`Weaddressbelowthe claim term “displaying real-time data,” and,
`based on the record before us, determinethat no other claim terms require
`construction. Vivid Techs., 200 F.3dat 803.
`
`1. displaying real-time data
`
`“There is no dispute that the [Patent Trial and Appeal Board] is not
`
`generally bound bya prior judicial construction of a claim term.” Power
`
`Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (citing Jn re
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`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
`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 measurethe data.” Ex. 1023, 14. In doing so, the Federal Circuit
`
`reviewedthe language of the claims, the Specification, the prosecution
`
`history, and extrinsic evidence. /d. at 11-14. Ofparticular interest, the
`
`Federal Circuit noted, regarding the Specification of the ’759 patent,
`
`the criticism ofprior art is more appropriately read to
`distinguish the invention’s “real-time” display from prior art
`methodsthat stored data for review only after the activity was
`complete, so that the user could not make modifications during
`the course ofthe activity. Thus, the specification supports a
`construction of “real-time” in this case that precludes
`intentionally delaying the display of data by storingit for later
`review.
`
`Id. at 12. For purposesofthis decision, we adopt the Federal Circuit’s
`
`reasoned analysis and construction as our own. Asour review ofthe ’759
`
`patent and the evidence of record does not reveal a broader construction, we
`
`determine the Federal Circuit’s construction comports with not only the
`
`Phillips standard, but also the broadest reasonable interpretation.
`
`10
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`

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`1. Fry
`
`D. Overview ofthe Prior Art
`
`Fry discloses a sports computer that is mountable directly to the
`
`athlete or equipmentin use. Ex. 1004, 2:37-42, 51-55. The computerhas
`
`sensors including a heart rate monitor and a GPS antennaandreceiver. Id.
`
`at 4:25-29, 55-60. The data measured by the sensors is presented on a
`
`display, and maybetransferred to a personal computer for later evaluation.
`
`Td. at 5:54-60, 6:33-36, 58-64.
`
`2. Newell
`
`Newell discloses a body-mounted wearable computerthat
`
`communicates with various body-worn input, output, and sensor devices.
`
`Ex. 1005, 11:51-67, 12:20-24. Such output devices include flat panel
`
`displays and eyeglass-mounted displays, and such sensor devices include
`
`heart rate and GPSsensors. /d. at 5:9-15, 11:57-60, 14:64-67. Information
`
`obtained by the sensor devicesis transmitted to the system, which uses the
`
`information in creating a modelof the user condition. /d. at 13:18-23, 42—
`
`45. The system uses the user condition to determine an appropriate device
`
`on whichto present the informationto the user, and sends the information to
`
`the corresponding output device for display. Jd. at 13:61-14:29.
`
`3. Arcelus
`
`Arcelus discloses a portable electrocardiogram viewer worn by the
`
`user. Ex. 1008, 1:10—11. The viewer allowsthe userto track his/her
`
`electrocardiogram signalin real time from wireless sources while
`
`performingathletic activity. Jd. at 2:53-67. The viewerincludesa display
`
`that can be attached to the user’s body or a nearby object, exemplary
`
`11
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`

`

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`locations including the left 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 frequencylink.
`
`Id. at 10:18—53, Fig.4.
`
`4. Richardson
`
`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—
`
`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
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`GPS component, which determines distance traveled, speed of traveling, and
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`expended energy. Jd. at 5:19-23. The heart rate data can be provided by
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`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 “may indicate whether the heart rate
`
`or speed is out of a selected range.” Jd. at 17:39-43.
`
`5. Chance
`
`Chance discloses a compact oximeter constructed to be worn on a
`subject’s bodyover long periods ofactivity. Ex. 1009, 1:52-61. The
`oximeter includes several light emitting diodes (LEDs) that generate light of
`different wavelengths introduced into the examinedtissue and several
`photodiode detectors that detect specific wavelengths of light. Jd. at 1:61—
`
`65. “The oximeter is adapted to measure the attenuation of light migrating
`
`12
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`from the source to 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.” Id. at 2:19-23. The
`
`oximeter can be used to detect hemoglobin oxygenation. Jd. at 4:47-49,
`
`7:47-50. The system maytrigger an alarm based uponestablished
`
`standards, for example, in monitoring aviators for possible black-out
`
`conditions and for apnea. Jd. at 8:41-44.
`
`6. French
`
`French discloses a movementskills assessment system that tracks a
`
`player’s position continuously in real-time. Ex. 1010, 5. The system
`
`includes a wireless position tracker coupled to a personal computer. Jd. The
`
`system measures and processesvelocity vectors to compare velocity related
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`information in all directions and measurement of elapsed times or composite
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`speeds. Jd. at 6. “In the preferred embodiment, the intensity of physical
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`activity is quantified in that energy consumed (calories burned),
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`acceleration, and other measurements are presented, based on user-supplied
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`data such as weight.” Id.; see also id. at 18-19.
`
`7. Vock
`
`Vock discloses a system for monitoring and quantifying sport
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`movement(associated either with the person or with the vehicle used or
`
`ridden by the person). Ex. 1006, 1:17—21. The system includes a sensing
`
`unit that has a numberofsensors, such as speed and powersensors. Jd. at
`
`22:20-49. In some embodiments, the system includesa data unitthat
`
`communicates via radio frequency signals with the sensing unit. Jd. at
`
`23:19-24, 24:47-48. The data unit may be providedin the form of a watch,
`
`13
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`having a display, via which performance data is presented to the user. Jd. at
`
`24:64-67, 25:29-30, 40:38-47. The system may include a GPS sensorto
`
`determine, for example, absolute position, speed, and height of the user. Id.
`
`at 39:22-38, 40:63-41:8.
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`E. Challenge Based on Fry and Newell
`
`Petitioner asserts that the combination of Fry and Newell describesall
`
`elements of claims 1-7, 9, 12, 14, 17-22, and 26, and that it would have
`
`been obvious to combine Fry and Newell. Pet. 12-29.
`
`1. Claim 1
`
`a. Petitioner’s Contentions
`
`Petitioner relies on Fry to teach mostofthe limitations of claim 1, but
`
`relies on Newell to teach a display unit that is separate from a data
`
`acquisition unit. Jd. at 14-21.
`
`Claim 1 recites “[a]n exercise monitoring system.” Ex. 1001, 27:65.
`
`Petitioner contendsthat “Fry discloses an exercise monitoring system.” Pet.
`
`14 (citing Ex. 1004, 1:6—8, 2:44-46). Weare persuaded byPetitioner’s
`
`showing and agree that Fry discloses “[a]n exercise monitoring system.”
`
`Claim 1 recites “(a) a data acquisition unit comprising an electronic
`
`positioning device and a physiological monitor, said data acquisition unit
`configured to be worn by a subject performing a physical activity.” Ex.
`1001, 27:66—28:2. Petitioner contends that Fry discloses an exercise
`
`monitoring system that includes a GPS receiver and a heart-rate sensor. Pet.
`14 (citing Ex. 1004, 2:55-58, 3:7-10). Petitioner further contends that Fry’s
`exercise monitoring system includes means for mounting the system directly
`
`to an athlete. Jd. (citing Ex. 1004, 2:52-55). We are persuaded by
`
`14
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`

`

`IPR2018-00294
`Patent 6,736,759 B1
`
`Petitioner’s showing and agree that Fry discloses “a data acquisition unit
`
`comprising an electronic positioning device and a physiological monitor,
`said data acquisition unit configured to be worn by a subject performing a
`
`physical activity.”
`
`Claim 1 recites “(b) a display unit configured for displaying real-time
`
`data providedbysaid 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 GPSsensors[is] scanned and the data is stored.... Then
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`... ‘the display is updated by refreshing from memory the data to be
`
`displayed.’” Jd. at 16 (citing Ex. 1004, 6:33-36, Fig. 3). Applying the
`
`Federal Circuit’s construction of “real-time,” Petitioner argues that Fry
`
`displays real-time data because the data is displayed with “no intentionally
`
`introduced delay, and the display is updated as quickly as the processing
`
`limitations of the system and measurementtime allow.” Jd. at 16-17 (citing
`
`Ex. 1002 J 36; Ex. 1023). Notwithstanding Patent Owner’s arguments,
`
`which wediscuss below, weare persuadedby Petitioner’s showing and
`
`agree that Fry describes “a display unit configured for displaying real-time
`
`data provided bysaid electronic positioning device and said physiological
`
`monitor.”
`
`.
`
`Claim | recites “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
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`15
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`IPR2018-00294
`Patent 6,736,759 Bl
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`to teach “a body mounted computing system with a variety of sensors,
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`including a GPS, heart rate monitor, and other physiological monitors.” Pet.
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`17-18 (citing Ex. 1004, 2:44—46, 51-54, Fig. 1; Ex. 1005, 5:9-15, 48-55,
`11:57-60, Fig. 1). Petitioner argues that it would have been obvious to
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`modify Fry’s system to include a display unit that is separate from the data
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`acquisition unit, as taught by Newell. Jd. at 18-20. Specifically, Petitioner
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`argues that one of ordinary skill in the art would have made such a
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`modification because such an artisan would understand Fry to “effectively
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`direct a skilled artisan to re-arrange the Fry components in a mannerthatis
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`safe, ergonomic, and efficient for runners,” as Fry “expressly notesthat its
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`system is ‘readily applicable to other sports .
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`.
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`. [,] including running.’” Jd.
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`at 18 (citing Ex. 1004, 2:44-46; Ex. 1002 {J 38-39). Petitioner arguesthat
`“Newell provides express motivation to locate the display of a personal
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`monitor device as an eyeglass-mounted heads-up display separate from the
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`other key components that are mounted onthe user’s body,” and that one of
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`ordinary skill in the art “would recognize that an eyeglass-mounted heads-up
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`display is well-suited to a running application becauseit allows the user to
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`maintain a view oftheir surroundings” and “that mounting the monitor
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`devices (e.g., GPS and heart rate monitor) on the user’s body is the most
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`commonsense arrangement.” Jd. at 18-19 (citing Ex. 1002 4 39).
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`Notwithstanding Patent Owner’s arguments, which wediscuss below,we are
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`persuaded by Petitioner’s showing and agree that Fry and Newell describe
`“said display unit separate from said data acquisition unit.”
`.
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`Claim 1 recites “wherein said display unit is configured to be worn by
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`the subject, worn by someoneother than the subject, or attached to an
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`apparatus associated with the physical activity being performed by the
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`subject so as to be visible to the subject while performing the physical
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`activity.” Ex. 1001, 28:7-12. Petitioner argues that Newell’s “eyeglass-
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`mounted display coupled with the body-mounted monitors provides a
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`convenient arrangement to provide information to an athlete during exercise
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`with minimaldistraction.” Pet. 20 (citing Ex. 1002 9 39). We are persuaded
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`by Petitioner’s showing and agree that Newell describes “wherein said
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`display unit is configured to be worn by the subject, worn by someoneother
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`than the subject, or attached to an apparatus associated with the physical
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`activity being performed by the subject so as to be visible to the subject
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`‘while performing the physicalactivity.”
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`Claim | recites “further wherein said system is configured such that
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`said display unit displays real-time data comprising at least one of a
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`subject’s location, altitude, velocity, pace, and distance traveled.” Ex. 1001,
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`28:13-16. Petitioner contends that Fry discloses displaying sensordata,
`such as geographic position, speed, and physiological conditions, in real-
`time. Pet. 20-21 (citing Ex. 1004, 5:54-60). Notwithstanding Patent
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`Owner’s arguments, which we discuss below, we are persuaded by
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`Petitioner’s showing and agree that Fry describes “wherein said system is
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`configured such that said display unit displays real-time data comprisingat
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`least one of a subject’s location,altitude, velocity, pace, and distance
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`traveled.”
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`b. Patent Owner’s Contentions
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`Patent Ownerpresents several arguments challenging the combination
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`of Fry and Newell. PO Resp. 5-16. First, Patent Owner faults our
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`interpretation of “displaying real-time data” in the Decision, which,as noted
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`above,tracks the interpretation adopted by the Federal Circuit in Paragon
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`Solutions (Ex. 1023). Id. at 6. Patent Ownerarguesthat “[t]he Federal
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`Circuit did not .
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`.
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`. state that its construction ‘displaying data without
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`intentional delay’ only excludes delay arising from ‘storing [GPS data] for
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`later review.’” Jd. (second alteration in original). According to Patent
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`Owner, “while the intrinsic evidence reveals that one example form of
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`‘intentional delay’ may arise where GPSdatais stored for later review,
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`nothing in the Court’s opinion suggests that is the only possible ‘intentional
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`delay’ excluded by the Court’s construction of the ‘real-time’ claim
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`language.” Jd. Patent Ownerarguesthat “(t]he Court’s only explicit
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`instruction of what must be considered when determining whether the
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`construction ‘without intentional delay’ is met is found in the following
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`statement:
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`‘the processing limitations of the system and the time required to
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`accurately measure the data.’” Jd. at 7.
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`Weare not persuaded by Patent Owner’s arguments. Initially, we
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`note that, when construing “displaying real-time data,” the Federal Circuit
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`first considered the Specification and determinedthat“the [S]pecification
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`supports a construction of‘real-time’ in this case that precludes intentionally
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`delaying the display ofdata by storing itfor later review.” Ex. 1023, 12
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`(emphasis added). The Federal Circuit, thus, likened “intentional delay”to
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`“prior art methodsthat stored data for review only after the activity was
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`complete.” Id.
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`In its analysis of the prosecution history of the ’759 patent, the
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`Federal Circuit noted that:
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`After claims 1 and 18 wererejected as anticipated by Root, the
`applicants amendedthe claimsto add the “displaying real-time
`data” limitation. In their remarks, the applicantsstated,
`“Furthermore, the personal computer depicted in Fig. 7 of Root
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`cannot be used to display real-time data, as required by claim 1.
`Rather, the personal computerin Fig. 7 of Root will merely
`display performance data after the athlete has completed their
`activity.” ... The applicants’ remarks distinguishing Root
`therefore echo the criticism of the prior art in the specification.
`In the applicants’ view, the invention is preferable becauseit
`does notintentionally delay the display ofdata by storingitfor
`later review after the athlete has completed his or her activity
`(as in Root). Rather, in this invention, the data is displayed
`without any intentional delay—i.e., in “real time.”
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`Id. at 13-14 (emphasis added,citations omitted). Thus, contrary to Patent
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`Owner’s assertion, the Federal Circuit relied heavily on the comments made
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`by the applicants in amending the independent claims during prosecution, as
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`well as the languageof the Specification, in construing “displaying real-time
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`data,” and interpreted “real-time” by explicitly contrasting the term to “the
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`display of data by storing it for later review after the athlete has completed
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`his or her activity.” See id.
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`Continuing, the Federal Circuit determined the extrinsic evidence
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`relied upon by the district court to be “too vague to be of significant help,”
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`and noted that “definitions of ‘real-time’ in other technical dictionaries
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`suggest that a real-time process cannot involve intentional delay or storage
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`for later processing.” Jd. at 14. The Federal Circuit, therefore, disagreed
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`with the district court’s construction of “displaying real-time data” to mean
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`“displaying data substantially immediately without contextually meaningful
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`delay so that the information is displayed in a time frame experienced by
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`people.” Id.; see also id. at 10 (providing the district court construction).
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`The Federal Circuit concluded by determining:
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`[W]hile the data need notbe displayed instantaneously, it must
`be displayed without any intentional delay, taking into account
`the processing limitations of the system andthe time required to
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`accurately measure the data. We therefore construe “displaying
`real-time data,” as used in the claimsofthis case, as “displaying
`data without intentional delay, given the processing limitations
`of the system andthe time required to accurately measure the
`data.”
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`Id. at 14. Patent Owner’s arguments improperly focus on the Federal
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`Circuit’s analysis of the extrinsic evidence and ignore the lengthy
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`consideration of the intrinsic evidence, in which the court likened
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`“intentional delay” to displaying the measured data after the athlete has
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`completedhis or her activity. See id. at 11-14.
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`Moreover, Patent Owner’s arguments ignore our findingsin the
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`Institution Decision, in which westated that we were not persuaded by
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`Patent Owner’s argumentsin its Preliminary Response“for the reasonsset
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`forth by the Federal Circuit in discussing Timex’s argument regarding
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`instantaneousdisplay.” Dec. 12 (citing Ex. 1023, 11-12). As we explained,
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`Fry disclosesthat,
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`after inputting and processing data from all sensors,“the
`display is updated by refreshing from memory the data to be
`displayed in accordance with the modeselected,” and, “[a]fter
`updating the display. .. , the software loops back to the mode-
`selection inquiry at block 310, and the various routines are
`repeated, or skipped, in accordance with mode and the
`existence of various inputs.”
`Dec. 12-13 (citing Ex. 1004, 6:33-41). Thus, we noted that the only delay
`in Fry’s display of GPS data is due to system processing. Accordingly,
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`Patent Owner’s argumentsfail to inform usoferror in our preliminary
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`findings regarding Fry, even when considering Patent Owner’s interpretation
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`of “displaying real-time data.”
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`Patent Ownernext arguesthat Fry intentionally delays displaying
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`GPS data becauseit stores the data and performs other sensor reading
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`functions prior to displaying the GPS data. PO Resp. 7-11. According to
`Patent Owner, “Fry explicitly states that its GPS data is storedfor later
`review.” Id. at 7. Patent Ow