Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`v.
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`FITBIT, INC.,
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`Plaintiff,
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`Defendant.
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`Civil Action No. 1:19-cv-11586-IT
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`Oral argument requested
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`FITBIT, INC.’S MEMORANDUM IN SUPPORT OF MOTION FOR PARTIAL
`SUMMARY JUDGMENT OF INVALIDITY UNDER 35 U.S.C. § 112
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 2 of 21
`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ............................................................................................................. 1 
`BACKGROUND ............................................................................................................... 1 
`LEGAL STANDARD ........................................................................................................ 4 
`A.
`Definiteness requirement for claims invoking 35 U.S.C. § 112, ¶ 6 ..................... 5 
`B.
`Computer-implemented means-plus-function limitations ..................................... 7 
`ARGUMENT ..................................................................................................................... 9 
`A.
`The “means for computing athletic performance data from the series of
`time-stamped waypoints obtained by said GPS receiver” recites a
`computer-implemented function invoking 35 U.S.C. § 112, ¶ 6, and
`therefore the corresponding structure is a special-purpose processor
`programmed to perform an algorithm disclosed in the specification, not a
`generic CPU or processor ...................................................................................... 9 
`There is no algorithm in the specification clearly linked to performance of
`the function corresponding to the “means for computing athletic
`performance data from the series of time-stamped waypoints obtained by
`said GPS receiver” by either the device’s CPU, the GPS module’s
`processing unit, or the two processors in tandem ................................................ 12 
`CONCLUSION ................................................................................................................ 15 
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`B.
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`I.
`II.
`III.
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`IV.
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`V.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 3 of 21
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`
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`Cases
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`Aristocrat Techs. Australia Pty. Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008)..................................................................................8, 9, 12, 13
`
`Atmel Corp. v. Info. Storage Devs., Inc.,
`198 F.3d 1374 (Fed. Cir. 1999)..................................................................................................7
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`Augme Techs., Inc. v. Yahoo! Inc.,
`755 F. 3d 1326 (Fed. Cir. 2014)...........................................................................................8, 13
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`B. Braun Med., Inc. v. Abbott Labs.,
`124 F.3d 1419 (Fed. Cir. 1997)..................................................................................................6
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`Blackboard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009)....................................................................................6, 7, 8, 10
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`Default Proof Credit Card System, Inc. v. Home Depot U.S.A.,
`412 F.3d 1291 (Fed. Cir. 2005)..............................................................................................6, 7
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`In re Donaldson Co.,
`16 F.3d 1189 (Fed. Cir. 1994) (en banc) ....................................................................................6
`
`ePlus, Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012)..................................................................................................15
`
`EON Corp. IP Holdings LLC v. AT&T Mobility LLC,
`785 F.3d 616 (Fed. Cir. 2015)..............................................................................................9, 10
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`Finisar Corp. v. DirectTV Group, Inc.,
`522 F.3d 1323 (Fed. Cir. 2008)............................................................................................8, 15
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`Function Media, LLC v. Google, Inc.,
`708 F.3d 1310 (Fed. Cir. 2013)..............................................................................................8, 9
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`Harris Corp. v. Ericsson Inc.,
`417 F.3d 1241 (Fed. Cir. 2005)..................................................................................................8
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`Ibormeith IP, LLC v. Mercedes-Benz USA, LLC,
`732 F.3d 1376 (Fed. Cir. 2013)................................................................................................15
`
`In re Katz Interactive Call Processing Patent Litig.,
`639 F.3d 1303 (Fed. Cir. 2011)................................................................................................10
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 4 of 21
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`MobileMedia Ideas LLC v. Apple Inc.,
`780 F.3d 1159 (Fed. Cir. 2015)............................................................................................6, 11
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`Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359 (Fed. Cir. 2008)................................................................................................10
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`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003)............................................................................................7, 12
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`Personalized Media Commc’ns LLC v. Int’l Trade Comm’n,
`161 F.3d 696 (Fed. Cir. 1998)....................................................................................................5
`
`Saffran v. Johnson & Johnson,
`712 F.3d 549 (Fed. Cir. 2013)....................................................................................................7
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`Triton Tech of Tex., LLC v. Nintendo of Am., Inc.,
`753 F.3d 1375 (Fed. Cir. 2014)........................................................................................6, 8, 12
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`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) (en banc) ..............................................................................5, 9
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`WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d 1339 (Fed. Cir. 1999)..............................................................................................7, 8
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`Statutes
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`35 U.S.C. § 112 ...................................................................................................................... passim
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`September 16, 2012, the pre-America Invents Act ..........................................................................1
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`Other Authorities
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`Federal Rules of Civil Procedure Rule 56 .......................................................................................1
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 5 of 21
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`I.
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`INTRODUCTION
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`Fitbit Inc.’s (“Fitbit”) motion requests the Court to make three legal determinations: (1)
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`the asserted claims of U.S. Patent No. 6,013,007 (“the ’007 patent”) recite a “means-plus-
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`function” limitation invoking 35 U.S.C. § 112, ¶ 61; (2) the specification indicates a general-
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`purpose processor or computer is used to perform the claimed function; and (3) the specification
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`does not disclose or describe an “algorithm” in form of a step-by-step procedure the processor or
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`computer would use to perform the claimed function—whether described as a mathematical
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`formula, in prose, as a flow chart, or any other manner that provides sufficient disclosure of an
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`algorithm. Importantly, the Federal Circuit has repeatedly instructed that expert testimony cannot
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`be used to replace disclosure of such an algorithm in the specification, meaning there is no need
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`to wait until after fact or expert discovery closes to rule on this motion.
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`Based on these three discrete legal determinations, the asserted claims of the ’007 patent
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`are invalid as indefinite as a matter of law under 35 U.S.C. § 112, ¶ 2. Fitbit thus moves the
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`Court pursuant to Rule 56 of the Federal Rules of Civil Procedure for an order of partial
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`summary judgement that asserted claims 7 and 21–29 of the ’007 patent are invalid as indefinite.
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`II.
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`BACKGROUND
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`The ’007 patent is directed to a GPS-based system for computing and comparing outdoor
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`athletic performance. The patent contends that known GPS devices were not designed for use by
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`an outdoor athlete and “do not include real-time athletic performance algorithms” to compute
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`athletic performance feedback. ’007 patent, 1:46–48. The patent seeks to address this
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`shortcoming by disclosing a “GPS-based performance monitor” device that includes a “central
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`processing unit (CPU)” that “controls the operation of the device.” Id. at 5:36–40. Connected to
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`1 Because the ’007 patent was filed before September 16, 2012, the pre-America Invents Act
`version of 35 U.S.C. § 112(f) applies.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 6 of 21
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`the CPU 602 within the device is a GPS receiver module 604 (identified in annotated Figure 6
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`below, an electric schematic of the performance monitor). Id. at 5:41–43.
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`The ’007 patent explains that
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`“[a]ccording to well known operations, the GPS
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`receiver 604 receives GPS radio wave signals
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`205 which are emitted from existing GPS
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`satellites 204 and received via the GPS
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`receiving antenna 301.” Id. at 7:29–32. Within
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`the GPS module 604, is “a built-in processing
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`unit and memory for processing the GPS radio
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`wave signals 205 to determine the latitude and
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`longitude coordinates of the GPS antenna's
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`current position, as well as determine its current speed and direction of travel.” Id. at 7:36–40.
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`The latitude and longitude coordinates determined by the GPS module’s “built-in processing
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`unit,” “along with other information” are stored in the separate memory 608, and from this
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`information, certain “performance data” “are calculated.” Id. at 7:40–50.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 7 of 21
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`The specification does not explicitly identify whether the
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`GPS module 604’s built-in processing unit, the device’s CPU 602
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`that “controls the operation of the device,” or a combination of the
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`two processors performs these calculations of performance data.
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`However, as shown in Figure 6 (excerpted), only CPU 602 is shown
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`as in direct connection to or in communication with memory 608.
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`Figure 11 illustrates “a flowchart showing feedback
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`information cycles of the preferred embodiment,” id. at 6:49–51, and Figure 12 illustrates
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`exemplary “historical exercise session performance data sets,” id. at 6:16–17. Neither of these
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`figures provide any description of the calculations performed by the GPS module 604’s
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`processing unit or the device’s CPU 602 to arrive at this “performance data” or “feedback
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`information.” Instead, these diagrams illustrate the outputs, or results, of the algorithms
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`performed by the GPS module’s processing unit or the device’s CPU.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 8 of 21
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`In sum, no portion of the specification describes how the GPS module’s built-in
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`processing unit or the CPU controlling the performance monitor device carries out any of the
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`“performance data” calculations identified in the specification at 7:40–50.
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`All asserted claims in this case depend from either independent claims 1 or 21 of the ’007
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`patent, both of which attempt to capture the calculation of performance data through recitation of
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`a “means for computing athletic performance feedback data from the series of time-stamped
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`waypoints obtained by said GPS receiver.” Id. at 11:8–17, 12:23–36.
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`For example, claim 21 recites:
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`III. LEGAL STANDARD
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`The reason the claims of the ’007 patent are invalid as indefinite and the reason that
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`summary judgment is proper at this time is the use of the term “means” in describing
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`performance of the claimed function of “computing athletic performance feedback data from the
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`series of time-stamped waypoints obtained by said GPS receiver.” The use of this term invokes
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`35 U.S.C. § 112, ¶ 6, which states:
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`An element in a claim for a combination may be expressed as a
`means or step for performing a specified function without the recital
`of structure, material, or acts in support thereof, and such claim shall
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 9 of 21
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`be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
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`Section 112, ¶ 6 allows, in certain circumstances, patentees to claim a function, without
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`identifying in the claim itself a specific structure for performing that function. These type of
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`claims are often referred to as “means-plus-function” claims, because they recite a “means for”
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`performing a function. By employing the convenience of claiming in this manner, as the statute
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`indicates, the claims “shall be construed to cover the corresponding structure, material, or acts
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`described in the specification and equivalents thereof.”
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`A well-developed body of law exists on the use of what are referred to as “means-plus-
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`function” claims, and even further on a subset of computer-implemented “means-plus-function”
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`claims that rely on general purpose computers or processors as the “means” for performing the
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`claimed function. The Federal Circuit has delineated strict requirements for this latter type of
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`means-plus-function claim, requirements the ’007 patent fails to satisfy as a matter of law.
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`A.
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`Definiteness requirement for claims invoking 35 U.S.C. § 112, ¶ 6
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`Use of the term “means” in claim limitation creates a presumption that 35 U.S.C. § 112,
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`¶ 6 applies. Personalized Media Commc’ns LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed.
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`Cir. 1998). The Federal Circuit explained in Williamson v. Citrix Online, LLC, 792 F.3d 1339,
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`1347 (Fed. Cir. 2015) (en banc):
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`In enacting [35 U.S.C. § 112, ¶ 6], Congress struck a balance in
`allowing patentees to express a claim limitation by reciting a
`function to be performed rather than by reciting structure for
`performing that function, while placing specific constraints on how
`such a limitation is to be construed, namely, by restricting the scope
`of coverage to only the structure, materials, or acts described in the
`specification as corresponding to the claimed function and
`equivalents thereof.
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`In short, in exchange for the convenience of functional claiming, the “specification must
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`disclose with sufficient particularity the corresponding structure for performing the claimed
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 10 of 21
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`function and clearly link that structure to the function.” Triton Tech of Tex., LLC v. Nintendo of
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`Am., Inc., 753 F.3d 1375, 1378 (Fed. Cir. 2014). The duty to link or associate structure with the
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`function is the quid pro quo for the convenience of employing § 112, ¶ 6. B. Braun Med., Inc. v.
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`Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). A disclosed structure is a “corresponding
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`structure” only if the specification clearly links or associates that structure to the claimed
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`function. MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1169 (Fed. Cir. 2015). Where
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`the specification fails to do so, a patent claim is invalid as indefinite under § 112, ¶ 2.
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`Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009). This is because by
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`“fail[ing] to set forth an adequate disclosure, the applicant has in effect failed to particularly
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`point out and distinctly claim the invention as required by the second paragraph of section 112.”
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`In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc),
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`Given that the “primary purpose of the definiteness requirement is to ensure the claims
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`are written in such a way that they give notice to the public of the extent of the legal protection
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`afforded by the patent, so that interested members of the public (e.g., competitors of the patent
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`owner) can determine whether or not they infringe,” the Federal Circuit requires strict
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`compliance with the requirement the specification discloses linked structures, even if those
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`structures would have been “well known in the art.” Default Proof Credit Card Sys., Inc. v.
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`Home Depot U.S.A., 412 F.3d 1291, 1302–03 (Fed. Cir. 2005). For example, “[a] bare statement
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`that known techniques or methods can be used does not disclose structure.” Triton Tech, 753
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`F.3d at 1379. Thus, to evaluate whether the specification discloses sufficient structure to satisfy
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`the statute’s requirement, the question is “not what structures a person of ordinary skill in the art
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`would know are capable of performing a given function, but what structures are specifically
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 11 of 21
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`disclosed and tied to that function in the specification.” Saffran v. Johnson & Johnson, 712 F.3d
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`549, 563 (Fed. Cir. 2013).
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`Put another way, “[a] patentee cannot avoid providing specificity as to structure simply
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`because someone of ordinary skill in the art would be able to devise a means to perform the
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`claimed function.” Blackboard, 574 F.3d at 1385. Indeed, “the testimony of one of ordinary skill
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`in the art cannot supplant the total absence of structure from the specification.” Default Proof,
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`412 F.3d at 1303; Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003)
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`(“impermissib[e]” to “rel[y] on expert declarations to clearly link the claimed function” with
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`corresponding structures because patentees cannot use the declaration of its expert “to rewrite the
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`patent’s specification”); Atmel Corp. v. Info. Storage Devs., Inc., 198 F.3d 1374, 1380 (Fed. Cir.
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`1999) (“consideration of the understanding of one skilled in the art in no way relieves the
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`patentee of adequately disclosing sufficient structure in the specification”).
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`B.
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`Computer-implemented means-plus-function limitations
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`For functions implemented using a processor or general-purpose computer, the Federal
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`Circuit recognizes that allowing processors or general purpose computers to act as the
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`corresponding structure would in effect allow such claims to “read[] on any means for
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`performing the recited function,” which is “at odds with the requirements of 35 U.S.C. § 112.”
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`WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999). For these means-
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`plus-function claims, where the corresponding structure “is a computer, or microprocessor,
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`programmed to carry out an algorithm, the disclosed structure is not the general purpose
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`computer, but rather the special purpose computer programmed to perform the disclosed
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`algorithm.”2 Id. at 1349. This is because the disclosed algorithm in the form of “instructions of
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`2 A notice of allowance for the ’007 patent was filed on March 28, 1998 and prosecuted before
`the WMS Gaming decision issued on July 20, 1999. This may be one reason the ’007 patent fails
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 12 of 21
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`[a] software program in effect ‘create a special purpose machine for carrying out the particular
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`algorithm.’” Aristocrat Techs. Australia Pty. Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed.
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`Cir. 2008). Thus, for computer-implemented functions, “[t]he structure of a microprocessor
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`programmed to carry out an algorithm is limited by the disclosed algorithm.” WMS Gaming, 184
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`F.3d at 1348; Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (“A computer-
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`implemented means-plus-function term is limited to the corresponding structure disclosed in the
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`specification and equivalents thereof, and the corresponding structure is the algorithm.”).
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`For means-plus-function limitations where a processor or software is linked to
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`performing the function, “[i]t is well-settled that simply disclosing software, . . . without
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`providing some detail about the means to accomplish the function, is not enough.” Function
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`Media, LLC v. Google, Inc., 708 F.3d 1310, 1318 (Fed. Cir. 2013) (internal quotations omitted).
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`Similarly, “disclosing a black box that performs the recited function is not a sufficient
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`explanation of the algorithm required to render [a] means-plus-function term definite.” Augme
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`Techs., Inc. v. Yahoo! Inc., 755 F. 3d 1326, 1338 (Fed. Cir. 2014). Rather, the specification itself
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`must contain express disclosure of an algorithm “in any understandable terms including as a
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`mathematical formula, in prose, . . . or as a flow chart, or in any other manner that provides
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`sufficient structure.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir.
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`2008). An algorithm—even if “described in prose”—must describe a “step-by-step procedure[]
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`for performing the claimed function.” Triton Tech, 753 F.3d at 1379.
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`In the same way as with non-processor and non-software structures, the patentee cannot
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`rely on knowledge of a skilled artisan to cure the failure to disclose an algorithm in the
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`specification. BlackBoard, 574 F.3d at 1385 (“A patentee cannot avoid providing specificity as
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`to comply with the Federal Circuit’s interpretation of 35 U.S.C. § 112, ¶ 6.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 13 of 21
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`to structure simply because someone of ordinary skill in the art would be able to devise a means
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`to perform the claimed function.”); Function Media, 708 F.3d at 1319 (“proving that a person of
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`ordinary skill could devise some method to perform the function is not the proper inquiry as to
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`definiteness” (emphasis original)). Indeed, “[w]here the specification discloses no algorithm, the
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`skilled artisan’s knowledge is irrelevant.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC,
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`785 F.3d 616, 624 (Fed. Cir. 2015) (emphasis added). The Federal Circuit has “repeatedly and
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`unequivocally” rejected as “meritless” the argument “a microprocessor can serve as sufficient
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`structure for a software function if a person of ordinary skill in the art could implement the
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`software function.” Id. at 623; see Aristocrat, 521 F.3d at 1334 (that a “worker in the art” could
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`program “standard microprocessor” to perform function using “appropriate programming
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`imposes no limitation whatsoever, as any general purpose computer must be programmed”). This
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`is because “a person of ordinary skill in the art plays no role whatsoever in determining whether
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`an algorithm must be disclosed as structure for a functional claim element.” EON Corp., 785
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`F.3d at 624 (emphasis added)
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`IV. ARGUMENT
`A.
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`The “means for computing athletic performance data from the series of time-
`stamped waypoints obtained by said GPS receiver” recites a computer-
`implemented function invoking 35 U.S.C. § 112, ¶ 6, and therefore the
`corresponding structure is a special-purpose processor programmed to
`perform an algorithm disclosed in the specification, not a generic CPU or
`processor
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`When a limitation recites the word “means” associated with the performance of a
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`function, the claim is presumed to invoke 35 U.S.C. § 112, ¶ 6. The presumption that § 112, ¶ 6
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`applies can only be rebutted if the claim itself would have been understood to have “sufficiently
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`definite meaning as the name for structure.” Williamson, 792 F.3d at 1348.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 14 of 21
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`For computer-implemented means-plus-function claims, recitation of a processor or
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`computer does not rebut the presumption that § 112, ¶ 6 applies, as “when a computer is
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`referenced as support for a function in a means-plus-function claim, there must be some
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`explanation of how the computer performs the claimed function.” BlackBoard, 574 F.3d at 1384.
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`The Federal Circuit has made clear that reciting a computer alone does not provide sufficient
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`structure to rebut the “means for” presumption.3 See Net MoneyIN, Inc. v. VeriSign, Inc., 545
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`F.3d 1359, 1366 (Fed. Cir. 2008) (rejecting contention a computer-implemented means-plus-
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`function limitation performed on a “bank computer” provided sufficient structure to rebut
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`presumption § 112, ¶ 6 applied and limiting corresponding structure to a disclosed algorithm).
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`For the ’007 patent, there can be no dispute that claim 1 and 21’s “means for computing
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`athletic performance data from the series of time-stamped waypoints obtained by said GPS
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`receiver” does not recite structure, and explicitly uses the “means” language that creates a
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`presumption that § 112, ¶ 6 applies. In addition, there can be no dispute this “means-plus-
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`function” limitation is computer-implemented, and therefore its corresponding structure must be
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`a processor programmed with an algorithm to perform the claimed function, rather than a
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`processor alone.
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`3 In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011)
`provides a narrow exception where standard microprocessors can be structure for ‘functions
`[that] can be achieved by any general purpose computer without special programming.” The
`Federal Circuit has explained this Katz exception is limited to functions “coextensive” with a
`microprocessor itself, such as “basic ‘processing,’ ‘receiving,’ and ‘storing’ functions.” EON
`Corp., 785 F.3d at 621–22 (emphasis added). The Federal Circuit further explained: “A
`microprocessor or general purpose computer lends sufficient structure only to basic functions of
`a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”
`Id. at 623. Here the claims require something beyond the “basic” functions in the limited Katz
`exception. For example, the specification asserts that conventional GPS systems do not include
`“real-time athletic performance algorithms.” ’007 patent, 1:47–48.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 15 of 21
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`First, the function itself recites “computing athletic performance data.” Second, as
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`discussed in section II, the specification indicates that the device’s CPU 602, the GPS module’s
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`processing unit, or possibly the two processors in tandem perform the calculations of this
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`performance data. The specification explains the GPS module’s processing unit takes “positions
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`and times” obtained from the GPS receiver, and “stores it in the memory 608 along with other
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`information.” ’007 patent, 7:41–44. From this information, stored in memory 608, “performance
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`data such as elapsed distance, current and average speeds and paces, calories burned, miles
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`remaining, and time remaining are calculated.” Id. at 7:44–48 (emphasis added). As shown in
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`Figure 6, the device’s CPU 602, which “controls the operation of the device,” is the only
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`component connected directly to the memory 608. Id. at Fig. 6, 5:38–40.
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`Regardless of whether it is the GPS module’s built-in processing unit or the device’s
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`CPU, the specification makes clear the function of “computing athletic performance data from
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`the series of time-stamped waypoints obtained by said GPS receiver” is performed by some
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`processor.4 The specification also makes clear the claimed function of computing athletic
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`performance data is not a function that is coextensive with general-purpose computers or generic
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`processors. In particular, the specification asserts that known GPS systems “d[id] not include
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`real-time athletic performance algorithms” to compute athletic performance feedback. Id. at
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`1:46–48. The specification therefore confirms a general-purpose computer or generic processor
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`alone is insufficient structure to perform the claimed function—the corresponding structure must
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`4 For the purpose of this motion, Fitbit assumes that either the device’s CPU 602 or the GPS
`module 604’s processing unit are “clearly linked” to the claimed function. Fitbit reserves its
`rights to contend the asserted claims of the ’007 patent are also indefinite for failing to clearly
`link corresponding structure to the claimed function of the means-plus-function limitation at
`issue in this motion. See MobileMedia, 780 F.3d at 1169. Fitbit also notes that in Philips’
`required patent disclosures under L.R. 16.6(d)(1), Philips agrees the claimed function is
`performed by “the underlying processor(s).” Chaikovsky Decl. ¶ 6, Ex. C.
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 16 of 21
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`be a special-purpose processor programmed to perform a particular algorithm disclosed in the
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`specification for “computing athletic performance data from the series of time-stamped
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`waypoints obtained by said GPS receiver.”
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`B.
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`There is no algorithm in the specification clearly linked to performance of
`the function corresponding to the “means for computing athletic
`performance data from the series of time-stamped waypoints obtained by
`said GPS receiver” by either the device’s CPU, the GPS module’s processing
`unit, or the two processors in tandem
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`The construction of a means-plus-function limitation follows a two-step approach. First,
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`the claimed functions must be identified, and second, the corresponding structures in the written
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`description that perform those functions must be ascertained. Omega Eng’g, 334 F.3d at 1321.
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`As discussed in section III.B, the corresponding structure for computer-implemented functions is
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`a processor programmed to perform a particular algorithm disclosed in the specification, not just
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`a processor. Aristocrat, 521 F.3d at 1333 (“[T]he corresponding structure for a § 112 ¶ 6 claim
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`for a computer-implemented function is the algorithm disclosed in the specification.”).
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`As discussed above, the claimed function for the “means-plus-function” limitations at
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`issue is “computing athletic performance data from the series of time-stamped waypoints
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`obtained by said GPS receiver.” And as discussed in section II, The ’007 patent discloses a
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`“built-in processor” in the GPS module as “continuously determin[ing]” latitude and longitude
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`coordinates and times, as well as its “current speed and direction of travel.” ’007 patent, 7:41–44.
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`The geographical position data, “along with other information such as the date and time that each
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`position was acquired,” are stored in memory 608. Id. From the data stored in memory 608,
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`which is connected to CPU 602, which “controls the operation of the device,” id. at Fig. 6, 5:38–
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`40, “performance data” “are calculated.” id. at 7:41–49.
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`Nowhere does the specification disclose a step-by-step procedure—whether as a formula,
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`flow chart, prose, or other manner—for how the device’s CPU 602, the GPS module 604, or the
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`Case 1:19-cv-11586-IT Document 44 Filed 03/19/20 Page 17 of 21
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`two processors in tandem, transforms the data stored in memory 608, including the latitude and
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`longitude coordinates of the GPS current position, into the athletic “performance data” of elapsed
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`distance, current and average speeds and paces, calories burned, miles remaining, and time
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`remaining. See id.; see also Triton Tech., 753 F.3d at 1379. This is because the specification
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`includes no disclosure of any algorithm for translating geographical position data into “athletic
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`performance data” like elapsed distance, average speeds or paces, calories burned, or miles
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`remaining. Rather, the specification describes a proverbial “black box” wherein a processer of
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`some sort performs calculations to compute athletic performance from the GPS location
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`information stored in memory. As explained in section II and emphasized by Figures 11 and 12,
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`the patent’s disclosure of this athletic performance data is literally a list of labeled boxes
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`providing examples of the performance data itself without any other detail, not how those
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`performance data results are determined from the geographic positions collected by the GPS. In a
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`sense, the specification’s disclosure is illuminating: “performance data . . . are calculated.” Id. at
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`7:44–48 (emphasis added). The function is performed, with no instruction on how it is done.
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`The Federal Circuit has made clear that providing inputs and outputs from a “black box”
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`to achieve a functional outcome is not a “sufficient explanation of the algorithm” required to
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`transform a processor into a special-purpose processor that qualify as corresponding structure for
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`computer-implemented functions under § 112, ¶ 6. See