Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 1 of 26
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`v.
`
`FITBIT, INC.,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 1:19-cv-11586-IT
`
`FITBIT’S RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`

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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 2 of 26
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`TABLE OF CONTENTS
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`Page
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`3.
`4.
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`U.S. PATENT NO. 6,013,007.........................................................................................1
`A.
`“means for computing athletic performance feedback data from the series
`of time-stamped waypoints obtained by said GPS receiver” (Claims 1, 21) .........1
`1.
`Philips’ admissions compel a finding of indefiniteness ............................1
`2.
`Philips’ case law citations actually support a finding of
`indefiniteness ..........................................................................................5
` Philips’ other arguments against indefiniteness fail .................................7
`Philips misrepresents Fitbit’s proposed construction and the
`parties’ disputes .......................................................................................8
`Construction of “athletic performance feedback data”..............................9
`5.
`“means for suspending and resuming operation of said means for
`computing when a speed of the athlete falls below a predetermined
`threshold” (Claim 7).......................................................................................... 11
`U.S. PATENT NO. 6,976,958....................................................................................... 13
`A.
`“in the event of an interruption of the wireless connection . . . configured
`to store the health parameter or visual data in a memory or on the
`removable memory device” (Claims 15, 16) ...................................................... 13
` “memory” (Claims 15, 16) ............................................................................... 14
`“internet-enabled wireless web device” (Claims 15, 16) .................................... 15
`“health parameter indicative of a disease state or condition of a patient”
`(Claim 15) and “health parameter or visual data corresponding to a
`patient’s disease state or condition” (Claim 16) ................................................. 16
`U.S. PATENT NO. 7,088,233....................................................................................... 16
`A.
`“governing information transmitted between the first personal device and
`the second device” (Claim 1)............................................................................. 16
` “first personal device” (Claim 1) ...................................................................... 18
`B.
`“wireless communication” (Claim 1) ................................................................. 19
`C.
`U.S. PATENT NO. 8,277,377....................................................................................... 20
`A.
`“indicating a physiologic status of a subject” (Claim 1) ..................................... 20
`
`B.
`
`B.
`C.
`D.
`
`
`I.
`
`II.
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`III.
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`IV.
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`
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`-i-
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 3 of 26
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`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`
`Cases
`
`Abbott Labs. v. Sandoz, Inc.,
`566 F.3d 1282 (Fed. Cir. 2009) ............................................................................................ 15
`
`Alfred E. Mann Found. for Sci. Research v. Cochlear Corp.
`841 F.3d 1334 (Fed. Cir. 2016) .......................................................................................... 6, 7
`
`Aristocrat Techs. Australia Pty. Ltd. v. Int’l Game Tech.,
`521 F.3d 1328 (Fed. Cir. 2008) .......................................................................................... 1, 8
`
`Augme Techs., Inc. v. Yahoo! Inc.,
`755 F. 3d 1326 (Fed. Cir. 2014) ............................................................................................. 8
`
`B. Braun Med., Inc. v. Abbott Labs.,
`124 F.3d 1419 (Fed. Cir. 1997) ........................................................................................ 4, 12
`
`Biomedino, LLC v. Waters Techs. Corp.,
`490 F.3d 946 (Fed. Cir. 2007)............................................................................................ 5, 6
`
`BlackBoard, Inc. v. Desire2Learn, Inc.,
`574 F.3d 1371 (Fed. Cir. 2009) .............................................................................................. 3
`
`Default Proof Credit Card System, Inc. v. Home Depot USA, Inc.,
`412 F.3d 1291 (Fed. Cir. 2005) .............................................................................................. 3
`
`EON Corp. IP Holdings LLC v. AT&T Mobility LLC,
`785 F.3d 616 (Fed. Cir. 2015)...................................................................................... 3, 4, 12
`
`Finisar Corp. v. DirecTV Grp., Inc.,
`523 F.3d 1323 (Fed. Cir. 2008) .......................................................................................... 5, 6
`
`Function Media, LLC v. Google, Inc.,
`708 F.3d 1310 (Fed. Cir. 2013) .......................................................................................... 3, 8
`
`GPNE Corp. v. Apple, Inc.,
`830 F.3d 1365 (Fed. Cir. 2016) ...................................................................................... 14, 19
`
`Harris Corp. v. Ericsson Inc.,
`417 F.3d 1241 (Fed. Cir. 2005) .............................................................................................. 2
`
`Merck & Co. v. Teva Pharms. USA, Inc.,
`395 F.3d 1364 ..................................................................................................................... 13
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`
`-ii-
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 4 of 26
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`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`
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`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................................ 13
`
`Oatey Co. v. IPS Corp.,
`514 F.3d 1271 (Fed. Cir. 2008) ................................................................................ 16, 18, 20
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ...................................................................................... 18, 20
`
`S3 Inc. v. NVIDIA Corp.,
`259 F.3d 1364 (Fed. Cir. 2001) .............................................................................................. 5
`
`SkinMedica, Inc. v. Histogen Inc.,
`727 F.3d 1187 (Fed. Cir. 2013) ............................................................................................ 16
`
`Ventana Med. Sys. v. BioGenex Labs., Inc.,
`473 F.3d 1173 (Fed. Cir. 2006) ............................................................................................ 15
`
`Williamson v. Citrix Online, LLC,
`792 F.3d 1339 (Fed. Cir. 2015) ................................................................................ 1, 2, 9, 12
`
`WMS Gaming, Inc. v. Int’l Game Tech.,
`184 F.3d 1339 (Fed. Cir. 1999) .......................................................................................... 7, 8
`
`Statutes
`
`35 U.S.C. § 112 ........................................................................................................................... 7
`
`-iii-
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`

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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 5 of 26
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`Fitbit’s claim constructions are supported by Federal Circuit law and intrinsic record.
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`Philips’ constructions rely on expert testimony to rewrite claim language, skirt statutory
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`disclosure requirements, and contradict file history admissions. The case law is decidedly on
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`Fitbit’s side; even Philips’ legal authorities support Fitbit’s positions.
`
`I.
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`U.S. PATENT NO. 6,013,007
`
`A.
`
`“means for computing athletic performance feedback data from the series of
`time-stamped waypoints obtained by said GPS receiver” (Claims 1, 21)
`
`1.
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`Philips’ admissions compel a finding of indefiniteness
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`The law of indefiniteness pertaining to a computer-implemented function of a means-
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`plus-function (“MPF”) is straightforward. Such claim terms are indefinite if the patent
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`specification fails to disclose a linked algorithm, as is the case here. See Williamson v. Citrix
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`Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015); D.I. 72 at 2-5; D.I. 44 at 9-15.1 As
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`detailed in subsection I.A.2 below, Philips’ opening brief grossly misstates the relevant law.
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`Indeed, the cases Philips relies on recognize the MPF disclosure requirements and support
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`indefiniteness here.2
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`In an attempt to supply the missing algorithm, Philips supplements the ’007 patent
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`disclosure with testimony from its expert, Dr. Martin. This strategy is inappropriate because the
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`content of the specification controls. See Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253
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`1 The ’007 patent’s failure to disclose the necessary algorithm is not surprising given that it was
`filed in 1998 and issued in 2000. It was not until years later that the Federal Circuit provided
`guidance that “t]he corresponding structure for a § 112, ¶ 6 claim for a computer-implemented
`function is the algorithm disclosed in the specification.” Aristocrat Techs. Australia Pty. Ltd. v.
`Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008).
`2 Philips argued in the parties’ joint status report that indefiniteness should be addressed during
`claim construction (D.I. 60 at 2-3, 7-9). Now Philips takes the inconsistent position that the
`Court should delay addressing indefiniteness until after claim construction (D.I. 73 at 8).
`Indefiniteness for failure to disclose an algorithm is commonly determined in the context of
`claim construction. E.g., Williamson v. Citrix Online LLC, 792 F.3d 1339, 1345-46, 1351-55 (en
`banc) (affirming finding of indefiniteness in claim construction order).
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 6 of 26
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`(Fed. Cir. 2005) (“A computer-implemented means-plus-function term is limited to the
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`corresponding structure disclosed in the specification . . .”) (emphasis added). And “[t]he
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`testimony of one of ordinary skill in the art cannot supplant the total absence of structure from
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`the specification.” Williamson, 792 F.3d at 1354. Moreover, Dr. Martin confirmed that there was
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`no algorithm for performing the claimed function in the specification – only that a skilled artisan
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`would know what to do because the algorithms were so simple and obvious. Dr. Martin’s
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`declaration offers pages of formulas and assumptions for computing athletic performance
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`feedback data. (D.I. 73-5 at ¶¶ 18-26). However, none of these formulas or any other formula for
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`computing athletic performance feedback data are disclosed in the ’007 patent specification or
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`included in Philips’ proposed construction. 3 See Martin Tr. 41:9-45:23 4 (no disclosure of
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`algorithm
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`for calculating distance), 45:25-46:21
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`(no disclosure of algorithm
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`for
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`calculating/finding average or current speed), 69:14-72:25 (no disclosure of algorithm for
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`claimed “computing athletic performance feedback data . . .”), 75:3-76:11 (no “smart algorithm”
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`disclosed and “implementation details are not provided”).
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`In fact, Dr. Martin admitted during deposition that he “wasn’t trying to show that there
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`was an algorithm” in the specification for the claimed “computing athletic performance feedback
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`data . . .” Id., 41:14-17. Rather, the opinions in his declaration were meant to show that the
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`claimed algorithm would have been “relatively simple and would have been obvious to
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`somebody who was skilled in the art” or would have been known to a POSITA. Id., 40:16-43:8.
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`Even if the simplicity and obviousness of the algorithm were true, it is irrelevant under
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`3 The ‘007 patent criticizes the prior art because “[t]hey do not include real-time athletic
`performance algorithms…” ’007 patent, 1:47-48. Yet Philips and Dr. Martin admit the
`specification of the ‘007 patent also does not include such algorithms, and that a person of skill
`in the art would need to look outside the specification for the algorithms.
`4 The Martin Depo excerpts are attached to the Peterman Declaration as Ex. A
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 7 of 26
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`MPF law as even simple algorithms for performing a claimed function must be expressly
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`disclosed in the specification. EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d
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`616, 623-624 (Fed. Cir. 2015) (“[w]here the specification discloses no algorithm, the skilled
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`artisan’s knowledge is irrelevant”). Importantly, “[a] patentee cannot avoid providing specificity
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`as to structure simply because someone of ordinary skill in the art would be able to devise a
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`means to perform the claimed function.” BlackBoard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371,
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`1385 (Fed. Cir. 2009); see also Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed.
`
`Cir. 2013) (“proving that a person of ordinary skill could devise some method to perform the
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`function is not the proper inquiry as to definiteness”). Dr. Martin’s admissions regarding the
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`specification’s lack of algorithms and decision to not find algorithms because they were obvious
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`shows that “means for computing . . .” is indefinite. See EON, 785 F.3d at 623-624.
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`Moreover, Dr. Martin’s endeavors to boil the omitted algorithms down to known
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`arithmetic (D.I. 73-5 at ¶¶ 18-26) conflict with the ’007 specification, which explains that the
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`invention requires a “smart algorithm” for computing athletic performance feedback to correct
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`for errors in GPS waypoints. ’007 patent, 7:52-56 (“smart algorithm can be used to filter out the
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`erroneous position points”). Dr. Martin admitted the problems associated with inaccurate GPS
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`waypoints at the time of invention. Martin Tr. 73:1-7 (“Q. Back in the 1998 time frame, did GPS
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`waypoints possibly contain errors? A. Yeah. Selective availability was still being used in the
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`‘90s”); see also id., 75:22-79:14. He also admitted that errors in GPS waypoints would lead to
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`errors in the claimed “computing performance feedback data . . .” based on these waypoints,
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`however the “smart algorithm” required to correct these errors is an “implementation detail” not
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`supplied by the specification. Id., 73:17-76:11. Default Proof Credit Card System, Inc. v. Home
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`Depot USA, Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005) (“the testimony of one of ordinary skill in
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 8 of 26
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`the art cannot supplant the total absence of structure from the specification”). Again, Dr.
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`Martin’s testimony demonstrates that the disclosure of the ’007 patent is insufficient under law.
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`Dr. Martin’s testimony also confirmed that the Katz exception does not apply 5. Dr.
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`Martin admitted that a generic processor would have needed to be specially programmed in order
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`to perform the claimed “computing athletic performance feedback data . . .” Martin Tr. 48:6-
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`50:20. Thus, the Katz exception would not apply regardless of whether the algorithms are
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`“relatively simple to implement.” EON Corp., 785 F.3d at 621-22, D.I. 72 at 5.
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`Finally, Philips’ arguments are inconsistent with its own proposed construction. Philips
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`and Dr. Martin contend a skilled artisan would have understood the multiple algorithms required
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`to program a processor to compute athletic performance feedback data from a series of time-
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`stamped waypoints simply by reading the ’007 claims and specification (D.I. 73 at 8-10; D.I. 73-
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`5 at ¶¶ 18-26), yet Philips failed to include these algorithms in its proposed construction. Philips
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`argues that the POSITA’s knowledge would render these missing algorithms and programming
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`“obvious,” yet Philips does not want to limit its claims to these algorithms and instead identifies
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`only a processor as the “means for computing . . .” structure.6 This is an obvious attempt to avoid
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`its duty to link the claimed function with any specific algorithm, which is the required quid pro
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`quo for using functional claiming. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424
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`(Fed. Cir. 1997). Philips cannot have it both ways: if the “obvious” algorithms provided by Dr.
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`Martin are required to perform the claimed function and render the claim definite, these
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`algorithms must be included in the structure linked to the claimed “computing . . .” function.
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`5 As noted in Fitbit’s opening brief, this is a very narrow exception applicable only where
`standard microprocessors can be structure for ‘functions [that] can be achieved by any general
`purpose computer without special programming.” D.I. 72 at 5.
`6 The algorithms now identified by Dr. Martin were never mentioned by Philips during the meet
`and confer process or in the joint chart submitted to the court, nor does Philips include them in
`its proposed construction.
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 9 of 26
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`2.
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`Philips’ case law citations actually support a finding of indefiniteness
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`Philips’ argument that the specification need not disclose what was known to a skilled
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`artisan is not correct in the context of disclosing structure for a means-plus-function limitation.
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`Here, Philips cites to a number of cases that do not stand for the propositions Philips claims.
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`Philips cites S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1371 (Fed. Cir. 2001) to argue that the
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`specification need not disclose an algorithm known to a POSITA. See D.I. 73 at 8. The S3
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`decision said no such thing. In S3, the MPF term at issue was not a computer-implemented
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`function, but rather a means for receiving a data stream. S3, 259 F.3d at 1370. The specification
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`did disclose the structure (a known electrical component called a “selector”) corresponding to the
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`claimed function. Id. at 1370-71. NVIDIA argued that the disclosure of the electronic selector
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`component alone did not provide sufficient details about the “electronic structure” or the “details
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`of its electronic operation.” Id. at 1371. The Federal Circuit stated that these mundane details
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`related to a “standard electronic component” were not required to be disclosed in the
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`specification. Id. at 1371-72. This is far from holding that an algorithm required to perform the
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`claimed computer-implemented function need not be disclosed. Philips also provides entirely
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`context-lacking citations to Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir.
`
`2008) and Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007). See D.I.
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`73 at 8. In both cases, the Federal Circuit found means-plus-function limitations indefinite due to
`
`lack of a linked structure disclosed in the specification. Finisar, 523 F.3d at 1340-41; Biomedino,
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`490 F.3d at 951-53.
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`Indeed, the analysis and outcome in Biomedino directly contradicts Philips’ position. In
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`Biomedino, the Federal Circuit asked “the following question: for purposes of § 112, P 6, is
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`sufficient corresponding structure disclosed when the specification simply recites that a claimed
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`function can be performed by known methods or using known equipment where . . . the
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 10 of 26
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`
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`testimony of experts suggest that known methods and equipment exist?” Biomedino, 490 F.3d at
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`951. The Federal Circuit answered this question in the negative, and explicitly distinguished
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`cases where the specification described how methods for performing the claimed function were
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`known from cases where this information was provided by expert opinion alone. Id. at 951-52
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`(“There is a significant difference between the facts of Atmel and those in the present case.
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`In Atmel it was not the fact that one skilled in the art was aware of known circuit techniques that
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`resulted in a conclusion that sufficient structure was recited. Rather, it was the inclusion in the
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`written description . . . The expert’s testimony did not create or infer the structure”). Similarly, in
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`Finisar, the Federal Circuit explained that structural disclosure “at least [] satisfact[ory] to one of
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`ordinary skill in the art” must be included in the specification. Finisar, 523 F.3d at 1340. In
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`Finisar, the Federal Circuit referenced a mathematical formula as something that would be
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`“satisfactory” to a POSITA (id.)—something conspicuously missing from the ’007 patent.
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`Philips also relies heavily on Alfred E. Mann Found. for Sci. Research v. Cochlear Corp.
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`841 F.3d 1334 (Fed. Cir. 2016). See D.I. 73 at 8, 10. In Alfred Mann, the Federal Circuit found
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`sufficient structural disclosure for certain challenged claims because the specification adequately
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`disclosed an algorithm for “processing [] status-indicating signals to derive information
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`therefrom.” Alfred E. Mann, 841 F.3d at 1345. The specification disclosed that “both voltage and
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`current are measured and that these values are associated with the [claimed] ‘status-indicating
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`signal’” and also that “impedance is calculated based on voltage and current.” Id. The Federal
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`Circuit found that this disclosure, which expressly linked impedance, voltage, and current in a
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`single phrase, was enough to “render the bounds of the claim understandable to one of ordinary
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`skill in the art” given that both parties’ experts testified that a POSITA’s knowledge of Ohm’s
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`law reflecting the relationship between impedance, voltage and current meant that the disclosure
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 11 of 26
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`
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`of measurements of voltage and current necessarily also disclosed impedance. Id.
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`Unlike the claims found definite in Alfred E. Mann, the ’007 patent does not provide any
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`disclosure of “computing athletic performance feedback data from the series of time-stamped
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`waypoints.” The ’007 patent specification notes that “real-time athletic performance algorithms”
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`were not disclosed in GPS prior art systems and that a so-called, unspecified “smart algorithm”
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`could be used as part of the process. ’007 patent, 1:47-48, 7:52. Indeed, the ’007 claims are more
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`similar to those found indefinite in Alfred E. Mann because, similar to those claims, the ’007
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`claims’ “means for computing . . .” function “may be implemented through various unspecified
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`algorithms.” Id. at 1343-44. The Federal Circuit affirmed indefiniteness where the “patent d[id]
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`not disclose an algorithm, or even a small set of algorithms for performing the claimed
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`logarithmic conversion function” and noted that “[d]isclosing [a] broad class of [logarithmic
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`conversion] d[id] not limit the scope of the claim . . . as required by Section 112”). Id.
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`3.
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` Philips’ other arguments against indefiniteness fail
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`Philips’ proposed construction is also wrong because identification of the generic
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`processor alone as the linked structure, without an algorithm to program the processor, would
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`result in functional claiming of “any means for performing the recited function,” which is “at
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`odds with the requirements of 35 U.S.C. § 112.” WMS Gaming, Inc. v. Int’l Game Tech., 184
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`F.3d 1339, 1348 (Fed. Cir. 1999).
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`Further, Philips’ attempt to rely on structural details of system components unrelated to
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`performance of the means for computing function are irrelevant, as the structural details it
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`identifies do not provide the requisite algorithm for “computing athletic performance feedback
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`data . . .”. See D.I. 73 at 9. Here, Philips merely identifies that the generic processor (CPU 602)
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`with memory (memory 608) obtains inputs (time-stamped waypoints) from a GPS receiver
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`module and then outputs athletic performance feedback data. See id. Fatally, this does not
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 12 of 26
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`
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`disclose how the generic processor “comput[es] athletic performance feedback data.” Dr. Martin
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`conceded that the processor could not perform this function, absent additional programming that
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`is not disclosed in the specification. Martin Tr. 49:25-50:2 (“Q. But the key is that someone
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`would need to program those off-the-shelf processors; correct? A. That is correct”) (emphasis
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`added).
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`Federal Circuit precedent confirms that simply disclosing inputs and expected outputs is
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`not sufficient for disclosure of a computer-implemented algorithm—rather, the specification (not
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`expert testimony) must disclose how the processor performs the claimed function. Augme Techs.,
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`Inc. v. Yahoo! Inc., 755 F. 3d 1326, 1338 (Fed. Cir. 2014) (“disclosing a black box that performs
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`the recited function is not a sufficient explanation of the algorithm required to render [a] means-
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`plus-function term definite”); Function Media, 708 F.3d at 1318 (““[i]t is well-settled that simply
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`disclosing software, . . . without providing some detail about the means to accomplish the
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`function, is not enough”); Aristocrat, 521 F.3d at 1334 (rejecting argument that sufficient
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`structure was disclosed in patent because it simply “describes the result of practicing the third
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`function . . . the equation is not an algorithm that describes how the function is performed, but is
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`merely a mathematical expression that describes the outcome of performing the function”).
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`Philips’ statement that the claimed function of “computing various forms of elapsed distance,
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`current and average speed, and current and average pace from a series of GPS waypoints . . . is
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`the algorithm” (D.I. 73 at 10 (emphasis added)) is exactly the argument the Federal Circuit
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`rejected as a matter of law in Augme and Aristocrat. See Augme, 755 F.3d at 1326; Aristocrat,
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`521 F.3d at 1334.
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`4.
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`Philips misrepresents Fitbit’s proposed construction and the parties’
`disputes
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`Philips’ opening brief is inconsistent with the joint claim construction chart (see D.I. 68-
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 13 of 26
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`
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`1), misrepresents Fitbit’s proposed construction, and inaccurately portrays the parties’ disputes
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`regarding the “means for computing . . .” and the “means for suspending…” terms. For example,
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`Fitbit’s proposal for “means for computing . . .” includes the function and specific reference to
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`the lack of structure, which Philips ignores. (Compare D.I 65-1 at 1-2 with D.I 73 at 5.)
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`Philips also claims in its brief that the parties do not have “any real dispute as to
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`structure” for this term. As discussed above and shown in the joint claim construction chart, this
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`is clearly false. Further, there is an even more fundamental dispute between the parties which
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`Philips now ignores: whether structure and function must be identified separately for
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`construction of a means-plus-function term. D.I. 72 at 2 (Philips combines structure and function
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`into a “Proposed Construction”). Ignoring the wealth of controlling Federal Circuit authority
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`spelling out the two-step process for MPF construction and application of that construction to
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`determine infringement (identification of function first, then structure clearly linked to
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`performance of the claimed function), Philips insists on proposing a “combination” construction
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`that does not delineate a clear function and its linked structure.7 Philips’ proposed combination
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`seeks to capture all possible algorithms that could allow a processor to perform the claimed
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`function, and should therefore be rejected.
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`5.
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`Construction of “athletic performance feedback data”
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`Philips’ effort to exclude distance remaining, time remaining, and calories burned
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`7 As Fitbit explained in its opening claim construction brief (D.I. 72 at 1-4) and the Motion for
`Partial Summary Judgment (D.I. 44 at 4-9), construction of means-plus-function claim
`limitations is a two-step process that requires identification of both a function and its
`corresponding linked structure. Williamson, 792 F.3d at 1351-52 (“Construing a means-plus-
`function claim term is a two-step process. The court must first identify the claimed function.
`Then, the court must determine what structure, if any, disclosed in the specification corresponds
`to the claimed function”) (citations omitted). The Federal Circuit’s Model Jury Instructions also
`illustrate this two-step process. See Peterman Decl. Ex. B (Instruction 3.1b requiring, for
`purposes of finding infringement, separate identification of structure and function for means-
`plus-function terms).
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 14 of 26
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`contradicts the specification and relies exclusively on attorney argument and unsupported expert
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`opinions.8 The specification clearly states that distance remaining, time remaining, and calories
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`burned are “performance data” calculated “[f]rom [the athlete’s GPS positions and times data
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`(i.e., a series of time-stamped waypoints)], performance data such as elapsed distance, current
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`and average speeds and paces, calories burned, miles remaining, and time remaining are
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`calculated.” ’007 patent, 7:40-48 (emphasis added).
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`Philips, citing no evidence, argues that “miles remaining” and “time remaining” should
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`be excluded from “athletic performance feedback data” because both “require that a user input
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`some sort of destination end point for the [] session—a step contrary to the calculation
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`contemplated by either claim 1 or claim 21.” D.I. 73 at 7. Philips provides no explanation why
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`entering a destination would be a “step contrary” to either of these claims’ calculations.
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`Moreover, Philips’ underlying premise is wrong as the specification expressly states that the user
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`can use input buttons to set performance targets (e.g., total miles or time): “The GPS-based
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`personal performance monitor and feedback device 101 includes input buttons 115 . . . for
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`inputting the feedback options and targets.” ’007 patent 4:4-8; see also id. at 2:14-16. And,
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`Philips’ expert admitted that one could just enter a “total distance”—such as in a situation where
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`an athlete is running laps on a track. Martin Tr. 87:24-89:19.
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`Philips and its expert argue “miles remaining” should be excluded because it is “based
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`solely on the most recent GPS location (rather than a series of time-stamped waypoints[).]” D.I.
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`73 at 7; D.I. 73-5, ¶ 26. Yet, during his deposition, Dr. Martin admitted that calculating “distance
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`remaining” does in fact involve “using a series of waypoints,” since the “total distance that
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`8 Philips seeks to exclude these instances of performance feedback data because they make the
`required algorithms (that are missing from the specification) even more complicated. Philips’
`expert offers no example of an algorithm that would perform the calculations for these claimed
`functions of calories burned or miles and time remaining.
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`Case 1:19-cv-11586-IT Document 78 Filed 07/08/20 Page 15 of 26
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`you’ve already traveled” is calculated by “the distance between the waypoints as you’ve gone
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`along.” Martin Tr. 90:5-92:16. Dr. Martin’s deposition admission is unsurprising, as his initial
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`opinion was clearly not thought through: a calculation for miles remaining must necessarily
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`include both the starting location and the current location. For example, if an athlete inputs a goal
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`to run 5 miles, and at the 3 mile mark she is told she has 2 miles remaining, that “miles
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`remaining” feedback is based on her initial location (time-stamped waypoint 1) and current
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`location (time-stamped waypoint 2) and thus a calculation using a series of time-stamped
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`waypoints.
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`Philips’ attorneys argue (citing no evidence) that excluding “calories burned” from the
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`claimed feedback data “of course makes sense,” as “tracking calories has little to do with
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`feedback on performance[.]” D.I. 73 at 7. Philips’ argument is contradicted by the intrinsic
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`record which specifically identifies calories burned as relying on a series of time-stamped GPS
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`waypoints. ’007 patent, 7:40-48. Further, in describing the background art the specification
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`expressly describes “calories burned” as a feedback provided in real-time: “Treadmills provide
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`the runner with continuous read-outs of time, distance, speed, pace, inclination, calories
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`burned and so forth.” Id. at 1:22-24 (emphasis added.)
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`Beyond attorney argument, Philips employs a red herrin