Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 1 of 107
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`Philips North America LLC v. Fitbit, Inc., 1:19-cv-11586-IT
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`Fitbit’s Markman Presentation
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`August 5, 2020
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`1
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`
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`Philips North America LLC v. Fitbit, Inc., 1:19-cv-11586-IT
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`Fitbit’s Markman Presentation
`
`August 5, 2020
`
`1
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 2 of 107
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`Index
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`Slide #
`3
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`Introduction
`
`Topic
`
`’007 Patent
`“means for computing . . .”
`“means for suspending . . .”
`’233 Patent
`“governing information . . .”
`“first personal device”
`“wireless communication”
`’377 Patent
`“indicating a physiological status . . .”
`
`14
`59
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`67
`76
`91
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`98
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`2
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 3 of 107
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`Summary of the Patents-in-Suit
`• The patents-in-suit are directed to wireless devices (cell
`phones or PDAs) and GPS devices used for either medical
`or exercise monitoring.
`• The patents are not directed to sensor devices, which
`were already used in the art for such medical or fitness
`monitoring
`• Fitbit sells smartwatches and trackers, not cell phones
`
`3
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`The ’007 Patent
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`’007 patent
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`’007 patent at claim 21
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`4
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`The ’007 Patent
`
`• The ’007 patent takes known activity
`monitoring performed by indoor devices
`(treadmills) and moves it outdoors
`
`’007 patent
`
`’007 patent at 1:16-27
`
`5
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`The ’007 Patent
`
`• The ’007 patent combines known GPS
`technology with a Walkman, to provide a
`device that performs the role of a track coach
`providing split time updates
`
`’007 patent
`
`’007 patent at 1:39-51
`
`6
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`The ’007 Patent
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`’007 patent
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`’007 patent at claim 21
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`7
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`The ’377 Patent
`
`’377 patent
`
`• The ’377 patent is in the same patent family
`as the ’958 patent, applying “off-the-shelf”
`wireless devices (cell phones) to health
`monitoring systems
`• Whereas the ’958 patent is directed to
`medical monitoring systems, the ’377 patent
`is directed to exercise monitoring systems
`
`’377 patent at claim 1
`
`8
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`The ’377 Patent
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`’377 patent
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`9
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`The ’377 Patent
`• According to Philips’ infringement contentions, receiving
`physiological status during exercise includes receiving heart
`rate data at 15-minute intervals, even if it is historical heart
`rate data that was not measured during exercise
`
`Philips’ First Supplemental Infringement Contentions, Ex. 24 at 15 (yellow highlight added)
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`10
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`The ’233 Patent
`• The ’233 patent combines off-the-shelf
`wireless devices (cell phones) with known
`personal medical devices (sensors), adding a
`layer of security for communications between
`the two devices using known techniques
`
`’233 patent
`
`. . .
`
`. . .
`
`. . .
`
`’233 patent at 1:63-66, 2:11-12, 2:23-26, 13:41-46
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`11
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`The ’233 Patent
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`’233 patent
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`12
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`The ’233 Patent
`• According to Philips’ infringement contentions, the security
`mechanism can just be logging into an account
`
`Philips’ Infringement Contentions, Ex. 3 at 10 (yellow highlights added)
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`13
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 14 of 107
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`“means for computing athletic
`performance feedback data from
`the series of time-stamped
`waypoints obtained by said GPS
`receiver” (’007 patent)
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`14
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 15 of 107
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`Claim Language
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`’007 patent
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`15
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`“means for computing . . .”
`
`“means for computing athletic performance feedback data from the series of time-stamped
`waypoints obtained by said GPS receiver”
`
`Fitbit’s Proposed Construction
`
`Philips’ Proposed Construction
`
`Function: computing athletic performance feedback data
`from the series of time-stamped waypoints obtained by said
`GPS receiver
`
`Function: computing athletic performance feedback data
`from the series of time-stamped waypoints obtained by said
`GPS receiver
`
`Structure: Indefinite
`
`“athletic performance feedback data” means elapsed
`distance, current and average speeds and paces, calories
`burned, miles remaining and time remaining
`
`Structure: a processor and equivalents thereof (see, e.g.,
`Fig. 6, col. 5 ll. 36-40 and col. 9 ll. 31-35)
`
`“athletic performance feedback data” means elapsed
`distance of an athlete, current or average speed of an athlete,
`and current or average pace of an athlete[, and miles
`remaining and time remaining]
`
`Proposed Construction: “[1] a processor (and equivalents
`thereof) [2] that determines any of the following from a
`series of time stamped waypoints obtained by said GPS
`receiver during an exercise session: elapsed distance of an
`athlete; current or average speed of an athlete; current or
`average pace of an athlete."
`
`Disputes:
`• Whether the claims are indefinite because specification/claims recite insufficient structure
`• Whether Philips’ “Proposed Construction” is proper
`• Whether “athletic performance feedback data” includes “calories burned”
`
`16
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 17 of 107
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`Legal Standard for § 112, ¶ 6
`
`“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. Where there are multiple claimed functions . . . the
`patentee must
`disclose
`adequate
`corresponding
`structure to perform all of the claimed functions. . . .
`Structure disclosed in the specification qualifies as
`the intrinsic evidence clearly
`‘corresponding structure’
`if
`links or associates that structure to the function recited in
`the claim.
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015) (en banc) (internal citations omitted)
`(emphasis added)
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`17
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`Purpose of § 112, ¶ 6
`
`“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.”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351-52 (Fed. Cir. 2015) (en banc)
`
`“This duty to link or associate structure to function
`is the quid pro quo for the convenience of
`employing § 112, ¶ 6.”
`B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)
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`18
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`Use of “Means” Limits Claim to Clearly Linked Structure
`
`“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 be construed to cover the corresponding
`structure, material, or acts described in the specification
`and equivalents thereof.”
`
`35 U.S.C. § 112, ¶ 6
`
`“We also made clear that use of the term ‘means’ is central to the
`analysis: the use of the term ‘means’ has come to be so closely
`associated with ‘means-plus-function’ claiming that it is fair to say that the
`use of the term ‘means’ (particularly as used in the phrase ‘means for’)
`generally invokes § 112, ¶ 6 and that the use of a different formulation
`generally does not. Subsequent cases have clarified that use of the
`word ‘means’ creates a presumption that § 112, ¶ 6 applies.”
`Personalized Media Commc’ns. LLC v. Int’l Trade Comm’n,, 161 F.3d 696, 703 (Fed. Cir. 1998) (emphasis added)
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`19
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`Proper To Hold Claims Indefinite At Markman
`
`“In its claim construction order, the district court
`also concluded that the limitation of claim 8 . . .
`was a means-plus-function term under 35 U.S.C. §
`112, para. 6 . . . and concluded that it failed to
`disclose the necessary algorithms for performing
`all of the claimed functions. The district court
`thus held claim 8 and its dependent claims 9-16
`invalid as indefinite under 35 U.S.C. § 112, para.
`2 . . . [W]e affirm the judgment that claims 8–16
`are invalid for indefiniteness under 35 U.S.C. §
`112, para. 2.”
`
`Williamson v. Citrix Online, 792 F.3d 1339, 1345, 1354 (Fed. Cir. 2015) (en banc) (emphasis added)
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`20
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 21 of 107
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`§ 112, ¶ 6 Applies to “means for computing . . .”
`
`• The use of the word
`“means” creates a
`presumption that § 112,
`¶ 6 applies
`• No structure is recited in
`the claim to rebut the
`presumption
`• The parties had agreed
`that this limitation is
`subject to § 112, ¶ 6 –
`Dkt. 73 (Philips’ Opening
`Claim Construction Brief)
`at 5
`
`21
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`Legal Standard for Computer-Based § 112, ¶ 6
`
`“A computer-implemented means-plus-function
`term is limited to the corresponding structure
`disclosed in the specification and equivalents
`thereof, and the corresponding structure is the
`algorithm’”
`Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005) (emphasis added)
`
`“Even described in prose, an algorithm is still a
`step-by-step procedure for accomplishing a given
`result.”
`
`Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (emphasis added)
`
`See also Williamson v. Citrix Online, 792 F.3d 1339, 1352 (Fed. Cir. 2015) (en banc)
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`22
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`No Algorithm Is Disclosed, Therefore Indefinite
`
`• The lack of an algorithm in the
`specification for getting from
`time-stamped waypoints to
`athletic performance feedback
`data renders the claims
`indefinite as a matter of law
`
`the patent does not
`.
`.
`“Here .
`disclose the required algorithm . . .
`Accordingly, the means-plus-function
`limitations of claim 1 lacked sufficient
`disclosure of structure under 35
`U.S.C. § 112, ¶ 6 and were therefore
`indefinite under 35 U.S.C. § 112, ¶ 2.”
`Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521
`F.3d 1328, 1337-38 (Fed. Cir. 2008)
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`23
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 24 of 107
`The ’007 Patent Was Filed and Issued Before Patent Prosecutors Knew That
`Algorithms For Computer-Implemented Functions Were Required
`
`’007 patent
`
`•
`
`’007 Patent was filed (1998) and issued (2000)
`before the Federal Circuit found that computer-
`implemented means-plus-function patent claims
`without algorithms disclosed in the specification to
`implement the function were indefinite
`
`• The leading cases cited by Fitbit – Aristocrat
`Techs. Australia Pty Ltd. v. Int’l Game Tech., 521
`F.3d 1328, 1337-38 (Fed. Cir. 2008) and
`Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`1351-52 (Fed. Cir. 2015) (en banc) – came years
`later
`
`• Not surprising that the persons prosecuting the
`’007 patent in 1998-2000 failed to include
`algorithms (however, older claims not meeting the
`requisite standards are still invalid)
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`24
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 25 of 107
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`The Function is Computer-Implemented
`• The parties agree that the claimed function is performed by
`a processor
`• Philips’ expert, Dr. Martin, testified that the processor would
`need to be programmed with an algorithm in order to
`perform the function, meaning that a processor alone is not
`enough
`
`Dkt. 78-2 (Martin Tr.) at 49:18-50:2
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`25
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 26 of 107
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`Must Disclose “How” To Get From Inputs to Outputs
`
`• The Federal Circuit has held that disclosing inputs and
`outputs does not constitute disclosure of the algorithm for
`how to get from the inputs to the outputs
`
`“[The specification] discloses inputs
`to and outputs from the code
`assembler instructions, but does not
`include any algorithm for how the
`second code module is actually
`assembled.
`[’691 patent] col. 11 l. 60-
`26
`col. 12 l. 1. Simply disclosing a black
`box that performs the recited function
`is not a sufficient explanation of the
`algorithm required to render
`the
`means-plus-function term definite.”
`Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1338
`(Fed. Cir. 2014) (emphasis added)
`
`Augme ’691 patent at FIG. 5
`
`Augme ’691 patent at 11:60-12:1
`
`
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 27 of 107
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`Must Disclose “How” To Get From Inputs to Outputs
`
`• There is no dispute that the ’007 patent’s specification fails
`to disclose the formulas for how to get from time-stamped
`waypoints to athletic performance feedback data, and thus
`is no better than the deficient disclosures in Augme
`
`Augme patent
`
`’007 patent
`
`’007 patent at 7:45-48
`
`Augme ’691 patent at FIG. 5
`
`Dkt. 77 (Philips’ Responsive Claim Construction Brief) at 6
`
`27
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 28 of 107
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`Expert Cannot Supply Undisclosed Structure
`
`“The inquiry is whether one of skill in the art would
`understand the specification itself to disclose a
`structure, not simply whether that person would be
`capable of implementing that structure.”
`
`Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953 (Fed. Cir. 2007) (emphasis added)
`(finding claims indefinite where patent owner tried to supply
`missing algorithm with expert testimony on knowledge of POSITA)
`
`“Where the specification discloses no algorithm, the
`skilled artisan’s knowledge is irrelevant.”
`
`EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 624 (Fed. Cir. 2015) (emphasis added)
`(finding claims indefinite where patent owner tried to
`supply missing algorithm with expert testimony on knowledge of POSITA)
`
`28
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 29 of 107
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`Expert Cannot Supply Undisclosed Structure
`
`in the art cannot
`“The testimony of one of ordinary skill
`supplant
`the
`total
`absence
`of
`structure
`from the
`specification. The prohibition against using expert testimony
`to create structure where none otherwise exists is a direct
`consequence of
`the requirement
`that
`the specification
`adequately disclose corresponding structure.”
`Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1354 (Fed. Cir. 2015) (en banc) (citations omitted)
`
`“[P]roving that a person of ordinary skill could devise some
`method to perform the function is not the proper inquiry as to
`definiteness.”
`
`Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013)
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`29
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 30 of 107
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`Philips Admits There is No Disclosed Algorithm
`
`• Experts cannot supply undisclosed structure
`
`Dkt. 77 (Philips’ Responsive Claim Construction Brief) at 6
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`30
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 31 of 107
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`Philips Admits There is No Disclosed Algorithm
`
`• Experts cannot supply undisclosed structure
`
`Dkt. 73-5 (Expert Disclosure of Dr. Thomas L. Martin, PH.D.) at ¶18
`
`Dkt. 78-2 (Martin Tr.) at 41:14-17; see also Dkt. 73-5
`(Expert Disclosure of Dr. Thomas L. Martin, PH.D.) at ¶19-26
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`31
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 32 of 107
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`No Algorithm for Performing Claimed Function
`
`• The specification discloses a need for a “smart algorithm” to
`correct for GPS errors from SA to provide the “accurate”
`performance data of the claimed inventions, yet no details of
`algorithm are disclosed
`
`Dkt. 25 (FAC), ¶ 65
`
`’007 patent at 7:52-56
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`32
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 33 of 107
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`No Algorithm for Performing Claimed Function
`
`• Philips’ expert admitted the “smart algorithm” is not
`disclosed in the specification, calling it “an implementation
`detail” Martin Tr. 73:17-76:11
`
`• Lack of “smart algorithm” leads to known errors
`•
`Incorrect distance
`•
`Incorrect pace
`•
`Incorrect speed
`•
`Incorrect comparisons to other athletes
`
`• Lack of “smart algorithm” renders system worthless to
`anyone who wants accurate results
`
`33
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 34 of 107
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`Not Like Valid Claims of Alfred E. Mann
`
`•
`
`In Alfred E. Mann, the specification disclosed algorithm for
`the claimed function of processing “status-indicating signals”
`
`• Specification stated “both voltage and current are
`measured and that these values are associated with the
`[claimed] ‘status-indicating signal’” and also that
`“impedance is calculated based on voltage and
`current.”.”– Alfred E. Mann Found. for Sci. Research v. Cochlear
`Corp., 841 F.3d 1334, 1345 (Fed. Cir. 2016)
`
`• Experts for both sides agreed that, a person of skill in the
`art “would know to apply Ohm’s law to voltage and
`current to yield impedance values.” – Id.
`
`34
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 35 of 107
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`Not Like Valid Claims of Alfred E. Mann
`• Federal Circuit reversed district court finding of
`indefiniteness because Ohm’s law was disclosed in
`specification and was only way to calculate impedance
`
`•
`
`“The [district] court found claim 1 indefinite because the
`patent does not explicitly identify Ohm's law and there
`are multiple ways of calculating impedance. We
`disagree.” Alfred E. Mann, 841 F.3d at 1345
`
`• Here, the ’007 patent states that “real-time athletic
`performance algorithms” were not disclosed in the prior art,
`and thus they are not inherent or limited to a specific
`algorithm, unlike Ohm’s law – ’007 patent at 1:47-48, 7:52
`
`• Many different algorithms can be used, none of which are
`disclosed in ’007 patent
`
`35
`
`
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 36 of 107
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`Similar To Indefinite Claims of Alfred E. Mann
`
`• The ’007 claims are more like the claims invalidated in Alfred
`E. Mann where the patent did not disclose an algorithm for
`performing the claimed logarithmic conversion function,
`despite that “a person of ordinary skill in the art would know
`of potential logarithm conversion functions to implement” –
`Alfred E. Mann, 841 F.3d at 1343-44
`
`•
`
`“Broad class” of potential logarithms existed, just as there
`are multiple ways to calculate the athletic performance
`feedback data. – Id.
`• Philips’ expert does not opine that elapsed distance and
`current/average speeds and paces can only be
`calculated by a single algorithm; he only opines that
`the algorithms are easy
`• He does not address any algorithms for calories burned
`
`36
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 37 of 107
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`Philips Is Subtly Distancing Itself From § 112, ¶ 6
`
`• Philips originally agreed § 112, ¶ 6 applied
`
`Dkt. 73 (Philips’ Opening Claim Construction Brief) at 5
`
`37
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 38 of 107
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`Philips Is Subtly Distancing Itself From § 112, ¶ 6
`
`• Faced with clear Federal Circuit precedent requiring the
`claims to be found invalid, Philips identified three additional
`district court cases in its responsive brief
`
`Dkt. 77 (Philips’ Responsive Claim Construction Brief) at 5
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 39 of 107
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`Philips Is Subtly Distancing Itself From § 112, ¶ 6
`
`•
`
`•
`
`In two of the cases – Typemock and Gemalto – the claims
`did not even invoke § 112, ¶ 6
`
`In Signal IP, the claims involved a method claim rather than
`system/apparatus claims that are at issue here
`
`• All of the claims in these three cases included significantly
`more detail that the claims of the ’007 Patent
`
`39
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 40 of 107
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`Philips’ Newly Raised Cases Are Inapposite
`In Signal IP, the claims themselves recited a method that includes 8
`•
`specific steps for performing the claimed “selectively allowing
`deployment” function
`Signal IP
`
`’007 patent
`
`40
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`
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 41 of 107
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`Philips’ Newly Raised Cases Are Inapposite
`• The claims in Gemalto did not to invoke § 112, ¶ 6 and recited a highly
`detailed, step-by-step algorithm (6 steps) for performing the claimed
`“translating” function
`Gemalto
`
`’007 patent
`
`41
`
`
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 42 of 107
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`Philips’ Newly Raised Cases Are Inapposite
`Typemock, Ltd. v. Telerik, Inc., No. 17-10274-RGS, 2018 WL 4189692 at *4-
`8 (D. Mass. Aug. 31, 2018)
`
`• Unlike here, the claims at issue in Typemock did not include the term
`“means”
`
`• Thus, the analysis in Typemock started with the presumption that 112, ¶
`6 did not apply
`
`• Court found that the claims included a cognizable structure (thus, finding
`that 112, ¶ 6 did not apply)
`
`• Further, the disputed claims included specific descriptions of how to
`manipulate data to arrive at desired result (Id. at *6):
`
`42
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 43 of 107
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`AllVoice Is Inapposite
`
`AllVoice Computing PLC v. Nuance Comms. Inc., 504 F.3d 1236 (Fed. Cir. 2007)
`
`• Found that means-plus-function claim
`was not indefinite because flowchart in
`specification (Figure 8A), which included
`detailed instructions and a decision tree
`provided “sufficient algorithmic structure
`to give meaning to the claim terms from
`the vantage point of an ordinarily skilled
`artisan.” Id. at 1246
`
`•
`
`’007 patent contains no equivalent
`disclosure or guidance
`
`43
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`
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`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 44 of 107
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`The Very Narrow In Re Katz Exception In Not Applicable
`
`•
`
`In re Katz Interactive Call Processing Patent Litig., 639 F.3d
`1303, 1316 (Fed. Cir. 2011) provides a very narrow exception
`where standard microprocessors can be structure for ‘functions
`[that] can be achieved by any general purpose computer
`without special programming.”
`
`• Philips’ expert admitted that computer would need to be
`specially programmed to compute athletic performance
`feedback data (Dkt. 78-2 (Martin Tr.) at 49:18-50:2)
`
`• Thus, the exception cannot apply here
`
`44
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 45 of 107
`
`Philips Has Not Satisfied § 112, ¶ 6 Or Rebutted Presumption It Applies
`
`• The ’007 patent fails to provide an algorithm for the claimed function (it
`includes no step-by-step approach or any other approach recognized under
`law for providing sufficient structure)
`
`• Philips admits the multiple formulas and assumptions in its expert’s
`declaration are not in the claims – Dkt. 73-5 (Martin Decl.) at ¶¶ 19-26
`
`• The formulas do not appear anywhere in the patent and Philips does not
`even include them in its construction
`
`• The use of the word “means” creates a presumption that § 112, ¶ 6 applies
`
`• Philips admits that § 112, ¶ 6 applies
`
`45
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 46 of 107
`
`Philips’ Hybrid Construction Is Improper
`
`46
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 47 of 107
`
`Philips’ Hybrid Construction Is Improper
`
`Philips’ Full Proposed Construction
`
`“a processor (and equivalents thereof) that
`determines any of the following from a series of
`time stamped waypoints obtained by said GPS
`receiver during an exercise session: elapsed
`distance of an athlete; current or average speed of
`an athlete; current or average pace of an athlete”
`
`• Philips’ construction is improper functional claiming because
`it captures all possible ways the processor may perform the
`claimed function, regardless of how it is programmed
`
`47
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 48 of 107
`
`Philips’ Hybrid Construction Is Improper
`
`“In response to a question from the court, Aristocrat’s counsel contended that . . .
`any microprocessor, regardless of how it was programmed, would infringe
`claim 1 if it performed the claimed functions recited in the means-plus-function
`limitations of that claim. That response reveals that Aristocrat is in essence
`arguing for pure functional claiming as long as the function is performed by a
`general purpose computer. This court’s cases flatly reject that position.”
`Aristocrat Techs. Australia Pty Ltd v. Int’l Game Tech., 521 F.3d 1328, 1336 (Fed. Cir. 2008) (emphasis added)
`
`48
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 49 of 107
`
`Philips’ Hybrid Construction Is Improper
`
`Philips’ Full Proposed Construction
`
`“a processor (and equivalents thereof) that
`determines any of the following from a series of
`time stamped waypoints obtained by said GPS
`receiver during an exercise session: elapsed
`distance of an athlete; current or average speed of
`an athlete; current or average pace of an athlete”
`
`• Philips’ construction is also improper because
`•
`(1) it attempts to require that the processor only needs to
`determine “any of the” athletic performance feedback
`data elements as opposed to being capable of
`determining all of the elements; and
`
`•
`
`(2) it leaves out “calories burned” from athletic
`performance feedback data despite clear guidance from
`the specification
`
`49
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 50 of 107
`
`Structure Must Be Capable of Performing All Functions
`
`• Philips’ construction and infringement argument
`only requires that the processor perform or be
`capable of performing any one of the claimed
`computing functions
`
`• This position is contrary to law and Philips’ own
`construction of “athletic performance feedback
`data,” which includes multiple required elements
`linked through the conjunction “and”:
`
`• “elapsed distance of an athlete, current or
`average speed of an athlete, and current or
`average pace of an athlete”
`
`50
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 51 of 107
`
`Structure Must Be Capable of Performing All Functions
`
`When “claim uses the term ‘and’ and not ‘or’ to
`describe what must occur . . . [it] indicat[es] a
`conjunctive requirement within the claim.’”
`Motorola Mobility LLC v. ITC, 553 Fed.Appx. 971, 975 (Fed. Cir. 2014) (citing TIP
`Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1376 (Fed.Cir.2008))
`
`•
`
`’007 patent does not include any other claims that
`only require one of the “athletic performance feedback
`data” elements
`
`51
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 52 of 107
`
`Structure Must Be Capable of Performing All Functions
`
`• The claims recite structure, which must be capable
`of performing each function of computing the
`below, not a method step that just requires
`performance of one:
`• (1) elapsed distance
`• (2) current and average speeds
`• (3) current and average and paces
`• (4) calories burned
`• (5) miles remaining, and
`• (6) time remaining
`Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380-81 (Fed. Cir.
`2011)(finding that a device must be capable of performing claimed
`functionality to infringe system claim)
`
`52
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 53 of 107
`
`Fitbit’s Construction of Function Mirrors the Specification
`
`“athletic performance feedback data”
`
`Fitbit’s Proposed Construction
`
`Philips’ Proposed Construction
`
`“elapsed distance, current and average
`speeds and paces, calories burned,
`miles remaining and time remaining”
`
`Directly quoted from patent at 7:45-48
`
`“elapsed distance of an athlete, current
`or average speed of an athlete, and
`current or average pace of an athlete
`[and miles remaining and time
`remaining]”
`
`• The parties dispute whether the claimed function includes
`“calories burned”
`• Philips no longer disputes that the claimed function
`includes “miles remaining” and “time remaining” after
`their expert recanted his opinion – see Dkt. 77 (Philips’
`Responsive Claim Construction Brief) at 2-3
`
`53
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 54 of 107
`
`Philips Backtracks on Claimed Functions’ Scope
`• Philips originally objected to including “miles remaining” and
`“time remaining,” but now admits they are part of the
`claimed functions
`
`Dkt. 73 (Philips’ Opening Claim Construction Brief) at 7
`
`
`
`Dkt. 77 (Philips’ Responsive Claim Construction Brief) at 2-3Dkt. 77 (Philips’ Responsive Claim Construction Brief) at 2-3
`
`54
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 55 of 107
`
`Philips Backtracks on Claimed Functions’ Scope
`• Philips identified “calories burned” as part of the claimed
`“athletic performance feedback data” in its infringement
`contentions, but now argues that it is not part of the claimed
`function
`
`. . .
`
`55
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 56 of 107
`
`Function Includes Computing “Calories Burned”
`
`• The specification expressly states that calories
`burned is performance data calculated from a
`series of time-stamped waypoints (“positions and
`times”)
`
`’007 patent at 7:45-48
`
`56
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 57 of 107
`
`Function Includes Computing “Calories Burned”
`• Philips’ argument that “tracking calories has little to
`do with feedback on performance” is contradicted
`by FIG. 11 of the specification
`
`’007 patent at FIG. 11
`
`57
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 58 of 107
`
`Function Includes Computing “Calories Burned”
`• Philips’ argument that “the specification never
`contemplates calories being provided as feedback
`data during an exercise session” is also
`contradicted by the specification
`
`’007 patent at 1:18-24
`
`58
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 59 of 107
`
`“means for suspending and
`resuming operation of said means
`for computing when a speed of the
`athlete falls below a predetermined
`threshold” (’007 patent)
`
`59
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 60 of 107
`
`Claim Language
`
`’007 patent
`
`60
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 61 of 107
`
`“means for suspending . . .”
`“means for suspending and resuming operation of said means for computing
`when a speed of the athlete falls below a predetermined threshold”
`
`Fitbit’s Proposed Construction
`
`Philips’ Proposed Construction
`
`Function: suspending and resuming operation of
`said means for computing when a speed of the
`athlete falls below a predetermined threshold
`
`Function: suspending and resuming operation of
`said means for computing when a speed of the
`athlete falls below a predetermined threshold
`
`Structure: Indefinite
`
`Structure: a processor and equivalents thereof
`(see, e.g., Fig. 6, col. 5 ll. 36-40 and col. 9 ll. 31-
`35)
`
`Proposed construction: “a processor (and
`equivalents thereof) that suspends said computing
`when a speed of the athlete is below a
`predetermined threshold and resumes said
`computing when a speed of the athlete is not below
`said predetermined threshold."
`
`Dispute:
`• Whether the specification discloses structure for performing the
`claimed function
`
`61
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 62 of 107
`
`The Parties Agree § 112, ¶ 6 Applies
`
`Dkt. 73 (Philips’ Opening Claim Construction Brief) at 11
`
`62
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 63 of 107
`
`Indefinite: No Algorithm or Example of “predetermined threshold”
`
`• The parties agree that the function is computer-
`implemented
`• Philips agreed in its opening brief that the claim
`requires an algorithm (whether “smart” or “dumb”)
`• Thus, as with “means for computing,” the
`corresponding structure is an algorithm, which must
`be disclosed in the specification
`
`Dkt. 73 (Philips’ Opening Claim Construction Brief) at 11
`
`63
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 64 of 107
`
`Indefinite: No Algorithm or Example of “predetermined threshold”
`
`• The specification does not even use the term
`“predetermined threshold”
`• Thus, no algorithm is disclosed for
`suspending and resuming operation when
`speed falls below a “predetermined
`threshold”
`• The lack of any algorithm renders the claim
`indefinite
`• Philips’ expert offers no algorithm
`
`64
`
`
`
`Case 1:19-cv-11586-IT Document 83-1 Filed 08/06/20 Page 65 of 107
`
`Indefinite: No Algorithm or Example of “predetermined threshold”
`
`• The specification only mentions that a “smart
`algorithm” may be used to suspend operation wh
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