Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 1 of 64
`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 1 of 64
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 2 of 64
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`v.
`
`FITBIT LLC,
`
`Plaintiff,
`
`Defendant.
`
`Civil Action No. 1:19-cv-11586-FDS
`
`
`
`
`REBUTTAL EXPERT REPORT OF DR. THOMAS MARTIN
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 3 of 64
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`
`SUMMARY OF THE ASSERTED PATENT ................................................................... 2
`A. U.S. PATENT NO. 8,277,377 .............................................................2
`LEVEL OF ORDINARY SKILL IN THE ART ................................................................ 3
`
`LEGAL STANDARDS ...................................................................................................... 4
`
`CLAIM CONSTRUCTIONS.............................................................................................. 6
`
`Priority of the asserted claims ............................................................................................. 7
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VII. VALIDITY UNDER 35 U.S.C. § 101 ................................................................................ 7
`A.
`LEGAL STANDARDS .........................................................................7
`VIII. U.S. PATENT NO. 8,277,377 IS NOT INVALID ............................................................. 8
`A.
`PROSECUTION HISTORY OF THE ’377 PATENT ..................8
`B. OVERVIEW OF PRIOR ART ..........................................................14
`U.S. Patent No. 5,598,849 (“Browne”) ................. 14
`
`U.S. Patent No. 6,434,403 (“Ausems”) ................. 17
`
`U.S. Patent No. 6,587,684 (“Hsu”) ........................ 18
`
`U.S. Patent No. 6,059,692 (“Hickman”) ............... 21
`
`U.S. Patent No. 6,519,241 (“Theimer”) ................ 24
`
`U.S. Patent No. 6,560,443 (“Vaisanan”) ............... 25
`
`U.S. Patent No. 6,690,178 (“Mault”) ..................... 26
`
` WO 99/41682 (“Dean”) ............................................. 27
`iFit ................................................................................... 28
`
`a.
`iFit.com Chirp-Based Programs .............................. 29
`b.
`Built-In Pulse Programs ............................................ 32
`c.
`The Pulse Programs Were Distinct From the
`Chirp-Based iFit.com Workout Programs ............ 34
`Sending Exercise Data to iFit.com ......................... 36
`
`d.
`
`i
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 4 of 64
`
`
`
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`
`
`
`
`
`
`
`
`
`
`THE ASSERTED CLAIMS OF THE ’377 PATENT ARE
`NOT RENDERED OBVIOUS BY BROWNE IN VIEW OF
`AUSEMS AND HSU ...........................................................................41
`There is no motivation to modify Browne with
`
`Ausems and Hsu. ......................................................... 41
`Claim 1 is not rendered obvious by Browne in
`View of Ausems and Hsu. ........................................ 45
`Claims 4, 5, 6, 9, and 12 are not rendered obvious
`by Browne in view of Ausums and Hsu. .............. 48
`THE ASSERTED CLAIMS OF THE ’377 PATENT ARE
`NOT RENDERED OBVIOUS BY HICKMAN IN VIEW OF
`THEIMER AND VAISANEN ..........................................................48
`There is no motivation to modify Hickman with
`
`Theimer and Vaisanen. .............................................. 48
`Claim 1 is not rendered obvious by Hickman in
`View of Theimer. ........................................................ 50
`Claims 4, 5, 6, 9, and 12 are not rendered obvious
`by Hickman in View of Theimer and Vaisanen. . 52
`THE ASSERTED CLAIMS OF THE ’377 PATENT ARE
`NOT RENDERED OBVIOUS BY MAULT IN VIEW OF
`DEAN OR HSU ....................................................................................53
`Claim 1 is not rendered obvious by Mault in view
`
`of Dean or Hsu. ............................................................ 53
`Claims 4, 5, 6, 9, and 12 are not rendered obvious
`by Mault in view of Dean or Hsu. .......................... 58
`THE ASSERTED CLAIMS OF THE ’377 PATENT ARE
`NOT RENDERED OBVIOUS BY IFIT IN VIEW OF
`AUSEMS AND DEAN OR BY IFIT IN VIEW OF AUSEMS
`AND HSU ...............................................................................................59
`There is no motivation to modify iFit with
`
`Ausems and Dean or to modify iFit with Ausems
`and Hsu. ......................................................................... 59
`Claim 1 is not rendered obvious by iFit in view of
`Ausems and Dean or iFit in view of Ausems and
`Hsu. ................................................................................. 63
`Claims 4, 5, 6, 9, and 12 are not rendered obvious
`by iFit in view of Ausems and Dean or iFit in
`view of Ausems and Hsu. ......................................... 71
`THE ASSERTED CLAIMS OF THE ’377 PATENT ARE
`DIRECTED TO PATENT ELIGIBLE SUBJECT MATTER ...71
`
`
`
`
`
`ii
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 5 of 64
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Web Enabled Wireless Phone Technology was
`Particularly Limited in 1999 .................................... 73
`The Asserted Claims of the ’377 Patent Provide
`Multiple Inventive Concepts .................................... 75
`Interactive Exercise Monitoring As Claimed by
`the ’377 Patent Was Not Well Known Nor
`Conventional ................................................................ 78
` Web-Enabled Wireless Phones As Claimed by the
`’377 Patent Were Not Well Known Nor
`Conventional ................................................................ 81
`Downloading An Application From A Remote
`Server As Claimed by the ’377 Patent Was Not
`Well Known Nor Conventional ............................... 83
`Dr. Paradiso’s Opinions Regarding Rendering
`User Interfaces On Web-Enabled Wireless
`Phones Ignores the Ordered Combination of Steps
`that Reflect the Inventive Contributions of Claim
`1 of the ’377 Patent ..................................................... 86
`Gathering Exercise and Physiologic Status Data
`While A Subject is Exercising As Claimed by the
`’377 Patent Was Not Well Known Nor
`Conventional ................................................................ 88
`Coupling A Web-Enabled Wireless Phone To
`Exercise Data Gathering Devices And
`Transferring Data Between Devices Using Either
`Wired Connections Or Short-Range Wireless
`Communications Including Infrared And RF
`Communication Protocols As Claimed by the
`’377 Patent Was Not Well Known Nor
`Conventional ................................................................ 91
`Sending Data Over the Internet to Back-End
`Servers for Further Processing, and Receiving and
`Displaying Calculated Responses From Such
`Servers, As Claimed by the ’377 Patent Was Not
`Well Known Nor Conventional ............................... 95
`THE ASSERTED CLAIMS OF THE ’377 PATENT COVERS
`MULTIPLE SERVERS AND ARE NOT INDEFINITE
`UNDER 35 U.S.C. § 112 ....................................................................97
`CLAIM 1 OF THE ’377 PATENT IS NOT
`“SUBSTANTIALLY SIMILAR” TO CLAIM 1 OF
`EUROPEAN PATENT NO. 1 247 229 ...........................................99
`Reservation ..................................................................................................................... 101
`
`H.
`
`I.
`
`IX.
`
`
`
`iii
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 6 of 64
`
`
`1.
`
`I, Dr. Thomas Martin, declare as follows:
`
`I.
`
`INTRODUCTION
`
`2.
`
`I have been retained by counsel for Plaintiff Philips North America, LLC
`
`(“Philips”) to serve as an expert witness in the above-captioned case. I am being compensated at
`
`my customary consulting rate of $400.00 per hour for all services rendered (and $200.00 per
`
`hour for travel). My compensation does not depend in any way on the outcome of this matter.
`
`3.
`
`I understand that the dispute in this litigation relates to Philips’s claims that the
`
`Defendant Fitbit LLC (“Fitbit”) has infringed and/or is infringing claims 1, 4 5, 6, 9, and 12 of
`
`U.S. Patent No. 8,277,377 (“the ’377 Patent”). I previously submitted an opening report in this
`
`litigation that details my opinion that certain Fitbit products infringe the ’377 Patent, which I
`
`incorporate herein by reference. In that report, I also set forth information regarding my
`
`education, experience, and prior testimony. Further, a more complete listing of my qualifications
`
`and professional experience is described in my Curriculum Vitae, a copy of which can be found
`
`in Exhibit L to my prior report.
`
`4.
`
`I understand that Fitbit has challenged the validity of the ’377 patent and I have
`
`been asked to review and respond to the November 16, 2021 Expert Report of Joseph A.
`
`Paradiso, Ph.D. Regarding Invalidity of U.S. Patent No. 8,277,377 (hereinafter “Paradiso
`
`Report”) and the references cited in that report to determine, and provide my opinions with
`
`respect to the same.
`
`5.
`
`This Report contains a summary of my opinions and analysis to date. I reserve the
`
`right to supplement this Report to account for any additional discovery including documents or
`
`testimony that becomes available or is relied upon by Fitbit or Fitbit’s experts.
`
`6.
`
`The documents considered in performing my analysis in this case are cited
`
`throughout this report and/or listed in Exhibit A.
`
`
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 7 of 64
`
`
`
`
`7.
`
`In addition to providing my opinions in this Report, I expect I may be called upon
`
`to provide expert testimony regarding these opinions at trial. If called upon to testify as to my
`
`opinions, I may use visual aids, including demonstrative exhibits. I may prepare diagrams,
`
`summaries, charts, videos and/or computer generated animations to help explain the technology
`
`involved in this case, the subject matter of the ’377 Patent, and the accused Fitbit products.
`
`II.
`
`SUMMARY OF THE ASSERTED PATENT
`
`A.
`8.
`
`U.S. Patent No. 8,277,377
`
`The ’377 Patent is entitled “Method and Apparatus for Monitoring Exercise with
`
`Wireless Internet Connectivity” and describes exemplary embodiments “for wireless monitoring
`
`of exercise, fitness, or nutrition by connecting a web-enabled wireless phone to a device which
`
`provides exercise-related information, including physiological data and data indicating an
`
`amount of exercise performed.” ’377 Patent at Abstract. The invention further provides that an
`
`“application for receiving the exercise-related information and providing a user interface may be
`
`downloaded to the web-enabled wireless phone from an internet server. The exercise-related
`
`information may be transmitted to an internet server, and the server may calculate and return a
`
`response.” Id.
`
`9.
`
`The ’377 Patent combines a wearable device for monitoring exercise with a
`
`wireless phone to communicate exercise information to a server, which in turn provides feedback
`
`about the exercise. The combination of these elements provides an interactive fitness tracking
`
`system to allow a user to better manage their health or lifestyle.
`
`10.
`
`I additionally discussed the ’377 Patent in my opening expert report in this matter
`
`served on November 16, 2021, and incorporate that discussion herein by reference.
`
`2
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 8 of 64
`
`
`
`
`III.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`11.
`
`I have been informed by counsel that Philips has asserted the following level of
`
`ordinary skill in the art for the ’377 Patent:
`
`[A]n individual with a.) at least a bachelor’s degree in electrical engineering, computer
`
`engineering, computer science, or the equivalent thereof, and b.) some experience with
`
`activity and/or health monitoring technologies, or the equivalent thereof.
`
`12.
`
`I further understand from counsel that as used in the above definition, the term “or
`
`the equivalent thereof” is intended to mean that the required levels of experience may be met by
`
`varying means, such as through educational experience – e.g., a person of ordinary skill could
`
`potentially have less industry experience but some other relevant educational experience or vice
`
`versa.
`
`13.
`
`I agree with this definition of ordinary skill in the art, and based on this definition,
`
`I would have been (on or before December 17, 1999), and still am, an individual of at least
`
`ordinary skill in the art.
`
`14.
`
`I also understand that Dr. Paradiso “generally agree[s] with Philips’s definition of
`
`level of ordinary skill in the art” but that he also proposed the following definition to provide
`
`more specificity:
`
`In particular, in my opinion, a POSITA at the priority date of the
`’377 patent had (a) at least a bachelor’s degree in electrical
`engineering, computer engineering, computer science, or the
`equivalent thereof (including in a related or similar field), and (b)
`at least 2-3 years of experience with activity and/or health
`monitoring technologies, or the equivalent thereof. Additional
`education may compensate for less practical experience, and vice
`versa.
`Paradiso Report at ¶ 76.
`
`15. While I disagree with Dr. Paradiso that any more specificity is needed beyond the
`
`definition proposed by Philips, based on this definition I would have been (on or before
`
`3
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 9 of 64
`
`
`
`
`December 17, 1999), and still am, an individual of at least ordinary skill in the art. Additionally,
`
`my opinions and conclusions in this expert report would not be affected or changed whether
`
`Philips’s proposed level of ordinary skill or Dr. Paradiso’s proposed level of ordinary skill were
`
`adopted.
`
`IV.
`
`LEGAL STANDARDS
`
`16.
`
`I understand that issued patents are presumed to be valid, such that those
`
`challenging the validity of a patent claim must present “clear and convincing evidence” in order
`
`to establish that a patent claim is invalid.
`
`17.
`
`I understand that for a patent claim to be valid, the invention claimed in the patent
`
`must be new, useful, and non-obvious. To be new, the claim must not have been “anticipated” in
`
`the prior art.
`
`18.
`
`For a claim to be anticipated, every limitation of the claimed invention must be
`
`found, either expressly or inherently, in a single prior art reference, which may be a written
`
`reference, or a prior apparatus or process. I understand that the description in a written reference
`
`does not have to be in the same words as the claim, but all the elements of the claim must be
`
`disclosed, either expressly or inherently, such that someone of ordinary skill in the field looking
`
`at the reference at the time the invention would have understood the claimed invention to be
`
`disclosed. I further understand that a prior public use, for example in a previously created
`
`product or process, may anticipate a patent claim, even if the use was accidental or was not
`
`appreciated by the prior user.
`
`19.
`
`I understand that a patent claim may be invalid for “obviousness” if the
`
`differences between the limitations of the claim and the prior art are such that the claimed subject
`
`matter as a whole would have been obvious to a person of ordinary skill in the art at the time the
`
`invention was made.
`
`4
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 10 of 64
`
`
`
`
`20.
`
`I also understand that determining whether or not a claimed invention would have
`
`been obvious requires assessing facts related to (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the claimed invention, (3) the level of ordinary skill in the
`
`art, and (4) any objective evidence of non-obviousness.
`
`21.
`
`I understand that an invention is not rendered obvious simply on the basis of two
`
`or more different disclosures that collectively disclose all of the claimed elements. In other
`
`words, an invention is not obvious just because all of the elements that comprise the invention
`
`may have been known in the prior art. Instead, a person of ordinary skill in the art must have had
`
`a reason to combine the teachings of the two or more different disclosures in a manner that
`
`discloses all elements of the claimed invention. I further understand that a reference can “teach
`
`away” from a claimed invention if a person of ordinary skill in the art, upon reading the
`
`reference, would be discouraged from creating the claimed invention.
`
`22.
`
`I understand that certain objective factors, sometimes known as “secondary
`
`considerations,” may also be taken into account in determining whether a claimed invention
`
`would not have been obvious to a person of ordinary skill in the art. These considerations
`
`include: (a) commercial success of a product due to the merits of the claimed invention; (b) a
`
`long-felt, but unsatisfied need for the invention; (c) failure of others to find the solution provided
`
`by the claimed invention; (d) deliberate copying of the invention by others; (e) unexpected
`
`results achieved by the invention; (f) praise of the invention by others skilled in the art; (g) lack
`
`of independent simultaneous invention within a comparatively short space of time; and (h)
`
`teaching away from the invention in the prior art. I also understand that these objective
`
`indications are only relevant to obviousness if there is a connection, or nexus, between them and
`
`the invention covered by the patent claims.
`
`5
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 11 of 64
`
`
`
`
`23.
`
`I understand that a patent is invalid if it is determined that it claims a law of
`
`nature, natural phenomena, or abstract idea. Counsel has informed me that the Supreme Court
`
`has set out a two-step framework to identify such invalid patents. I understand that the first step
`
`in the two-step framework is to decide whether the claims at issue are directed to a patent-
`
`ineligible concept. That step involves identifying the challenge addressed and the solution
`
`claimed to determine if the claims are directed to an abstract idea, such as a mathematical
`
`algorithm. I understand that problems specifically arising in the realm of computer networks and
`
`computers are not considered to be abstract ideas under the legal framework.
`
`24.
`
`If the claims are directed to a patent-ineligible concept, counsel has informed me
`
`that the second step must be applied. I understand that the second step is to consider the elements
`
`of each claim both individually and as an ordered combination to determine whether the
`
`additional elements transform the nature of the claim to be patent-eligible. In other words, step
`
`two involves determining whether the claims include an element or combination of elements that
`
`is sufficient to ensure that the patent in practice amounts to significantly more than a patent on
`
`the ineligible concept itself. I understand that that this second step is satisfied (and the claims are
`
`considered to be patent-eligible) when the claim limitations involve more than performance of
`
`well-understood, routine and conventional activities previously known to the industry. I also
`
`understand that whether a particular technology is well understood, routine, and conventional
`
`goes beyond what was simply known in the prior art, and the mere fact that something is
`
`disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and
`
`conventional.
`
`V.
`
`CLAIM CONSTRUCTIONS
`
`25.
`
`I understand that on July 22, 2021 Judge Saylor issued a Claim Construction
`
`Order (Doc. No. 212) construing the term “indicating a physiologic status of a subject”, which
`
`6
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 12 of 64
`
`
`
`
`appears in Claims 1 and 12 of the ’377 Patent. I have reviewed said claim construction order and
`
`have performed my analysis based upon the Claim Construction Order that found that this term
`
`is not limited to an “indication of a subject’s current physiological state” as proposed by Fitbit
`
`and that the term therefore does not require construction and should be given its plain and
`
`ordinary meaning. Doc. No. 212 at 34. Thus, I have used the plain and ordinary meaning of this
`
`term when analyzing the asserted claims.
`
`VI.
`
`PRIORITY OF THE ASSERTED CLAIMS
`
`26.
`
`I understand that Dr. Paradiso does not dispute Philips’s assertion that the asserted
`
`claims of the ’377 Patent are entitled to the December 17, 1999 priority date of its provisional
`
`application, U.S. Provisional App. No. 60/172,486.
`
`VII.
`
`VALIDITY UNDER 35 U.S.C. § 101
`
`A.
`27.
`
`Legal Standards
`
`I understand that a patent is invalid if it is determined that it claims a law of
`
`nature, natural phenomena, or abstract idea. Counsel has informed me that the Supreme Court
`
`has set out a two-step framework to identify such invalid patents. I understand that the first step
`
`in the two-step framework is to decide whether the claims at issue are directed to a patent-
`
`ineligible concept. That step involves identifying the challenge addressed and the solution
`
`claimed to determine if the claims are directed to an abstract idea, such as a mathematical
`
`algorithm. I also understand that this step may involve looking to the specification to understand
`
`the problem facing the inventor and ultimately, what the patent describes as the invention.
`
`28.
`
`If the claims are directed to a patent-ineligible concept, counsel has informed me
`
`that the second step must be applied. I understand that the second step is to consider the elements
`
`of each claim both individually and as an ordered combination to determine whether the
`
`additional elements transform the nature of the claim to be patent-eligible. In other words, step
`
`7
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 13 of 64
`
`
`
`
`two involves determining whether the claims include an element or combination of elements that
`
`is sufficient to ensure that the patent in practice amounts to significantly more than a patent on
`
`the ineligible concept itself.
`
`29.
`
`I also understand that step two is satisfied when the claim limitations involve
`
`more than performance of well-understood, routine and conventional activities previously known
`
`to the industry. I further understand that whether a particular technology is well-understood,
`
`routine, and conventional goes beyond what was simply known in the prior art and that the mere
`
`fact that something is disclosed in a piece of prior art does not mean it was well-understood,
`
`routine, and conventional.
`
`VIII.
`
`U.S. PATENT NO. 8,277,377 IS NOT INVALID
`
`A.
`
`30.
`
`Prosecution History of the ’377 Patent
`
`I have reviewed the prosecution history of the ’377 Patent and have considered
`
`the following events in the prosecution history in my opinions regarding Dr. Paradiso’s flawed
`
`motivation to combine certain references.
`
`31.
`
`On August 13, 2010, the examiner rejected application claims 1-4, 6-18, and 20-
`
`21 under 35 U.S.C. 102(e) as being anticipated by U.S. Patent No. 6,013,007 (“Root”). File
`
`History at PNA-FB0001683. The examiner asserted that Root teaches the use of a personal
`
`athletic performance monitor (device 101) with a communication network (Internet 803) to
`
`remotely monitor a user while he/she is exercising (Figs. 1-3, 6-8). Id. The examiner interpreted
`
`Root’s performance monitor as disclosing meeting the claimed “web-enabled wireless phone.”
`
`Id. The examiner also found that Root’s “monitor is optionally connected to physiological
`
`sensors such as a heart rate sensor 611 and temperature sensor 612 (Fig.6) via a wired or wireless
`
`connection,” and that the monitor is “capable of transmitting stored data to an Internet web site
`
`8
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 14 of 64
`
`
`
`
`for performance trending . . . and receiving feedback from said web site regarding personal
`
`fitness recommendations.” Id., PNA-FB0001684.
`
`32.
`
`On September 20, 2010, the Applicant traversed the rejection by arguing that
`
`Root (1) did not explicitly disclose wireless communications and (2) “fails to teach receiving a
`
`calculated response from a server”. Id., PNA-FB0001711, PNA-FB0001714. In doing so, the
`
`Applicant explained that Root can only transmit information to a remote computer via a
`
`“standard telephone line” and does not have the capability to transmit data wirelessly. Id., PNA-
`
`FB0001711. As the Applicant explained, “[t]he Root reference clearly is for storing data about
`
`exercise and then uploading the same at a later time . . .” Id., PNA-FB0001713. Similarly, data
`
`indicating a physiologic status can only be received when data is uploaded and “consequently is
`
`not disclosed to be used in a calculated response to a web-enabled wireless device.” Id., PNA-
`
`FB0001714.
`
`33.
`
`On March 18, 2011, the examiner agreed with these arguments and withdrew the
`
`rejection based on Root. Id., PNA-FB0001737-1745. The examiner, however, issued new
`
`rejections, finding the pending claims to be anticipated by U.S. Patent No. 6,790,178 to Mault,
`
`and obvious over on Hickman in view of U.S. Patent No. 6,353,839 (“King”). Id., PNA-
`
`FB0001739-1743.
`
`34.
`
`The March 18, 2011 Office Action found that Mault taught, among other things,
`
`(1) “a wireless computing device, such as a PDA or a cellular phone (web enabled wireless
`
`phone),” (2) “a plurality of physiological monitors (hereinafter ‘plug-in modules’) adapted to
`
`interface with the PDA, and a remote internet based server communicatively coupled with the
`
`PDA to receive physiological data and to provide feedback to the PDA’s user” and (3) “[t]he
`
`PDA is equipped with health management software that includes the ability to . . . tracking the
`
`user’s exercise, diet and physiological parameters, [and] communicates this information to a
`
`9
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 15 of 64
`
`
`
`
`remote internet server where the data is further analyzed and/or reviewed by a health
`
`professional so that feedback is provided to the user via the PDA.” Id., PNA-FB0001739-1740.
`
`35.
`
`The March 18, 2011 Office Action tentatively concluded that Hickman disclosed
`
`all of the limitations of then-pending claim 1 except for “using a web enabled wireless phone as
`
`a computing device.” Id., PNA-FB0001741-1742. The examiner, however, asserted that this
`
`limitation was taught by King. According to the examiner, King “discloses that the rapid growth
`
`of the Internet has led to increases in data processing capabilities in portable devices such as
`
`web-enabled mobile phones and PDAs” and that “[w]eb enabled mobile phones and PDAs are
`
`able to serve as a medium for receiving data from an input and then bi-directional
`
`communicating the data between a user end and a remote server end.” Id., PNA-FB0001742.
`
`And, “as such, it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to replace Hickman’s local computer with a portable device such as a web-enabled
`
`wireless phone because more and more people are carrying mobile devices, as such it would be
`
`beneficial to a user to carry Hickman’s ‘virtual personal trainer’ to keep track and receive
`
`feedback on his/her daily exercise routines.” Id.
`
`36.
`
`On June 14, 2011, Applicant traversed these rejections. As to Mault, Applicant
`
`submitted a declaration under Rule 131 (id., PNA-FB0001787-1788) to establish an earlier date
`
`of invention in addition to arguing that Mault failed to meet each of the claim limitations. Id.,
`
`PNA-FB0001778-1782. As to the Hickman-King rejection, Applicant argued that the claimed
`
`invention was “designed to suit the constraints of the small display screens of a mobile phone”
`
`whereas “the purpose of King was to improve the display functionality of a mobile wireless
`
`device by reducing the delay involved in interacting with a back-end server” and, consequently,
`
`“does not teach or disclose the use of mobile phones to control and monitor devices connected
`
`via a generic input/output port to the mobile phone.” Id., PNA-FB0001783-1784.
`
`10
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 16 of 64
`
`
`
`
`37.
`
`Applicant also argued that Hickman “specifically uses a script system to control
`
`and monitor the operation of the exercise apparatus” and “King specifically teaches away from
`
`script systems.” Id., PNA-FB0001784. In support of this argument, Applicant cited King’s
`
`disclosure that “scripting language, such as JavaScript and ActiveX, . . . proves to be too
`
`complicated to be used in the mobile devices.” Id.; King (U.S. Patent No. 6,353,839) at 2:6-11.
`
`38.
`
`On August 30, 2011, the examiner maintained the rejection in a final office
`
`action. Id., PNA-FB0001842. In response, Applicant appealed the rejections set forth in the final
`
`action, filing an appeal brief on March 12, 2012. Id., PNA-FB0001892-1913. In its appeal brief
`
`Applicant stated “that Mault is deficient as anticipatory reference as the same lacks teaching or
`
`disclosure of a web enabled wireless phone. Mault’s PDA cannot meet this claim limitation as, at
`
`the time of filing, a PDA and a mobile phone were distinct devices: it was in fact several years
`
`later until their functions became similar. The present application discloses one type of wireless
`
`web device being a PDA equipped with a wireless modem, and another type of wireless web
`
`device being a web enabled wireless phone, and a third type being a device that combines the
`
`functions of a computer, PDA, and telephone. Appellant’s provisional application, included by
`
`reference, disclosed the same as separate embodiments of a wireless web device. Tellingly,
`
`Mault discloses a mobile phone in his 60/265,166 provisional application, but as a distinct
`
`disclosure from a PDA as described in his earlier provisional applications. However, provisional
`
`application 60/265, 166 was filed subsequent to Appellant’s date of invention as illustrated by
`
`Appellant’s declaration of invention, and thus cannot be used as prior art.” Id. at PNA-
`
`FB0001900 (emphasis and underlining in original).
`
`39.
`
`As reflected in an Applicant Interview Summary record, on April 4, 2012, the
`
`examiner, the examiner’s supervisor, inventor Roger Quy, and Applicant’s representative
`
`conducted an interview in which they discussed Mault, Hickman and King. Id., PNA-
`
`11
`
`

`

`Case 1:19-cv-11586-FDS Document 297-1 Filed 02/04/22 Page 17 of 64
`
`
`
`
`FB0001919. According to the interview record, the participants discussed the Rule 131
`
`declaration relative to Mault as well as “possible claim amendments to further distinguish the
`
`claims over the applied prior art references.” Id., PNA-FB0001919. The examiner advised that
`
`“the applicant may choose to maintain the Appeal filed on 03/12/2012, or to submit an RCE with
`
`the discussed claim amendments.” Id.; PNA-FB0001923.
`
`40.
`
`Shortly after this discussion, on May 17, 2012, Applicant filed an RCE and
`
`amendment, which amended independent claim 1 to explicitly recite “(a) downloading an
`
`application to a web-enabled wireless phone directly from a remote server over the internet” and
`
`“using the application” in regard to what are steps d., e., and i. of issued claim 1. Id., PNA-
`
`FB0001934. The amendment added similar language to independent claim 8. Id., PNA-
`
`FB0001935. In the remarks, Applicant stated that in accordance with the April 9, 2012 interview,
`
`“the attached amended claims are respectfully submitted to define over the applied references
`
`and thus should be in allowable condition.” Id., PNA-FB0001938.
`
`41.
`
`The examiner then allowed the claims with minor clarifying amendments to the
`
`computer readable media claims. The reasons for allowance explained that “Mault fails to teach
`
`a direct connection with said remote server for downloading said software application; in fact
`
`Mault specifically discloses that downloading and installing of software applications are done via
`
`another memory module.” Id. (emphasis added).
`
`42.
`
`On April 15, 2020, Fitbit filed a petition for inter partes review (“IPR”) of the
`
`’377 patent, challenging the patentability of claims 1, 4-6, 9, and 12. IPR2020-00828, Paper 1.
`
`I