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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`FITBIT, INC.,
`Petitioner,
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`v.
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`BLACKBIRD TECH LLC,
`Patent Owner.
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`_______________
`
`Case IPR2017-02012
`Patent 6,434,212
`____________
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`PATENT OWNER’S SUR-REPLY
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`IPR2017-02012 – Patent Owner’s Response
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`Pursuant to authorization provided in the Board’s October 15, 2018 e-mail to
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`the parties, Blackbird Tech LLC d/b/a Blackbird Technologies (“Blackbird” or
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`“Patent Owner”) files this sur-reply in response to the Reply in support of the
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`Petition for inter partes review filed by the named Petitioner Fitbit, Inc. (“Fitbit” or
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`“Petitioner”).
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`I.
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`THE BOARD WAS CORRECT TO DENY PETITIONERS’
`ANTICIPATION CHALLENGE TO CLAIMS 2 AND 5
`A. Amano Does Not Disclose “Programmed To Calculate A Distance
`Travelled By Multiplying A Number Of Steps Counted By The
`Step Counter By A Stride Length That Varies In Accordance With
`A Stride Rate”
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`Petitioner devotes a significant portion of its reply attempting to establish
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`that Amano discloses the claimed “calculate a distance travelled by multiplying a
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`number of steps counted by the step counter by a stride length that varies in
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`accordance with a stride rate.” But Petitioner’s effort falls short. Petitioner again
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`insists that Amano “calculates a distance by multiplying the user’s pitch (i.e., the
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`number of steps per unit time) by the user’s stride length.” Reply at 4. Petitioner
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`represents Amano’s calculation using the following equation:
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`Even though Petitioner chose not the highlight the “unit time” aspects of the
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`equation, it is readily apparent that Amano’s calculation determines distance
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`IPR2017-02012 – Patent Owner’s Response
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`travelled per unit of time. And distance travelled per unit of time is speed, not
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`distance. Speed and distance are not the same thing. Amano’s calculation does
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`not determine distance any more than the following equation determines what “X”
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`is:
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`(Pitch) x (stride length) = X/B
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`A person presented with the above equation cannot determine what “X” is without
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`multiplying “X/B” by “B.” Similarly, a person presented with Amano’s
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`calculation cannot determine what distance is travelled without multiplying
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`“distance travelled/unit time” by the “unit time.”
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`Petitioner’s expert confirmed the difference between speed and distance
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`during her deposition:
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`In your opinion, how would a person of ordinary skill in the art as
`Q.
`described in your declaration express the speed of an individual
`walking?
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`A. Distance travelled in unit time.
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`So would it be fair to say that speed can be expressed in distance
`Q.
`traveled per unit time?
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`A. Yes.
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`Q. And in your opinion, what is the difference between speed and
`distance?
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`There is an equation that states the relationship. Distance is equal to
`A.
`speed multiplied by time.
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`Ex. 2003 at 38:10-23.
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`IPR2017-02012 – Patent Owner’s Response
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`The Kato reference, on which Petitioner relies in a separate challenge
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`(Ground 3), is also informative. Kato, like Amano, explicitly discloses that pitch is
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`multiplied by stride length. Specifically, Kato makes it clear that pitch multiplied
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`by stride length is speed, not distance, by disclosing that “the stride is multiplied
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`by the pitch, to obtain a walking speed of the walker.” Ex. 1004 at 4:50-51. Kato
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`also appreciates the difference between speed and distance, recognizing that it is
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`necessary to multiply “the walking speed by said unit of time after the walking
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`speed is calculated to obtain the distance travelled by the walker in said unit of
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`time.” Id. at 4:62-68. These teachings by Kato help emphasize that, contrary to
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`Petitioner’s belief, speed and distance are two separate things. And that pitch
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`multiplied by stride length is speed, not distance. Accordingly, Amano’s
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`calculation of pitch multiplied by stride length does not meet the claimed
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`“calculate a distance travelled by multiplying a number of steps counted by a stride
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`length that varies in accordance with a stride rate” and cannot anticipate the
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`challenged claims.
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`Perhaps recognizing that Amano’s alleged teaching of distance calculation is
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`deficient, Petitioner argues for the first time that column 18 in Amano teaches
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`calculating distance. Reply at 7-9. But neither Petitioner nor its expert previously
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`relied on column 18 and should not be allowed to do so now.
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`IPR2017-02012 – Patent Owner’s Response
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`Substantively, the disclosures in column 18 fail to remedy the previously
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`identified deficiencies. Petitioner alleges that the following text in column 18
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`teaches the claimed distance calculation:
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`On the other hand, if an altitude difference is present, then in step
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`Sa103, CPU 201 first determines the slope from the aforementioned
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`altitude distance and the distance run during the 30 seconds.
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`Ex. 1003 at 18:40-44. First, a “distance run during the 30 seconds” is a speed
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`calculation, not a distance calculation. Patent Owner’s expert confirmed during his
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`deposition that this language refers to speed, not distance:
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`Q. On line 40 it says, On the other hand, if an altitude difference is
`present, then in step Sa103, CPU 201 first determines the slope from the
`aforementioned altitude distance and the distance run during the 30
`seconds.
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`A. Yes. Again distance over time. That's the velocity. Distance run over 30
`seconds, that's a velocity measurement.
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`Ex. 1021 at 165:2-11.
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`Second, even if the recited text discloses calculating a distance (it does not),
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`there is no indication that that distance is calculated by multiplying a number of
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`steps counted by a stride length, as required by the challenged claims. The
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`distance run during the 30 seconds is determined by some undisclosed method.
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`Such a vague disclosure is inadequate to teach that distance is calculated by
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`multiplying a number of steps counted by a stride length.
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`IPR2017-02012 – Patent Owner’s Response
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`B. Amano’s FFT Processing Does Not Establish That Its Alleged
`Distance Calculation Is Longer than a Single Step
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`Petitioner makes several arguments that Amano’s use of FFT processing
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`proves that its alleged distance calculation is longer than a single step. But that is
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`not the case. Petitioner’s arguments are premised on FFT processing using a time
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`window of data that lasts longer than a single step. For example, Petitioner posits
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`that “Amano discloses that the user’s steps and distance are calculated using FFT
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`signal processing, which means that Amano performs the calculations using a time
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`window of data and are not based upon data for a single step.” Reply at 11.
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`Regardless of Petitioner’s musings about Amano’s FFT processing, Amano
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`itself discloses detecting pitch for a single step: “In step Sa3, CPU 201 multiplies
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`the test subject s stride which is stored in RAM 203, with the pitch detected on the
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`immediately preceding step.” Amano at 12:15-17. Amano’s apparent use of FFT
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`processing does not change that explicit disclosure. Indeed, Petitioner’s expert’s
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`unsupported view that FFT processing uses a time window of data is not
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`inconsistent with Amano’s explicit teaching that pitch is detected for a single step.
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`Even a single step occupies a window of time, and there is no reason FFT
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`processing could not be performed for a single step.
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`IPR2017-02012 – Patent Owner’s Response
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`II.
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`PETITIONERS’ NEW OBVIOUSNESS CHALLENGE TO CLAIMS 2
`AND 5 SHOULD BE REJECTED
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`Petitioner attempts to remedy Amano’s failure to disclose the claimed
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`distance calculation by arguing, for the first time, that the claimed calculation is
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`obvious in view of Amano. Reply at 5. But this new argument is too late and
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`should not be considered.1 Moreover, Petitioner provides no explanation as to why
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`a POSITA would have been motivated to modify Amano to determine distance
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`instead of speed. In fact, a POSITA would not have been motivated to make such
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`a modification because Amano is focused on determining exercise intensity.
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`Amano specifies that the “distance run by the test subject per unit of time,” “is
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`multiplied by the user’s body weight…to obtain exercise intensity.” Ex. 1003 at
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`12:17-21. When determining exercise intensity, speed is the important parameter,
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`not distance.
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`Petitioner makes the single unsupported statement that “even if Amano did
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`not expressly disclose the claimed calculation, it would have been obvious based
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`on this teaching.” Reply at 5. Such bald statements are inadequate to establish
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`obviousness and fatal to Petitioner’s position. See InTouch Techs., Inc. v. VGO
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`Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
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`1 Petitioner’s obviousness argument presented in the petition focused on limitations
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`other than the missing claimed distance calculation. Petition at 50-57.
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`IPR2017-02012 – Patent Owner’s Response
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`In an attempt to provide support for its new obviousness argument that even
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`its own expert did not, Petitioner now argues that “Blackbird’s expert admitted that
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`the basic relationship between stride length and stride rate (applied by Amano and
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`the ‘212 Patent) was well known.” Reply at 5. But Petitioner’s point misses the
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`mark. Whether or not the basic relationship between stride length and stride rate is
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`well known does not change anything about Amano’s failure to teach calculating a
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`distance travelled by multiplying a number of steps by a stride length. Even
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`assuming that the aforementioned relationship is well known, that does not make it
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`obvious for Amano to calculate a distance instead of speed.
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`III. PETITIONERS’ CHALLENGE OF CLAIM 6 SHOULD BE
`REJECTED
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`A combination of Kato and Amano does not teach the claim element:
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`“calculate a distance travelled by multiplying a number of steps counted by a stride
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`length that varies in accordance with a stride rate.” Like Amano, Kato calculates
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`speed, not distance. Kato discloses that “the stride is multiplied by the pitch, to
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`obtain a walking speed of the walker.” Ex. 1004 at 4:50-51. As discussed above,
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`Amano discloses that pitch is multiplied by stride length to calculate speed. For
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`example, Amano discloses a system in which the user’s pitch is sampled at time
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`intervals and this sampling is multiplied by a test subject’s stride “to calculate the
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`distance run by the test subject per unit of time.” Ex. 1003 at 12:4-21 (emphasis
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`added). “Distance run per unit of time,” e.g., 5 miles-per-hour, is a measure of
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`IPR2017-02012 – Patent Owner’s Response
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`speed, not distance. Amano thus discloses that pitch multiplied by stride equals
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`speed, just like Kato. As both Amano and Kato fail to teach the claimed distance
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`calculation, a combination of Amano and Kato cannot teach this required claim
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`element.
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`IV. CONCLUSION
`For the foregoing reasons, the Petition’s grounds challenging the validity of
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`the ’212 patent claims are improperly supported, and the patentability of claims 2,
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`5, and 6 should be confirmed by final written decision.
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`Dated: October 25, 2018
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`Respectfully submitted,
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`
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`By: /s/ Walter D. Davis, Jr.
` Walter D. Davis, Jr. (Reg. No. 45,137)
` Aldo Noto (Reg. No. 35,628)
` Wayne M. Helge (Reg. No. 56,905)
` DAVIDSON BERQUIST JACKSON &
` GOWDEY, LLP
` 8300 Greensboro Drive, Suite 500
` McLean, VA 22102
` Telephone: 571-765-7700
` Fax: 571-765-7200
` Email: wdavis@dbjg.com
` Email: anoto@dbjg.com
` Email: whelge@dbjg.com
`
` Counsel for Patent Owner
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`IPR2017-02012 – Patent Owner’s Response
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`CERTIFICATE OF WORD COUNT
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`The undersigned certifies that the foregoing PATENT OWNER’S SUR-
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`REPLY complies with the type-volume limitation in 37 C.F.R. § 42.24(b)(2).
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`According to the word processing system’s word count, the brief contains 1,631
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`words, excluding the parts of the response exempted by 37 C.F.R. § 42.24(a).
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`By: /s/ Walter D. Davis, Jr.
` USPTO Reg. No. 45,137
` Counsel for Patent Owner
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`IPR2017-02012 – Patent Owner’s Response
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on October 25, 2018, a true and correct copy
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`of the foregoing Patent Owner’s Sur-Reply is being served electronically to the
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`Petitioners at the correspondence email addresses of record as follows:
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`Harper Batts (Reg. No. 56,160)
`Chris Ponder (Reg. No. 77,167)
`Sheppard, Mullin,
`Richter & Hampton LLP
`379 Lytton Avenue
`Palo Alto, CA, 94301
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`LegalTM-Fitbit-BB-
`IPRs@sheppardmullin.com
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`Matthew L. Cutler (Reg. No. 43,574)
`Douglas A. Robinson (Reg. No. 59,703)
`Harness, Dickey & Pierce PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`mcutler@hdp.com
`drobinson@hdp.com
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`By: /s/ Walter D. Davis, Jr.
` USPTO Reg. No. 45,137
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`DAVIDSON BERQUIST JACKSON &
` GOWDEY, LLP
` 8300 Greensboro Drive, Suite 500
` McLean, VA 22102
` Telephone: 571-765-7700
` Fax: 571-765-7200
` Email: wdavis@dbjg.com
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`Counsel for Patent Owner
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