Case 1:19-cv-11586-FDS Document 212 Filed 07/22/21 Page 1 of 35
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
`
`PHILIPS NORTH AMERICA LLC,
`
`_______________________________________
`)
`)
`)
`)
`) Civil Action No.
`) 19-11586-FDS
`)
`
`)
`)
`)
`Defendant.
`_______________________________________)
`
`Plaintiff,
`
`v.
`
`FITBIT, INC.,
`
`MEMORANDUM AND ORDER ON CLAIM CONSTRUCTION
`
`SAYLOR, C.J.
`
`This is an action for patent infringement. Plaintiff Philips North America LLC has sued
`
`defendant Fitbit, Inc., asserting claims under 35 U.S.C. § 271 for infringement of three patents of
`
`which Philips is the owner and assignee. The patents at issue concern technology related to
`
`connected-health products, such as wearable fitness trackers.
`
`The case is at the claim-construction stage. The parties have submitted proposed
`
`construction for six disputed terms: (1) “means for computing athletic performance feedback
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`data from the series of time-stamped waypoints obtained by said GPS receiver,” (2) “means for
`
`suspending and resuming operation of said means for computing when a speed of the athlete falls
`
`below a predetermined threshold,” (3) “governing information transmitted between the first
`
`personal device and the second device,” (4) “first personal device,” (5) “wireless
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`communication,” and (6) “indicating a physiologic status of a subject.”1
`
`1 The parties proposed construction of four additional terms that are in U.S. Patent No. 6,976,958. Philips
`has since withdrawn its allegations of infringement of that patent. The Court will therefore not address those terms.
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
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`Fitbit, Inc. Ex. 1081 Page 0001
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`Case 1:19-cv-11586-FDS Document 212 Filed 07/22/21 Page 2 of 35
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`I.
`
`Background
`
`A.
`
`Factual Background
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`Philips North America LLC develops, among other things, connected-health technologies
`
`and related products, such as wearable fitness trackers that monitor and analyze personal health
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`and fitness information. (Second Am. Compl. ¶¶ 2, 4-7, 12, 24-25). Its patent portfolio includes
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`more than 60,000 patents. (Id. ¶ 8). It licenses its patented technologies to companies in the
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`connected-health field. (Id. ¶¶ 6, 8).
`
`Fitbit, Inc. develops, manufactures, and sells connected-health products. (Id. ¶¶ 13, 29-
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`30).
`
`B.
`
`Patents in Suit
`
`The second amended complaint alleges that Fitbit infringes on three patents owned by
`
`Philips: U.S. Patent No. 6,013,007 (“the ’007 patent”), U.S. Patent No. 7,088,233 (“the ’233
`
`patent”), and U.S. Patent No. 8,277,377 (“the ’377 patent”). The patents concern technology
`
`related to connected-health products, including GPS/audio athletic training, security mechanisms
`
`for transmitting personal data, wearable-technology products, and handling interrupted
`
`connections. (Id. ¶¶ 9, 12, 37).
`
`1.
`
`The ’007 Patent
`
`The ’007 patent is titled “Athlete’s GPS-Based Performance Monitor.” (’007 patent at
`
`Title). The patent concerns applying “Global Positioning System (GPS) technology for the
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`personal performance monitoring of outdoor athletes, . . . and providing the athlete with real-time
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`performance feedback and optional long-term trend analysis.” (Id. col. 1 ll. 8-13). It identifies
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`“a need for a portable GPS unit that is small and light enough to be carried or worn by an
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`outdoor athlete which incorporates real-time athletic performance algorithms for continuously
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`monitoring the athlete’s progress and reporting his/her progress periodically during the exercise
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`
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`2
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`session.” (Id. col. 1 ll. 59-64). According to the patent, “[r]eal-time audio reports would assist
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`and motivate the athlete to improve his/her performance without any visual distractions” and
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`“[a]n integrated radio can provide the athlete with entertainment.” (Id. col. 1 ll. 64-67).
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`The patent states that “the GPS-based performance monitor and feedback device of the
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`present invention can be used to provide an outdoor athlete with continuous, consistent, and
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`accurate real-time performance feedback, independent of his/her outdoor location in the world.”
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`(Id. col. 9 ll. 63-67). It further states that “[t]he data presentation method of using an audio
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`module eliminates the exclusive use of large, power-consuming, cumbersome, and visually
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`distracting displays and leaves the athlete free to concentrate on his/her exercise, safety, and
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`surroundings.” (Id. col. 9 l. 67; id. col. 10 ll. 1-4).
`
`The patent provides for, among other things, a “portable feedback system providing
`
`regular updates on an athlete’s performance” comprising:
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`• a global positioning system GPS receiver for obtaining a series of time-
`stamped waypoints;
`
`• means for computing athletic performance feedback data from the series of
`time-stamped waypoints obtained by said GPS receiver; and
`
`
`
`• means for presenting the athletic performance feedback data to an athlete.
`
`
`(Id. col. 2 ll. 56-67). It further provides for a “system for comparing an athlete’s performance
`
`with the performance of other athletes” comprising the same components plus “a modem for
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`transmitting the athletic performance feedback data to a remote computer for comparison with
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`athletic performance feedback data of other athletes.” (Id. col. 2 ll. 65-67; id. col. 3 ll. 1-10).
`
`2.
`
`The ’233 Patent
`
`The ’233 patent is titled “Personal Medical Device Communication System and Method.”
`
`(’233 patent at Title). It generally concerns a “bi-directional personal and health-wellness
`
`
`
`3
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`provider communication system.” (Id. col. 1 ll. 21-23). More particularly, it concerns “a
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`personal communication system suitable for use with children, vulnerable adults (such as those
`
`in assisted living situations), and more specifically, medically distressed persons and those in
`
`whom a[] personal medical device has been deployed, for medical testing, and for other life
`
`enhancements.” (Id. col. 1 ll. 23-28).
`
`According to the patent, personal medical devices are devices that may either “monitor”
`
`or “provide” body functions. (Id. col. 2 ll. 2-3, 5). They may be used “to deliver drugs, heart
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`defibrillation, or other treatment” or “to enhance wellness, test drug therapies, monitor patient
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`health, deliver long-term care, or treat acute conditions.” (Id. col. 2 ll. 7-10). They take “many
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`forms” and may be “surgically implanted, strapped externally to the body, carried in a pocket,
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`transported in a carrying case, or installed as a home appliance.” (Id. col. 1 ll. 63-67).
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`The patent describes “a device and method to couple with [personal medical devices] to
`
`provide wireless communication and locating functions.” (Id. col. 2 ll. 11-12). Such
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`communication may be used, among other things, “to provide health care professionals with
`
`access to information for remote diagnostic capabilities; to provide notification of acute
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`conditions possibly requiring immediate assistance, transportation to a medical center, or remote
`
`treatment action; to provide a location information of mobile persons for caregivers; to notify
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`responsible parties of the occurrence of a medical condition; and to provide remote intervention
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`assistance by caregivers through verbal or visual interaction.” (Id. col. 2 ll. 14-22).
`
`3.
`
`The ’377 Patent
`
`The ’377 patent is titled “Method and Apparatus for Monitoring Exercise with Wireless
`
`Internet Connectivity.” (’377 patent at Title). It concerns “monitoring of living subjects.” (Id.
`
`col. 1 ll. 35-36). More particularly, it concerns “health-monitoring of persons where measured or
`
`input health data is communicated by a wireless device to and from a software application
`4
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`running on an internet-connected server and where the same may be studied and processed by
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`the software application, a health professional, or the subject.” (Id. col. 1 ll. 36-41).
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`The patent provides for a “method and apparatus . . . for wireless monitoring of exercise,
`
`fitness, or nutrition by connecting a web-enabled wireless phone to a device which provides
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`exercise-related information, including physiological data and data indicating an amount of
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`exercise performed.” (Id. at Abstract). It further provides that “[a]n application for receiving the
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`exercise-related information and providing a user interface may be downloaded to the web-
`
`enabled wireless phone from an internet server” and that “[t]he exercise-related information may
`
`be transmitted to an internet server, and the server may calculate and return a response.” (Id.).
`
`The patent identifies two “complementary” systems that embody the invention. (Id. col.
`
`2 l. 64). The first embodiment may be employed “to manage the disease state or condition of a
`
`patient” by “employ[ing] a health monitoring device.” (Id. col. 2 l. 67; id. col. 3 ll. 1-2). That
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`device would provide data by a wireless connection “for processing via the internet[,] including a
`
`review by a physician or other health care professional if required.” (Id. col. 3 ll. 1-2). For
`
`example, a diabetic could connect a blood-glucose monitor to a wireless web device, download
`
`data to a diabetes-management company’s server, and receive guidance concerning his next
`
`meal. (Id. col. 3 ll. 14-20).
`
`The second embodiment enables implementation of a “health or lifestyle management
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`plan” by allowing “[v]arious health parameters, such as those relating to nutrition or exercise,
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`[to] be entered into a health monitoring device” and to be wirelessly communicated to a server.
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`(Id. col. 3 ll. 6-11). In this embodiment, the system “may be employed to monitor the
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`physiologic status of a healthy subject while eating, exercising, or performing other activities.”
`
`(Id. col. 3 ll. 34-36). For example, an individual following an exercise program could attach a
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`5
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`wireless web device to an exercise machine, send data from that machine over the Internet to the
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`server of a health and fitness company, and receive personalized responses from that company.
`
`(Id. col. 3 ll. 21-27).
`
`II.
`
`Legal Standard
`
`The construction of claim terms is a question of law, which may in some cases rely on
`
`underlying factual determinations. See Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,
`
`325-26 (2015); Markman v. Westview Instruments, 517 U.S. 370, 372 (1996) (“[T]he
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`construction of a patent, including terms of art within its claim, is exclusively within the
`
`province of the court.”).
`
`In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit
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`clarified the proper approach to claim construction and set forth principles for determining the
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`hierarchy and weight of the definitional sources that give a patent its meaning. The guiding
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`principle of construction is “the meaning that the term would have to a person of ordinary skill in
`
`the art in question at the time of . . . the effective filing date of the patent application.” Id. at
`
`1313. Courts thus seek clarification of meaning in “the words of the claims themselves, the
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`remainder of the specification, the prosecution history, and extrinsic evidence concerning
`
`relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at
`
`1314 (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116
`
`(Fed. Cir. 2004)).
`
`The Words of the Claim
`
`A.
`The claim construction analysis normally begins with the claims themselves.2 The
`
`
`2 In Phillips, the Federal Circuit discredited the practice of starting claim-construction analysis with broad
`definitions found in dictionaries and other extrinsic sources:
`
`[I]f the district court starts with the broad dictionary definition . . . and fails to fully appreciate
`how the specification implicitly limits that definition, the error will systematically cause the
`6
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`claims of a patent “define the invention to which the patentee is entitled the right to exclude.” Id.
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`at 1312 (quoting Innova, 381 F.3d at 1115).
`
`A court may construe a claim term to have its plain meaning when such a construction
`
`resolves a dispute between the parties. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co.,
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`521 F.3d 1351, 1361 (Fed. Cir. 2008); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d
`
`1554, 1568 (Fed. Cir. 1997) (“Claim construction is a matter of resolution of disputed meanings
`
`and technical scope, to clarify and when necessary to explain what the patentee covered by the
`
`claims, . . . [but] is not an obligatory exercise in redundancy.”).
`
`In some instances, it is the arrangement of the disputed term in the claims that is
`
`dispositive. “This court’s cases provide numerous . . . examples in which the use of a term
`
`within the claim provides a firm basis for construing the term.” Phillips, 415 F.3d at 1314. For
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`example, because claim terms are normally used consistently throughout the patent, the meaning
`
`of a term in one claim is likely the meaning of that same term in another. See id. In addition,
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`“the presence of a dependent claim that adds a particular limitation gives rise to a presumption
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`that the limitation in question is not present in the independent claim.” Id. at 1315.
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`B.
`
`The Specification
`
`“The claims, of course, do not stand alone.” Id. “Rather, they are part of a fully
`
`integrated written instrument, consisting principally of a specification that concludes with the
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`claims.” Id. (internal citations and quotation marks omitted). For that reason, the specification
`
`
`construction of the claim to be unduly expansive. The risk of systematic overbreadth is greatly
`reduced if the court instead focuses at the outset on how the patentee used the claim term in the
`claims, specification, and prosecution history, rather than starting with a broad definition and
`whittling it down.
`
`415 F.3d at 1321. Of course, if no special meaning is apparent after reviewing the intrinsic evidence, claim
`construction might then “involve[] little more than the application of the widely accepted meaning of commonly
`understood words.” Id. at 1314.
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`
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`must always be consulted to determine a claim’s intended meaning. The specification “is always
`
`highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best
`
`guide to the meaning of a disputed term.” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90
`
`F.3d 1576, 1582 (Fed. Cir. 1996)).
`
`“In general, the scope and outer boundary of claims is set by the patentee’s description of
`
`his invention.” On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1338 (Fed. Cir.
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`2006); see also Phillips, 415 F.3d at 1315-17 (“[T]he interpretation to be given a term can only
`
`be determined and confirmed with a full understanding of what the inventors actually invented
`
`and intended to envelop with the claim.” (quoting Renishaw PLC v. Marposs Societa’ per Azioni,
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`158 F.3d 1243, 1250 (Fed. Cir. 1998))). “[T]he specification may reveal a special definition
`
`given to a claim term by the patentee that differs from the meaning it would otherwise possess.”
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`Phillips, 415 F.3d at 1316. It may also reveal “an intentional disclaimer, or disavowal, of claim
`
`scope by the inventor.” Id. Therefore, the claims are to be construed in a way that makes them
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`consistent with, and no broader than, the invention disclosed in the specification. See On
`
`Demand, 442 F.3d at 1340 (“[C]laims cannot be of broader scope than the invention that is set
`
`forth in the specification.”); Phillips, 415 F.3d at 1316 (“[C]laims must be construed so as to be
`
`consistent with the specification, of which they are a part.” (quoting Merck & Co. v. Teva
`
`Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003))).
`
`Nevertheless, courts must be careful to “us[e] the specification [only] to interpret the
`
`meaning of a claim” and not to “import[] limitations from the specification into the claim.” Id. at
`
`1323. A patent’s “claims, not specification embodiments, define the scope of patent protection.”
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`Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009); see also Innova/Pure
`
`Water, 381 F.3d at 1117 (“[E]mbodiments appearing in the written description will not be used
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`to limit claim language that has broader effect.”). In particular, the Federal Circuit has
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`“expressly rejected the contention that if a patent describes only a single embodiment, the claims
`
`of the patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d at
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`1323. This is “because persons of ordinary skill in the art rarely would confine their definitions
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`of terms to the exact representations depicted in the embodiments.” Id.
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`Although this distinction “can be a difficult one to apply in practice[,] . . . the line
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`between construing terms and importing limitations can be discerned with reasonable certainty
`
`and predictability if the court’s focus remains on understanding how a person of ordinary skill in
`
`the art would understand the claim terms.” Id. “The construction that stays true to the claim
`
`language and most naturally aligns with the patent’s description of the invention will be, in the
`
`end, the correct construction.” Id. at 1316 (quoting Renishaw, 158 F.3d at 1250).
`
`C.
`
`The Prosecution History
`
`After the specification and the claims themselves, the prosecution history is the next best
`
`indicator of term meaning. The prosecution history “consists of the complete record of the
`
`proceedings before the PTO and includes the prior art cited during the examination of the
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`patent.” Id. at 1317. “Like the specification, the prosecution history provides evidence of how
`
`the PTO and the inventor understood the patent.” Id. “[T]he prosecution history can often
`
`inform the meaning of the claim language by demonstrating how the inventor understood the
`
`invention and whether the inventor limited the invention in the course of prosecution, making the
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`claim scope narrower than it would otherwise be.” Id.
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`However, “because the prosecution history represents an ongoing negotiation between
`
`the PTO and the applicant, rather than the final product of that negotiation, it often lacks the
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`clarity of the specification and thus is less useful for claim construction purposes.” Id. As a
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`result, courts generally require that “a patent applicant . . . clearly and unambiguously express
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`surrender of subject matter” to disavow claim scope during prosecution. Voda v. Cordis Corp.,
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`536 F.3d 1311, 1321 (Fed. Cir. 2008) (quoting Sorensen v. International Trade Comm’n, 427
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`F.3d 1375, 1378-79 (Fed. Cir. 2005)).
`
`D.
`
`Extrinsic Evidence
`
`Extrinsic evidence consists of “all evidence external to the patent and prosecution history,
`
`including expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415 F.3d
`
`at 1317 (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)). It
`
`“can help educate the court regarding the field of the invention and can help the court determine
`
`what a person of ordinary skill in the art would understand claim terms to mean.” Id. at 1319.
`
`However, extrinsic evidence suffers from a number of defects, including its independence from
`
`the patent, potential bias, and varying relevance. See id. at 1318-19. Such evidence is therefore
`
`“unlikely to result in a reliable interpretation of patent claim scope unless considered in the
`
`context of the intrinsic evidence,” and courts may consider, or reject, such evidence at their
`
`discretion. Id. at 1319.
`
`III. Analysis
`
`There are six disputed terms in the patents:
`
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`10
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`Patent &
`Claims
`
`Term
`
`The ’007 Patent
`Claims 1, 21
`
`“means for
`computing athletic
`performance
`feedback data from
`the series of time-
`stamped waypoints
`obtained by said
`GPS receiver”
`
`The ’007 Patent
`Claim 7
`
`“means for
`suspending and
`resuming operation
`of said means for
`computing when a
`speed of the athlete
`falls below a
`predetermined
`threshold”
`
`Defendant’s construction
`
`35 U.S.C. § 112, ¶ 6
`
`Function: computing
`elapsed distance, current
`and average speeds and
`paces, calories burned,
`miles remaining and time
`remaining from the series of
`time stamped waypoints
`obtained by said GPS
`receiver. Col.7:45-48.
`
`Structure: a processor and
`smart algorithm. Fig. 6,
`Col.7:45-48, 7:52-56.
`
`Indefinite. No algorithm
`disclosed to perform the full
`scope of the claimed
`function.
`
`35 U.S.C. § 112, ¶ 6
`
`Function: suspending and
`resuming operation of said
`means for computing when
`a speed of the athlete falls
`below a predetermined
`threshold
`
`Structure: Indefinite. No
`structure disclosed that
`performs the claimed
`function.
`
`Plaintiff’s 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
`
`35 U.S.C. § 112, ¶ 6
`
`Function: computing athletic
`performance feedback data [as
`construed above as elapsed
`distance of an athlete, current or
`average speed of an athlete, and
`current or average pace of an
`athlete] from the series of time
`stamped waypoints obtained by
`said GPS receiver
`
`Structure: a processor and
`equivalents thereof (see, e.g.,
`Fig. 6, col. 5 ll. 36-40 and col. 9 ll.
`31-35)
`
`Not indefinite.
`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
`
`35 U.S.C. § 112, ¶ 6
`
`Function: suspending and
`resuming operation of said means
`for computing when a speed of the
`athlete falls below a predetermined
`threshold (as construed above)
`
`Structure: a processor and
`equivalents thereof (see, e.g.,
`Fig.6, col. 5 ll. 36-40 and col. 9 ll.
`31-35.)
`
`Not indefinite.
`
`
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`Term
`
`Plaintiff’s construction
`
`Defendant’s construction
`
`Patent &
`Claims
`
`The ’233 Patent
`Claim 1
`
`“governing
`information
`transmitted between
`the first personal
`device and the
`second device”
`
`controlling the transmission of
`information between the first
`personal device and the second
`device
`
`No construction necessary.
`
`Alternatively: a device for private
`use by a person
`
`No construction necessary.
`
`personal medical device
`
`The ’233 Patent
`
`“first personal
`device”
`
`The ’233 Patent
`Claims 1, 13,
`15, 16
`
`“wireless
`communication”
`
`an over-the-air communication
`(e.g., using radiofrequency (RF),
`infrared, or optical techniques)
`
`No construction necessary.
`
`The ’377 Patent
`
`“indicating a
`physiologic status of
`a subject”
`
`
`(Dkt. No. 80-1).3
`
`A.
`
`The ’007 Patent
`
`No construction necessary.
`
`indication of a subject’s
`current physiological state
`
`1.
`
`“means for computing athletic performance feedback data from the
`series of time-stamped waypoints obtained by said GPS receiver”
`
`Term
`
`“means for
`computing athletic
`performance
`feedback data from
`the series of time-
`stamped waypoints
`obtained by said
`GPS receiver”
`
`Plaintiff’s 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
`
`35 U.S.C. § 112, ¶ 6
`
`Function: computing athletic performance feedback
`data [as construed above as elapsed distance of an
`athlete, current or average speed of an athlete, and
`current or average pace of an athlete] from the series
`of time stamped waypoints obtained by said GPS
`receiver
`
`
`Defendant’s construction
`35 U.S.C. § 112, ¶ 6
`
`Function: computing elapsed
`distance, current and average
`speeds and paces, calories burned,
`miles remaining and time
`remaining from the series of time
`stamped waypoints obtained by
`said GPS receiver. Col.7:45-48.
`
`Structure: a processor and smart
`algorithm. Fig. 6, Col.7:45-48,
`7:52-56.
`
`Indefinite. No algorithm
`disclosed to perform the full
`
`
`3 Fitbit’s proposed constructions for the two ’007 terms change, without explanation, across the three
`claim-construction charts that the parties have submitted. (See Dkt. Nos. 65-1, 68-1, 80-1). It is also worth noting
`that both parties make slight tweaks to how they describe their proposed constructions in their briefs. The changes
`appear to be more stylistic than substantive. For that reason, the Court will use the parties’ final claim-construction
`chart, with minor formatting edits.
`
`
`
`12
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1081 Page 0012
`
`

`

`Case 1:19-cv-11586-FDS Document 212 Filed 07/22/21 Page 13 of 35
`
`Term
`
`Plaintiff’s construction
`Structure: a processor and equivalents thereof (see,
`e.g., Fig. 6, col. 5 ll. 36-40 and col. 9 ll. 31-35)
`
`Not indefinite.
`
`Defendant’s construction
`scope of the claimed function.
`
`
`The first term disputed by the parties is “means for computing athletic performance
`
`feedback data from the series of time-stamped waypoints obtained by said GPS receiver.” That
`
`term appears in Claims 1 and 21 of the ’007 patent. For example, Claim 1 recites the following:
`
`A portable feedback system providing regular updates on an athlete’s
`performance, comprising:
`
`
`a global positioning system GPS receiver that obtains a series of time-
`stamped waypoints;
`
`means for computing athletic performance feedback data from the series of
`time-stamped waypoints obtained by said GPS receiver; and
`
`means for presenting the athletic performance feedback data to an athlete.
`
`
`(’007 patent col. 11 ll. 9-17 (emphasis added)).
`
`The parties agree that the term is governed by 35 U.S.C. § 112, ¶ 6, which addresses
`
`“means-plus-function” claims.4 The statute provides as follows:
`
`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. “In enacting this provision, 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
`
`
`4 The America Invents Act, Pub. L. 112-29, 125 Stat. 284 (2011), updated § 112 to letter the paragraphs
`and insert references to joint inventors. See id. § 4(c). That amendment took effect on September 16, 2012, and
`applies to any patent application filed on or after that date. See id. § 4(e). The ’007 patent is subject to the earlier
`version of § 112. The Court will therefore refer to the subsection governing “means-plus-function” limitations as §
`112, ¶ 6.
`
`
`
`13
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1081 Page 0013
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`

`

`Case 1:19-cv-11586-FDS Document 212 Filed 07/22/21 Page 14 of 35
`
`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, 1347 (Fed. Cir. 2015).
`
`“Permitting an applicant to use a broad means expression for claiming a functional limitation
`
`provided that the specification indicates what structure constitutes the means for performing the
`
`claimed function is often referred to as the ‘quid pro quo’ for the convenience of employing
`
`§ 112, ¶ 6.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 n.1 (Fed. Cir. 2007).
`
`Construction of a means-plus-function limitation is a two-step process. Courts must first
`
`“determine the claimed function.” Noah Sys., Inc. v. Intuit, Inc., 675 F.3d 1302, 1311 (Fed. Cir.
`
`2012) (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir.
`
`2006)). They must then “identify the corresponding structure in the written description of the
`
`patent that performs the function.” Id. (quoting Applied Med. Res. Corp., 448 F.3d at 1332). “If
`
`the patentee fails to disclose [an] adequate corresponding structure, the claim is indefinite.”
`
`Williamson, 792 F.3d at 1351-52.
`
`Here, the parties dispute both (1) the meaning of the phrase “athletic performance
`
`feedback data” as it is used in the claimed function and (2) whether a corresponding structure
`
`that performs the claimed function is adequately disclosed in the patent.
`
`a.
`
`Claimed Function
`
`The parties agree that the claimed function is “computing athletic performance feedback
`
`data from the series of time-stamped waypoints obtained by said GPS receiver.” They dispute,
`
`however, how to interpret the phrase “athletic performance feedback data” within that
`
`description.
`
`Defendant contends that the phrase includes “elapsed distance, current and average
`
`speeds and paces, calories burned, miles remaining, and time remaining.” (Def. Mem. at 2).
`14
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`Fitbit, Inc. v. Philips North America LLC
`IPR2020-00783
`
`Fitbit, Inc. Ex. 1081 Page 0014
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`

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`Case 1:19-cv-11586-FDS Document 212 Filed 07/22/21 Page 15 of 35
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`Plaintiff first contends that the phrase includes only “elapsed distance of an athlete,” “current or
`
`average speed of an athlete,” and “current or average pace of an athlete.” (Pl. Mem. at 5). The
`
`dispute therefore initially concerns whether “athletic performance feedback data” includes
`
`calories burned, miles remaining, and time remaining. In its responsive brief, however, plaintiff
`
`tempers its position. It states that it “would not object to including ‘miles remaining’ and ‘time
`
`remaining’ to its proposed construction” because “those items would be derivative of calculating
`
`elapsed distance and speed.” (Pl. Resp. at 2-3). The dispute thus boils down to whether “athletic
`
`performance feedback data” includes “calories burned.”
`
`Plaintiff contends that “calories burned” does not constitute a form of “athletic
`
`performance feedback data” because it is not data that provides feedback on an athlete’s
`
`performance during an exercise session. “Information such as distance, speed and pace is the
`
`sort of information provided as feedback on an athlete’s performance during an exercise session,
`
`while tracking calories has little to do with feedback on performance as opposed to being useful
`
`for weight management over time.” (Pl. Mem. at 7). According to plaintiff, “the specification
`
`never contemplates calories being provided as feedback data dur