Fitbit, Inc.* v. Philips North America
`______________________
`IPR 2020-00783
`Patent No. 7,088,233
`
`Patent Owner’s Demonstrative Exhibits
`
`*Garmin has been joined as a petitioner
`
`1
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`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`IPR2020-00783
`Koninklijke Philips EX2036
`
`
`______________________
`IPR 2020-00783
`Patent No. 7,088,233
`
`Patent Owner’s Demonstrative Exhibits
`
`*Garmin has been joined as a petitioner
`
`1
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`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`IPR2020-00783
`Koninklijke Philips EX2036
`
`
`
`Claim Construction
`• “Usually, the specification is dispositive, and it is the single best guide to the meaning
`of a disputed term. Id. [Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)] at
`1315.” Inst. Dec’n, 10.
`• “The claims, of course, do not stand alone. Rather, they are part of ‘a fully integrated
`written instrument,’ consisting principally of a specification that concludes with the
`claims. For that reason, claims ‘must be read in view of the specification, of which they
`Inst. Dec. at 11
`are a part.’” Phillips at 1315 (citations omitted).
`• “[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.” Id. at 1316 (citing Renishaw PLC v. Marposs Societa' per Azioni, 158
`F.3d 1243, 1249 (Fed. Cir. 1998); see also Renishaw, 158 F.3d at 1252 (“to the extent that
`these passages [from the specification] refer to the preferred embodiment, they cannot
`be read into the claims without some hook. The claim term ‘when’ is that hook.”)
`Id.
`• “[A] court should discount any expert testimony ‘that is clearly at odds with the claim
`construction mandated by the claims themselves, the written description, and the
`prosecution history, in other words, with the written record of the patent.’” Id. at 1318.
`• “[U]ndue reliance on extrinsic evidence poses the risk it will be used to change the
`meaning of claims.” Id. at 1319.
`Id.
`
`Id.
`
`2
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`
`
`Claim 1
`Claim 1 recites:
`A bi-directional wireless communication system comprising:
`(a) a first personal device, the first personal device further comprising:
`(i) a processor;
`(ii) a memory;
`(iii) a power supply;
`(iv) at least one detector input; and
`(v) a short-range bi-directional wireless communications module;
`(b) a second device communicating with the first device, the second device
`having a short-range bi-directional wireless communications module
`compatible with the short-range bi-directional wireless communications
`module of the first device; and
`(c) a security mechanism governing information transmitted between the first
`personal device and the second device.
`
`(1) Information communicated between two devices with short-range bi-directional
`wireless communications modules
`(2) Security mechanism governing information transmitted between the first
`personal device and the second device
`
`3
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`
`
`Claim 13 and Claim 22
`Claim 13 recites:
`The system of claim 1, wherein the short-range wireless communications
`further comprises BLUETOOTH technology.
`
`Claim 22 recites:
`The system of claim 15, wherein the central communications base station
`further comprises a connection to the Internet.
`
`Claim 15 recites:
`The system of claim 1, further comprising a central communications base
`station communicating with the first personal device using short-range
`wireless communications.
`
`Total challenged claims: 1, 7-10, 13-16, 22, 24-26.
`
`Single ground challenge to claim 13 (Ground 4) and claim 22 (Ground 7).
`
`4
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`
`
`Claim 1–Governing Information Transmitted
`“may include a separate, integrated
`or software based short-range bi-
`directional wireless module. The
`short range network may be based
`upon … Bluetooth.” Ex. 1001, 5:57-
`60.
`
`security mechanism
`governing access to
`information transmitted
`
`Mechanism must -
`(a) Provide security
`(b) Govern access to
`information transmitted by
`short range communications
`between the devices.
`
`5
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`
`
`Claim 13–BLUETOOTH
`
`“may include a separate, integrated
`or software based short-range bi-
`directional wireless module. The
`short range network may be based
`upon … Bluetooth.” Ex. 1001, 5:57-
`60.
`
`security mechanism
`governing access to
`information transmitted
`
`(1) Mechanism must -
`(a) Provide security
`(b) Govern access to
`information transmitted by
`short range Bluetooth module
`communications between the
`devices.
`
`6
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`
`
`Claim 22–Central Communications Base Station
`and Internet
`
`information transmitted between
`the first personal device and the
`second device
`See e.g., Ex. 1001, 12:16-22, 12:38-
`46.
`
`POR, 5, 19 and
`21
`
`Central Communications
`Base Station and
`Internet
`
`Inst. Dec., 5.
`
`7
`
`Inst. Dec., 5;
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`
`
`Earlier Rulings—Claim 1
`• The Institution Decision observed, “The ’233 patent further provides for security
`arrangements to restrict the exchange of information to authorized agents. Id. at
`13:24–14:14.” Inst. Dec., 6.
`
`• The California Court observed, “Both parties appear to agree … that the purpose of
`Claim 1’s requirement for “a security mechanism governing information transmitted
`between the first personal device and the second device” is to ensure that only
`appropriate information is available to the appropriate second party”. Ex. 2023, p. 13.
`POR at 7; Ex. 2026 Martin Decl. at 40
`– “[T]he Court generally agrees with both parties that, considered in the context of the
`patent specification, “governing information transmitted” must ultimately serve the
`purpose of preventing the wrong user from being able to review (unencrypted)
`information…” Ex. 2023, p. 14-15.
`POR at 7
`
`• The Massachusetts Court observed that “the Court finds no reason to construe the
`disputed term at this time” and, therefore, the term “does not require construction and
`will be given its plain and ordinary meaning.” Ex. 1081, Philips N. America LLC v. Fitbit,
`Inc., Case No. 19-11586 [212], Memorandum and Order on Claim Construction(July 22,
`2021), p. 26.
`
`8
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`
`
`Intrinsic Evidence- Specification (Ex. 1001)
`• “[V]arious types of security arrangements” Ex.
`1001, 13:25-26.
`Ex. 2026 ¶ 29; POR at 4
`• Access to information from device 100 over
`short range module.
`– Ex. 1001, 12:67-13:14, 13:52-54; 2:12-22 (“The
`purpose for communications include but are
`not limited to the following: to provide health
`care professionals with access to information
`for remote diagnostic capabilities…; to provide
`a location information of mobile persons for
`caregivers;”).
`Inst. Dec., 4; POR at 2
`• Access to voice and visual from device 100 over
`short range module.
`– 13:47-49; see also, 12:30-33; 3:50-53.
`POR at 10
`• “Only authorized agents should be allowed
`access to the device 100.” 13:30-31.
`POR at 19
`
`Ex. 1001, 13:24-40
`
`Ex. 1001, 13:47-49
`
`9
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`POR at 19
`
`
`
`Background of the Invention: BLUETOOTH
`• The ‘233 patent recognized prior systems had no mechanisms for governing
`distribution of information transmitted over short-range modules:
`– Prior “BLUETOOTH standard” that was “in compliance with BLUETOOTH® technical
`specification version 1.0.” Ex. 1001, 4:49-53 and 5:4-6, respectfully.
`POR, 39; Ex. 2026, ¶ ¶ 28, 95
`• BLUETOOTH provided encryption, but did not include a mechanism governing
`information transmitted. There was no way to differentiate access to transmitted
`information (governing information transmitted). It was full access or no access; not
`access on the basis of what information is involved.
`
`Id.
`
`10
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`
`
`Background of the Invention: Bluetooth
`
`Ex. 2029, 11.
`
`• Martin Decl. (Ex. 2026)¶32: “As noted in the BLUETOOTH
`Security Architecture white paper, Version 1.0 (15 July
`1999), the BLUETOOTH standard does not provide
`authentication of users, only of devices. See Ex. 2029, 11. . .
`That is, since its inception, BLUETOOTH’s encryption scheme
`is focused on establishing secure communications links, and
`is not focused on access to various levels of the information
`that may be transmitted over those links. For situations
`where it is desirable to verify and authorize a user’s access,
`user authentication should be implemented by other
`means, such as by any application that may employ
`BLUETOOTH for communications.”
`• Martin Decl., ¶95: “additional security schemes, such as
`application-level authentication of users that would protect
`information transmitted over BLUETOOTH, are
`recommended because BLUETOOTH itself only provided
`security over the transmission—and not the information
`transmitted. Ex. 2029, 11.”
`
`11
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`
`
`Observations on Intrinsic Evidence
`• Securing information is different from governing information, they may work together,
`but the are different. “Governing” in the element must be given meaning beyond
`“security”.
`– Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1399 (Fed. Cir.
`2014) (Rejecting claim interpretation where “the separate sub-step for establishing a
`connection would become superfluous" if we concluded that a connection did not
`have to be established (completed) before transmission.)
`• Reading passcodes and encryption alone to ignores what the “inventors actually
`invented and intended to envelop with the claim.” See Phillips, 415 F.3d at 1316.
`• Petitioners have failed to point to any instance in the specification where governing the
`information is done by unlocking a device so that it may function. Security for a device
`is different from security for information that governs the information.
`• Petitioners have raised a false strawman that Philips asserts that “multiple levels of
`access” are required by the claims.
`– A mechanism for security and governing information transmitted. They are separate
`limitations within the element.
`
`12
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`POR at 9; 21-23
`
`
`
`Petitioners’ positions (Jacobsen and Say)
`• “A ‘disable[d]’ wrist sensor/display unit 18 could no longer transmit sensor data, and
`therefore disablement would ‘govern’ the transmission of sensor data from wrist
`sensor/display unit 18 to soldier unit 50.” Pet., 37 – April 8, 2020.
`– Misapplies Claim 1
`• “Jacobsen’s software can secure a device without fully disabling it.” Reply at 15 –
`August 28, 2020.
`– No supporting disclosure in Jacobson
`
`• “Say describes one benefit of encryption was to ‘eliminate ‘crosstalk’ and to identify
`signals from the appropriate on-skin sensor control unit 44,’ which avoided problems
`due to the ‘presence of other devices’ that ‘create[d] noise or interference within the
`frequency band of the transmitter[.]’” Pet., 69-70.
`– Misapplies Claim 1
`
`• No security mechanism “governing information transmitted between the first
`personal device and the second device.” (Claim 1)
`
`13
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`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
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`
`
`Jacobsen does not anticipate Claims 1, 7-10, 14
`(Ground 1)
`
`Ex. 1005, 15:5-14.
`
`POR at 24
`
`• Totality of disclosure relied upon.
`• No other mention of “password” or “code” in the specification. Inconsistent
`with Fig. 4A.
`POR at 23-29
`• No mention of security for the Body Local Area Network (body-LAN)
`between the wrist unit and the soldier unit. Ex. 2026, ¶¶104-105, ¶110.
`• No support for Petitioners’ position of something in Jacobsen that will
`“secure a device without fully disabling it.” Reply, 15.
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`Id.
`
`14
`
`
`
`Jacobsen
`
`Body Local Area Network. No security disclosed
`for communications.
`“A pair of control buttons 208 and 212 are
`provided to enable the soldier to chose what
`information is displayed, and to control the LCD
`illumination when necessary.” Ex. 1005, 9:29-
`32.
`
`“The radio preferably uses brief
`bursts of data to prevent enemies
`from accurately tracking the soldier
`by monitoring the data
`transmissions. Those familiar with
`radio communications will be able
`to identify protocols which will
`assist in preventing the signals from
`being used by enemy forces.” Ex.
`1005, 7:39-45.
`“[D]isablement will not be critical
`for soldier units.” Ex. 1005, 15:10-
`11.
`
`POR, 43;Ex.
`2026, ¶ ¶ 104-
`105.
`
`15
`
`POR at 25-27.
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`
`
`Say does not render Claims 1, 7-10, 14
`unpatentable (Ground 2)
`
`Ex. 1006, 49:38-53.
`• No security mechanism – cross talk
`management.
`• Receiver/Display 46 receives all
`information for deciphering.
`• No crosstalk in the direction of
`communication from receiver/display
`unit to sensor control unit.
`
`POR at 34, 37, & 40; Ex. 2026 ¶ 96; Pet.,
`48.
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`16
`
`
`
`Ground 3—Jacobsen/Say
`• Neither have a “security mechanism governing information transmitted between the
`first personal device and the second device.”
`• Jacobsen does not identify any cross talk issue between the wrist sensor and the soldier
`unit. See Ex. 1005; 7:49-55; Ex. 2026 (Martin Decl.), ¶111.
`• Adding encryption, especially by Bluetooth (claim 13) would have require additional
`power consumption and potentially increase a soldier’s electronic signature. Ex. 2026,
`¶108-109; Ex. 2031.
`– Increasing power usage would have been detrimental to Jacobsen. Ex. 2026, ¶108-
`113.
`• Cross-talk mitigation techniques are not a substitute for disabling means. Ex. 2026,
`¶110.
`• Jacobsen’s concern with “interference” is not directed to interference from different
`sensor devices. Ex. 2026, ¶112.
`• Even if combined (which would be against teachings), the result fails to meet the claim.
`
`17
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`
`
`Ground 4—Claim 13 is patentable over
`Jacobsen/Say/Quy
`• There is no proper rationale for modifying Jacobsen in view of Say.
`• A POSITA would have recognized in 2001 that BLUETOOTH required a significant amount
`of power to operate. Ex. 2026, ¶¶117-118.
`• The older version of BLUETOOTH “guzzle[d] power.” Ex. 2026, ¶117; Ex. 2035.
`• Petitioner recognized its failure of proof and tried to raise a new ground for invalidity
`and motivation to combine, but that ground was waived as it could have been raised in
`the Petition. See Exs. 1079 and 1080.
`• In any event, the addition of power consumption for no benefit is antithetical to
`Jacobsen.
`
`Ex. 2035 (EE Times), 1.
`
`18
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`
`
`Ground 5—Claims 24-25 are Patentable over
`Jacobsen/Say/Geva
`• No proper rationale for modifying Jacobsen in view
`of Say.
`• No motivation to add Geva’s GPS unit to wrist unit
`of Jacobsen
`– Jacobsen already has a GPS unit. Ex. 1005, 7:24-
`26; see Ex. 2026, ¶¶124-125. Geva does not
`identify any benefit for moving the GPS in
`Jacobsen.
`– A POSITA would not have moved a bulky, 1999
`era GPS to a soldier’s wrist unit
`(cid:131) Jacobsen explicitly disclosed placing the unit
`on a harness worn on the shoulder, reflecting
`Jacobsen’s concern with equipment interfering
`with a soldier’s performance. Ex. 2026, ¶126;
`Ex. 1005, 7:46-55.
`(cid:131) Geva’s “PLC” 200 is located on the monitor 12,
`which is worn on the body, not wrist
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`Ex. 1008 (Geva)
`
`19
`
`
`
`Ground 6—Claim 26 is Patentable over
`Jacobsen/Say/Reber
`• No proper rationale for modifying Jacobsen in view
`of Say.
`• Reber does not disclose a system wherein a
`“bidirectional communications module has a
`powered-down state and a powered-up state, and
`further comprising a means for signaling the bi-
`directional communications module to transition
`from the powered-down state to the powered-up
`state.” Ex. 2026, ¶¶129-134.
`• Reber’s power button does not “selectively” power
`interface 36. Ex. 1020 (Reber), 4:19-30; Ex. 2026,
`¶130. The power button simply turns off the
`device and all of its components.
`• Reber suggests that interface 36 provides power to
`the power source 32. Ex. 1020, 4:31-36, Fig. 1; Ex.
`2026, ¶¶131-134.
`
`Ex. 1020 (Reber), Fig. 1 (partial
`view –annotated).
`
`20
`
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`
`
`Ground 7— Claims 15-16, 22 are Patentable
`over Say/Gabai
`
`• Claim 15 requires a “central communications base
`station communicating with the first personal
`device.”
`• Gabai discloses a toy. Fitbit has not shown a basis
`that a POSITA would look to a toy like Gabai when
`working on a system designed for potential use in
`medical and health related applications. Ex. 2026,
`¶¶137-138.
`
`Ex. 1040 (Gabai)
`
`21
`
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`
`
`Ground 7— Claims 15-16, 22 are Patentable
`over Say/Gabai
`
`• Claim 22 further requires that “the central
`communications base station further comprises a
`connection to the Internet.”
`• Neither Say’s paging capabilities (Ex. 1006, 47:57-62)
`nor repeater unit (id., 48:62-49:14) suggest
`combination with a base station providing Internet
`access as with Gabai to obtain games updates.
`POR,56-57.
`• No basis to connect Say’s sensor control unit 44 with
`the Internet to provide access to “online
`pharmaceutical databases” or other information.
`Pet., 96.
`Pet. at 96; POR, 56; Ex. 2026 ¶ 136-137
`– Say’s sensor control unit 44 communicates sensor
`data to receiver/display unit(s) 46, 48: sensor unit
`44 has no capability to process or display
`information from a database. Ex. 1006, Figs. 1,
`18A, 18B
`POR at 57; Ex. 2026 ¶ 137
`
`Ex. 1006 (Say), Figs 1,18B
`
`22
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`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
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`
`
`Ground 7— Claims 15-16, 22 are Patentable
`over Say/Gabai
`• Claim 22 requires a “central communications
`base station communicating with the first
`personal device” “wherein the central
`communications base station further
`comprises a connection to the Internet.”
`• Fitbit fails to explain why Say would find it
`beneficial to includes a central communication
`base station that is connected to the internet.
`– Say’s sensor package is simply designed to
`convey information to the receiver/display
`unit, and it would do nothing with an
`Internet connection.
`
`Ex. 1040 (Gabai)
`
`23
`
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`POR at 56-57
`
`
`
`Appendix of Challenged Claims
`
`1. A bi-directional wireless communication system comprising:
`(a) a first personal device, the first personal device further comprising:
`(i) a processor;
`(ii) a memory;
`(iii) a power supply;
`(iv) at least one detector input; and
`(v) a short-range bi-directional wireless communications module;
`(b) a second device communicating with the first device, the second device having a short-range bi-
`directional wireless communications module compatible with the short-range bi-directional wireless
`communications module of the first device; and
`(c) a security mechanism governing information transmitted between the first personal device and
`the second device.
`7. The system of claim 1, further comprising a detector connected to the at least one detector input.
`8. The system of claim 7, wherein the detector senses body or physiological parameters.
`9. The system of claim 8, wherein the body or physiological parameters are selected from the group
`consisting of temperature, motion, respiration, blood oxygen content, and electroencephalogram.
`10. The system of claim 1, wherein the first personal device further comprises a user interface module.
`
`24
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`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
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`
`
`Appendix of Challenged Claims (cont’d)
`
`13. The system of claim 1, wherein the short-range wireless communications further comprises
`BLUETOOTH technology.
`14. The system of claim 1, wherein the first personal device further comprises a data input/output port,
`the second device further comprises a data input/output port, and wherein the second device
`communicates with the first personal device using the data input/output ports.
`15. The system of claim 1, further comprising a central communications base station communicating
`with the first personal device using short-range wireless communications.
`16. The system of claim 15, wherein the short-range wireless communications is selected from the
`group consisting of HomeRF™, BLUETOOTH, and wireless LAN.
`22. The system of claim 15, wherein the central communications base station further comprises a
`connection to the Internet.
`24. The system of claim 1, wherein the first personal device further comprises a location determination
`module that determines the geographical location of the first personal device.
`25. The system of claim 24, wherein the location determination module further comprises a GPS
`receiver.
`26. The system of claim 1, wherein the bi-directional communications module has a powered-down
`state and a powered-up state, and further comprising a means for signaling the bi-directional
`communications module to transition from the powered-down state to the powered-up state.
`
`25
`
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
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`
`
`Appendix of Grounds
`
`Ground 1: Claims 1, 7-10, 14 are unpatentable under 35 U.S.C. § 102 as anticipated by
`U.S. Patent No. 6,198,394 (“Jacobsen”).
`Ground 2: Claims 1, 7-10, 14 are unpatentable under 35 U.S.C. § 103 as obvious over
`U.S. Patent No. 6,175,752 (“Say”).
`Ground 3: Claims 1, 7-10, 14 are unpatentable under 35 U.S.C. § 103 as obvious over
`Jacobsen in view of Say.
`Ground 4: Claim 13 is unpatentable under 35 U.S.C. § 103 as obvious over Jacobsen in
`view of Say and U.S. Patent No. 6,602,191 (“Quy”).
`Ground 5: Claims 24-25 are unpatentable under 35 U.S.C. § 103 as obvious over
`Jacobsen in view of Say and U.S. Patent No. 6,366,871 (“Geva”).
`Ground 6: Claim 26 is unpatentable under 35 U.S.C. § 103 as obvious over Jacobsen in
`view of Say and U.S. Patent No. 5,961,451 (“Reber”).
`Ground 7: Claims 15-16, 22 are unpatentable under 35 U.S.C. § 103 as obvious over Say
`in view of U.S. Patent No. 6,160,986 (“Gabai”).
`
`26
`
`DEMONSTRATIVE EXHIBIT- NOT EVIDENCE
`
`
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