Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Entered: October 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FITBIT LLC,
`Petitioner,
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`Patent Owner.
`____________
`
`IPR2020-007831
`Patent No. 7,088,233 B2
`____________
`
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`1 Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd., filed a
`petition in IPR2020-00910 and have been joined as petitioner in this
`proceeding.
`
`
`
`
`571-272-7822
`
`Paper 34
`Entered: October 4, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FITBIT LLC,
`Petitioner,
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`Patent Owner.
`____________
`
`IPR2020-007831
`Patent No. 7,088,233 B2
`____________
`
`
`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER,
`and NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`1 Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd., filed a
`petition in IPR2020-00910 and have been joined as petitioner in this
`proceeding.
`
`
`
`
`
`IPR2020-00783
`Patent 7,088,233 B2
`
`
`I.
`INTRODUCTION
`In response to a Petition filed by Fitbit, Inc. (“Petitioner”), now Fitbit
`LLC, we instituted inter partes review of claims 1, 7–10, 13–16, 22, and 24–
`26 of U.S. Patent No. 7,088,233 B2 (“the ’233 patent”). Paper 1 (“Pet.”);
`Paper 12 (“Dec.”); Paper 33. Philips North America LLC (“Patent Owner”)
`filed a Response to the Petition, Petitioner filed a Reply, and Patent Owner
`filed a Sur-Reply. Paper 17 (“PO Resp.”); Paper 22 (“Reply”); Paper 24
`(“Sur-Reply”).
`An oral hearing took place on July 29, 2021. The Hearing Transcript
`(“Tr.”) is included in the record as Paper 32. After considering the parties’
`arguments and supporting evidence, we determine that Petitioner has
`demonstrated by a preponderance of the evidence that claims 1, 7–10, 13,
`15, 16, 22, and 24–26 are unpatentable. Claim 14 has not been proven to be
`unpatentable.
`
`II.
`
`BACKGROUND
`
`A. The ’233 Patent
`The ’233 patent, titled “Personal Medical Device Communication
`System and Method,” was filed on June 7, 2002, issued on August 8, 2006,
`and recites various continuation-in-part and continuation applications as
`related. Ex. 1001, codes (54), (22), (45), (63), (60).2 The patent also states
`that it is related to “[p]rovisional application No. 60/135,862, filed on May
`
`2 The ’233 patent states that it is a “[c]ontinuation-in-part of application No.
`09/956,474, filed on Sep. 19, 2001, which is a continuation of application
`No. 09/384, 165, filed on Aug. 27, 1999, now Pat. No. 6,356,192,
`application No. 10/165,624, which is a continuation-in-part of application
`No. 10/112,669, filed on Mar. 28, 2002, and a continuation-in-part of
`application No. PCT/US01/18734, filed on Jun. 8, 2001.” Id. at code (63).
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`25, 1999, provisional application No. 60/105,493, filed on Oct. 23, 1998,
`and provisional application No. 60/279,401, filed on Mar. 28, 2001.” Id. at
`code (60); see Exs. 1013–1015.
`Petitioner assumes for purposes of its challenge that the earliest
`effective filing date for all but claims 13, 24, and 25 of the ’233 patent is the
`October 23, 1998, filing date of application No. 60/105,493. Pet. 3. For
`claims 24 and 25, Petitioner argues that the earliest effective filing date is
`the May 25, 1999, filing date of application No. 60/135,862. Id. at 3, 19–20
`(citing Ex. 1002 ¶¶ 45–46). For claim 13, Petitioner argues that the earliest
`effective filing date is the March 28, 2001, filing date of application No.
`60/279,401. Id. at 3–4, 20 (citing Paradiso Decl. ¶¶ 45, 47). Patent Owner
`does not contest these assertions for purposes of this proceeding. PO Resp.
`6–7. This Decision adopts Petitioner’s unopposed positions on priority
`dates.
`
`The ’233 patent describes a “personal and/or institutional health and
`wellness communications system, which may be used for a variety of
`emergency and non-emergency situations using two-way communication
`devices and a bi-directional communication network.” Id. at code (57).
`Figure 5 of the ’233 patent is reproduced below.
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`Figure 5 is a network diagram showing communications with various system
`components. Id. at 2:47–48. Figure 5 shows Personal Medical Device 100,
`which may be implanted, or carried on the person, of Victim V. Id. at
`11:49–50. For example, Personal Medical Device 100 could be a
`pacemaker. As another example, Personal Medical Device 100 could have
`one or more sensor inputs connected to external or embedded “detectors
`140” (not shown on Figure 5) that:
`may be any sensor of bodily or physiological parameters such
`as, but not limited to: temperature, motion, respiration, blood
`oxygen content, electrocardiogram (ECG), electroencepha-
`logram (EEG), and other measurements.
`Id. at 3:27–33.
`Figure 5 shows that Personal Medical Device 100 may communicate
`with Medical Device Interface 600 (elsewhere numbered “200”), which in
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`turn can communicate via network 400 with other agents or devices that
`would be involved in addressing the medical problem or emergency
`involving Victim V. Id. at Fig. 5, 3:12–15. One such device is a central
`communications base station which in turn can communicate with personal
`medical devices or a central monitoring station that can initiate emergency
`dispatch services, for example. Id. at Fig. 1, 8:40–63, 10:14–17.
`The ’233 patent discloses that Personal Medical Device 100 includes a
`power module, such as a battery, a memory, and a processor, and may
`include connections to the above-mentioned sensors, a user interface module
`with a display and other user input/output devices, and a short range wireless
`communications module. Id. at Figs. 2, 3, 3:18–33, 3:50–4:10. Personal
`Medical Device 100 can also include a GPS (Global Positioning System)
`receiver to enable determining the location of the victim. Id. at 12:63–13:8.
`In addition, Personal Medical Device 100 can include power management
`circuitry to save battery life by powering off the communications module
`when not needed. Id. at 14:15–60.
`The short range wireless communications module of Personal Medical
`Device 10 can communicate with Medical Device Interface 600 and the
`central communications base station, which also may include short range
`wireless communications modules. Id. at Fig. 4A, 4:14–21, 7:55–57, 8:41–
`46. One mode of short range wireless communication uses the Bluetooth
`standard. Id. at 4:49–60. The ’233 patent “impos[es]” a “meaning” on the
`phrase “short range wireless networks” “to include premises and facility
`based wireless networks and not to describe long-range networks such as
`cellular telephone networks used to communicate over long-distances.” Id.
`at 5:61–65.
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`The ’233 patent further provides for security arrangements to restrict
`the exchange of information to authorized agents. Id. at 13:24–14:14.
`Exemplary arrangements include the use of passwords, and various
`encryption techniques such as security keys and public/private key
`exchange. Id. at 8:12–15, 13:43–65.
`In sum, the ’233 patent states that a purpose of providing
`communications between the personal medical device and other agents or
`devices is:
`to provide health care professionals with access to information
`for remote diagnostic capabilities; to provide notification of
`acute 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 responsible parties of the occurrence of a medical
`condition; and to provide remote intervention assistance by
`caregivers through verbal or visual interaction.
`Id. at 2:11–22.
`
`B. Illustrative Claim
`Independent claim 1 of the ’233 patent is the only challenged
`independent claim and is illustrative of the challenged claims, and is
`reproduced below.
`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
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`(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.
`Ex. 1001, 14:62–15:12. Comparing claim 1 to Figure 5 of the ’233 patent
`and its accompanying description, we understand Personal Medical
`Device 100 to be an example of the claimed first personal device, and
`Medical Device Interface 600 to be an example of the claimed second
`device.
`
`C. References
`Petitioner relies on the following references (Pet. 2–3):
` Jacobsen et al., U.S. Patent No. 6,198,394. Exhibit 1005
`(“Jacobsen”).
` Say et al., U.S. Patent No. 6,175,752. Exhibit 1006 (“Say”).
` Quy, U.S. Patent No. 6,602,191. Exhibit 1007 (“Quy”).
` Geva, U.S. Patent No. 6,366,871. Exhibit 1008 (“Geva”).
` Reber et al., U.S. Patent No. 5,961,451. Exhibit 1020 (“Reber”).
` Gabai et al., U.S. Patent No. 6,160,986. Exhibit 1040 (“Gabai”).
`Petitioner also relies on the declaration of Dr. Joseph Paradiso. Ex. 1002
`(“Paradiso Decl.”).
`Patent Owner relies on the declaration of Dr. Thomas L. Martin.
`Ex. 2026 (“Martin Decl.”).
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`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 7–10, 13–16, 22,
`and 24–26 of the ’233 patent on the following grounds (Pet. 2–3)3:
`
`Claims Challenged
`1, 7–10, 14
`1, 7–10, 14
`1, 7–10, 14
`13
`24, 25
`26
`15, 16, 22
`
`35 U.S.C. §
`102
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`References
`Jacobsen
`Say
`Jacobsen, Say
`Jacobsen, Say, Quy
`Jacobsen, Say, Geva
`Jacobsen, Say, Reber
`Say, Gabai
`
`E. Real Parties in Interest
`Petitioner identifies Fitbit LLC as the real party in interest. Paper 33.
`Petitioner states that Fitbit LLC is a subsidiary of Google LLC, which is a
`subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.
`Id. Patent Owner identifies itself as the real party in interest. Paper 5, 1.
`
`F. Related Proceedings
`The parties identify the Philips North America LLC v. Fitbit, Inc.,
`No. 1:19-cv-11586 (D. Mass.) (“the Fitbit case”) and Philips North America
`LLC v. Garmin International, Inc. et al., Case No. 2:19-cv-06301-AB-KS,
`
`
`3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective after the filing of the
`application for the ’233 patent. Therefore, we apply the pre-AIA versions of
`these sections.
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`(C.D. Cal.) (“the Garmin case”) as related proceedings. Pet. 1; Paper 5, 1.
`Both patent litigations involve the ’233 patent. Id.
`
`III. ANALYSIS
`A.
`Legal Standards
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`631 (Fed. Cir. 1987). “The identical invention must be shown in as
`complete detail as is contained in the . . . claim.” Richardson v. Suzuki
`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “These elements must be
`arranged as in the claim under review, but this is not an ‘ipsissimis verbis’
`test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted).
`If the prior art reference does not expressly set forth a
`particular element of the claim, that reference still may anticipate
`if that element is “inherent” in its disclosure. . . . “Inherency,
`however, may not be established by probabilities or possibilities.
`The mere fact that a certain thing may result from a given set of
`circumstances is not sufficient.”
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
`Inherency requires that “the allegedly inherent characteristic necessarily
`flows from the teachings of the applied prior art.” Ex parte Levy, 17
`USPQ2d 1461, 1464 (BPAI 1990) (emphasis in original).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
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`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Additionally, secondary considerations, such as “commercial
`success, long felt but unsolved needs, failure of others, etc., might be utilized
`to give light to the circumstances surrounding the origin of the subject
`matter sought to be patented. As indicia of obviousness or nonobviousness,
`these inquiries may have relevancy.” Graham, 383 U.S. at 17–18.
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. Rather, an obviousness determination requires finding
`“both ‘that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements [in the way the claimed] new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted).
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`Further, an assertion of obviousness “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
`Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
`articulation[] of motivation to combine”; “instead, the finding must be
`supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.”).
`The motivation to combine must be “accompanied by a reasonable
`expectation of achieving what is claimed in the patent-at-issue.” Intelligent
`Bio-Sys, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
`2016). “The reasonable expectation of success requirement refers to the
`likelihood of success in combining references to meet the limitations of the
`claimed invention.” Id.
`Level of Ordinary Skill in the Art
`B.
`Petitioner relies on its expert to contend:
`At the time of the alleged inventions a person of ordinary
`skill in the art (“POSITA”) would have had at least a B.S. in
`computer science, electrical engineering, or an equivalent, and
`at least two years of experience in the relevant field, i.e.,
`wireless communications. More education can substitute for
`practical experience and vice versa.
`Pet. 5; Paradiso Decl. ¶ 15.
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`Patent Owner relies on its expert’s testimony in the Fitbit case:
`[A] person of ordinary skill in the art of the patented inventions
`as of the earliest claimed priority date on the face of each
`patent, is an individual with a.) at least a bachelor’s degree in
`electrical engineering, computer engineering, or computer
`science and b.) some experience with activity and/or health
`monitoring technologies, or the equivalent thereof . . . [and]
`would also have experience with security in the context of
`wireless communications.
`PO Resp. 14 (citing Ex. 2007 ¶ 11; Martin Decl. ¶¶ 20–21).
`Although the respective positions are very similar and our analysis
`would be the same under either Patent Owner’s or Petitioner’s definition of
`the ordinarily skilled artisan, from our review of the record, we find Patent
`Owner’s more specific articulation of the relevant experience is appropriate
`and consistent with the disclosure of the ’233 patent and the prior art of
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
`re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent
`Owner’s description.
`
`Claim Construction
`C.
`The Petition was accorded a filing date of April 8, 2020. Paper 3, 1.
`In an inter partes review for a petition filed on or after November 13, 2018,
`a claim “shall be construed using the same claim construction standard that
`would be used to construe the claim in a civil action under
`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). We apply the claim
`construction standard from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc).
`Under that standard, claim terms are generally given their ordinary
`and customary meaning, as would be understood by one with ordinary skill
`in the art in the context of the specification, the prosecution history, other
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`claims, and even extrinsic evidence including expert and inventor testimony,
`dictionaries and learned treatises, although extrinsic evidence is less
`significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually,
`the specification is dispositive, and it is the single best guide to the meaning
`of a disputed term. Id. at 1315.
`“Importantly, the person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Id. at 1313. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). However, in construing the claims, care should be
`taken to avoid improperly importing a limitation from the specification into
`the claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 797–98
`(Fed. Cir. 2019) (“[U]se of the phrase ‘present invention’ or ‘this invention’
`is not always . . . limiting, such as where . . . other portions of the intrinsic
`evidence do not support applying the limitation to the entire patent.”
`(citations omitted)). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
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`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017).4
`
`1. security mechanism governing information transmitted between the first
`personal device and the second device
`Claim 1 requires “a security mechanism governing information
`transmitted between the first personal device and the second device.”
`Ex. 1001, 15:10–12. Consistent with our Decision to Institute, in which we
`declined to construe this requirement, neither party proposes a construction
`beyond its plain meaning. Dec. 15; Pet. 20–21; Reply 1; Sur-Reply 2;
`Martin Decl. ¶ 39. We note that the courts in the Fitbit and Garmin cases
`also held that this requirement did not require construction and would be
`given its plain and ordinary meaning in those proceedings. Ex. 1081, 26;
`Ex. 2023, 15.
`Nonetheless, as elaborated in Sections III.D.2 and III.E.2 below, in
`considering whether the references relied on to anticipate or render obvious
`the challenged claims, the parties interpret the plain language of this claim
`requirement differently. As described above, the ’233 patent provides for
`security arrangements to restrict the exchange of information to authorized
`agents, including the use of passwords, and/or various encryption techniques
`such as security keys and public/private key exchange. Ex. 1001, 8:11–22,
`
`
`4 In the context of claim construction, Patent Owner refers to our
`construction of “wireless communication” set forth in the Decision to
`Institute (Dec. 13), and discusses the claims 24 and 25 requirement of a
`“location determination module.” PO Resp. 12–14. Neither party raises any
`actual issues that require us to construe these terms in this Decision, and
`therefore we do not revisit construction of “wireless communication,” or
`consider that of “location determination module.”
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`13:24–14:14. Also, claims 2–5 of the ’233 patent variously require
`encryption, “authorization” (e.g., passwords), keys, and the like as the
`security mechanisms of claim 1. Id. at 15:13–21. Petitioner relies on these
`disclosures to maintain that the use of encryption or passwords are examples
`of security mechanisms governing transmission of information between
`devices in accord with the claims. Pet. 37, 59–60; Reply 1–2.
`Patent Owner argues that Petitioner, in the guise of applying the plain
`meaning of this claim requirement, “effectively render[s] the term [i.e.,
`‘security’] completely meaningless.” PO Resp. 8. Patent owner emphasizes
`that the required security mechanism is not any type of security mechanism,
`but rather one which governs transmitted information, and, based on that
`language, variously asserts: that the security mechanism “establish[es]
`authorization for a user of a device to access certain types of data over a
`preexisting channel”; that “not all of the forms of ‘security’ generally
`described in the specification would govern information transmitted between
`a first device and a second device”; that encryption “may protect
`information, but it does not govern or control its transmission”; that
`“encryption of the contents of the signal and using it to govern access by a
`particular device is different from encryption of signals on an established
`network”; that the system provides “‘multiple levels of prioritization,
`authentication of a person (task, step, process or order), and
`confirmation via interrogation of person, device, or related monitor’”; that
`“security is required for authorizing a person’s access to device 100 over
`the network — not simply authentication of devices across a network”; that
`information must be governed not by disabling devices or preventing the
`transmission of information, but rather by applying a security mechanism
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`that authorizes access to information transmitted between the devices”; that
`“the governing of information transmitted relates to the ability of one
`networked device over another to have access or authorization to
`information”; that “simply providing access to a device does not govern
`information transmitted between two devices”; that “device-to-device
`encryption focused on establishing secure communications links . . . has no
`security mechanism to govern information transmitted”; and that encryption
`of information in “one direction” does not disclose “use of encryption over
`information transmitted between the claimed first device and second-device
`over a bidirectional communications channel.” PO Resp. 8, 10, 11, 19, 20,
`21, 23, 27, 39, 40.
`Patent Owner’s elaboration on the plain meaning of “security
`mechanism governing information transmitted between the first personal
`device and the second device” relies heavily on Figure 5 of the ’233 patent,
`which refers to different levels of access to communications between the
`victim and a bystander versus a dispatcher, and states that the bystander
`“should not be allowed [a higher] level of access, even though the bystander
`B’s personal wireless device 600 may be acting as an intermediary in
`communication from the personal device 100 to the dispatcher D.”
`PO Resp. 3, 10, 20, 28; Ex. 1001, Fig. 5, 13:30–41. In particular, Patent
`Owner argues that some types of encryption of transmitted information are
`not suitable to provide such different access, compared to security
`mechanisms that provide “a certain level of access or authorization to
`information transmitted.” PO Resp. 10–11. On the other hand, Patent
`Owner states that “neither Patent Owner nor [its expert] have advocated for
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`Patent 7,088,233 B2
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`a construction of the term that requires multiple levels of authorization.”
`Sur-Reply 10.
`As discussed further below, Petitioner challenges Patent Owner’s
`various assertions concerning the plain meaning of “security mechanism
`governing information transmitted,” including Patent Owner’s distinguishing
`“‘encryption of the contents of the signal’ from ‘encryption of signals,’” and
`Patent Owner’s reliance on Figure 5 of the ’233 patent, arguing that Patent
`Owner is improperly attempting to limit the scope of the claims to
`exemplary embodiments. E.g., Reply 4.
`As elaborated in our discussion below of Petitioner’s anticipation and
`obviousness challenges, we are not persuaded by Patent Owner’s arguments
`based on its characterizations of the plain meaning of “security mechanism
`governing information transmitted between the first personal device and the
`second device.” The ’233 patent explicitly discloses that the use of
`passwords or encryption can be used to secure information transmitted
`between devices. Ex. 1001, 8:12–22, 13:25–67. The use of passwords or
`security keys certainly provides a form of “governing” of information
`transmitted between devices. We note that the courts in the Fitbit and
`Garmin cases have concluded likewise:
`[Patent Owner’s expert] provides minimal explanation for — and
`cites to no evidence in support of — his opinion that encryption
`‘does not govern or control [the] transmission [of information]’
`. . . [and] that opinion appears to conflict with the specification
`and claims.
`Ex. 1081, 25.
`[Patent Owner’s expert’s] conclusory opinion should not be
`afforded any weight.
`Ex. 2023, 14.
`
`17
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`IPR2020-00783
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`We conclude that it is unnecessary to provide an explicit construction
`of the phrase at issue, and do not agree with Patent Owner that techniques
`such as the use of passwords or encryption fall outside of the scope of
`claim 1.
`
`2. means for signaling the bi-directional communications module to
`transition from the powered-down state to the powered-up state
`Claim 26 of the ’233 patent requires “a means for signaling the bi-
`directional communications module to transition from the powered-down
`state to the powered-up state.” Ex. 1001, 16:18–20. Petitioner proposes to
`construe this portion of the claim pursuant to 35 U.S.C. § 112 ¶ 6, including
`specifying the disclosed structure corresponding to the recited function as
`“components capable of providing a magnetic, mechanical, sound or
`ultrasound, infrared, or radio frequency signal, and structural equivalents
`thereof.” Pet. 21 (citing Ex. 1001, 14:15–60, 16:16–30; Paradiso Decl.
`¶¶ 49–50). Petitioner, however, also states that “[t]he ’233 patent explains
`that the ‘means for signaling’ can be ‘a mechanical signal, such as throwing
`a switch or applying pressure to a pad.’” Pet. 83; see Ex. 1001, 14:35–36.
`Therefore, we are not persuaded that Petitioner’s proposed articulation of the
`corresponding structure is correct.
`In our Decision to Institute, we stated that it is sufficient for present
`purposes to note that the disclosed structure that performs the function
`recited in claim 26 includes a switch that turns the bi-directional
`communications module on and off. Dec. 12. Patent Owner agrees that
`such structure is encompassed by the “means for signaling. . .” of claim 26.
`PO Resp. 12. We reiterate for purposes of this Decision that it is sufficient
`to note that the disclosed structure includes a switch as described.
`
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`3. data input/output port
`Claim 1 requires the first personal device and the second device to
`each have a “short-range bi-directional wireless communications module.”
`Ex. 1001, 15:3–9. Claim 14 depends from claim 1, and additionally
`requires:
`[T]he 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.
`Id. at 15:42–46.
`In our Decision to Institute (Dec. 38–39), we noted that the ’233
`patent explicitly differentiates between local area wireless communication
`and communication via data ports, as illustrated in Figures 4A and 4C, and
`further explained in the specification as follows:
`Optionally, [the personal medical device] has
`connections to data input/output ports 160. Data I/O ports 160
`may include, but are not limited to: serial, parallel, USB, etc.
`. . . .
`Optionally, [the personal medical device] includes a
`wireless communications module . . . . In one embodiment the
`wireless communications module includes systems and
`standards for Local Area Wireless 330.
`. . . .
`FIG. 4A depicts one embodiment of the present system.
`[The personal medical device] communicates to Personal
`Wireless Device (PWD) 500 with local area wireless (LAW)
`330.
`
`. . . .
`FIG. 4C depicts another embodiment of the present
`system. [The personal medical device] communicates through
`data port 160 to Medical Device Interface (MDI) 600.
`Ex. 1001, Figs. 4A, 4C, 3:47–49, 3:54–57, 4:14–16, 4:25–27.
`
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`The ’233 patent further discloses that the LAW 330 described above
`includes the claimed short-range bi-directional wireless communications
`module, and explains that this term is meant to “include premises and
`facility based wireless networks.” Ex. 1001, 5:57–65. Even though wireless
`communications modules necessarily have inputs and outputs, we
`preliminarily concluded, based on these disclosures, that the data
`input/output ports of claim 14 had to be separate from the “short-range bi-
`directional wireless communications module” of claim 1 — otherwise the
`requirement of data input/output ports in claim 14 would be superfluous.
`Dec. 38–39. See Mformation Techs., Inc. v. Research in Motion Ltd., 764
`F.3d 1392, 1399 (Fed. Cir. 2014) (favoring a construction that does not
`render another limitation “superfluous”).
`Petitioner points out that there is no example disclosed in the ’233
`patent that embodies claim 14 — i.e., no example in which two devices
`communicate with each other, both using a local area wireless LAW 330
`module and a Data I/O port 160. Reply 7. Therefore, argues Petitioner,
`claim 14 should not be construed to cover subject matter not disclosed in the
`’233 patent. Reply 9. However, as both Petitioner and Patent Owner point
`out, the ’233 patent discloses that both the personal medical device PMD
`100 shown in Figure 2 and the medical device interface MDI 600 shown in
`Figure 4C can include both a wireless communication module 300 and data
`I/O ports 160, which provides support for claim 14, no
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