`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`FITBIT, INC.,
`
`Petitioner,
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR-007831
`Patent 7,088,233 B2
`_______________
`
`________________________________________
`PATENT OWNER RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`1 Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd., who filed
`a petition in IPR2020-00910, has been joined as petitioner in this
`proceeding.
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`

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`IPR2020-00783
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`Patent Owner Response
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`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`
`BACKGROUND ............................................................................................. 1 
`
`The ’233 Patent ..................................................................................... 1 
`
`Specification ................................................................................ 1 
`
`Challenged Claims ...................................................................... 6 
`
`Effective Date ............................................................................. 6 
`
`The Parties’ Related District Court Litigations ..................................... 7 
`
`A. 
`1. 
`2. 
`3. 
`B. 
`III.  CLAIM CONSTRUCTION ............................................................................ 7 
`1. 
`2. 
`3. 
`4. 
`5. 
`
` I. 
`II. 
`
`IV. 
`
`“security mechanism governing information transmitted
`between the first personal device and the second device” .......... 8 
`
`“means for signaling the bi-directional communications
`module to transition from the powered-down state to the
`powered-up state” ..................................................................... 12 
`
`“wireless communication” ........................................................ 12 
`
`“data input/output port” ............................................................ 12 
`
`“location determination module” .............................................. 13 
`
`A. 
`B. 
`C. 
`
`THE CHALLENGED CLAIMS ARE PATENTABLE OVER THE
`ASSERTED PRIOR ART ............................................................................. 14 
`
`1. 
`2. 
`
`Level of Ordinary Skill in the Art ....................................................... 14 
`
`Ground 1 .............................................................................................. 15 
`
`Jacobsen .................................................................................... 15 
`
`Jacobsen Does Not Anticipate Claims 1, 7-10, and 14 ............. 18 
`
`Ground 2 .............................................................................................. 32 
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`Patent Owner Response
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`Say ............................................................................................. 32 
`
`Claims 1, 7-10, and 14 Are Patentable Over Say .................... 34 
`
`Ground 3: Claims 1, 7-10 and 14 are Patentable Over Jacobsen
`in view of Say ...................................................................................... 42 
`
`Ground 4 .............................................................................................. 46 
`
`Quy ............................................................................................ 46 
`
`Claim 13 is Patentable Over Jacobsen In view of Say and
`Quy ............................................................................................ 47 
`
`Ground 5 .............................................................................................. 48 
`
`Geva .......................................................................................... 48 
`
`Claims 24 and 25 are Patentable over Jacobsen in view of
`Say and Geva ............................................................................ 49 
`
`D. 
`E. 
`F. 
`G. 
`H. 
`
`1. 
`2. 
`1. 
`2. 
`1. 
`2. 
`1. 
`2. 
`1. 
`2. 
`
`Ground 6 .............................................................................................. 51 
`
`Reber ......................................................................................... 51 
`
`Claim 26 is Patentable over Jacobsen in view of Say and
`Reber ......................................................................................... 53 
`
`Ground 7: Claims 15, 16, and 22 are Patentable over Say in
`view of Gabai ...................................................................................... 55 
`
`Gabai ......................................................................................... 55 
`
`Claims 15, 16, and 22 are Patentable over Say in view of
`Gabai ......................................................................................... 56 
`
`CONCLUSION .............................................................................................. 57 
`
`
`
`
`
`ii
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`V. 
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`IPR2020-00783
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`Patent Owner Response
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.120, Patent Owner Philips North America LLC
`
`(“Patent Owner”) submits this Patent Owner Response to the Petitions of Fitbit,
`
`Inc. (“Fitbit”) (IPR2020-00783) and Garmin International, Inc., Garmin USA, Inc.,
`
`and Garmin Ltd. (collectively, “Garmin”) (IPR2020-00910) challenging claims 1,
`
`7-10, 13-16, 22, and 24-26 of U.S. Patent No. 7,088,233 (“the ’233 patent”).2
`
`Submitted with this response is the Declaration of Dr. Thomas Martin (Ex. 2026).
`
`For the reasons set forth below, all challenged claims are patentable over the
`
`prior art cited in the Petition.
`
`II.
`
`BACKGROUND
`A.
`The ’233 Patent
`1.
`Specification
` The ’233 patent issued on August 8, 2006, and claims priority to
`
`applications dating to October 23, 1998. Ex. 1001. The patent relates to “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.,
`
`
`2 The two Petitions are “substantively identical,” and Garmin has been
`joined as a petitioner in the -783 petition. Accordingly, references herein to the
`Petition (“Pet.”) refers to the Petition filed by Fitbit in the -783 proceeding unless
`otherwise specified.
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`1
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`Abstract (emphasis added). In contrast to prior art systems, including those relied
`
`upon in the Petition, “The system provides multiple levels of prioritization,
`
`authentication of person (task, step, process or order), and confirmation via
`
`interrogation of person, device, or related monitor.” Id. (emphasis added); see Ex.
`
`2026, ¶23.
`
`The patent describes embodiments in which multiple levels of prioritization
`
`and authentication are provided in reference to a “Personal Medical Device
`
`(PMD). E.g., Ex. 1001, 1:63-64. In such embodiments, a device “couple[s] with
`
`PMDs to provide wireless communication and locating functions.” Id., 2:11-12.
`
`According to the patent: “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 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., 2:12-22 (emphasis added); see also 12:16-21
`
`(referencing “electrocardiogram data” from the personal device); 11:32-33
`
`(referencing “activation (shock, release medication, brain stimulation)”). The
`
`disclosed system also can provide access and authorization to lower sensitivity
`
`2
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`information such as “location information.” Id. at 13:8-9 (“[s]elected clients are
`
`those authorized to receive the location information”).
`
`In this context, the ’233 patent recognizes the importance of not only of
`
`ensuring secure bi-directional, short-range data transfer (e.g., using
`
`BLUETOOTH), but also of governing information that is transmitted between a
`
`first device (e.g., a PMD) and a second device. This aspect of the invention is
`
`illustrated in Figure 5:
`
`
`
`In Fig. 5, the personal device 100 of victim V is in short-range wireless
`
`communication (via, for example, BLUETOOTH) with a second device of a
`
`bystander B. See id., 11:49-66; Ex. 2026, ¶25. The personal device of victim V
`
`can then be in wireless communication with other aspects of the network. See Ex.
`
`1001, 12:1-37; Ex. 2026, ¶25. All of the devices are on the secure network, but
`
`only some have access and authorization to certain information in a manner such
`
`that a security mechanism governs the information transmitted. In Fig. 5, there are
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`3
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`three individuals connected on the secure network: the bystander B, the
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`Responding Personnel R/Responsible Parties RP, and the Dispatcher or Medical
`
`Caregiver D. All information from the victim V goes through the bystander B
`
`before reaching the other parties on the network. Yet the patent provides different
`
`levels of access and authorization to the information on the secure network through
`
`the operation of the security mechanism, which governs information transmitted
`
`among the devices on the secure network. See Ex. 2026, ¶29.
`
`
`
`The ’233 patent recognizes that “the ability of various entities spread around
`
`a network to receive and/or transmit to and control the personal device 100
`
`requires some measure of security” and that “[o]nly authorized agents should be
`
`allowed access to the device 100.” Ex. 1001, 13:27-31. In regard to this feature,
`
`the ’233 patent states in reference to Fig. 5 that “only responding personnel RP
`
`(such as trained paramedics) who are on the scene of the event may be allowed to
`
`send a command to the personal device 100 causing the personal device 100 to
`
`dispense medication to the victim.” Id., 13:31-36. The patent emphasizes,
`
`“Certainly, the bystander B should not be allowed this 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.” Id., 13:36-40
`
`(emphasis added); Ex. 2026, ¶¶71-73.
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`The patent discloses that security may be provided in different ways both as
`
`to communication channel security and level of information access and
`
`authorization. For example, while there may be both bystander and responding
`
`personnel connected to the personal device with secure BLUETOOTH channels,
`
`where the connection of the responding personnel is through the bystander, the
`
`patent highlights the different levels of access governing information transmitted,
`
`noting that “[w]hen the responding personnel R reach the victim, they may
`
`establish communications through local area wireless 330 from their medical
`
`device interface 500 to the victims personal device 100, request data from the
`
`personal device 100, and request the personal device 100 to take some action, such
`
`as dispensing medication to the victim V.” Ex. 1001, 12:38-46; see also, 14:7-8
`
`(“a user needing access to the device 100 may make a request for such access to a
`
`responsible third party”); Ex. 2023, ¶¶29-33. Thus, by controlling the access and
`
`authorization, the system may ensure that information is transmitted from a first
`
`device (such as a victim’s PMD) to a second device (such as the bystander B), but
`
`the bystander is not able to access certain information of the victim or control the
`
`victim’s device (e.g., to cause the victim’s device to dispense medication to the
`
`victim). See, e.g., Ex. 1001, 12:38-46; 14:7-8; Ex. 2023, ¶¶29-33.
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`2.
`Challenged Claims
`The Board’s decision of October 27, 2020, Paper 12 (“Dec.”) granted
`
`institution of claims 1, 7-10, 13-16, 22, and 24-26. Of these claims, claim 1 is the
`
`only independent claims. Each of claims 7-10, 13-16, 22, and 24-26 depend from
`
`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.
`3.
`Effective Date
`For purposes of this proceeding, the Petition assumes that: October 23, 1998
`
`is the earliest effective filing date for claims 1, 7-10, 14-16 and 22; May 25, 1999
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`is the earliest effective filing date for claims 24 and 25; and March 28, 2001 is the
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`earliest effective filing date of claim 13. Pet., 3-4, 19-20. Patent Owner does not
`
`contest this assertion for purpose of this proceeding. See Ex. 2026, ¶115.
`
`B.
`The Parties’ Related District Court Litigations
`The ’233 patent is involved in two pending litigations: one in which
`
`Petitioner Fitbit is a defendant (“the Fitbit case”) and one in which the Garmin
`
`Petitioners are defendants (“the Garmin case”). A claim construction order was
`
`issued in the Garmin case. Ex. 2023. A claim construction hearing was conducted
`
`in the Fitbit case, but no claim construction order has issued. See Ex. 2011.
`
`III. CLAIM CONSTRUCTION
`The Petition asserts that no construction is necessary for any terms of the
`
`challenged claims of the ’233 patent except for “means for signaling the bi-
`
`directional communications module to transition from the powered-down state to
`
`the powered-up state” as recited in claim 26. The Decision granting institution
`
`addressed the construction of that term as well as the terms: “wireless
`
`communication” (claim 1); “data input/output port” (claim 14); “governing
`
`information transmitted between the first personal device and the second device”
`
`(claim 1). In the Garmin case, the court construed the term “means for signaling. .
`
`.” as well as the terms “body or physiological parameters” (claims 8-9), “location
`
`determination module” (claims 24 and 25) and “the bi-directional communications
`
`module has a powered-down state” (claim 26). Ex. 2023, 18-23.
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`Patent Owner addresses below those terms that may be “necessary to resolve
`
`the controversy.” See Dec., 11, citing Nidec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`1.
`
`“security mechanism governing information transmitted
`between the first personal device and the second device”
`As discussed above, the specification discusses “security” generally in the
`
`context of establishing restrictions on the information that is transmitted between a
`
`first personal device (e.g., a victim’s PMD) and a second device (e.g., a bystander
`
`B’s device). As set forth in the specification, this may be accomplished with or
`
`without encrypting the information. Ex. 1001, 13:47-49. Examples of
`
`mechanisms that govern information transmitted between the first personal device
`
`and the second device are those that establish authorization for a user of a device to
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`access certain types of data over a preexisting channel. Ex. 2026, ¶29. Such
`
`mechanism could be implemented by a user having a password that provides a
`
`particular level of access to information that is transmitted. Id.
`
`The Petitions contend that this term does not need to be construed, yet attack
`
`patentability on grounds that would effectively render the term completely
`
`meaningless. For example, Petitioners rely on Jacobsen’s “self-disabling means,”
`
`which simply renders a device inoperative in the event a user inputs the wrong
`
`password. The breadth of Petitioners’ position is underscored by the deposition
`
`testimony of Dr. Paradiso, who testified that smashing a device with a hammer
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`would “govern information transmitted between a device and a second device.”
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`Ex. 2030, 62:7-63:17; Ex. 2026, ¶74. Such an unduly broad construction of the
`
`term fails to give any effect to the claims language, particularly when read in view
`
`of the specification. Ex. 2026, ¶¶74-75.
`
`Petitioners’ and Dr. Paradiso’s understanding of the term renders is also
`
`inconsistent with other claims of the ’233 patent. For example, claim 26 recites
`
`that the “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.” Under Dr. Paradiso’s overly broad construction of the term
`
`(which would include disabling a device with a hammer), a power switch for the
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`bi-directional communications module would likewise “govern information
`
`transmitted.” Such construction would improperly render the claimed “security
`
`mechanism” superfluous. As the Decision granting institution recognizes, such
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`construction is improper. See Dec., 39; 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”).
`
`The Decision granting institution indicates that Dr. Martin’s declaration in
`
`support of claim construction in the Garmin case “opines that one of ordinary skill
`
`would not consider security measures such as encryption to satisfy the claim
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`requirement of ‘governing’ transmission of information.” Dec., 14, citing Ex.
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`2007, ¶¶33-34. But Dr. Martin did not opine that the “governing information
`
`transmitted between the first personal device and the second device” as recited in
`
`claim 1 could not involve encryption. Rather, Dr. Martin testified 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.” Ex. 2007,
`
`¶33 (“many of the forms of ‘security’ identified in the specification do not govern
`
`or control the transmission of information from one device to another as
`
`contemplated, for example, in the embodiment of Figure 5.”). As Dr. Martin
`
`stated, “encryption is a technique that may protect information, but it does not
`
`govern or control its transmission.” Id. In contrast, authentication is a form of
`
`security that can govern or control transmission of information, such as
`
`information transmitted between the first personal device from victim V to a
`
`second device of either bystander B or responding personnel RP as contemplated
`
`in the embodiment of Fig. 5. Id.
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`Dr. Martin’s testimony is based directly on the embodiment of Fig. 5 and
`
`other portions of the specification. See Section II.A.1. For example, the
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`specification states that “voice and visual channels of transmission may be
`
`controlled for activation by the personal device 100 or by an authorized entity, but
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`may not necessarily be encrypted.” Ex. 1001, 13:47-49 (emphasis added); Ex.
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`2026, ¶33. This aspect of the specification conveys that while the information
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`transmitted between the first and second device may be encrypted, control for
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`activation or other forms of governing information that is transmitted may be
`
`accomplished by other means, such as using various authorization strategies. Ex.
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`1001, 14:11-15; Ex. 2026, ¶33.
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`To be clear, it is not Patent Owner’s position that some form of encryption
`
`could not be used to govern information that is transmitted between a first device
`
`and a second device. For example, the specification states that “a public/private
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`key system can be used in which access to both keys is required for decoding an
`
`encrypted message.” Ex. 1001, 13:60-62. Such encryption of the content of a
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`communications signal would provide a way to validate the authenticity of a user
`
`to have a certain level of access or authorization to information transmitted. But
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`encryption of the contents of the signal and using it to govern access by a particular
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`device is different from encryption of signals on an established network, such as
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`used with BLUETOOTH or disclosed in Say for purposes of avoiding cross-talk
`
`between signals received by a receive/display unit from different on-skin sensor
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`units. See Ex. 1006, 49:38-53; see also, infra, Section IV(B); Ex. 2026, ¶¶31-32;
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`88-98.
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`2.
`
`“means for signaling the bi-directional communications
`module to transition from the powered-down state to the
`powered-up state”
`For purposes of deciding whether to institute trial, the Decision construed
`
`this term as including “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. . .” recited in claim 26. See Ex. 1001,
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`14:35-36 ( “a mechanical signal, such as throwing a switch. . . .”).
`
`3.
` “wireless communication”
`The Decision granting institution adopts Patent Owner’s construction of this
`
`term as “an over-the-air communication (e.g. using radiofrequency (RF), infrared,
`
`or optical techniques).” Dec., 13. While Patent Owner maintains that Jacobsen’s
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`body LAN fails to employ “wireless communication” between a wrist unit and a
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`“soldier” for the reasons set forth in Patent Owners’ Preliminary Response, as
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`discussed below, Jacobsen also fails to disclose “a security mechanism governing
`
`information transmitted between the first personal device and the second device.”
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`See, infra, Section IV(B). Accordingly, construction of this term may not be
`
`necessary.
`
`4.
`“data input/output port”
`The Decision instituting IPR construes the term “data input/output port” as
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`recited in claim 14 as requiring something other than the “wireless
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`communications module” recited in claim 1. Dec., 38-39. As set forth in the
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`Decision, data input/output port would be something separate from the wireless
`
`communications module discussed in the specification. See id., citing Ex. 1001,
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`Figs. 4A and 4C; 3:47-49; 3:54-57; 4:14-16; 4:25-27.
`
`Specifically, the ’233 patent describes an embodiment according to Fig. 4A
`
`in which a “PMD 100 communicates to Personal Wireless Device (PWD) 500 with
`
`local area wireless (LAW) 300” (Ex. 1001, 4:15-17) and an embodiment according
`
`to Fig. 4C in which “PMD 100 communicates through data port 160 to Medical
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`Device Interface (MDI) 600” (id., 4:26-27). While the MDI 600 of Fig. 4C
`
`includes a LAW for communication with PWD 500 (id., 4:28-30), the patent
`
`indicates that the MDI 600 of Fig. 4C additionally has a data port 160 (id., Fig.
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`4C). The ’233 patent indicates that the data ports 160 “may include, but are not
`
`limited to: serial, parallel, USB, etc.).” Id., 3:48-49. This indicates that the data
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`ports 160 are separate and distinct from any data “ports” associated with the
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`wireless communications module. Ex. 2026, ¶¶38, 84-85.
`
`5.
`“location determination module”
`In the Garmin case, the Garmin Petitioners asserted that the “location
`
`determination module” of claims 24 and 25 must necessarily include a “terrestrial
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`location system” as opposed to just a satellite navigation system, such as a GPS
`
`receiver. See Ex. 2023, 20. The Garmin court found that “location determination
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`module” was a “coined term” and construed it as “a terrestrial location system” and
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`found that the GPS receiver of claim 25 is an additional component relative to the
`
`location determination module. Id.
`
`Neither the Fitbit nor Garmin Petitions expressly address this construction.
`
`Neither petition points to a “terrestrial location system” in the asserted prior art.
`
`Patent Owner maintains that a person of ordinary skill would understand the term
`
`as a module that determines location, including a GPS receiver. Further, the
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`specification identifies embodiments that contemplate determining location using
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`GPS without reference to a terrestrial receiver. Ex. 1001, 12:63-65 (“… the
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`personal device 100B may include a GPS receiver…”).
`
`IV. THE CHALLENGED CLAIMS ARE PATENTABLE OVER THE
`ASSERTED PRIOR ART
`A.
`Level of Ordinary Skill in the Art
`The Decision instituting IPR adopts the following description of the level of
`
`ordinary skill as set forth in the Declaration of Dr. Thomas Martin submitted in the
`
`Garmin 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.
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`Ex. 2007, ¶11. While Patent Owner maintains that this description is appropriate
`
`in view of the disclosure of the ’228 patent, Patent Owner submits that the
`
`challenged claims should be found patentable even if Petitioners’ description were
`
`adopted. See Ex. 2026, ¶¶20-21.
`
`B. Ground 1
`1.
`Jacobsen
`Jacobsen is directed to a military system for remotely monitoring the status
`
`of soldiers on the battlefield. Ex. 1005, Abstract; Ex. 2026, ¶51-52. Jacobsen
`
`discloses a system that “includes a plurality of sensors disposable on a soldier or
`
`other person for developing signals which may be used to determine the
`
`physiologicalal [sic] status.” Ex. 1005, Abstract; Ex. 2026, ¶52. These “sensors
`
`communicate with a soldier unit which can process the information to ensure that
`
`the sensor data falls within acceptable ranges and communicate with remote
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`monitors.” Ex. 1005, Abstract; Ex. 2026, ¶52. Jacobsen further discloses that
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`“[b]y using the sensor data and [a] global positioning system, leaders and medics
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`can quickly and accurately track and treat casualties in battle” and that “[t]he
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`system enables more rapid location of the casualty, as well as remote triage/initial
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`diagnosis, thereby assuring that those who are most in need of treatment are
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`attended to first.” Ex. 1005, Abstract.
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`Figure 1 of Jacobsen shows a soldier wearing the system disclosed in
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`Jacobsen.
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`Jacobsen’s system includes a sensor unit indicated generally at 14 and a “wrist
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`sensor/display unit” indicated at 18. Id., 5:66-6:5. The integrated sensor unit
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`includes “a strap which wraps about the soldier’s body immediately below the
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`pectoral muscles, and preferably extends over one of the soldier’s shoulders.” Id.,
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`6:2-5. In strap 20 are “a plurality of sensors, identified . . . at 22, 24, 26 and 30”
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`which may sense physiological parameters such as temperature, breathing rate,
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`heart rate, and motion status of the solider. Id., 6:22-29. “[T]he wrist
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`sensor/display unit 18 is used primarily for viewing information regarding the time
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`and the geolocation of the soldier 10.” Id., 6:40-42; Ex. 2026, ¶52.
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`Jacobsen further discloses that physiological data is conveyed from the
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`sensor and wrist units to an executive controller of a soldier unit, which is
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`“generally indicated at 50.” Ex. 1001, 6:45-51. “The soldier unit 50 contained
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`within the harness 56 is responsive to the integrated sensor unit 14 and wrist
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`sensor/display unit 18 in that it receives sensor data and communicates the data to
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`a remote monitoring unit, such as the leader/medic unit and/or the command unit.”
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`Id., 6:52-57; Ex. 2026, ¶53.
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`Jacobsen discloses using a body-LAN 168 to allow for communications
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`between the sensor unit and the soldier unit. Ex. 1001, 8:65:67. Jacobsen explains
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`that the wrist sensor/display unit 18 may include communications mechanism 224,
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`which is part of the body-LAN 168. Id., 11:5-10. As shown below in Figure 3, the
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`communications mechanism 224 (which has both a transmitter and a receiver) is
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`directly attached to the skin of the soldier.
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`Jacobsen discloses that each of its devices “may contain a self-disabling
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`means, such as software which requires the entry of a password or some other
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`code” and “[i]f the wrong password is entered for more than one attempt, the
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`device will automatically disable itself.” Id., 15:6-10. Jacobsen goes on to explain
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`that “disablement will not be critical for soldier units.” Id., 15:10-11; Ex. 2026,
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`¶55. As discussed below, Jacobsen’s “self-disabling means” does not govern
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`information transmitted between a first personal device that is in short-range, bi-
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`directional communication with a second device as required by claim 1.
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`2.
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`Jacobsen Does Not Anticipate Claims 1, 7-10, and 14
`(a) Claim 1
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`The Petition and Dr. Paradiso assert that Jacobsen discloses a “first personal
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`device,” i.e., Jacobsen’s “wrist sensor/display unit 18” (Pet., 24), in short-range bi-
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`directional communication with a “second device,” i.e., Jacobsen’s “vest/harness”
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`with “soldier unit 50” (Pet. 33). Jacobsen, however, does not disclose “a security
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`mechanism governing information transmitted between the first personal device
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`and the second device,” i.e., information transmitted between the wrist
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`sensor/display unit 18 (what the Petition characterizes as the claimed “first
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`personal device”) and the soldier unit 50 (what the Petition characterizes as the
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`relevant “second device”). Ex. 2026, ¶70.
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`As discussed above, the security of information transmitted between the first
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`personal device and second device of claim 1 is a key aspect of the invention. See,
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`infra, Section II(A)(1) and III(1). This is evidenced by the fact that the ’233 patent
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`discloses embodiments that can be used to communicate personal information of
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`the user and even to control a user’s PMD to cause it to administer medicine to a
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`user. To that end, the ’233 patent explains how it provides a system with “multiple
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`levels of prioritization, authentication of a person (task, step, process or order),
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`and confirmation via interrogation of person, device, or related monitor.” Ex.
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`1001, Abstract (emphasis added); Ex. 2026, ¶¶23, 70.
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`For example, as discussed in Section II(A)(1), the embodiment of Figure 5
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`describes a personal device associated with a victim V, which may be in short-
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`range wireless communication with a second device of a bystander B, via, for
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`example BLUETOOTH. Ex. 1001, 11:54–66; Ex. 2026, ¶71. The personal device
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`of victim V can then communicate with other aspects of the network (e.g. a
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`dispatcher or responding personnel) via the second device of bystander B in order
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`to facilitate medical assistance in some form to victim V. Ex. 1001, Fig. 5; 12:1–
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`37; Ex. 2026, ¶71. Important in this embodiment is the idea that “the ability of
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`various entities spread around a network to receive and/or transmit to and control
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`the personal device 100 requires some measure of security.” Ex. 1001, 13:27–30
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`(emphasis added); Ex. 2026, ¶71. To that end, the ’233 patent sates that:
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`“Only authorized agents should be allowed access to device 100. For
`example, in the example shown in FIG. 5, only responding personnel
`RP (such as trained paramedics) who are on the scene of the event may
`be allowed to send a command to the personal device 100 causing the
`personal device 100 to dispense medication to the victim. Certainly, the
`bystander B should not be allowed this level of access, even though the
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