`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`FITBIT, INC.,
`Petitioner
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`Patent Owner
`
`_______________
`Case Nos. IPR2020-00783
`U.S. Patent No. 7,088,233
`_______________
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`TABLE OF CONTENTS
`
` I. 
`II. 
`
`INTRODUCTION ........................................................................................... 1 
`BACKGROUND ............................................................................................. 3 
`The ’233 Patent ..................................................................................... 3 
`Specification ................................................................................ 3 
`Challenged Claims ...................................................................... 4 
`The Parties’ Related District Court Litigations ..................................... 5 
`
`Petitioners’ Claim Constructions .......................................................... 7 
`“wireless communication” ........................................................ 10 
`“governing information transmitted between the first
`personal device and the second device” ................................... 11 
`
`A. 
`1. 
`2. 
`B. 
`III.  CLAIM CONSTRUCTION ............................................................................ 7 
`A. 
`1. 
`2. 
`IV.  THE BOARD SHOULD DENY INSTITUTION PURSANT TO 35
`A. 
`1. 
`2. 
`3. 
`4. 
`5. 
`
`U.S.C. § 314(a) .............................................................................................. 14 
`The Fintiv Factors Weigh Against Institution ..................................... 16 
`Neither Petitioner Has Sought to Stay Either District
`Court Litigation ......................................................................... 16 
`The Progression of the Fitbit and Garmin Litigations
`Weigh Heavily in Favor of Denial ............................................ 16 
`The District Courts and the Parties Have Invested a
`Significant Amount of Resources in the District Court
`Litigations ................................................................................. 17 
`The Issues Raised in the Petitions Will Be Resolved by
`the District Court Litigations .................................................... 18 
`Petitioners Are Also Parties in the District Court
`Litigations ................................................................................. 19 
`i
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`6. 
`
`V. 
`
`A. 
`B. 
`
`C. 
`
`D. 
`
`The Weakness of the Petitions Also Weighs in Favor of
`Denying Institution ................................................................... 19 
`THE PETITIONS SHOULD BE DENIED BECAUSE THEY FAIL
`TO DEMONSTRATE A REASONABLE LIKELIHOOD OF
`SUCCESS ...................................................................................................... 20 
`Level of Ordinary Skill in the Art ....................................................... 20 
`Because Jacobsen Does Not Disclose All of the Limitations of
`Claim 1, Ground 1 Fails ...................................................................... 20 
`Jacobsen .................................................................................... 20 
`Jacobsen Does Not Disclose the Claimed “wireless
`communication module[s]” ....................................................... 24 
`Jacobsen Also Does Not Disclose the Claimed “security
`mechanism governing information transmitted between
`the first personal device and the second device” ...................... 25 
`Because Say Does Not Disclose All of the Limitations of Claim
`1, Ground 2 Fails ................................................................................. 26 
`Say ............................................................................................. 26 
`Say Does Not Disclose the Claimed “security mechanism
`governing information transmitted between the first
`personal device and the second device” ................................... 29 
`Because the Combination of Jacobsen and Say Does Not
`Disclose All of the Limitations of Claim 1, Ground 3 Fails ............... 30 
`Jacobsen in View of Say ........................................................... 30 
`Because Jacobsen Does Not Disclose the Claimed
`“wireless communication module[s],” the Petitions Fail
`to Show How the Jacobsen-Say Combination Discloses
`All of the Limitations of Claim 1 .............................................. 30 
`Because Say Does Not Disclose the Claimed “security
`mechanism,” the Petitions Fail to Show the Jacobsen-Say
`Combination Meets All of the Limitations of Claim 1 ............. 31 
`ii
`
`1. 
`2. 
`3. 
`1. 
`2. 
`1. 
`2. 
`3. 
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`E. 
`
`1. 
`2. 
`3. 
`4. 
`5. 
`VI.  CONCLUSION .............................................................................................. 40 
`
`The Other Grounds Fail For Much the Same Reasons as
`Discussed Above ................................................................................. 31 
`Because Neither Jacobsen nor Say Disclose All of the
`Claim Limitations, Grounds 4-7 Fail ........................................ 32 
`Ground 4 Does Not Overcome the Failings of the
`Jacobsen-Say Combination ....................................................... 32 
`Ground 5 Also Fails to Overcome the Issues Associated
`With Jacobsen and Say ............................................................. 34 
`Ground 6 Also Fails to Overcome the Deficiencies of
`Jacobsen and Say ...................................................................... 35 
`Ground 7 Fails to Overcome the Deficiencies of Say .............. 36 
`
`
`
`
`
`
`
`
`
`iii
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Fintiv I) ......................passim
`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19, 15-19 (PTAB, Sept. 6, 2017) .................................. 14
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) .......................................................................... 14
`NHK Spring Co., Ltd. v. Intri-Plex Techs. Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ................................... 14, 15, 17
`Philips N. Am. LLC v. Fitbit, Inc.,
`Case No. 1:19-cv-11586-IT (D. Mass.) .......................................................passim
`Philips N. Am. LLC v. Garmin Int’l, Inc., et al.,
`Case No. 1:19-cv-06301-AB-KS (D. Mass.) ...............................................passim
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) .......................................................................... 14
`ZTE (USA) Inc. v. Fractus, S.A.,
`IPR2018-01451, Paper No. 12 (PTAB Feb. 19, 2019) ....................................... 17
`Statutes
`35 U.S.C. § 101 .......................................................................................................... 5
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 314(a) ................................................................................................... 14
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`iv
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`
`
`Exhibit No.
`
`EXHIBITS
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - Complaint
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - MOTION TO DISMISS FOR FAILURE TO STATE A
`CLAIM Defendant Fitbit, Inc.'s Renewed Rule 12(b)(6) Motion to
`Dismiss Sect 101
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - SCHEDULING ORDER
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS - Garmin Invalidity Contentions
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - Fitbit's Invalidity and Non-Infringement Contentions
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS - Garmin Order re Trial Schedule
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - Martin Claim Construction Declaration
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - Collins English Dictionary (defining “govern” as “to control or
`determine”)
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - Merriam-Webster Dictionary (defining “govern” as “to
`control, direct, or strongly influence the actions and conduct of”)
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS – Complaint
`
`v
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS – ORDER TAKING CLAIM
`CONSTRUCTION HEARING UNDER SUBMISSION
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - NOTICE Resetting a Hearing. Markman Hearing set for
`8/6/2020, is RESET for 8/5/2020 10:00 AM
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-
`11586-IT - 2020-06-05 [72-0] Fitbit’s Opening Claim Construction
`Brief
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - 2020-06-05 [73-0] Plaintiff's Opening Claim Construction
`Brief
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS – 2020-06-26 [75] Garmin's Opening
`Claim Construction Brief
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS – 2020-06-26 [77] Plaintiff's Opening
`Claim Constructin Brief
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - 2020-07-08 [77-0] Plaintiff's Responsive Claim Construction
`Brief
`
`Philips North America LLC v. Fitbit, Inc. Case No. 1:19-cv-11586-
`IT - 2020-07-08 [78-0] D's Responsive Claim Construction Brief
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS – 2020-07-09 [79-0] D's Responsive
`Claim Construction Brief
`
`Philips North America LLC v. Garmin International, Inc. et al Case
`No. 2:19-cv-06301-AB-KS – 2020-07-09 [80-0] P's Responsive
`Claim Construction Brief
`
`U.S. Patent Application 2003/0181817
`
`vi
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner Philips
`
`North America LLC (“Patent Owner”) submits this Patent Owner Preliminary
`
`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”).1
`
`First, by the time that the Board would issue any final written decision, two
`
`district courts will likely have addressed the validity of each of the challenged
`
`claims over the same prior art references cited in the Petitions. Patent Owner’s
`
`related district court litigation with Fitbit, Philips N. Am. LLC v. Fitbit, Inc., Case
`
`No. 1:19-cv-11586-IT (D. Mass.) (“Fitbit Litigation”), will likely go to trial in the
`
`summer of 2021. Patent Owner’s district court litigation with Garmin, Philips N.
`
`Am. LLC v. Garmin Int’l, Inc., et al., Case No. 1:19-cv-06301-AB-KS (D. Mass.)
`
`(“Garmin Litigation”), is even closer to trial, which is scheduled to begin in March
`
`2021. In both cases, Petitioners are challenging the same claims based on the same
`
`prior art references. In fact, the similarities in the invalidity contentions and claim
`
`
`1 The two Petitions are “substantively identical,” and Garmin has filed a
`motion for joinder with the -783 petition. Patent Owner does not oppose the
`motion for joinder, and intends to submit substantively identical responses to each
`of the Petitions.
`
`1
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`construction positions of the litigations strongly indicate that Fitbit and Garmin are
`
`coordinating their litigation efforts. Thus, instituting inter partes review here
`
`would not be an efficient use of resources.
`
`Second, the Petitions fail to show how U.S. Patent No. 6,198,394 (Ex. 1005)
`
`(“Jacobsen”) and U.S. Patent No. 6,175,752 (“Say”) (Ex. 1006), either alone or in
`
`combination, disclose all of the limitations of claim 1 – the only independent claim
`
`challenged in the Petitions. Each of the grounds relies on either Jacobsen, Say, or
`
`the combination of the two references for meeting the limitations of claim 1.
`
`However, when the claims are properly interpreted, Jacobsen fails to disclose the
`
`claimed “wireless communications module.” What the Petitions point to in
`
`Jacobsen as meeting this limitation is a body-LAN communications system which
`
`uses the skin as a conductor – something a person of ordinary skill (“POSA”)
`
`would understand to not be a wireless communications device.
`
`Additionally, both Jacobsen and Say fail to disclose the claimed “security
`
`mechanism.” Each of the challenged claims requires “a security mechanism
`
`governing information transmitted between the first personal device and the second
`
`device.” A POSA would understand “governing information transmitted between
`
`the first personal device and the second device” to require more than mere
`
`encryption. However, neither Jacobsen nor Say discloses a security mechanism
`
`that does anything more than encrypting information that is transmitted between a
`
`2
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`first and second device. Therefore, the Petitions fail to show a reasonable
`
`likelihood of success in prevailing with respect to any of the challenged claims.
`
`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 ’223 patent claims an
`
`improved personal physiological system that is friendly to a mobile user,
`
`inexpensive, and provides interoperability between wireless technologies,
`
`communication network providers, and medical and public systems. See Ex. 1001,
`
`1:51-57. Prior devices did not provide sufficient protection for personal
`
`information, and the patented invention improved existing systems through a
`
`security mechanism that governs information transmitted between a first device
`
`and a second device. See Ex. 1:36-57. The ’233 patent also explains that the
`
`inventions of the ’233 patent solved the problems of the prior art by providing a
`
`distributed personal health communication system wherein the transmission of
`
`information is dictated not by the underlying communication link (e.g., Bluetooth),
`
`but based on an additional security mechanism. See 1:60-2:35.
`
`The inventions are not directed generically to the idea of secure data
`
`transfer, but rather rely on a security mechanism for governing information
`
`3
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`transmitted between a first device and a second device. Prior wireless devices
`
`were not designed to be included in personal medical communication systems, and
`
`they did not combine short-range wireless communication with a security
`
`mechanism.
`
`Figure 5 demonstrates an exemplary embodiment of the invention:
`
`
`
`In Figure 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. The personal device of victim V can then be in
`
`wireless communication with other aspects of the network. See id., 12:1-37.
`
`2.
`Challenged Claims
`The Petitions seek to have claims 1, 7-10, 13-16, 22, and 24-26 of the ’233
`
`Patent found unpatentable. Of these claims, claim 1 is the only independent
`
`claims, and claims 7-10, 13-16, 22, and 24-26 all dependent from claim 1. Claim 1
`
`recites:
`
`4
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`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.
`B.
`The Parties’ Related District Court Litigations
`The Fitbit Litigation has progressed significantly. The complaint was filed
`
`over a year ago on July 22, 2019 in the District of Massachusetts. Ex. 2001. Since
`
`then, Fitbit has filed a motion to dismiss seeking to have all of the challenged
`
`claims found invalid pursuant to 35 U.S.C. § 101 (this issue remains pending
`
`before the court) (Ex. 2002); the parties have served extensive infringement and
`
`invalidity contentions (totaling over 10,000 pages); and the parties have completed
`
`claim construction briefing (the Markman hearing is set for August 5, 2020). The
`
`101 motion seeks to invalidate the same claims at issue in the current proceeding.
`
`Ex. 2002.
`
`5
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`The Fitbit Litigation is expected to continue at a brisk pace. Fact discovery
`
`is set to close October 14, 2020 – two weeks before the deadline for the institution
`
`decision, October 28. Ex. 2003, 3. Expert discovery is set to close February 18,
`
`2021. Id. Thereafter, the parties will begin preparing for trial with the initial
`
`pretrial conference set for June 23, 2021 with trial expected to occur shortly after
`
`that. Id.
`
`The Garmin Litigation is also apace. Like the Fitbit Litigation, the
`
`complaint was filed on July 19, 2020. Since then, the parties have served extensive
`
`infringement and invalidity contentions (totaling over 10,000 pages); and the
`
`parties have completed claim construction briefing (the Markman hearing has been
`
`vacated and the court will issue its ruling based on the papers). Ex. 2011.
`
`Notably, Garmin’s invalidity contentions with respect to the ’233 patent are nearly
`
`identical to Fitbit’s invalidity contentions. See, e.g., Exs. 2004, 2005. Garmin’s
`
`and Fitbit’s contentions assert the same prior art and challenge the same claims.
`
`As discussed below (Sec. III), Fitbit and Garmin have also taken very similar claim
`
`construction positions.
`
`The Garmin Litigation is nearing its final stages. Fact discovery is set to
`
`close September 4, 2020 – nearly two months before the deadline for the institution
`
`decision. Ex. 2006, 3. Expert discovery is set to close November 6, 2020. Id.
`
`6
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`Thereafter, the parties will begin preparing for trial and trial is expected to begin
`
`March 30, 2021 – months before any final written decision would issue. Id., 3.
`
`III. CLAIM CONSTRUCTION
`A.
`Petitioners’ Claim Constructions
`Except as noted below, Fitbit and Garmin have taken the same claim
`
`construction positions in their respective litigations.
`
`Term
`
`“governing
`information
`transmitted
`between the first
`personal device
`and the second
`device”
`“first personal
`device”
`
`“wireless
`communication”
`
`Petitioners’ District Court
`Construction
`No construction necessary
`
`Patent Owner’s
`Construction
`controlling the transmission
`of information between the
`first personal device and the
`second device
`
`No construction necessary.
`Alternatively: a device for
`private use by a person
`an over-the-air
`communication (e.g. using
`radiofrequency (RF),
`
`personal medical device / first
`personal medical device2
`
`No construction necessary
`
`
`2 Fitbit construed the term as “personal medical device” and Garmin
`construed the term as “first personal medical device.”
`
`7
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`infrared, or optical
`techniques)
`No construction necessary
`
`Indefinite
`
`No construction necessary
`
`“a terrestrial location system”
`
`No construction necessary.
`Alternatively: “bi-directional
`communications module has
`a powered state that is lower
`than the powered-up state.”
`No construction necessary.
`However, if construed Philips
`proposes: “a radiofrequency
`(RF) receiver, switch,
`pressure pad, or magnet (or
`equivalents thereof)
`[structure] that causes the bi-
`directional communication
`
`“the bi-directional
`communications module of
`the first and second devices,
`each having a state that
`consumes no power”
`Function: signaling the bi-
`directional communications
`module to transition from the
`powered-down state [i.e.,
`state that consumes no
`power] to the powered-up
`state.
`
`“body or
`physiological
`parameters”3
`“location
`determination
`module”4
`“the bi-directional
`communications
`module has a
`powered-down
`state”5
`“means for
`signaling the bi-
`directional
`communications
`module to
`transition from the
`powered-down
`state to the
`
`
`3 This term is only being construed in the Garmin Litigation.
`4 This term is only being construed in the Garmin Litigation.
`5 This term is only being construed in the Garmin Litigation.
`
`8
`
`

`

`IPR2020-00783
`
`powered-up
`state”6
`
`
`
`Patent Owner Preliminary Response
`
`module to transition from the
`powered-down sate to the
`powered-up state [function].”
`
`Structure: a mechanical
`signal, such as throwing a
`switch or applying pressure to
`a pad; a magnetic signal, as in
`passing a magnet in the
`vicinity of the
`communications module;
`sound or ultrasound; infrared,
`provided there is a direct line
`of sight to the
`communications module; or a
`combination of RF
`transmitter and un-powered
`RF receiver that are tuned to
`the same frequency, and
`structural equivalents thereof.
`
`
`
`For purposes of this Preliminary Response, Patent Owner addresses the
`
`following terms.
`
`
`6 This term is only being construed in the Garmin Litigation.
`
`9
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`1.
`“wireless communication”
`In the context of the ‘233 patent, this term refers to “an over-the-air
`
`communication (e.g. using radiofrequency (RF), infrared, or optical techniques).”
`
`It does not encompass transmission of an electrical signal over a conductor.
`
`The Petitions have taken the unreasonably broad position that wireless
`
`communications are simply those without wires (Pet., 32-33), as opposed to the
`
`conventional understanding that the term refers to over-the-air transmission.
`
`Petitioners’ constructions of “wireless communication” is also fundamentally at
`
`odds with the specification, which contemplates over-the-air wireless
`
`communication techniques via “radio frequency (RF)” signals as well as “infrared”
`
`and “optical” techniques. See Ex. 1001, 4:43-5:3. What is not contemplated is
`
`replacing wires with other conductors (such as a human body as in Jacobsen) and
`
`simply calling that “wireless.”
`
`The Petitions’ interpretation of the term as simply being any
`
`communications that do not use wires, with respect to Jacobsen, is simply too
`
`broad and unreasonable. Sending mail via the postal service is literally
`
`communication that does not utilizes wires, but obviously would not be considered
`
`“wireless communication.”
`
`10
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`2.
`
`“governing information transmitted between the first
`personal device and the second device”
`This term means “controlling the transmission of information between the
`
`first personal device and the second device.”
`
`The Petitions contend that this term does not need to be construed, yet
`
`advance theories that would effectively render the term completely meaningless.
`
`This is so despite the fact that the Examiner identified this limitation as the basis
`
`for allowing the claims. Ex. 1004, 0145. Patent Owner’s proposed construction—
`
`as supported by the specification and the declaration of Dr. Thomas Martin, Ph.D
`
`(Ex. 2007) (submitted during the Fitbit Litigation7)—reflects the fact that the claim
`
`element provides an additional level of security for controlling the transmission of
`
`information beyond what might be provided by any particular communications
`
`protocol used to effectuate transmission (but which does not control the
`
`transmission).
`
`As noted throughout the specification and the declaration of Dr. Martin, a
`
`key aspect of the claims is security and access to sensitive information. To that
`
`end, the ’233 patent explains how it provides a system with “multiple levels of
`
`prioritization, authentication of a person (task, step, process or order), and
`
`
`7 Dr. Martin submitted a similar declaration in the Garmin Litigation.
`
`11
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`confirmation via interrogation of person, device, or related monitor.” Ex. 1001,
`
`Abstract; Ex. 2007, ¶ 28.
`
`The embodiment of Figure 5, which is briefly described above, is
`
`particularly helpful to understanding security in the context of the invention.
`
`Important in this embodiment is the idea 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.” Ex. 1001, 13:27-30; Ex. 2007, ¶ 29. To that
`
`end, the patent describes that:
`
`Only authorized agents should be allowed access to the 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 bystander B’s personal wireless device 600 may be acting as an
`intermediary in communication from the personal device 100 to the
`dispatcher D.
`Ex. 1001, 13:30-41 (emphasis added).
`
`As Dr. Martin explains, “[t]his disclosure demonstrates that, beyond the
`
`communications protocols that might be utilized to implement a short-range
`
`wireless communication scheme between the first personal device of victim V and
`
`a second device of bystander B (or a second device of responding personnel RP
`
`12
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`once on site), an additional level of security is required that controls the
`
`transmission of information between the devices.” Ex. 2007, ¶ 30. This additional
`
`level of security, one that specifically controls the transmission of information, is
`
`reflected in the disputed claim term, which specifically requires that information
`
`transmitted between the first personal device and the second device be governed in
`
`a fashion consistent with the description in the specification—i.e. that the
`
`transmission of information between the first personal device and the second
`
`device be controlled in some manner. See id., ¶¶ 31-32. While the specification
`
`may describe other forms of security that do not control the transmission of
`
`information (such as, for example, encryption), that is not what was intended by
`
`the language actually used in the claim. See id., ¶ 33.
`
`Indeed, that Patent Owner’s construction is what one of ordinary skill would
`
`understand is further supported by the plain and ordinary meaning of the term
`
`“govern” which means to control. See Ex. 2007, ¶ 35; Ex. 2008, Collins English
`
`Dictionary (defining “govern” as “to control or determine”); Ex. 2009, Merriam-
`
`Webster Dictionary (defining “govern” as “to control, direct, or strongly influence
`
`the actions and conduct of”). Patent Owner’s proposed construction should be
`
`adopted.
`
`13
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`IV. THE BOARD SHOULD DENY INSTITUTION PURSANT TO 35
`U.S.C. § 314(a)
`Congress intended inter partes review as a “complete substitute” for and an
`
`“alternative” to district court litigation for assessing §§ 102/103 validity disputes
`
`over prior art patents and printed publications. WesternGeco LLC v. ION
`
`Geophysical Corp., 889 F.3d 1308, 1317 (Fed. Cir. 2018) (citing H. Rep. No. 112-
`
`98 at 48 (2011)). The Petitions seek review of the patentability of claims whose
`
`validity will be addressed in the Fitbit and Garmin Litigations. Review of the same
`
`issues, involving the same parties, will not serve the purpose intended by Congress.
`
`Accordingly, the Board should exercise its discretion under 35 U.S.C. § 314(a) to
`
`deny institution. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed.
`
`Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR
`
`proceeding.”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha,
`
`IPR2016-01357, Paper 19, 15-19 (PTAB, Sept. 6, 2017) (Section II.B.4.i
`
`designated as precedential) (citing Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2140 (2016); 37 C.F.R. § 42.4(a)).
`
`The Board regularly exercises its discretion to deny institution under §314(a)
`
`especially when related litigation has reached an “advanced state” that would
`
`render an IPR proceeding an inefficient use of the Board’s and the parties’
`
`resources. In NHK, the Board denied institution where the related district court
`
`litigation involved “the same prior art and arguments, is nearing its final stages,
`14
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`with” trial set to take place months before any final written decision would issue.
`
`NHK Spring Co., Ltd. v. Intri-Plex Techs. Inc., IPR2018-00752, Paper 8 at 20
`
`(PTAB Sept. 12, 2018) (precedential). The Board explained that given the fact that
`
`“[a] trial before us on the same asserted prior art will not conclude until” after the
`
`district court trial, “[i]nstitution of an inter partes review under these
`
`circumstances would not be consistent with ‘an objective of the AIA . . . to provide
`
`an effective and efficient alternative to district court litigation.’” Id. at 20
`
`(emphasis added).
`
`In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20,
`
`2020) (precedential) (Fintiv I), the Board set forth the following factors to be
`
`considered in determining whether to deny institution if a parallel litigation is
`
`likely to reach trial prior to the projected deadline for a final written decision in an
`
`IPR:
`
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel proceeding
`are the same party; and
`
`15
`
`

`

`IPR2020-00783
`
`
`
`Patent Owner Preliminary Response
`
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Id. at 6.
`
`As set forth below, all of these factors weigh in favor of exercising
`
`discretion and denying the Petitions.
`
`A.
`
`The Fintiv Factors Weigh Against Institution
`1.
`Neither Petitioner Has Sought to Stay Either District Court
`Litigation
`The first Fintiv factor—regarding whether a motion to stay has been either
`
`granted or denied without prejudice pending an institution decision—weighs in
`
`favor of denial. Fintiv, IPR2020-00019, Paper 11 at 6-9. Neither Petitioner has
`
`sought a stay in the Fitbit or Garmin Litigations. Indeed, if Petitioners were to do
`
`so now, such a motion would almost certainly be denied in view of the advanced
`
`state of the litigations.
`
`2.
`
`The Progression of the Fitbit and Garmin Litigations Weig