Trials@uspto.gov
`571-272-7822
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` Paper 9
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` Date: July 16, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`Case IPR2015-00694
`Patent 7,292,867 B2
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`
` Date: July 16, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`Case IPR2015-00694
`Patent 7,292,867 B2
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Under Armour, Inc., filed a Petition to institute an inter
`
`partes review of claims 1, 3, 9, 10, 12, 14–18, 23, and 24 of U.S. Patent No.
`
`7,292,867 B2 (“the ’867 patent”) pursuant to 35 U.S.C. § 311(a). Paper 1,
`
`“Pet.” Patent Owner, adidas AG, filed a Preliminary Response pursuant to
`
`35 U.S.C. § 313. Paper 6, “Prelim. Resp.”
`
`We have authority to determine whether to institute an inter partes
`
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the
`
`Petition and the Preliminary Response, and for the reasons explained below,
`
`we determine that the information presented does not show a reasonable
`
`likelihood that Petitioner would prevail with respect to any claim. See 35
`
`U.S.C. § 314(a). Accordingly, we deny the Petition.
`
`A. Related Matters
`
`Patent Owner has asserted the ’867 patent along with additional
`
`patents, including related U.S. Patent No. 7,805,149 B2 and related U.S.
`
`Patent No. 8,068,858 B2, against Petitioner in adidas AG, et. al. v. Under
`
`Armour, Inc. and MapMyFitness, Inc., Case No. 14-130-GMS (D. Del.).
`
`Pet. 1; Paper 5, 2. Petitioner has filed petitions to institute inter partes
`
`reviews of those related patents. See Paper 5, 2 (citing IPR2015-00695;
`
`IPR2015-00696).
`
`B. The Asserted Grounds
`
`Petitioner identifies the following as asserted grounds of
`
`unpatentability:
`
`
`
`2
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`References
`Gardner (Ex. 1005)1
`
`Basis
`§ 102(e)2
`
`Claims Challenged
`
`1, 9, 10, 12, 14, 15, 16, 23,
`and 24
`
`1, 9, 10, 12, 14, 15, 16, 23,
`and 24
`
`§ 103(a)
`
`Gardner and Satava
`(Ex. 1007)3
`
`Gardner and Seiple
`(Ex. 1009)4
`Benefon (Ex. 1006)5
`
`§ 103(a)
`
`17
`
`§ 102(b)
`
`1, 3, 9, 10, 12, 15, 16, 18,
`23, and 24
`
`Benefon and eTrex
`(Ex. 1010)6
`
`§103(a)
`
`17
`
`Pet. 7–8.
`
`C. The ’867 Patent
`
`The ’867 patent describes “a portable fitness device including a global
`
`positioning system (GPS) receiver that receives GPS signals, a wireless
`
`wide-area network transmitter supporting communication over-the-air to a
`
`wireless communication network, and a processing unit coupled to the GPS
`
`
`
`1 U.S. Patent No. 7,454,002 B1, filed Jan. 8, 2001 and issued Nov. 18, 2008.
`2 The Leahy-Smith America Invents Act (“AIA”), Pub.L. No. 112–29, took
`effect on March 16, 2013. Because the application from which the ’867
`patent issued was filed before that date, our citations to Title 35 are to its
`pre-AIA version.
`3 R. Satava, et. al., The Physiologic Cipher at Altitude:
`Telemedicine and Real-Time Monitoring of Climbers on Mount
`Everest, Telemedicine Journal and e-Health, Vol. 6, No. 3
`(2000).
`4 U.S. Patent No. 6,032,108, issued Feb. 29, 2000.
`5 BENEFON ESC!, Owner’s Manual, Benefon Oyj (2001).
`6 eTrex Summit Personal Navigator, Owner’s Manual and
`Reference Guide, GARMIN Corporation (Feb. 2001).
`
`3
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`receiver and the wireless wide-area network transmitter.” Ex. 1001, 1:66–
`
`2:4. Figure 1 of the ’867 patent is reproduced below.
`
`
`
`Figure 1 shows athlete 14 running with portable fitness device 12 on
`
`her back. Ex. 1001, 3:29–32.7 GPS satellites 20 emit GPS signals 22, which
`
`allow the PFD to continuously determine its position, velocity, and bearing.
`
`Id. at 3:34–39. A wireless wide area network is provided by cellular
`
`telephone towers 30 with antennae 34 and base station systems (BSS) 32.
`
`Id. at 3:40–52 (only one tower and one BSS are shown in Figure 1). The
`
`base station systems are in communication with the Internet. Id. at 3:52–57.
`
`
`
`7 The ’867 patent uses “portable training device” interchangeably with
`“portable fitness device.” See, e.g., Ex. 1001, 6:44–45. For simplicity, we
`consistently use “portable fitness device” or the acronym “PFD.”
`
`4
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`The ’867 patent describes utilizing this hardware such that a PFD’s
`
`GPS receiver can receive GPS signals having time-stamped waypoints, the
`
`PFD’s processor can determine athletic performance information (API) and
`
`route information from the waypoint data, and the PFD’s transmitter can
`
`output API and route information over the wireless wide area network
`
`during a fitness activity. Id. at 2:5–12.
`
`D. The Challenged Claims
`
`Petitioner challenges claims 1, 3, 9, 10, 12, 14–18, 23, and 24. Pet. 2.
`
`Claims 1 and 16 are independent. Claim 1 is illustrative and reproduced
`
`below:
`
`1. A portable fitness device, comprising:
`
`a mobile phone including:
`
`a global positioning system (GPS) receiver;
`
`a wireless wide-area network transceiver supporting bi-
`directional voice communication over-the-air with a wireless
`communication network; and
`
`a processing unit coupled to the GPS receiver and the
`wireless wide-area network transceiver, wherein the processing
`unit receives from said GPS receiver data describing a plurality
`of waypoints within a route of a fitness activity, determines
`athletic performance information at multiple of the plurality of
`waypoints, said athletic performance information including
`athletic performance information indicative of velocity and at
`least some of said athletic performance information being
`determined from the waypoints, and outputs said plurality of
`waypoints within the route and at least a portion of said athletic
`performance information to said wireless communication
`network during traversal of the route via said wireless wide-
`area network transceiver.
`
`5
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`“A claim in an unexpired patent shall be given its broadest reasonable
`
`construction in light of the specification of the patent in which it appears.”
`
`37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should
`
`be read in light of the specification, as it would be interpreted by one of
`
`ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
`
`(Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and
`
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
`
`the term would have to a person of ordinary skill in the art in question.”)
`
`(internal quotation marks omitted).
`
`Petitioner proposes express constructions for four terms, three of
`
`which we discuss below.8 Pet. 10–11. Patent Owner does not propose any
`
`express constructions.
`
`1. “waypoints” (claim 1) and “time-stamped waypoints” (claim 16)
`
`Petitioner proposes that “waypoint” be construed as a geographic
`
`point that can be specified in two-dimensions, via latitude and longitude, or
`
`in three dimensions, via latitude, longitude, and elevation. Pet. 10.
`
`Petitioner proposes that “time-stamped waypoint” be construed as a
`
`waypoint that includes time along with two-dimensional or three-
`
`
`8 The fourth term is “differential athletic performance information,” which
`appears in dependent claim 12. Our denying institution on claim 12 is based
`on our denying institution on claim 1, from which claim 12 depends. Hence,
`it is unnecessary to construe this term.
`
`6
`
`
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`IPR2015-00694
`Patent 7,292,867 B2
`
`
`dimensional coordinates. Id. To support these constructions, Petitioner
`
`relies on declaration testimony of Dr. Shawne Burke and also the
`
`specification of the ’867 patent. Id. (citing Ex. 1004 ¶ 38; Ex. 1001, 4:56–
`
`58, 7:20–22). The cited specification excerpts fully support Petitioner’s
`
`construction, and Patent Owner does not dispute them. We adopt them for
`
`purposes of this decision.
`
`2. “athletic performance information” (claims 1 and 16)
`
`Petitioner proposes that API be construed as “any data regarding a
`
`person’s traversal of a route (e.g., elapsed distance, elapsed time, pace,
`
`distance to go, heart rate, etc.).” Pet. 10 (citing Ex. 1001, 4:64–67;
`
`Ex. 1004, ¶ 39). The cited specification excerpt indeed lists the same
`
`examples, which must be encompassed within the meaning of API. On this
`
`record, however, we need not, and do not, construe the outer bounds of API
`
`as including any data regarding a person’s traversal of a route.
`
`B. Anticipation by Gardner
`
`Petitioner asserts that claims 1, 9, 10, 12, 14, 15, 16, 23, and 24 were
`
`anticipated by Gardner under 35 U.S.C. § 102(e). Pet. 7.
`
`Gardner discloses personal data capture device 10 that “may be used
`
`by a person engaged in fitness activity.” Ex. 1005, 3:61–67.9 In one
`
`embodiment, the “personal data capturing functionality is provided by
`
`incorporating components of the personal data capture device into a device
`
`
`
`9 Gardner uses “portable sports appliance (PSA)” interchangeably with
`“personal data capture device.” See, e.g., Ex. 1005, 3:54–55, 3:66–67. For
`simplicity, we consistently use “personal data capture device.”
`
`7
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`150 which may be a wireless communication device,” which, in turn, may be
`
`“a cellular phone.” Id. at 8:12–17, 9:7–9. “[T]he device 150 may include a
`
`GPS signal receiver 230” and “further includes a microprocessor 110 which
`
`is coupled to a memory 116 and a software program 282.” Id. at 8:18–19,
`
`8:29–31.
`
`Independent claim 1 requires that the processing unit “determines
`
`athletic performance information at multiple of the plurality of waypoints,
`
`said athletic performance information including athletic performance
`
`information indicative of velocity.” Independent claim 16 similarly requires
`
`a computer readable medium with “instructions that cause said mobile phone
`
`. . . to determine athletic performance information at multiple of the plurality
`
`of waypoints, said athletic performance information including athletic
`
`performance information indicative of velocity.”
`
`Petitioner does not cite any disclosure from Gardner expressly
`
`meeting these limitations. Instead, Petitioner relies on Dr. Burke’s
`
`testimony to assert their inherent disclosure,10 stating the following:
`
`Velocity, average speed and distance, however, are
`not contained within GPS signals, and therefore,
`one of ordinary skill in the art would understand
`that velocity, average speed and distance disclosed
`in Gardner are necessarily determined by the
`
`
`
`10 For a reference to anticipate, “when the reference is silent about the
`asserted inherent characteristic, such gap in the reference may be filled with
`recourse to extrinsic evidence. Such evidence must make clear that the
`missing descriptive matter is necessarily present in the thing described in the
`reference, and that it would be so recognized by persons of ordinary skill.”
`Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
`1991).
`
`8
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`the data describing
`microprocessor using
`waypoints obtained from the GPS receiver.
`
`Pet. 14 (citing Ex. 1004 ¶¶ 53–55) (emphasis added); see also Pet. 23 (claim
`
`16 analysis relying on claim 1 analysis).
`
`Dr. Burke concedes that, according to the reference itself and in
`
`contrast to his own opinion, the GPS signals that are received by Gardner’s
`
`GPS receiver 230 “may include three-dimensional positional information
`
`and velocity of the user when the user is walking or running, or is engaged in
`
`some other relevant activity.” Ex. 1004 ¶ 53 (quoting Ex. 1005, 6:13–16)
`
`(emphasis added). Thus, on its face, Gardner states that velocity data may
`
`be part of the received GPS signals, and, thus, it would not be necessary to
`
`determine velocity locally by microprocessor 110 or any other part of the
`
`Gardner personal data capture device.
`
`Nonetheless, Dr. Burke testifies that “GPS signals — i.e., the signals
`
`received from GPS satellites — do not contain velocity” and concludes that
`
`“[o]ne of ordinary skill in the art would thus understand Gardner’s
`
`disclosure of signals containing ‘velocity’ as a reference to velocity data
`
`produced by calculations that were necessarily made via a processor of the
`
`receiving device.” Ex. 1004 ¶¶ 53–54. Dr. Burke, however, does not
`
`provide any evidence to support his premise that GPS signals inherently lack
`
`velocity data. See id.; see also id. at ¶¶ 14–18. On that issue, it is his word
`
`alone against the face of the reference.
`
`Under these circumstances, there is not a reasonable likelihood of
`
`Petitioner prevailing in showing claims 1, 9, 10, 12, 14, 15, 16, 23, and 24
`
`were anticipated by Gardner.
`
`9
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`C. Obviousness over Gardner and Satava
`
`Petitioner asserts that claims 1, 9, 10, 12, 14, 15, 16, 23, and 24 would
`
`have been obvious over Gardner and Satava. Pet. 8. For this ground,
`
`Petitioner does not apply Satava in an attempt to cure the deficiency in the
`
`prior ground. Pet. 27–29. Instead, Petitioner incorporates certain teachings
`
`from Satava into Gardner in order to meet other limitations of claims 1 and
`
`16, which are not directed to determining API (including API indicative of
`
`velocity) but rather to outputting/transmitting API from the PFD/mobile
`
`phone to a wireless network. Id. Thus, for the same reasons as stated above
`
`for the prior ground, there is not a reasonable likelihood of Petitioner
`
`prevailing in showing claims 1, 9, 10, 12, 14, 15, 16, 23, and 24 would have
`
`been obvious over Gardner and Satava.
`
`D. Obviousness over Gardner and Seiple
`
`Petitioner asserts that claim 17, which depends from independent
`
`claim 16, would have been obvious over Gardner and Seiple. Pet. 8. For
`
`this ground, Petitioner does not apply Seiple in an attempt to cure the
`
`deficiency (discussed above) of Gardner not teaching a computer readable
`
`medium with “instructions that cause said mobile phone . . . to determine
`
`athletic performance information at multiple of the plurality of waypoints,
`
`said athletic performance information including athletic performance
`
`information indicative of velocity,” as required by independent claim 16.
`
`Pet. 33–35. Instead, Petitioner incorporates certain teachings from Seiple
`
`into Gardner in order to meet the limitation added by claim 17, which is not
`
`directed to determining API (including API indicative of velocity), but rather
`
`to receiving and utilizing elevation data. Id. Thus, for the same reasons
`
`10
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`regarding anticipation of claim 16 by Gardner, there is not a reasonable
`
`likelihood of Petitioner prevailing in showing claim 17 would have been
`
`obvious over Gardner and Seiple.
`
`E. Anticipation by Benefon
`
`Petitioner asserts that claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24
`
`were anticipated by Benefon. Pet. 8.
`
`Benefon discloses a mobile phone that includes a GPS receiver. The
`
`GPS receiver “receives signals from up to twelve satellites at once, and
`
`using this information calculates your position and tracks your movement on
`
`Earth, and also sets your phone’s clock on time.” Ex. 1006, 14. Benefon
`
`also discloses “Friend Find features” that allow multiple Benefon phones to
`
`transmit data to one another over a wireless network. Id. at 140.
`
`Independent claim 1 requires that the processing unit “outputs said
`
`plurality of waypoints within the route and at least a portion of said athletic
`
`performance information to said wireless communication network during
`
`traversal of the route via said wireless wide-area network transceiver.”
`
`Independent claim 16 similarly requires a computer readable medium with
`
`“instructions that cause said mobile phone to automatically transmit the
`
`plurality of waypoints within the route and at least a portion of said athletic
`
`performance information to a remote recording device via a wireless wide-
`
`area communication network.”
`
`Petitioner relies on “Friend Find features” of Benefon to meet these
`
`limitations. Pet. 39–40. The “Friend Find features” involve transmission of
`
`position data. See Ex. 1006, 140 (“Position updates: A phone can update its
`
`position information in another phone by sending a position update.”).
`
`11
`
`
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`IPR2015-00694
`Patent 7,292,867 B2
`
`
`Position data is not API per Petitioner’s proposed construction of API,
`
`which we adopt above. Petitioner, however, asserts that the data transmitted
`
`from one Benefon phone to another also includes direction and speed. Pet.
`
`39 (citing Ex. 1006, 140). In particular, Petitioner relies on the following
`
`excerpt from Benefon:
`
`“The basic principle of the Friend Find functions is
`storing the positions of other Benefon ESC!
`phones in a Benefon ESC!, along with other
`information such as speed and direction of
`movement. This information can later be updated
`by position updates.”
`
`Pet. 39 (quoting Ex. 1006, 140) (emphasis added by Petitioner). This
`
`excerpt does not disclose transmission of speed or direction data. It
`
`discloses storing such data, and notes that the stored speed and direction data
`
`can be updated as new position data is received. Ex. 1006, 140.
`
`Petitioner argues that Benefon nonetheless teaches transmission of
`
`speed data because:
`
`(1)
`
`the Benefon phone used Mobile Phone Telematics Protocol
`
`(MPTP) (Pet. 40 (citing Ex. 1006, 16));
`
`(2)
`
`one of skill in the art would have understood that the content of
`
`a Benefon position update was defined by the protocol used
`
`(i.e., MPTP) and the data accommodated by that protocol (Pet.
`
`40 (citing Ex. 1004 ¶ 96)); and
`
`(3) MPTP accommodates sending speed in a position update (Pet.
`
`40 (citing Ex. 1006, 140; Ex. 1011, 4–5)).
`
`For Benefon to anticipate, despite being “silent about the asserted
`
`inherent characteristic, such gap in the reference may be filled with recourse
`
`to extrinsic evidence.” See Continental Can Co. v. Monsanto Co., 948 F.2d
`
`12
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`1264, 1268 (Fed. Cir. 1991). Here, Petitioner’s reliance on declaration
`
`testimony and a second reference, Hjelm,11 does not show “that the missing
`
`descriptive matter is necessarily present in the thing described in [Benefon],
`
`and that it would be so recognized by persons of ordinary skill.” See
`
`Continental Can, 948 F.2d at 1268.
`
`In the cited declaration testimony, Dr. Burke states that MPTP “was
`
`known in the art at the time the 867 Patent was filed, see [Hjelm, Ex. 1011,
`
`4–5], and was structured so that position updates always included the speed
`
`and heading of the sending unit. [Id. at 7] (table 10.2).” Ex. 1004 ¶ 96.
`
`Although he cites table 10.2 on page 7 of Hjelm, Dr. Burke does not explain
`
`how the table purportedly supports his opinion that MPTP position updates
`
`always include speed and heading data. Nor is it self-evident from the cited
`
`evidence, Hjelm’s table 10.2, which is reproduced below:
`
`
`
`11 Johan Hjelm, Profession Developer’s Guide Creating Location Services
`for the Wireless Web, John Wiley & Sons, Inc., 297–300 (2002) (excerpt)
`(Ex. 1011).
`
`
`
`13
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`Table 10.2 is labeled “Position and Status Reporting Message.”
`
`Ex. 1011, 7 (table 10.2). It mentions, among other things, “Speed” and
`
`“Direction,” but under each of those entries, table 10.2 states “Can be blank
`
`if not available.” Id. Thus, not only does Dr. Burke fail to explain how
`
`table 10.2 purportedly evidences that speed and direction data are “always”
`
`included in a Benefon position update, table 10.2 suggests that the opposite
`
`is true.
`
`For the foregoing reasons, there is not a reasonable likelihood of
`
`Petitioner prevailing in showing claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24
`
`were anticipated by Benefon.
`
`F. Obviousness over Benefon and eTrex
`
`Petitioner asserts that claim 17, which depends from independent
`
`claim 16, would have been obvious over Benefon and eTrex. Pet. 8. In this
`
`ground, Petitioner does not apply eTrex in an attempt to cure the deficiency
`
`(discussed above) of Benefon not teaching a computer readable medium
`
`with “instructions that cause said mobile phone to automatically transmit the
`
`plurality of waypoints within the route and at least a portion of said athletic
`
`performance information to a remote recording device via a wireless wide-
`
`area communication network,” as required by independent claim 16.
`
`Pet. 49–50. Instead, Petitioner incorporates certain teachings from eTrex
`
`into Benefon in order to meet the limitation added by claim 17, which is
`
`directed not to transmitting API but rather to receiving and utilizing
`
`elevation data. Id. Thus, for the same reasons regarding anticipation of
`
`claim 16 by Benefon, there is not a reasonable likelihood of Petitioner
`
`14
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`prevailing in showing claim 17 would have been obvious over Benefon and
`
`eTrex.
`
`III. CONCLUSION
`
`The Petition fails to show there is a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one of the claims challenged
`
`in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
`
`IV. ORDER
`
`Accordingly, the Petition is denied, and no trial is instituted.
`
`15
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`Petitioner:
`
`
`Brian Ferguson
`brian.ferguson@weil.com
`
`Anish Desai
`anish.desai@weil.com
`
`
`
`Patent Owner:
`
`
`Mitchell Stockwell
`mstockwell@kilpatricktownsend.com
`
`Wab Kadaba
`wkadaba@kilpatricktownsend.com
`
`
`
`16
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