UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
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`
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`Under Armour, Inc.
`Petitioner,
`
`v.
`
`adidas AG,
`Patent Owner
`
`———————
`
`Case No. IPR2015-00694
`
`Patent No. 7,292,867
`______________________________________________________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`Under Armour, Inc.
`Petitioner,
`
`v.
`
`adidas AG,
`Patent Owner
`
`———————
`
`Case No. IPR2015-00694
`
`Patent No. 7,292,867
`______________________________________________________________
`
`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
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`I.
`
`INTRODUCTION
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`Under Armour, Inc. (“Petitioner”) respectfully requests rehearing of the
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`Board’s July 16, 2015 Decision (“Decision”) denying institution of a trial based on
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`Grounds 4 and 5, which challenged claims 1, 3, 9, 10, 12, 15, 16, 17, 18, 23 and 24
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`of U.S. Patent No. 7,292,867 (“the 867 Patent”) based on the Benefon ESC!:
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`Owner’s Manual [UA-1006] (“the Benefon publication”).
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`In its Decision, the Board concluded that the Benefon publication and the
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`Hjelm publication [UA-1011], which was cited as extrinsic evidence, do not
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`disclose that speed data is always included in a Mobile Phone Telematics Protocol
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`(“MPTP”) position message. Decision [Paper No. 9] at 14. On that basis alone,
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`the Board declined to institute Grounds 4 and 5. Petitioner respectfully submits
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`that this was an abuse of discretion because (1) the law does not require that
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`Petitioner demonstrate that an MPTP position message always includes speed data;
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`and (2) Petitioner submitted evidence that an MPTP position message necessarily
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`accommodates speed data (i.e., includes a dedicated field for speed data).
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`Petitioner presented uncontested evidence that the Benefon publication
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`discloses transmitting position and tracking messages using a publicly known
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`protocol—MPTP. Petition at 40. Petitioner further submitted extrinsic evidence,
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`the Hjelm publication, to show that an MPTP position message includes a
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`dedicated field for speed data. Id. Neither the Patent Owner—who did not even
`1
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`
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`raise this issue in its preliminary response—nor the Board relied on any evidence
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`suggesting that an MPTP position message does not include a speed field.
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`Accordingly, the only evidence of record before the Board clearly showed that the
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`Benefon publication, viewed with appropriate extrinsic evidence, discloses a
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`mobile phone that was capable of transmitting a message including speed data.
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`Under the correct legal standard, this was sufficient to meet Petitioner’s
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`burden of proof. As a prior art publication, it was not necessary for Petitioner to
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`demonstrate that the Benefon publication discloses that every MPTP position
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`message always includes speed data. See Kennametal, Inc. v. Ingersoll Cutting
`
`Tool Co., 780 F.3d 1376, 1383 (Fed. Cir. 2015) (“Though it is true that there is no
`
`evidence in Grab of actual performance of combining the ruthenium binder and
`
`PVD coatings, this is not required. Rather, anticipation only requires that those
`
`suggestions be enabled to one of skill in the art.”) (quotations and citations
`
`omitted); Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379
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`(Fed. Cir. 2001) (“[A]nticipation does not require actual performance of
`
`suggestions in a disclosure. Rather, anticipation only requires that those
`
`suggestions be enabling to one of skill in the art.”). In accordance with this
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`precedent, Petitioner was only required to show that the Benefon publication
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`discloses a mobile phone that is capable of transmitting speed data over a wireless
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`network. Petitioner did so. It is uncontested that the Benefon publication discloses
`2
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`
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`a phone that is capable of transmitting an MPTP position message, and that the
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`Hjelm textbook shows that it was common knowledge that an MPTP position
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`message includes a dedicated field for speed. Continental Can Co. v. Monsanto
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`Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“This modest flexibility in the rule that
`
`‘anticipation’ requires that every element of the claims appear in a single reference
`
`accommodates situations where the common knowledge of technologists is not
`
`recorded in the reference; that is, where technological facts are known to those in
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`the field of invention, albeit not known to judges.”).
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`Petitioner thus submits that the Board’s reason for declining institution as to
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`Grounds 4 and 5—that Dr. Burke was incorrect in asserting that every MPTP
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`position message includes actual speed data—was a legally insufficient basis for
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`denying institution. It is true that the Hjelm textbook states that the speed field can
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`be blank if speed data is not available. But the possibility that in actual practice the
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`speed field may not always be populated with data is irrelevant to the issue of
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`anticipation based on a printed publication. Furthermore, the fact that Petitioner
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`used extrinsic evidence to show what was common knowledge regarding the
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`dedicated fields in an MPTP position message did not require that Petitioner show
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`that every position message necessarily always includes speed data. Instead,
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`Petitioner was only required to show that an MPTP position message necessarily
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`3
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`
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`includes a dedicated field for speed, which can be populated with speed data when
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`available. Petitioner did so.
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`Accordingly, Petitioner respectfully requests rehearing of the Board’s
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`Decision, and asks that inter partes review of claims 1, 3, 9, 10, 12, 15, 16, 17, 18,
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`23 and 24 be instituted based on Grounds 4 and 5 presented in the Petition.
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`II. APPLICABLE RULES
`“When rehearing a decision on petition, a panel will review the decision for
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`an abuse of discretion.” 37 C.F.R. § 42.71(c). “An abuse of discretion may arise if
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`a decision is based on an erroneous interpretation of law, if a factual finding is not
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`supported by substantial evidence, or if an unreasonable judgment is made in
`
`weighing relevant factors.” Daicel Corp. v. Celanese Int’l Corp., IPR2015-00173,
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`Decision on Request for Rehearing [Paper No. 15] at 2 (PTAB June 26, 2015).
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`A request for a rehearing is further governed by 37 C.F.R. § 42.71(d), which
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`states the following:
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`(d) Rehearing. A party dissatisfied with a decision may
`file a request for rehearing, without prior authorization
`from the Board. The burden of showing a decision should
`be modified lies with the party challenging the decision.
`The request must specifically identify all matters the
`party believes the Board misapprehended or overlooked,
`and
`the place where each matter was previously
`addressed in a motion, an opposition, or a reply. A
`4
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`
`
`
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`request for rehearing does not toll times for taking action.
`Any request must be filed:
`
`…
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`(2) Within 30 days of the entry of a final decision or a
`decision not to institute a trial.
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`In accordance with § 42.71(d)(2), this request is being filed within 30 days
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`of entry of a decision not to institute a trial.
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`III. REQUESTED RELIEF
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`Petitioner respectfully requests rehearing of the Board’s decision not to
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`institute trial on Grounds 4 and 5 concerning challenged claims 1, 3, 9, 10, 12, 15-
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`18, 23 and 24 of the 867 Patent. Petitioner submits that the Benefon publication
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`anticipates claims 1, 3, 9, 10, 12, 15, 16, 18, 23 and 24, while claim 17 is obvious
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`based on the Benefon publication in view of eTrex. Accordingly, Petitioner
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`respectfully requests that the Board institute review of these claims based on the
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`Benefon publication and the Benefon publication in view of eTrex.
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`IV. BACKGROUND
`A. The Challenged Claims
`There are two independent challenged claims—claims 1 and 16.
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`Independent claim 1 is directed to a “portable fitness device” that includes multiple
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`elements. 867 Patent [UA-1001] Claim 1. Pertinent to this motion, claim 1
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`5
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`
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`requires a processing unit that outputs “athletic performance information” over a
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`wireless network. Id. Similarly, independent claim 16 is directed to a computer
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`readable medium with instructions to transmit “athletic performance information”
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`over a wireless network. Id. Claim 16. Claims 1 and 16 refer to velocity as a
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`specific example of athletic performance information which, for the purposes of
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`the 867 Patent, is synonymous with speed.
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`B.
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`Benefon’s Disclosure of Transmitting Speed Over a Wireless
`Network
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`In the Petition, it was explained that the Benefon publication discloses using
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`the Mobile Phone Telematics Protocol (MPTP) to transmit position and tracking
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`messages from the phone to a service center using SMS. See Petition [Paper No.
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`1] at 40 (citing the Benefon publication [UA-1006] at .016). In support of this
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`statement, Petitioner cited the following excerpt from the Benefon publication:
`
`Benefon ESC! utilizes Mobile Phone Telematics
`Protocol (MPTP) and Mobile Maps Service Protocol
`(MMSP) which provide a sophisticated set of telematics
`commands and a map protocol...MPTP makes
`it
`possible
`to send position,
`tracking, and route
`messages between service center and MPTP enabled
`terminals by using SMS.
`
`6
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`
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`Benefon publication [UA-1006] at .016.1 Next, Petitioner cited the Hjelm
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`publication as extrinsic evidence to demonstrate the types of data accommodated
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`by an MPTP position message. Petition at 40 (“The data accommodated by MPTP
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`is evidenced by the disclosure in Benefon 2001…as well as [the Hjelm
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`publication], which discusses the MPTP protocol specifically with respect to
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`sending positions updates from a Benefon Esc!. UA-1011.004-005.”). The two
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`cited pages of the Hjelm publication explain that the Benefon Esc! mobile phone
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`used the MPTP protocol for sending messages between a mobile terminal and the
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`network. See, e.g.:
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`To enable development by others and to allow service
`providers to supply information, Benefon has released
`the protocol, the Mobile Phone Telematics Protocol,
`which is used between a service center and a terminal.
`
`Hjelm [UA-1011] at .005.
`
`The basic commands of the protocol are listed in Table
`10.1. They are what are supported by the Esc
`telephone, but Benefon also has several other models
`that can provide functions that are more complicated.
`The idea is that the service center sends one of these
`commands to the mobile terminal, which then
`
`
`1 All emphases are added unless otherwise noted.
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`7
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`
`
`
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`responds with a message reporting its status and
`position. It looks like Table 10.2.
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`Id. Petitioner then pointed specifically to Table 10.2, which illustrates an MPTP
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`position message that includes dedicated fields for, inter alia, latitude data,
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`longitude data, and speed data. Table 10.2 (reproduced and annotated below) is
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`copied in the Decision (see Paper No. 9 at 13) and shows an MPTP position
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`message, including the dedicated field for speed:
`
`
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`Hjelm [UA-1011] at .007 (annotated). Notably, there has been no evidence
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`submitted, nor is Petitioner aware of any such evidence, of an MPTP position
`
`message that does not include a dedicated field for speed data.
`
`As the Board did not dispute, Dr. Burke’s declaration and the Hjelm
`
`textbook were properly submitted extrinsic evidence showing what was common
`
`knowledge concerning the contents of the MPTP position message that is disclosed
`
`8
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`
`
`
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`in the Benefon publication. Continental Can Co, 948 F.2d at 1269 (“This modest
`
`flexibility in the rule that ‘anticipation’ requires that every element of the claims
`
`appear in a single reference accommodates situations where the common
`
`knowledge of technologists is not recorded in the reference; that is, where
`
`technological facts are known to those in the field of invention, albeit not known to
`
`judges.”). This evidence confirms that the Benefon publication provides an
`
`enabling disclosure of a mobile phone that is capable of transmitting a message
`
`over a wireless network that includes speed data. Bristol-Myers Squibb Co., 246
`
`F.3d at 1379 (“[A]nticipation does not require actual performance of suggestions in
`
`a disclosure. Rather, anticipation only requires that those suggestions be enabling
`
`to one of skill in the art.”).
`
`C. The Board’s Decision
`In its Decision, the Board denied Petitioner’s challenges based on the
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`Benefon publication (Grounds 4 and 5) for the sole reason that the Board disagreed
`
`with Dr. Burke’s opinion that an MPTP position message always includes speed
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`data. Decision [Paper No. 9] at 13-14. Specifically, the Board found that a
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`statement in Hjelm [UA-1011] that the value in the speed field is “Calculated from
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`GPS” and “Can be blank if not available” demonstrated that an MPTP position
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`message may not always include speed data. Id. The Board therefore declined to
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`institute with respect to the Benefon publication on the basis that Dr. Burke (and
`9
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`
`
`
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`therefore Petitioner) “fail[ed] to explain how table 10.2 [of the Hjelm textbook]
`
`purportedly evidences that speed and direction data are ‘always’ included in a
`
`Benefon position update.” Id. at 14. Thus, the Board appears to have declined to
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`institute trial because it required proof that every MPTP position message
`
`transmitted by a Benefon Esc! phone contained speed data in the speed field. As
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`explained herein, Petitioner respectfully submits that the Board’s decision was an
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`erroneous application of the law of anticipation.
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`V. ARGUMENT
`Petitioner submits that the Board’s decision not to institute trial based on
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`Grounds 4 and 5 was an abuse of discretion because the Board applied the
`
`incorrect legal standard and disregarded evidence that was sufficient under the
`
`appropriate legal standard.
`
`First, the Board required that Petitioner prove that the Benefon publication
`
`discloses that an MPTP position message always includes speed data. But as a
`
`prior art publication, Petitioner was simply required to prove that the Benefon
`
`publication provides an enabling disclosure of a mobile phone that is capable of
`
`transmitting speed over a wireless network. See Kennametal, Inc, 780 F.3d at 1383
`
`(“Though it is true that there is no evidence in Grab of actual performance of
`
`combining the ruthenium binder and PVD coatings, this is not required. Rather,
`
`anticipation only requires that those suggestions be enabled to one of skill in the
`10
`
`
`
`
`
`art.”) (quotations and citations omitted); In re Gleave, 560 F.3d 1331, 1338 (Fed.
`
`Cir. 2009) (“[I]t is not necessary that an invention disclosed in a publication shall
`
`have actually been made in order to satisfy the enablement requirement.”)
`
`(quotations omitted). Bristol-Myers Squibb Co., 246 F.3d at 1379 (“[A]nticipation
`
`does not require actual performance of suggestions in a disclosure. Rather,
`
`anticipation only requires that those suggestions be enabling to one of skill in the
`
`art.”). Moreover, Petitioner’s reliance on extrinsic evidence did not require proof
`
`that an MPTP position message always includes speed data. Rather, Petitioner
`
`showed that the Benefon publication discloses transmission of an MPTP position
`
`message, and appropriately submitted the extrinsic evidence to demonstrate that it
`
`was common knowledge that an MPTP position message includes a dedicated field
`
`for speed data. See Continental Can Co., 948 F.2d at 1269.
`
`There is no evidence of record, nor is Petitioner aware of any, that another
`
`type of MPTP position message exists that does not include a dedicated field for
`
`speed data. In other words, there is uncontested evidence that an MPTP position
`
`message necessarily includes a field for speed data. Accordingly, Petitioner
`
`established that the Benefon publication discloses a mobile phone that is capable of
`
`transmitting speed over a wireless network. This is all that was required of
`
`Petitioner for establishing anticipation of the challenged apparatus claims of the
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`867 Patent. See generally Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
`11
`
`
`
`
`
`1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what
`
`a device does.”); see also MPEP § 2114 (“A claim containing a recitation with
`
`respect to the manner in which a claimed apparatus is intended to be employed
`
`does not differentiate the claimed apparatus from a prior art apparatus if the prior
`
`art apparatus teaches all the structural limitations of the claim”) (internal
`
`quotations and citation omitted).
`
`The fact that Hjelm states that the speed field “can be blank if not available”
`
`does not change this analysis. The relevant inquiry is simply whether the prior art
`
`shows that the claimed limitation of a mobile phone having the capability of
`
`outputting athletic performance information (e.g., speed data) was known in the
`
`art. The record evidence undisputedly proves that it was.2 See, e.g., In re
`
`Hallman, 655 F.2d 212, 215 (C.C.P.A. 1981) (“[applicant] has set forth his
`
`invention in broad functional terms. It was the examiner’s view that the recited
`
`functional characteristics were disclosed or suggested by the [prior art]….
`
`[Applicant] has failed to show that the reference structures…were not inherently
`
`
`2 That Hjelm contains an example of speed data being transmitted – 40 km/hr –
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`merely confirms that the Benefon publication teaches a mobile phone capable of
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`transmitting speed data. Hjelm [UA-1011] at .007.
`
`12
`
`
`
`
`
`capable of functioning as the presently claimed invention”); In re Schreiber, 128
`
`F.3d 1473, 1478 (Fed. Cir. 1997).
`
`Accordingly, Petitioner respectfully submits that the Board committed an
`
`abuse of discretion in applying the incorrect legal standard, and disregarding
`
`relevant evidence under the appropriate legal standard. As such, a rehearing is
`
`warranted and trial should be instituted based on Grounds 4 and 5 of the Petition.
`
`See, e.g., Apple Inc. v. Memory Integrity LLC, IPR2015-00163, Decision on
`
`Request for Rehearing [Paper No. 22] at 6 (PTAB July 1, 2015) (granting
`
`Petitioner’s request for rehearing and instituting trial concerning an additional
`
`challenged claim); Daicel Corp. v. Celanese Int’l Corp., IPR2015-00173, Decision
`
`on Request for Rehearing [Paper No. 15] at 11 (PTAB June 26, 2015) (“On this
`
`record, Petitioner has demonstrated that the Decision Denying Institution should be
`
`modified to institute an inter partes review of Petitioner’s challenges as to claims
`
`58–60, 67, 69, 71, and 72 based on anticipation by the ’095 patent and claim 73
`
`based on obviousness over the ’095 patent and JP ’712.”).
`
`VI. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests rehearing of the
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`Board’s Decision, and asks that inter partes review of claims 1, 3, 9, 10, 12, 15,
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`16, 17, 18, 23 and 24 be instituted based on Grounds 4 and 5 presented in the
`
`Petition.
`
`13
`
`
`
`
`
`Dated: August 14, 2015
`
`
`
`
`Respectfully submitted,
`
`/s/ Brian E. Ferguson
`Brian E. Ferguson
`Lead Counsel for Petitioner
`Registration No. 36,801
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005
`Phone: 202-682-7516
`brian.ferguson@weil.com
`
`14
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on August 14, 2015, the foregoing
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`PETITIONER’S REQUEST FOR REHEARING PURSUANT TO 37 C.F.R. §
`
`42.71 was served via electronic mail, upon the following:
`
`Mitchell G. Stockwell
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`mstockwell@kilpatricktownsend.com
`
`Wab P. Kadaba
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street NE, Suite 2800
`Atlanta, GA 30309-4528
`wkadaba@kilpatricktownsend.com
`
`
`
`
`/s/ Timothy J. Andersen
`Timothy J. Andersen
`Paralegal
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW Suite 900
`Washington, DC 20005
`T: 202-682-7075
`timothy.andersen@weil.com
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