Trials@uspto.gov
`571-272-7822
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` Paper 11
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`Date: September 30, 2015
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`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 Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`571-272-7822
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` Paper 11
`
`
`Date: September 30, 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 Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2015-00694
`Patent 7,292,867 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Under Armour, Inc., filed a Petition to institute an
`
`inter partes review of various claims of U.S. Patent No. 7,292,867 B2 (“the
`
`’867 patent”) pursuant to 35 U.S.C. § 311(a). Paper 1 (“Pet.”). We entered
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`a Decision Denying Institution of Inter Partes Review. Paper 9 (“Decision”
`
`or “Dec.”).
`
`Petitioner has now filed a Request for Rehearing of that Decision.
`
`Paper 10, (“Request” or “Reh’g Req.”). The Request seeks rehearing of the
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`portion of our Decision denying institution on the fourth and fifth grounds of
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`unpatentability asserted in the Petition, namely the following:
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`claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24 as anticipated by Benefon
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`(Ex. 1006)1; and
`
`claim 17 as obvious over Benefon and eTrex (Ex. 1010)2.
`
`Reh’g Req. 1.
`
`“When rehearing a decision on petition, a panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
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`showing a decision should be modified lies with the party challenging the
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`decision[,]” which party “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.”
`
`37 C.F.R. § 42.71(d).
`
`The Request for Rehearing is denied.
`
`
`
`1 BENEFON ESC!, Owner’s Manual (2001).
`2 eTrex Summit Personal Navigator, Owner’s Manual and
`Reference Guide, GARMIN Corporation (Feb. 2001).
`
`2
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`IPR2015-00694
`Patent 7,292,867 B2
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`II. ANALYSIS
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`The Petition asserted that claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24
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`were anticipated by Benefon and that claim 17 would have been obvious
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`over Benefon in view of eTrex. Pet. 8.
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`Independent claim 1 requires that the processing unit “outputs said
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`plurality of waypoints within the route and at least a portion of said athletic
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`performance information [including athletic performance information
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`indicative of velocity] to said wireless communication network during
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`traversal of the route via said wireless wide-area network transceiver.”
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`Independent claim 16 is directed to a computer readable medium and
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`contains a limitation corresponding to the just quoted limitation of claim 1.
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`To meet these limitations, the Petition argued “the disclosure in
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`Benefon 2001 that position/tracking updates utilize ‘Mobile Phone
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`Telematics Protocol’ or ‘MPTP’ confirms that speed is contained within
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`those updates,”3 and “[o]ne of ordinary skill in the art would understand that
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`the content of a position/tracking message was defined by the protocol used
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`(i.e., MPTP) and the data accommodated by that protocol.” Pet. 40 (citing
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`Ex. 1004 ¶ 96).
`
`The evidence cited to support the inherency position—Ex. 1004
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`¶ 96—is declaration testimony by Shawn Burke, Ph.D. In that paragraph,
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`
`
`3 Petitioner’s use of the word “confirms” is a reference to a purported
`express disclosure of these limitations by Benefon, of which we were not
`persuaded. See Dec. 12 (“This [Benefon] 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.”).
`
`3
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`IPR2015-00694
`Patent 7,292,867 B2
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`Dr. Burke testified: “This protocol [i.e., MPTP] was known in the art at the
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`time the 867 Patent was filed, see J. Hjelm, Creating Location Services for
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`the Wireless Web (available March 19, 2002[]) (“Hjelm”) [Ex. 1011, 4–5],
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`and was structured so that position updates always included the speed
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`and heading of the sending unit. [Id. at 7] (table 10.2).” Ex. 1004 ¶ 96
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`(Dr. Burke’s emphasis).
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`We reviewed the evidence Dr. Burke identified as underlying his
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`opinion, i.e., table 10.2 on page 7 of Hjelm, and we stated the following:
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`labeled “Position and Status
`is
`Table 10.2
`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.
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`Dec. 14.
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`In its Request for Rehearing, Petitioner does not contest our finding
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`that Hjelm table 10.2 fails to support Dr. Burke’s opinion that, using MPTP,
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`“position updates always include the speed.” Ex. 1004 ¶ 96. Instead,
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`Petitioner creates a new legal theory, stating:
`
`As a prior art publication, it was not necessary for
`Petitioner
`to demonstrate
`that
`the Benefon
`publication discloses that every MPTP position
`speed data. See
`message always
`includes
`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,
`
`4
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`IPR2015-00694
`Patent 7,292,867 B2
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`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 (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 precedent, Petitioner was
`only required to show that the Benefon publication
`discloses a mobile phone that is capable of
`transmitting speed data over a wireless network.
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`Reh’g Req. 2.
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`Thus, Petitioner suggests that, even though Benefon does not
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`explicitly disclose the limitation at issue, it is not required to necessarily
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`function in accordance with the claims it allegedly anticipates, but instead,
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`need simply be capable of functioning in such a way. We could not have
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`overlooked or misapprehended this new argument, which was not raised in
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`the Petition. For that reason alone the Request for Rehearing is denied.
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`Nonetheless, we address this argument and the case law cited by
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`Petitioner for the first time in its Request for Rehearing. Neither case
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`supports Petitioner’s novel anticipation position. In fact, Petitioner’s
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`reliance on the cases is troubling.
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`In Kennametal, the issue was not whether a limitation not expressly
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`disclosed in an anticipatory reference was inherently present. Indeed, the
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`Court of Appeals noted that “all the limitations of Kennametal’s claim are
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`specifically disclosed in Grab [the anticipatory reference].” Kennametal,
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`780 F.3d at 1382. The issue in Kennametal was whether a specific
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`combination of those limitations would have been “immediately
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`envisage[d]” by a person of ordinary skill in the art. Id. at 1383; see also id.
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`5
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`IPR2015-00694
`Patent 7,292,867 B2
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`at 1382 (“Because all the limitations of Kennametal’s claim are specifically
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`disclosed in Grab, the question for the purposes of anticipation is ‘whether
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`the number of categories and components’ disclosed in Grab is so large that
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`the combination of ruthenium and PVD coatings ‘would not be immediately
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`apparent to one of ordinary skill in the art.’”).
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`Likewise in Bristol-Myers Squibb, the issue was not whether a
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`limitation not expressly disclosed in an anticipatory reference was inherently
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`present. The issue was whether it was sufficient, for anticipation purposes,
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`for the anticipatory reference to merely teach a step limitation as opposed to
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`providing a description of the step as actually having been performed.
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`Bristol-Myers Squibb, 246 F.3d 1368, 1378–79. The Court of Appeals held
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`that teaching without doing is sufficient, stating the following:
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`We also conclude that the district court did not err
`in granting summary judgment of invalidity on the
`basis of anticipation of claims 1, 2, 5 and 8 of the
`’537 patent, which are similar to the ’803 claims
`but
`include
`the
`additional
`limitation
`of
`“premedicating said patient with a medicament
`that
`reduces or
`eliminates hypersensitivity
`reaction.” Bristol correctly asserts that Kris’s
`suggestion of premedication is primarily directed
`to patients receiving higher doses who experienced
`hypersensitivity reactions, and that Kris did not
`actually employ premedication. Nevertheless, Kris
`did not confine his pretreatment suggestion only to
`patients given higher doses; rather, he stated that
`“hypersensitivity reactions constitute a severe and
`unpredictable treatment-limiting toxicity for the
`present cremophor-containing formulation of taxol
`given on this schedule,” referring to the dosage
`schedule of his entire study. Kris at 607. He then
`stated that “[f]urther studies are needed to see if
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`6
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`IPR2015-00694
`Patent 7,292,867 B2
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`pretreatment regimens . . . will permit the safe
`Id.
`administration
`of
`this
`compound.”
`Furthermore, although he did not actually
`premedicate the patients himself, anticipation 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.
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`Bristol-Myers Squibb, 246 F3d. at 1378–79.
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`It should have been readily apparent that neither of these cases is
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`applicable to the facts here.
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`II.
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`CONCLUSION
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`Petitioner has not carried its burden of demonstrating that the Board’s
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`Decision should be modified. See 37 C.F.R. § 42.71(d).
`
`
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`III. ORDER
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`Petitioner’s Request for Rehearing is DENIED.
`
`
`
`7
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`
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`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
`
`
`
`8
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