Petition for Inter Partes Review of U.S. 8,092,345
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`Under Armour, Inc.
`Petitioner,
`
`v.
`
`adidas AG,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 8,092,345
`
`CHALLENGING CLAIMS 1-11, 15-18, 20
`
`
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`

`

`
`
`
`I. 
`
`A. 
`
`B. 
`
`C. 
`
`II. 
`
`III. 
`
`IV. 
`
`V. 
`
`A. 
`
`B. 
`
`VI. 
`
`A. 
`
`B. 
`
`Petition for Inter Partes Review of U.S. 8,092,345
`
`TABLE OF CONTENTS
`
`MANDATORY NOTICES ...............................................................................................1 
`
`Real Party-in-Interest ...................................................................................................1 
`
`Related Matters .............................................................................................................1 
`
`Lead and Backup Counsel and Service Information .................................................1 
`
`GROUNDS FOR STANDING .........................................................................................1 
`
`IDENTIFICATION OF CHALLENGE AND THE 345 PATENT ............................2 
`
`STATUTORY GROUNDS FOR THE CHALLENGES ...............................................4 
`
`CLAIM CONSTRUCTION ..............................................................................................5 
`
`“common file format” (claims 1, 20) ...........................................................................5 
`
`“advertisement” (claim 18) ..........................................................................................6 
`
`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE ............................................................................................................6 
`
`Statement of Non-Redundancy ...................................................................................6 
`
`Claims 1-4, 6-11, 15-18, and 20 are Obvious over Mault in view of DeLorme under
`35 U.S.C. § 103(a) ..........................................................................................................8 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Claim 1 ....................................................................................................................13 
`
`Claim 2: The journal of claim 1 wherein the journal entries comprise athletic journal
`entries, competition journal entries, medical journal entries, health journal entries,
`nutrition journal entries, physical therapy journal entries, travel journal entries, music
`journal entries, work journal entries, or school journal entries. ................................19 
`
`Claim 3: The journal of claim 1 further comprising a location monitor used to tag
`journal entries with a location. .................................................................................20 
`
`Claim 4: The journal of claim 1 further comprising means to create sketch, image or
`video journal entries. ...............................................................................................20 
`
`Claim 6: The journal of claim 1 further comprising a database comprising a plurality
`of database entries wherein a journal entry may be tagged with one of the plurality of
`database entries. ......................................................................................................20 
`
`
`
`i
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`

`

`
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`6. 
`
`7. 
`
`8. 
`
`9. 
`
`10. 
`
`11. 
`
`12. 
`
`13. 
`
`14. 
`
`Claim 7: The journal of claim 6 wherein the database comprises an athletic database,
`a nutrition database, a treatment database, a diagnostic database, a patient database, a
`pharmaceutical database, an insurance database, a medical instrument database, a
`heath alert database, a competition database, or a personal database........................22 
`
`Claim 8: The journal of claim 6 further configured to make automatic calculations
`related to a journal entry and a linked database entry. ..............................................23 
`
`Claim 9: The journal of claim 1 further comprising an athletic data collection device
`wherein a journal entry may be tagged with data collected using the athletic data
`collection device. .....................................................................................................24 
`
`Claim 10: The journal of claim 9 wherein the athletic data collection device
`comprises heart rate monitor, a blood pressure monitor, or a stopwatch. ................24 
`
`Claim 11: The journal of claim 1 further comprising a medical diagnostic instrument
`wherein a journal entry may be tagged with data collected using the medical
`diagnostic instrument. .............................................................................................25 
`
`Claim 15: The journal of claim 1 further configured to allow the user to download
`information related to a region into the journal. ......................................................25 
`
`Claim 16: The journal of claim 15 wherein the information related to a region
`comprises language information, dialect information, currency exchange rate
`information, time zone information, location information, business information,
`custom information, law information, geography information, wildlife information,
`climate information, weather forecasts, transit schedules, entertainment schedules,
`attractions information, park information, or plant information. .............................27 
`
`Claim 17: The journal of claim 1 further configured to provide route guidance. .....28 
`
`Claim 18: The journal of claim 1 further configured to provide localized
`advertisements or discounts. ...................................................................................28 
`
`15. 
`
`Claim 20 ..................................................................................................................29 
`
`C. 
`
`Claims 1-11, 15-17, and 20 are Obvious Over Telemedicine Kit in View of
`DeLorme Under 35 U.S.C. § 103(a) ...........................................................................33 
`
`1. 
`
`2. 
`
`3. 
`
`Claim 1 ....................................................................................................................37 
`
`Claim 2: The journal of claim 1 wherein the journal entries comprise athletic journal
`entries, competition journal entries, medical journal entries, health journal entries,
`nutrition journal entries, physical therapy journal entries, travel journal entries, music
`journal entries, work journal entries, or school journal entries. ................................44 
`
`Claim 3: The journal of claim 1 further comprising a location monitor used to tag
`journal entries with a location. .................................................................................44 
`
`ii
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`

`

`
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`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`10. 
`
`11. 
`
`12. 
`
`13. 
`
`14. 
`
`15. 
`
`Claim 4: The journal of claim 1 further comprising means to create sketch, image or
`video journal entries. ...............................................................................................44 
`
`Claim 5: The journal of claim 1 further comprising means to input a medical image
`to be linked to a journal entry. .................................................................................45 
`
`Claim 6: The journal of claim 1 further comprising a database comprising a plurality
`of database entries wherein a journal entry may be tagged with one of the plurality of
`database entries. ......................................................................................................45 
`
`Claim 7: The journal of claim wherein the database comprises an athletic database, a
`nutrition database, a treatment database, a diagnostic database, a patient database, a
`pharmaceutical database, an insurance database, a medical instrument database, a
`health alert database, a competition database, or a personal database. ......................46 
`
`Claim 8: The journal of claim 6 further configured to make automatic calculations
`related to a journal entry and a linked database entry. ..............................................47 
`
`Claim 9: The journal of claim 1 further comprising an athletic data collection device
`wherein a journal entry may be tagged with data collected using the athletic data
`collection device. .....................................................................................................47 
`
`Claim 10: The journal of claim 9 wherein the athletic data collection device
`comprises a heart rate monitor, a blood pressure monitor, or a stopwatch. .............47 
`
`Claim 11: The journal of claim 1 further comprising a medical diagnostic instrument
`wherein a journal entry may be tagged with data collected using the medical
`diagnostic instrument. .............................................................................................48 
`
`Claim 15: The journal of claim 1 further configured to allow the user to download
`information related to a region into the journal. ......................................................48 
`
`Claim 16: The journal of claim 15 wherein the information related to a region
`comprises language information, dialect information, currency exchange rate
`information, time zone information, location information, business information,
`custom information, law information, geography information, wildlife information,
`climate information, weather forecasts, transit schedules, entertainment schedules,
`attractions information, park information, or plant information. .............................50 
`
`Claim 17: The journal of claim 1 further configured to provide route guidance. ......51 
`
`Claim 20 ..................................................................................................................51 
`
`VII.  CONCLUSION ................................................................................................................56 
`
`
`
`
`iii
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`

`

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`
`
`PETITIONER’S EXHIBIT LIST
`
`February 5, 2015
`
`UA-1001
`
`U.S. Patent No. 8,092,345 to Ellis, et al.
`
`UA-1002
`
`Docket entries excerpt from concurrent litigation
`
`UA-1003
`
`Expert declaration of Dr. Joseph Paradiso
`
`UA-1004
`
`U.S. Pat. No. 6,513,532 to Mault et al. (“Mault”)
`
`UA-1005
`
`U.S. Pat. No. 6,321,158 to DeLorme et al. (“DeLorme”)
`
`UA-1006
`
`Ari. T. Adler, A Cost-Effective Portable Telemedicine Kit for Use in
`Developing Countries (May 2000) (M.S. thesis, Massachusetts
`Institute of Technology)
`(on
`file with MIT Libraries)
`(“Telemedicine Kit”)
`
`UA-1007
`
`U.S. Patent No. 6,790,178 to Mault et al. (“Mault II”)
`
`UA-1008
`
`UA-1009
`
`NavTalk™ Cellular Phone/GPS Receiver, Owner’s Manual and
`Reference Guide (January 2000)
`
`Toshiba Satellite 2530CDS Product Specifications (February
`2000)
`
`UA-1010
`
`U.S. Patent No. 5,864,870 to Guck et al. (“Guck”)
`
`iv
`
`

`

`Petition for Inter Partes Review of U.S. 8,092,345
`
`
`I. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`The Petitioner and real parties-in-interest are Under Armour, Inc. (“Petitioner”
`
`or “Under Armour”) and MapMyFitness, Inc. (“MapMyFitness”), which is a wholly-
`
`owned subsidiary of Under Armour.
`
`B. Related Matters
`As of the filing of this Petition, U.S. Patent No. 8,092,345 (“the 345 Patent”) is
`
`involved in one pending litigation naming Petitioner and MapMyFitness as
`
`defendants: adidas AG, et al. v. Under Armour, Inc. and MapMyFitness, Inc., Case No. 14-
`
`130-GMS (D. Del.) (“Co-Pending Litigation”).
`
`C. Lead and Backup Counsel and Service Information
`
`Petitioner designates Brian Ferguson (Reg. No. 36,801), available at 1300 I
`
`Street NW, Suite 900, Washington, DC 20005 (T: 202-682-7516), as Lead Counsel,
`
`and Adrian Percer (Reg. No. 46,986), available at 201 Redwood Shores Parkway,
`
`Redwood Shores, CA 94065 (T: 650-802-3124), as Backup Counsel. Please address all
`
`correspondence to lead and backup counsel. Petitioner consents to service by
`
`electronic email (brian.ferguson@weil.com; adrian.percer@weil.com).
`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which review
`
`is sought is available for inter partes review and that Petitioner is not estopped from
`
`requesting an inter partes review challenging the patent claims on the grounds identified
`
`
`
`
`
`

`

`
`
`in this Petition. Further, the present Petition is being filed less than one year after the
`
`date on which the Petitioner was served with a complaint in the Co-Pending
`
`Litigation. See also UA-1002.002 (Dkt. No. 5, service date of Feb. 6, 2014).
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND THE 345 PATENT
`
`Petitioner respectfully requests inter partes review of claims 1-11, 15-18, and 20
`
`of the 345 Patent, and the cancellation of these claims as unpatentable.
`
`This Petition describes the 345 Patent, its claims, and the prior art relied on,
`
`and also sets forth illustrative examples of how the prior art discloses each limitation
`
`of the challenged claims. The attached expert declaration of Dr. Joseph Paradiso
`
`further elaborates on and supports each such position. UA-1003 (“Paradiso Decl.”).
`
`The 345 Patent issued from U.S. Pat. App. No. 12/617,985, filed on Nov. 13,
`
`2009, which was a division of U.S. Pat. App. No. 10/645,713, filed on Aug. 20, 2003
`
`(now U.S. Pat. No. 7,670,263), which was a continuation of PCT/US02/04947, filed
`
`on Feb. 20, 2002. The 345 Patent claims priority to U.S. provisional application no.
`
`60/270,400, filed on Feb. 20, 2001.
`
`The 345 Patent claims a portable electronic journal (claims 1-19) and a method
`
`of providing a portable electronic journal (claim 20).
`
`Year-by-year, advances in technology make components smaller and smaller to
`
`the point that a computer that might have once taken an entire room to house, now
`
`fits in a person’s hand. By 2000, portable computers had become main stream.
`
`People not only had laptop computers, but also MP3 players, Palm Pilots,
`
`2
`
`

`

`
`
`Blackberries, and smart phones. See, e.g., UA-1001 at 1:27-34, UA-1004 at UA-1005,
`
`UA-1006.
`
`According to the 345 Patent, these devices, while convenient, did not
`
`interoperate. See UA-1001 at 1:35-40. That is to say, tasks performed with one device
`
`would not blend seamlessly with tasks performed on another device. See UA-1001 at
`
`1:41-52. The purported solution to this problem is to introduce a “modular personal
`
`network.” See UA-1001 at 3:32-53. Devices can be registered with the network and
`
`information can be passed among devices or consolidated in a computer acting as a
`
`base station. See UA-1001 at 3:54-62. As a device ages or becomes obsolete, the
`
`device can be substituted out of the system for another device without having to
`
`replace the entire system. See UA-1001 at 5:56-64. In other words, the purported
`
`invention is a plug-and-play network comprised of portable electronic devices. As
`
`will be demonstrated herein, this was an obvious idea.
`
`In one embodiment of the 345 Patent, the modular personal network enables a
`
`user to keep a personal journal. See, e.g., UA-1001 at 39:44-46, 39:59-40:32, 61:62-
`
`62:35. The journal is a compilation of data obtained from a plurality of discrete,
`
`portable electronic devices—e.g., microphone, camera, video player, or stopwatch.
`
`See, e.g., UA-1001 at 39:65-40:6, 62:23-25, 6:33-35, claims 1, 20. Collected data can be
`
`stored with other collected data. For example, the journal can include pictures time
`
`stamped with time data collected from a watch. See UA-1001 at 40:4-6, claims 1, 20.
`
`Another use of the journal is to compile medical, athletic or nutritional information.
`
`3
`
`

`

`
`
`See UA-1001 at 11:27-30, 61:62-62:35, claim 2. For instance, data can be compiled
`
`from a heart rate monitor, blood pressure monitor, and pharmaceutical information.
`
`See, e.g., UA-1001 at 63:59-64:31. The heart rate and blood pressure data can be
`
`stored with the pharmaceutical information to determine correlations between the
`
`data. See, e.g., UA-1001 at 63:59-64:31, claims 6-8. Basically, rather than a doctor
`
`making a medical record by hand, the data is collected from the devices and compiled
`
`electronically.
`
`IV. STATUTORY GROUNDS FOR THE CHALLENGES
`
`Petitioner requests cancellation of the challenged claims under the following
`
`statutory grounds:
`
`A.
`
`Claims 1-4, 6-11, 15-18, and 20 are obvious over U.S. Pat. No.
`
`6,513,532 to Mault, et al. (“Mault”) in view of U.S. Pat. No. 6,321,158 to
`
`DeLorme, et al. (“DeLorme”) under 35 U.S.C. § 103(a).
`
`B.
`
`Claims 1-11, 15-17, and 20 are obvious over Ari T. Adler, A Cost-
`
`Effective Portable Telemedicine Kit for Use in Developing Countries (May 2000) (M.S. thesis,
`
`Massachusetts Institute of Technology) (on file with MIT Libraries) (“Telemedicine
`
`Kit”) in view of DeLorme under 35 U.S.C. § 103(a).
`
`Section VI below demonstrates, for each of the statutory grounds, that there is
`
`a reasonable likelihood that Petitioner will prevail. See 35 U.S.C. § 314(a).
`
`4
`
`

`

`
`
`V.
`
`CLAIM CONSTRUCTION
`
`The claim terms are presumed to take on their ordinary and customary
`
`meaning. In the instant proceeding for inter partes review, a claim in an unexpired
`
`patent is to be given its broadest reasonable construction in light of the specification
`
`in which it appears. 37 C.F.R. § 42.100(b); see also In re Yamamoto, 740 F.2d 1569, 1571
`
`(Fed. Cir.1984). To the extent that the Petitioner gives each claim term its plain and
`
`ordinary meaning in this proceeding, this is not an admission that the same
`
`constructions are appropriate for the concurrent district court litigation, which applies
`
`a different claim construction standard than the Office.
`
`Petitioner provides constructions for the following the claim terms:
`
`A.
`
`“common file format” (claims 1, 20)
`
`The 345 Patent claims software on a portable electronic journal that is capable
`
`of, or in fact does, “format[s] the journal entry to a common file format.” As Dr.
`
`Paradiso explains, one of ordinary skill in the art1 would understand that “common
`
`file format” can be any well-known or standardized format that permits easy viewing
`
`or printing with a computer under the broadest reasonable interpretation and in light
`
`of the specification. Paradiso Decl. at ¶ 17. The specification of the 345 Patent states
`
`
`1 Dr. Paradiso opines that a person of ordinary skill in the art would have at least a
`
`bachelor’s degree in electrical engineering or computer science and at least two years
`
`industry experience or the equivalent. Paradiso Decl. at ¶ 10-11.
`
`5
`
`

`

`
`
`that “the uploaded journal may be converted into a standard file format, so that it may
`
`be easily viewed or printed with the personal computer.” UA-1001 at 40:26-28.
`
`Further, “[t]he file format may include HTML, PDF, or any other suitable format,”
`
`and “[i]mages and audio segments may also be stored in a common file format.” UA-
`
`1001 at 40:28-31. Under the broadest reasonable interpretation, “common file
`
`format” thus means any well-known or standardized format that permits easy viewing
`
`or printing with a computer, such as a personal computer. See Paradiso Decl. at ¶ 17.
`
`B.
`
`“advertisement” (claim 18)
`
`The 345 Patent claims a portable electronic journal that provides localized
`
`advertisements or discounts. As Dr. Paradiso explains, one of ordinary skill in the art
`
`would understand that the broadest reasonable interpretation of “advertisement” is “a
`
`calling attention to or making known.” Paradiso Decl. at ¶ 18. This is consistent with
`
`the specification, which only uses the term twice to recite that an advertisement for a
`
`local business is presented to the user. See UA-1001 at 65:39-42, 66:50-59.
`
`VI.
`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`A.
`
`Statement of Non-Redundancy
`
`The grounds raised in the following sections are meaningfully distinct from one
`
`another and rely upon fundamentally different combinations of the cited prior art
`
`references. Petitioner urges the PTAB to adopt each ground of unpatentability
`
`presented at least for the following reasons.
`
`6
`
`

`

`
`
`Claims 1-4, 6-11, 15-18, and 20 are obvious over Mault in view of DeLorme
`
`under 35 U.S.C. § 103(a) (“Mault combination”). Claims 1-11, 15-17, and 20 are
`
`obvious over Telemedicine Kit in view of DeLorme under 35 U.S.C. § 103(a)
`
`(“Telemedicine Kit combination”). These two grounds are non-redundant for the
`
`following reasons. First, the Mault combination is based on cited prior art.2 The
`
`Telemedicine Kit combination, on the other hand, includes a reference not previously
`
`before the Office. Second, the technology underlying the Mault combination differs
`
`in material regard to the Telemedicine Kit combination. Namely, Mault concerns a
`
`portable electronic device that is primarily directed at keeping a personal record of
`
`mundane activities, such as eating and exercise. Accordingly, the Mault is well suited
`
`in its disclosure of, for example, athletic and nutritional data (see, e.g., claims 7 and 9).
`
`In contrast, Telemedicine Kit reference is concerned with a doctor’s ability to treat
`
`patients in the remote countryside. Accordingly, the Telemedicine Kit combination is
`
`2 While the Mault combination includes art that was cited on the face of the patent,
`
`the art was not discussed during prosecution of the application that led to the 345
`
`Patent. And more particularly, the combination of Mault in view of DeLorme was not
`
`discussed. Moreover, it should be noted that Mault and DeLorme were disclosed to
`
`the Office in an IDS containing 64 U.S. patents, 8 foreign patent publications, and 14
`
`printed publications. Petitioner believes that it is presenting the Mault combination
`
`for consideration by the Office for the first time.
`
`7
`
`

`

`
`
`well suited in its disclosure of medical diagnostics and treatment (see, e.g., claim 11).
`
`Thus, the combinations address the claims from two different perspectives.
`
`B.
`
`Claims 1-4, 6-11, 15-18, and 20 are Obvious over Mault in view of
`DeLorme under 35 U.S.C. § 103(a)
`
`Mault was filed Dec. 23, 2000 and claims priority to a series of provisional
`
`applications, the earliest of which was filed Jan. 19, 2000. Because Mault’s filing date
`
`predates the earliest possible priority date for the 345 Patent, February 20. 2001,
`
`Mault is prior art under at least § 102(e).3
`
`Mault discloses a diet and activity monitoring system for monitoring the
`
`consumption and activity of a user. See UA-1004 at Abstract. The diet and activity
`
`monitoring system takes the form of a portable monitoring device that is
`
`interconnected with several discrete and/or integrated portable sensors. See UA-1004
`
`at 3:34-48, 10:46-52. Mault discloses that these sensors include, for example, a heart
`
`rate sensor, accelerometer, GPS receiver, audio and/or video recording device, and
`
`scanner. See UA-1004 at 3:63-4:13, 5:3-14, 5:22-26, 10:46-52. Fig. 4, for instance,
`
`depicts a variety of sensors connected to, or part of, the monitoring device. After the
`
`data is collected by the monitoring device, the monitoring device then communicates
`
`the compiled information to a local or remote computer. See UA-1004 at 6:34-65.
`
`
`3 Petitioner does not concede that the 345 Patent claims are entitled to a February 20,
`
`2001 priority.
`
`8
`
`

`

`
`
`Relevant to this Request, Mault discloses that its system is well suited for
`
`tracking athletic or physical activity, as well as food consumption. For example, Mault
`
`depicts at Fig. 5 a compiled activity log for a user. In this instance, the location log
`
`recorded that the user ran 4.3 miles at 5.7mph from 6:30am to 7:15am along route A.
`
`The consumption log recorded that the user had Lunch A and Lunch B at the gym at
`
`12:50pm for 10 minutes. This information is compiled from a location and time
`
`sensor and the food can be identified by taking a picture of food using a camera
`
`sensor. See, e.g., UA-1004 8:47-61, 9:30-46, 14:14-54. The user can also audibly
`
`record the activity performed or the food consumed. See, e.g., UA-1004 at 5:3-14.
`
`
`
`As noted by Dr. Paradiso, a journal is simply a record of happenings over time.
`
`See Paradiso Decl. at ¶ 42. Mault, which permits a user to log nutritional and athletic
`
`information over time, is therefore a journal, and logged nutritional and athletic
`
`information are journal entries.
`
`
`
`DeLorme was filed August 31, 1998. Because DeLorme’s filing date predates
`
`the earliest possible priority date for the 345 Patent, DeLorme is prior art under at
`
`least § 102(e).
`
`DeLorme discloses a system incorporating a desktop computer version of
`
`routing and mapping software and a personal digital assistant (“PDA”) version of
`
`such software. UA-1005 at Abstract. When used with a GPS receiver and after
`
`software installation and setup, the PDA can display a map with the user’s position,
`
`speed, and elevation. Id. The PDA can also provide route directions. Id. Further,
`
`9
`
`

`

`
`
`with the GPS-enabled PDA a user can annotate geographic positions on the map with
`
`time- and date-stamped text or pictures from a digital camera. Id. In this way, the
`
`software on the PDA disclosed by DeLorme is a portable electronic travel journal,
`
`whereby a user can create text and image entries over the course of a trip.
`
`The combination of Mault and DeLorme render obvious claims 1-4, 6-11, 15-
`
`18, and 20. As explained by Dr. Paradiso (see Paradiso Decl. at ¶¶ 35-40), it would
`
`have been obvious to a person of ordinary skill in the art to combine Mault with
`
`DeLorme. Each reference discloses advantages associated with portable electronic
`
`devices that are aimed at tracking personal information about a user, whether it is
`
`travelling, exercising, or dieting. Further, as noted by Dr. Paradiso, the portable
`
`electronic devices respectively disclosed by Mault and DeLorme share many
`
`similarities that would suggest combination to a person of ordinary skill while being
`
`complementary in nature. Paradiso Decl. at ¶ 35.
`
`For example, both references disclose portable electronic devices for
`
`monitoring and logging information about a user. Specifically, Mault teaches that a
`
`PDA can be used to record a user’s location over time. See, e.g., UA-1004 at 8:47-53,
`
`8:57-61, 9:42-51, 18:7-19. DeLorme also teaches that a PDA can be used to record a
`
`user’s location over time. See, e.g., UA-1005 at Abstract, 10:47-55, 13:22-31. Both
`
`Mault and DeLorme teach that a user may log time-stamped information about
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`happenings, and optionally photographs, with these portable electronic devices. See,
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`e.g., UA-1004 at 5:10-14, 15:55-16:4, 16:63-17:3; UA-1005 at 12:40-44, 14:9-16. Mault
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`and DeLorme also both teach that such information, including a user’s GPS tracks,
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`can be later uploaded to a personal computer for further review and analysis. See, e.g.,
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`UA-1004 at 9:21-29; UA-1005 at 10:47-55.
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`As discussed by Dr. Paradiso in his declaration, there are no technical barriers
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`preventing a combination of the Mault and DeLorme disclosures. Paradiso Decl. at ¶
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`38. Mault specifically teaches that the disclosed system can use a GPS receiver. The
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`specific type of GPS device is a matter of simple design choice. Id. Indeed, given that
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`DeLorme GPS devices were on the market at the time the 345 Patent application was
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`filed, a person of ordinary skill in the art would have recognized that the teaching of
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`the DeLorme patents, which are directed to those devices, would have applicability to
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`the Mault system. Id. The similarities of the devices and features disclosed by Mault
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`and DeLorme would have encouraged a person of ordinary skill in the art to consider
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`them both for purposes of combination. Id.
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`Moreover, the different features disclosed in DeLorme are complementary to
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`the Mault system, such that a person of ordinary skill would recognize the advantages
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`of incorporating features taught by DeLorme into the portable electronic device
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`disclosed by Mault. For example, an advantage of DeLorme that is applicable to
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`Mault is the ability to provide route guidance. UA-1005 at Abstract (“in conjunction
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`with GPS receiver, the PDA device is configured to display directions ….”). As noted
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`by Dr. Paradiso, DeLorme is but one example of how route guidance on a portable
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`electronic device was well known. Paradiso Decl. at ¶ 40. Another example is the
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`Garmin NavTalk, which combined a mobile phone with GPS-enabled route guidance.
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`See UA-1008.032. Dr. Paradiso explains that a person of ordinary skill in the art
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`would recognize that Mault could also be adapted to include this well-known feature
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`and that this adaptation would not pose unreasonable technological challenges or
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`require unknown methods to implement. Paradiso Decl. at ¶ 40. Further, a person of
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`ordinary skill would be motivated to combine the well-known route guidance feature
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`of DeLorme with the Mault system. Id. To illustrate, Mault already discloses a
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`computing device that presents a graphical map showing the user’s routes as tracked
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`by the GPS receiver. See UA-1004 at 6:3-5, 9:49-51, Fig. 7. As Dr. Paradiso explains,
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`it would therefore be logical to extend this functionality to provide well-known route
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`guidance so that the user could view his or her position on the map in real-time.
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`Paradiso Decl. at ¶ 40.
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`Thus, it would have been obvious to a person of ordinary skill in the art to
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`combine Mault and DeLorme because the disclosed features and functionality are
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`complementary, with Mault disclosing the use of GPS receivers and DeLorme merely
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`providing additional details concerning the functionality of such GPS devices.
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`The analysis below demonstrates how the Mault and DeLorme combination
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`renders obvious claims 1-4, 6-11, 15-18, and 20 of the 345 Patent.
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`1.
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`Claim 1
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`a)
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`A portable electronic journal configured to be worn or carried by a
`user comprising
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`A journal is simply a record of happenings over time. Paradiso Decl. at ¶ 42.
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`Mault discloses an activity and dieting “monitoring device” designed to “allow[] the
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`subject to conveniently carry the device with them at all times.” UA-1004 at 6:66-7:1.
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`See, e.g., UA-1004 at 1:23-25, 3:9-19, 3:34-62, 4:48-5:39, 6:66-7:1, 8:43-60, 18:7-10, Fig.
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`1. This monitoring device includes “a body activity monitor for monitoring the body
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`activity of the subject” and “a consumption notation control for use by the subject to
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`indicate when the subject consumes food.” UA-1004 at 3:34-36, 4:48-51. The
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`consumption notation control permits the user to log what the user ate and when. See
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`UA-1004 at 4:51-61, 5:3-14. Accordingly, each time the user logs an exercise or food
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`consumption on the monitoring device disclosed by Mault, they are creating an entry
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`in a portable electronic journal. See Paradiso Decl. at ¶¶ 42-43.
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`a memory to store journal entries,
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`b)
`Mault discloses that the monitoring device has a memory to store journal
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`
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`entries. See UA-1004 at 8:6-7, 8:60-61, 9:15-21, 15:55-61, Figs. 2, 4. For example,
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`“[t]he position and time data and/or the body activity data are stored to memory ….”
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`UA-1004 at 8:60-61. The user may also dictate what the user ate, and this “audio
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`signal may be digitally recorded onto a memory device in the diet and activity
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`monitor.” UA-1004 at 15:55-61. See Paradiso Decl. at ¶ 44.
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`c)
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`journal software with which a user interacts and creates a new journal
`and is capable of
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`Mault discloses a user interacting with the monitoring device to record activity
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`and food entries, and it discloses that the monitoring device may include a CPU and
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`memory. See, e.g., UA-1004 at 1:23-25, 3:34-62, 4:48-5:39, 7:46-8:7; Fig. 2. It also
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`discloses that the monitoring device can “be a PDA that includes … a body activity
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`monitor.” UA-1004 at 18:7-10. Mault discloses that the PDA may be of a type
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`disclosed in U.S. Patent No. 6,790,178 (“Mault II”)—incorporated into Mault in its
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`entirety by reference (see UA-1004 at 18:11-14)—which describes a PDA with “health
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`management software [that] may include the ability to set up a variety of fitness plans
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`and to track adherence to the plans.” UA-1007 at 6:52-7:12. Accordingly, Mault
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`discloses software with which a user interacts to create a new journal. S