Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNDER ARMOUR, INC.
`Petitioner,
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`v.
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`ADIDAS AG,
`Patent Owner.
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`Case No. IPR2015-00698
`U.S. Patent No. 8,092,345
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`TABLE OF CONTENTS
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`I. 
`II. 
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`INTRODUCTION ........................................................................................... 1 
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ............................ 3 
`A.  A POSITA Would Have Been Motivated to Combine the
`Teachings of Mault and DeLorme to Render Obvious Claims 1-
`3, 6-11, 15-17, and 20 of the 345 Patent ............................................... 3 
`1.  Mault Teaches That a PDA Can Be Used to Record a
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`User’s Location Over Time ........................................................ 3 
`2. 
`A POSITA Would Have Been Motivated to Combine
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`Mault and DeLorme .................................................................... 7 
`3. 
`Dr. Paradiso Was a POSITA as of the Earliest Possible
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`Priority Date of the 345 Patent.................................................. 11 
`Software to Create a New Journal, to the Extent Not Disclosed
`by Mault, Would Have Been Obvious to a POSITA .......................... 12 
`Formatting Journal Entries to a Common File Format Is
`Disclosed In Mault, Or Would Have Otherwise Been Obvious
`In View Of Mault ................................................................................ 13 
`Patent Owner Has Not Overcome the Evidence Showing That
`the Limitations of Claim 6-8 Would Have Been Obvious .................. 16 
`III.  PATENT OWNER’S ARGUMENTS REGARDING PURPORTED
`COMMERCIAL SUCCESS AND INDUSTRY PRAISE SHOULD
`BE GIVEN NO WEIGHT ............................................................................. 19 
`A.
`Patent Owner Has Not Identified Any Evidence of
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`Commercial Success............................................................................ 20 
`B. 
`Patent Owner Has Not Established a Nexus Between the
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`Purported Commercial Success and the Instituted Claims ................. 23 
`C. 
`Patent Owner Has Not Established a Nexus Between the
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`Purported Industry Praise and the Instituted Claims ........................... 24 
`IV.  CONCLUSION .............................................................................................. 25 
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`B. 
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`C. 
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`D. 
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`ABT Sys., LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) .......................................................................... 21
`
`In re Chevalier,
`500 Fed. Appx. 932 (Fed. Cir. 2013) ............................................................ 10, 11
`
`Gator Tail, LLC v. Mud Buddy LLC,
`618 F. App'x 992 (Fed. Cir. 2015) ...................................................................... 22
`
`In re Huang,
`100 F.3d 135 (Fed. Cir. 1996) ...................................................................... 20, 23
`
`In re Kao,
`639 F.3d 1057 (Fed. Cir. 2011) .................................................................... 21, 23
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .................................................................................. 2, 15, 16
`
`St. Jude Med., Cardiology Div., Inc., Petitioner,
`IPR2013-00014, 2014 WL 1783276 (May 1, 2014) .......................................... 20
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`ii
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`I.
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`INTRODUCTION
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`The present Reply is directed to the instituted ground that claims 1-3, 6-11,
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`15-17, and 20 of U.S. Patent No. 8,092,345 (the “345 Patent”) (UA-1001) are
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`obvious over U.S. Patent No. 6,513,532 (“Mault”) (UA-1004) in view of U.S.
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`Patent No. 6,321,158 (“DeLorme”) (UA-1005).
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`Patent Owner argues that: (1) a person of ordinary skill in the art
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`(“POSITA”) would not be motivated to combine Mault and DeLorme; (2) it was
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`not obvious to use software to create the claimed “journal” and to format journal
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`entries to a common file format as required by claims 1 and 20; and (3) Mault in
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`view of DeLorme does not render the “database” limitations of claims 6-8 obvious.
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`These arguments, including Patent Owner’s attempt to show secondary
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`considerations, do not save the validity of the instituted claims.
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`In arguing that a skilled artisan would not combine Mault and DeLorme,
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`Patent Owner argues, including that Petitioner mischaracterizes the prior art. But
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`there simply is no getting around the fact that Mault and DeLorme both disclose
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`worn or carried GPS-enabled devices to track the user. Patent Owner also claims
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`that DeLorme’s GPS device should not be used for navigation or the precise
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`measurement of distance or direction, even though DeLorme discloses that its GPS
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`device is used for these very purposes. In fact, any suggestion by DeLorme that
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`GPS lacked precision is negated by the fact that after DeLorme was written, and
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`before the priority date of the 345 Patent, the U.S. Government turned off
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`“selective availability,” which restricted the precision of civilian GPS devices. A
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`POSITA would therefore have not been dissuaded from applying the teachings of
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`DeLorme to the system disclosed by Mault.
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`Patent Owner’s remaining challenges focus on common elements well-
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`known to POSITAs and taught by Mault and/or DeLorme (journal software,
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`common file formats, and databases). As such, these arguments cannot overcome
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`the obviousness of the claims. “[A] ‘patent for a combination which only unites
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`old elements with no change in their respective functions … obviously withdraws
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`what is already known into the field of its monopoly and diminishes the resources
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`available to skillful men.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
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`(2007) (citations omitted). Here, and as further detailed below, Mault or the
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`combination of Mault and DeLorme teaches the familiar (i.e., old) elements of
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`installing, configuring, or setting up software for use and formatting data to a
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`common file format. Further, Patent Owner makes no argument (nor could it) that
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`the 345 Patent claims use such old elements in a new way. Accordingly, the
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`claims are obvious.
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`Finally, Patent Owner’s reliance on alleged evidence of secondary
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`considerations wholly fails, at least because Patent Owner fails to establish a nexus
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`between the claims and any evidence of commercial success or industry praise.
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`2
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Because Patent Owner’s arguments do not refute the obviousness of the
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`
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`instituted claims, Petitioner respectfully requests that the Patent Trial and Appeal
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`Board confirm the unpatentability of claims 1-3, 6-11, 15-7, and 20.
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`II. THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`A. A POSITA Would Have Been Motivated to Combine the
`Teachings of Mault and DeLorme to Render Obvious Claims 1-3,
`6-11, 15-17, and 20 of the 345 Patent
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`In its Petition, Petitioner explained how the combination of Mault and
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`DeLorme would render obvious claims 1-3, 6-11, 15-18, and 20 of the 345 Patent.
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`Patent Owner, however, attacks these conclusions by asserting that: (1) Petitioner
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`mischaracterizes Mault’s disclosure of a “PDA that includes or communicates with
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`a body activity monitor” (UA-1004 at 18:8-10) (Paper 20 at 7-9); (2) Mault and
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`DeLorme are directed to different needs of a user and that DeLorme teaches away
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`from a combination with Mault (Paper 20 at 9-14); (3) Petitioner’s expert Dr.
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`Paradiso was a not a POSITA during the relevant time period because he never
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`worked on a device that incorporated a GPS receiver in his professional capacity
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`(Paper 20 at 11-12); and (4) Mault’s disclosed system did not need any
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`improvement. None of these arguments withstand scrutiny.
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`1. Mault Teaches That a PDA Can Be Used to Record a User’s
`Location Over Time
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`In describing the reasons to combine Mault and DeLorme, Petitioner and Dr.
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`Paradiso note the similarities shared by these two references, including that they
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`3
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`“both … disclose portable electronic devices for monitoring and logging
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`information about a user.” Paper 1 at 10, UA-1003 at ¶ 36. Patent Owner does not
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`specifically contest this statement and instead focuses only on Mault’s disclosure
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`that the portable monitoring device can be, among other things, a PDA. See UA-
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`1004 at 18:7-10. Specifically, Patent Owner argues that although Mault’s PDA
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`can include or communicate with a body activity monitor, such a body activity
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`monitor cannot be a GPS receiver; rather, Patent Owner asserts that the PDA’s
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`body activity monitor can only be an accelerometer. Paper 20 at 7-9, 15. This
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`argument contradicts the plain teachings of Mault. See UA-1011 at ¶179.
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`Patent Owner’s argument effectively attempts to rewrite Mault’s disclosure.
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`Whereas Mault states that “the monitoring device may be a PDA that includes or
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`communicates with a body activity monitor” (UA-1004 at 18:8-10), Patent
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`Owner interprets this statement as “the monitoring device may be a PDA that
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`includes or communicates with an accelerometer only.” Patent Owner also
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`interprets “[t]he PDA may have an accelerometer built in or interconnected
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`therewith” (UA-1004 at 18:10-11) as “[t]he PDA only has an accelerometer built
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`in or interconnected therewith.” Patent Owner fails to explain why a POSITA
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`would read Mault’s otherwise clear disclosure in such a limiting fashion. See UA-
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`1011 at ¶180.
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`4
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Patent Owner also asserts that Mault discloses a GPS-only embodiment and
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`a separate PDA embodiment that are somehow completely divorced from each
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`other and the remainder of the specification. See Paper 20 at 7 (citing UA-1004 at
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`8:42-12:11). But Mault’s disclosure is not so limited. See UA-1011 at ¶181.
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`Instead, Mault describes throughout the specification that the monitoring
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`device, with or without using GPS, can take various forms, including as a PDA.
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`For example, looking at the figure illustrating the “GPS Version of Monitor”
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`focused on by Patent Owner (i.e., Figure 4), this schematic does not disclose the
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`particular form of the monitoring device (e.g., whether it is a phone, belt-mounted,
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`wrist-worn, etc.); it only shows a representation of such. See UA-1004 at 8:45-61
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`(describing the depicted monitoring device with several components, including
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`activity monitors 80, 105, 109, and 114, manual input 110, and communication
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`transceiver 98), UA-1011 at ¶182; see also UA-1004 at Fig. 6, 9:21-24.
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`To understand what form the monitoring device of Figure 4 (and indeed
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`other embodiments) can take, a POSITA would, upon reading Mault, find that it
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`broadly describes particular forms throughout the specification and does not state
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`that it is limiting the form to any particular embodiment. See, e.g., UA-1004 at
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`8:47-51 (a worn or carried monitoring device), 9:1-2 (“Some or all of the CPU
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`functionality may be in the monitoring device 84 ….”), 10:46-48 (a monitoring
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`device can include multiple body activity monitors), 11:13-14 (exercise equipment
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`5
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`can include its own monitoring device), 12:12-14, 15:44-59 (describing
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`audio/video input 95 in Figure 4), 16:11-13 (a monitoring device can include or be
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`part of a cell phone), 16:26-33 (“[digital still and motion camera] capability may
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`be incorporated into the monitoring device according to the present invention
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`….”), 17:55-57. Therefore, when reading that “[t]he monitoring device according
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`to the present invention may take other forms,” a POSITA would understand that
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`Mault’s disclosure that “the monitoring device may be a PDA” applies to any of
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`the monitoring devices described throughout the specification, including the “GPS
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`Version of the Monitor.” UA-1004 at 18:7-10 (emphasis added). Accordingly, to
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`a POSITA, Mault discloses that the monitoring device which has GPS capabilities
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`can take the form of a PDA. See UA-1011 at ¶183.
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`Finally, Patent Owner argues that Mault discloses three “separate”
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`embodiments of the body activity monitor (i.e., a heart rate monitor, an
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`accelerometer, and a GPS receiver), and that therefore “the PDA embodiment …
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`necessarily is the accelerometer embodiment of Mault, and not the GPS
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`embodiment.” Paper 20 at 8. Both the premise and conclusion of this argument
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`fail. Mault describes numerous embodiments, including monitoring devices with
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`both a motion sensor and a GPS. See UA-1004 at 10:43-66, 13:31-40, Fig. 4, 6.
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`Accordingly, a POSITA reading Mault would understand that it discloses a PDA
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`6
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`working with one or more types of body activity monitors described in the
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`specification, including a GPS receiver. See UA-1011 at ¶184.
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`2.
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`A POSITA Would Have Been Motivated to Combine Mault
`and DeLorme
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`In its Petition, Petitioner explained that a POSITA would have combined
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`Mault and DeLorme because, inter alia, “Mault discloses the use of a well-known
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`device (a GPS receiver) and DeLorme provides additional detail as to the specific
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`capabilities and uses of that well-known device.” Paper 1 at 18. Patent Owner
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`disagrees, arguing that a POSITA would not have combined these references
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`because Mault and DeLorme are allegedly directed to different needs of a user, and
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`because DeLorme teaches away from a combination with Mault. Paper 20 at 9-14.
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`Patent Owner is incorrect on both counts.
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`The Mault and DeLorme disclosures share common goals. Mault is not
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`merely directed to “a user that is simply using a GPS receiver to receive position
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`points for evaluating athletic performance,” as Patent Owner claims. Paper 20 at
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`10. It is more broadly directed to tracking a user’s activities related to caloric
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`balance (see, e.g., UA-1004 at 1:23-25), such that it can, among other things, track
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`a user’s location over time (see, e.g., id. at 6:3-8, 8:51-53, 9:35-37, 10:25-28, Figs.
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`5, 7, 8), plot that location on a map (see, e.g., id. at 10:49-52, Fig. 7), provide the
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`user’s speed and location (see, e.g., id. at 9:59-61), and note or mark where the
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`user engaged in certain activities such as eating or exercising (see, e.g., id. at
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`7
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`Petitioner’s Reply to Patent Owner’s Response
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`13:59-14:2, 14:35-39, 15:16-18, 16:28-35). Similarly, DeLorme’s system is not
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`just directed to “a user that is using a GPS receiver in combination with desktop
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`mapping application to provide route guidance for travel purposes ….” Paper 20 at
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`10. Like Mault, DeLorme is also directed to a user who wants to track their
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`location over time (see, e.g., UA-1005 at 13:22-31, 13:39-45), plot that location on
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`a map (see, e.g., id. at 13:22-31, 13:39-45), know their speed (see, e.g., id. at
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`13:22-31, 13:139-45), and note or mark certain locations (see, e.g., id. at 12:40-44,
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`14:9-16, 25:50-56, 64:34-38). Therefore, Mault and DeLorme indeed are directed
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`to common and compatible subject matter.
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`DeLorme also does not teach away from combining its disclosures with
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`those of Mault. Patent Owner points to a portion of DeLorme’s specification
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`reciting a product warning that the “Solus Pro should not be used in automatic
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`navigation or guidance systems or for any purpose requiring precision
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`measurement of distance or direction.” Paper 20 at 12 (citing UA-1005 at Fig.
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`1A6-5). But given that the remainder of DeLorme’s specification teaches, among
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`other things, using GPS for measuring distance and direction of a travelling person,
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`this product warning alone would not be sufficient to persuade a POSITA to
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`disregard those teachings. See UA-1011 at ¶187.
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`Further, Patent Owner’s focus on this product warning overlooks the fact
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`that POSITAs developing a GPS-related device would have been aware of
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`8
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`selective availability. See UA-1011 at ¶188. As Patent Owner’s expert Dr.
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`Michalson explained under oath in a related proceeding: “… selective availability
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`… was a mechanism for reducing the achievable accuracy of the GPS receiver.
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`There was a period of time that the military was concerned that the GPS system
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`could be used against us, and therefore they implemented selective availability to
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`reduce the accuracy of a civilian receiver.” UA-1012 at 15:21-16:3. He continued:
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`“[w]ith selective availability on, [a receiver’s accuracy] would be … around a
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`hundred meter extremes, but the average accuracy would be very high” (id. at
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`16:25-17:3), whereas with selective availability off “your receiver would be three
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`to five meter accuracy, typically” (id. at 16:21-24). Finally, he attested that
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`selective availability was turned off by the U.S. government in the year 2000. Id.
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`at 16:10-14. Accordingly, selective ability limited the accuracy and reliability of a
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`GPS receiver when the application for DeLorme (including the product warning)
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`was filed (i.e., August 31, 1998). But, at the time of the earliest possible priority
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`date of the 345 Patent (i.e., February 20, 2001), POSITAs would understand that
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`the precision of DeLorme’s system would not be hampered by selective
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`availability. See UA-1011 at ¶188; see also UA-1012 at 18:9-23 (testifying about
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`his belief that switching off selective availability promoted the commercial growth
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`of GPS devices and systems).
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`9
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Finally, Patent Owner argues that a POSITA would not be motivated to
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`combine Mault and DeLorme because “the GPS receiver recited by DeLorme’s
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`system would not be useable to modify Mault’s system and to achieve the
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`invention claimed by the ‘345 patent.” Paper 20 at 14. This is not true.1
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`Regardless, Patent Owner’s argument misapprehends the obviousness test. As the
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`Federal Circuit stated, “[t]he obviousness inquiry does not ask ‘whether the
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`references could be physically combined but whether the claimed inventions are
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`rendered obvious by the teaching of the prior art as a whole.” In re Chevalier, 500
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`Fed. Appx. 932, 934 (Fed. Cir. 2013) (citations omitted). Instead, “where each of
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`the elements of the claim are known to the art, the obviousness inquiry requires a
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`1 Aside from the issue of selective availability, Patent Owner also argues that a
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`user on a run “will not want to have to continually use scroll buttons to zoom in
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`and out of the map display” (Paper 20 at 13); but DeLorme discloses that “the
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`addition of GPS provides enhanced capabilities …., as well as user-friendly
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`automated adjustments of display variables on the PDA or handheld—
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`including variables such as map scale, level of detail, … and so forth.” UA-1005
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`at 13:22-31. Patent Owner also suggests that a POSITA would not combine Mault
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`and DeLorme because Mault is “fully operable for its intended function” (Paper 20
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`at 14); but, as explained in the Petition, Mault describes a generic GPS receiver
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`and DeLorme provides a specific example for use. Paper 1 at 11.
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`10
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`finding that the combination of known elements was obvious to a person of
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`ordinary skill in the art.” Id. (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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`406, 420 (2007)). As explained in the Petition, the limitations of the 345 Patent
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`were known to POSITAs and their combination would have been obvious.
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`3.
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`Dr. Paradiso Was a POSITA as of the Earliest Possible Priority
`Date of the 345 Patent
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`Patent Owner argues that Dr. Paradiso was not a POSITA at the relevant
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`time. Paper 20 at 11. In support, Patent Owner relies on Dr. Paradiso’s statement
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`that he had not worked during his career on a device that directly implemented a
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`GPS receiver. See Ex. 2004 at 15:12-14. This argument is meritless. The 345
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`Patent claims do not even recite “GPS,” and while claim 3 does cover a “location
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`monitor,” this limitation has nothing to do with the structure or operation of a GPS
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`receiver. Instead, one only needs to know to tag journal entries with data provided
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`by a conventional GPS receiver (e.g., latitude and longitude). Dr. Paradiso
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`testified that he understood the capabilities and use of GPS before the earliest
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`possible priority date of the 345 Patent. Ex. 2004 at 11:8-12:1.
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`Further, Patent Owner ignores how Dr. Paradiso, and even its own expert,
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`define a POSITA. Neither definition (UA-1003 at ¶ 11, Ex. 2002 ¶ 20) requires
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`designing or working on devices that incorporate a GPS receiver, and Patent
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`Owner does not contest that Dr. Paradiso otherwise lacks the required skillset
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`11
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`pursuant to those definitions. As Dr. Paradiso explains in the attached declaration,
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`he was a POSITA during the relevant time. See UA-1011 at ¶¶191-192.
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`B.
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`Software to Create a New Journal, to the Extent Not Disclosed by
`Mault, Would Have Been Obvious to a POSITA
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`Patent Owner has not rebutted Petitioner’s argument, and the Board’s
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`finding, that the claim limitations concerning software to create a new journal are
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`rendered obvious in view of Mault. Instead, Patent Owner asserts that “Petitioner
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`and Dr. Paradiso have not articulated any explanation as to why a skilled person
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`would make the proposed modification to Mault’s system to require a user to
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`‘install, set up, or configure that journal software for use.’” Paper 20 at 17. But as
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`the Board recognized, Petitioner and Dr. Paradiso do in fact articulate a reason: “it
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`was common and well known before the application of the 345 Patent that portable
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`electronic devices required software installation and/or setup before use.” Paper 1
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`at 15, UA-1003 at ¶ 46. Patent Owner does not dispute this fact. Further,
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`Petitioner and Dr. Paradiso quote another reason from Mault II: “… the ability to
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`set up a variety of fitness plans and to track adherence to the plans.” UA-1007
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`at 6:52-7:12. Indeed, for a consumption and activity-tracking journal such as
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`Mault’s, a POSITA would be motivated to enter the user’s weight, height, and
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`other vitals, thereby setting up or creating the journal for use. See, e.g., UA-1004
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`at 8:60-65 (stating that activity data “may be correlated with caloric expenditure …
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`for use in determining whether the subject is gaining or losing weight.”).
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`12
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Accordingly, a POSITA would have readily understood that Mault could
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`have been modified to include the journal software with which the user interacts.
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`C.
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`Formatting Journal Entries to a Common File Format Is
`Disclosed In Mault, Or Would Have Otherwise Been Obvious In
`View Of Mault
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`Patent Owner contends that formatting journal entries to a common file
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`format would not have been obvious to a POSITA. In doing so, Patent Owner
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`misrepresents both Petitioner’s arguments and Mault’s disclosures.
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`For example, Patent Owner asserts that “Petitioner and Dr. Paradiso simply
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`assume that just because a person of ordinary skill in the art would understand that
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`some data would be stored in a common file format, a person of ordinary skill
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`would be motivated to store all data in a common file format.” Paper 20 at 21
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`(emphasis added). Neither Petitioner nor Dr. Paradiso makes any such statement,
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`and indeed Patent Owner does not provide a citation in support. Further, Patent
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`Owner claims that “Petitioner has identified nothing in the disclosures of Mault
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`that would lead a person of ordinary skill in the art to conclude that its system
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`would benefit from use of a common file format.” Here too, Patent Owner
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`misstates the facts. Petitioner explicitly identified such a motivation in Mault (see
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`Paper 1 at 19), and indeed the Board recognized as much (Paper 9 at 12 (“… it
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`would have been obvious to a person of ordinary skill in the art … either for
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`simple uploading via HTML or for use by common programs.”)).
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Patent Owner also argues that Petitioner misstates Mault’s disclosure that
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`the monitoring device (i.e., the portable journal) can communicate with a “web
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`page running on a remote server via the Internet.” UA-1004 at 6:55-57. Patent
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`Owner is again incorrect and misapprehends Mault’s disclosure. First, Patent
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`Owner confuses what a POSITA would understand from a disclosure of
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`communicating data to a web page as opposed to merely communicating with a
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`server. Paper 20 at 19-20. See UA-1011 at ¶197. Mault’s disclosure of
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`interconnecting and communicating with a webpage (UA-1004 at 6:54-57) implies
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`transmitting data to that browser-based user interface, and a POSITA would
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`understand that the purpose of such transmission would be to view or otherwise
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`interact with the monitoring device’s data (i.e., journal entries). See UA-1011 at
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`¶197. Second, Patent Owner ignores the context of Mault’s disclosure concerning
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`communicating with the webpage. As is apparent from the entire paragraph, Mault
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`is describing alternatives and modifications to the role of local computer 22 and
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`PDA 24 “[f]or purposes of [its] disclosure ….” See UA-1004 at 6:46-65.
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`Therefore, a POSITA reading that the user of Mault’s system can, for example,
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`“transfer[] data from the monitoring device 84 to a local or remote computing
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`device” for purposes of “analysis and processing” (UA-1004 at 9:21-29 (emphasis
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`added)) would understand that this includes a web site running on a remote server.
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`See UA-1011 at ¶197.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Finally, Patent Owner argues that Mault’s data can be saved on a personal
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`computer in a proprietary format, but this assertion does not diminish the fact that
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`formatting data in a common file format would have been obvious. The Supreme
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`Court has held that “[w]hen there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a
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`POSITA has good reason to pursue the known options within his or her technical
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`grasp. If this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense.” KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 421 (2007). It is undisputed that formatting data in either common
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`or proprietary formats by 2001 were readily known, identifiable, and predictable
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`solutions. See UA-1003 at ¶¶ 57-58, UA-1011 at ¶198 (explaining that it was also
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`standard practice as of the priority date to have embedded systems save data in a
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`common file format). Choosing one format over another is not the product of
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`innovation but rather of common sense. Accordingly, that one could adapt Mault
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`to format data in a proprietary format does not alter the conclusion that it would
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`have been readily obvious to adapt Mault to also format data in a common file
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`format. This is particularly so since Patent Owner has not argued, nor could it, that
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`there were technical barriers that would have prevented or dissuaded a POSITA
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`from formatting data in a common file format. To the contrary, doing so would
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`have been readily within a POSITA’s expertise. KSR, 550 U.S. at 421 (a “person
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`of ordinary skill is also a person of ordinary creativity, not an automaton”).
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`D.
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`Patent Owner Has Not Overcome the Evidence Showing That the
`Limitations of Claim 6-8 Would Have Been Obvious
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`Patent Owner’s positions regarding claims 6-8 rest on a series of erroneous
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`conclusions and flawed arguments.2 Consequently, Patent Owner has not rebutted
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`Petitioner’s argument that claims 6-8 would have been obvious to a POSITA.
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`First, Patent Owner states that “Petitioner has relied exclusively on the
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`combination of Mault and DeLorme as the basis for its obviousness argument with
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`respect to these database limitations” (Paper 20 at 23), but that is simply false.
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`Both the Petition and Dr. Paradiso’s declaration contain analysis showing that the
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`limitation of claim 6 would have been obvious over Mault, and also over Mault in
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`view of DeLorme. For example, the Petition states that “it would have been
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`obvious to one of ordinary skill in the art that Mault could be adapted to include a
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`database of entries with which a journal may be tagged.” Paper 1 at 21 (citing UA-
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`1003 at ¶ 66). Accordingly, Patent Owner has not rebutted Petitioner’s argument
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`that the limitation of claim 6 would have been obvious over Mault to a POSITA.
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`2 For example, Patent Owner asserts that claims 6, 7, and 8 describe the claimed
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`journal as comprising “various databases.” Paper 20 at 23. Instead, these claims
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`only require a journal comprising a single database. See UA-1001 at claims 6-7.
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`Second, Patent Owner disagrees that DeLorme teaches that a portable
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`electronic journal can include a database, but Patent Owner misunderstands
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`DeLorme’s disclosure. As cited in the Petition, DeLorme discloses that “data
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`coordination or integration between IRMIS homebase and IRMIS portable(s)
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`comprises optional, controllable one-way or two-way synchronization of selected
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`component databases, e.g. maps, text directions, address books, route depictions,
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`POI or point information, digital photo data, and so forth.” UA-1005 at 72:26-38
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`(emphasis added). See Paper 1 at 22, UA-1003 at ¶ 66. Two-way synchronization
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`means that files are copied from the IRMIS homebase to the IRMIS portable
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`device and vice versa such that data in each location is the same. See UA-1011 at
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`¶201. DeLorme therefore teaches that component databases, including for points
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`of interest, digital photos, etc., can be on both the IRMIS homebase and the IRMIS
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`portable device (e.g., the portable electronic journal).
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`Even if DeLorme does not disclose a database on a portable electronic
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`journal, the limitation of claim 6 would still have been obvious. As argued in the
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`Petition, Mault discloses, for example, storing flags, modes, and prior meals on the
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`portable device with journal entries. Assuming, arguendo, that a limitation of
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`claim 6 is missing, it is only the limitation concerning the structure of the data
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`stored on the portable device—i.e., a database—that is missing. DeLorme’s
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`Petitioner’s Reply to Patent Owner’s Response
`IPR2015-000698
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`disclosure of a database, regardless of where that database is located, teaches that
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`structure and therefore renders the limitation obvious to a POSITA.
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`Third, Patent Owner incorrectly argues that Mault’s disclosure of a database
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`on a “computing device” cannot be the database of the portable electronic journal,
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`because the 345 Patent claims also require a separate personal computer. See
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`Paper 20 at 24-25. Patent Owner again overlooks details of Mault’s disclosure.
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`Mault clearly states that the computing device can be portable or stationary, and it
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`also clearly states that a portable computing device, a monitoring device, and a
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`personal computer can all be used. See UA-1004 at 6:46-54 (“Communication
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`may be provided between the monitoring device 10 and the PDA 24, with the PDA
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`24 later communicating with the local computer 22 ….”); see also UA-1003 at ¶
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`65. Thus, Mault’s database may exist on a portable computing device that is part
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`of the journal (i.e., the PDA 24), and it can upload journal entries to a separate
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`personal computer (i.e., local computer 22). See also UA-1004 at 18: