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.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-00698
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`Patent No. 8,092,345
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`DECLARATION OF WILLIAM R. MICHALSON, PH.D.
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`1
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`Patent Owner adidas AG
`Exhibit 2002 - Page 1 of 81
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Under Armour Inc.
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-00698
`
`Patent No. 8,092,345
`
`DECLARATION OF WILLIAM R. MICHALSON, PH.D.
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`
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`1
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`Patent Owner adidas AG
`Exhibit 2002 - Page 1 of 81
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`I, William R. Michalson, declare as follows:
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`I.
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`Introduction
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`1.
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`I have prepared this Declaration for consideration by the Patent Trial
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`and Appeal Board in connection with the above-referenced inter partes review
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`proceeding.
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`2.
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`I am over eighteen years of age, and I would otherwise be competent
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`to testify as to the matters set forth herein if I am called upon to do so.
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`3.
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`I have written this Declaration at the request of and have been retained
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`by Kilpatrick Townsend & Stockton LLP, which represents Patent Owner adidas
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`AG.
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`4.
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`I am being paid for my work in this matter at the rate of $425.00 per
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`hour, plus reimbursement of reasonable expenses. My compensation does not
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`depend on the outcome of this matter and I have no financial interest in that
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`outcome.
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`5.
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`I have been asked to provide my opinion as to the validity of United
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`States Patent No. 8,092,345 (the “’345 patent”). Specifically, I have been asked to
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`evaluate the validity of claims 1-3, 6-11, 15-17, and 20 of the ‘345 patent.
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`2
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`Patent Owner adidas AG
`Exhibit 2002 - Page 2 of 81
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`II. Background & Qualifications
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`6.
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`In forming my opinions expressed in this Declaration, I relied on my
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`knowledge and experience in the field and on documents and information
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`referenced in this Declaration.
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`7.
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`I received my Ph.D. in Electrical Engineering from the Worcester
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`Polytechnic Institute in 1989, my Master of Science in Electrical Engineering from
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`the Worcester Polytechnic Institute in 1985, and my Bachelor of Science in
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`Electrical Engineering from Syracuse University in 1981.
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`8.
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`I was employed as an engineer at Raytheon Company from 1981 until
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`1991. During this period, I worked on a variety of projects that involved both
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`hardware and software design and debugging. These projects involved developing
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`computer systems and software for a variety of applications, including the
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`following: air traffic display systems, signal and data processing systems, and
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`communications systems. During this time period, I was involved in hardware and
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`software development that included experience working with satellite, airborne,
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`and ground-based systems for navigation and communications. From 1985 until
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`1988, I received a fellowship from Raytheon to pursue my Ph.D. degree, and I
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`worked part-time during this period. I returned to Raytheon full-time from 1988
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`until 1991.
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`3
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`Patent Owner adidas AG
`Exhibit 2002 - Page 3 of 81
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`9.
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`I have been a full-time faculty member at the Worcester Polytechnic
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`Institute in Massachusetts since 1991. My emphasis at the Worcester Polytechnic
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`Institute is on teaching and conducting research on navigation, communications,
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`and computer system design.
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`10.
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`I hold eight patents in the fields of audio signal processing, indoor
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`geolocation devices, and handheld GPS (Global Positioning System) mapping
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`devices. I have authored or co-authored over 100 original articles in the fields of
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`communications networks, precision location systems, and GPS, including more
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`than 15 journal papers and 90 conference papers. I have also authored one book
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`chapter relating to optical interconnect networks for massively parallel computers.
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`I am a Senior Member of the Institute of Electrical and Electronics Engineers.
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`11.
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`I have worked in the field of computer architecture and computer
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`systems since I began employment at Raytheon in 1981. In addition, I teach classes
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`relating to computer architecture and design, and I also teach classes relating to
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`embedded system designs, advanced system architectures, and real-time system
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`designs, which relate to the design of computer systems, including real-time
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`operating systems and programming. I have worked extensively in software
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`programming, including during my employment at Raytheon and in a variety of
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`projects relating to navigation and communications systems at the Worcester
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`Polytechnic Institute.
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`4
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`Patent Owner adidas AG
`Exhibit 2002 - Page 4 of 81
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` GPS and GPS-related technologies have dominated the bulk of my 12.
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`research since 1992. I have been involved in numerous academic, consulting, and
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`litigation projects
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`involving navigation, communications and computer
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`technologies. Examples of my academic projects include a container tracking
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`system in 2003 that explored the application of tracking and communications
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`technologies to track shipping containers, an automotive-based system in 2000 that
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`combined GPS and map data in an automotive environment, a remote hazard
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`detection system in 1996 that combined GPS and radio communications to
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`remotely identify hazards to the engineer operating a freight train, and a
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`differential GPS system in 1995 that combined GPS and radio technologies to
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`determine the precise path of vehicles operating off-road during forest operations.
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`As a consultant, I have worked with the combination of GPS and radio
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`communications in the context of space shuttle docking operations, transfer of
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`traffic information to GPS devices in a vehicle, combinations of GPS and cellular
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`communications for the tracking of individuals, and map-based handheld tracking
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`devices.
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`13.
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`I have extensive experience with the development and maintenance of
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`the hardware and software associated with server computers, including server
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`computers attached to the Internet. This experience includes the installation and
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`maintenance of web servers and file servers, as well as the design, development,
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`5
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`Patent Owner adidas AG
`Exhibit 2002 - Page 5 of 81
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`test, and maintenance of web based applications. These applications typically
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`employ C/C++, Java, JavaScript, PHP, HTML, MySQL, and other applications,
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`languages and/or utilities as might be appropriate for a given application.
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`14.
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`I have extensive experience in the design, implementation, and testing
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`of hardware and software systems in the context of a client-server computer
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`architecture in which at least one client computer exchanges navigation and/or GIS
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`information with at least one server computer through a wired and/or wireless
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`network.
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` Since 1992, I have not only been involved with the development of 15.
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`GIS-related software for evaluating various aspects of GPS performance, but I
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`have also used a number of commercial GPS and GIS products. GPS products I am
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`familiar with include products produced by GEC Plessey, Motorola, Rockwell,
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`Trimble, Novatel, Magellan, Garmin, and others. GIS products I am familiar with
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`include products such as ArcView/ArcGIS, GeoRover, and Navtech, as well as
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`various data sets made available by government agencies (for example, USGS
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`topographical maps, Digital Elevation Models, marine and aviation charts, and the
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`like). I am also familiar with numerous GIS and mapping products that existed in
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`the market since the late 1980s, including systems and software developed by Etak,
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`Microsoft, DeLorme, AutoMap, and others.
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`6
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`Patent Owner adidas AG
`Exhibit 2002 - Page 6 of 81
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` During the period between 1999 and 2004 I was involved with 16.
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`projects funded by the National Institute of Justice and the US Army. These
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`projects were initially motivated by the fire at the Worcester Cold Storage building
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`on December 3, 1999 which claimed the lives of six firefighters who became lost
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`inside the burning building. This work was later additionally motivated by a need
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`to monitor the location and physiological status of troops involved with indoor,
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`underground and urban warfare. As a part of this work I participated in the design
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`and development of location determination systems, communications systems, and
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`physiological sensors, as well as hardware and software integration of those
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`systems.
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` A detailed listing of my qualifications and experience is addressed in 17.
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`my resume, which is attached hereto as Attachment A.
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`III. Materials Considered
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`18.
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`In forming my opinions expressed in this Declaration, in addition to
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`my knowledge and experience, I have considered the following documents and
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`things that I have obtained, or that have been provided to me:
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`•
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`•
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`•
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`The ‘345 patent;
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`The File History of the ‘345 patent;
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`The Declaration of Dr. Joseph Paradiso (Ex. 1003);
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`7
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`Patent Owner adidas AG
`Exhibit 2002 - Page 7 of 81
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`•
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`U.S. Patent No. 6,513,532 (“Mault”) (Ex. 1004);
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`U.S. Patent No. 6,321,158 (“DeLorme”) (Ex. 1005);
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`U.S. Patent No. 6,790,178 (“Mault”) (Ex. 1007);
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`U.S. Patent No. 5,864,870 (“Guck”) (Ex. 1010)
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`Patent Owner’s Preliminary Response, Paper 6;
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`The Board’s Institution Decision, Paper 9;
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`The Declaration of Dr. Mark T. Jones and supporting exhibits and
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`attachments; and
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`All other documents and exhibits filed in these proceedings.
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` To the extent not listed above, I have reviewed and considered all 19.
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`documents discussed within the body of this Declaration.
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`IV. Person of Ordinary Skill in the Art
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`20.
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`I have been informed that “a person of ordinary skill in the relevant
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`field” is a hypothetical person to whom an expert in the relevant field could assign
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`a routine task with reasonable confidence that the task would be successfully
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`carried out. In my opinion, a person of ordinary skill in the art would have at least
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`a bachelor’s degree in electrical or computer engineering and three years of
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`8
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`Patent Owner adidas AG
`Exhibit 2002 - Page 8 of 81
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`practical experience with sensing, signaling, and embedded systems. As of the
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`relevant time period I was at least a person of ordinary skill in the art.
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`V.
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`Legal Principles
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`A. Anticipation under 35 U.S.C. § 102
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`21.
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`I understand that a patent claim is invalid as “anticipated” if each and
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`every limitation of the claim as construed by the court is found, either expressly or
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`inherently, in a single device or method that predates the claimed invention, or is
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`described in a single previous publication or patent that predates the claimed
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`invention. I understand that, in patent law, these previous devices, methods,
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`publications, or patents are called “prior art.” Claim limitations that are not
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`expressly found in a prior art reference are inherent if the prior art necessarily
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`functions in accordance with, or includes, the claim limitations. It is acceptable to
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`examine evidence outside the prior art reference (extrinsic evidence) in
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`determining whether a feature, while not expressly discussed in the reference, is
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`necessarily present in it.
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`22.
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`I also understand that incorporation by reference provides a method
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`for integrating material from various documents into a single prior art document (a
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`patent or a printed publication) for purposes of an anticipation determination by
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`citing such material in a way that makes clear that the material is effectively part of
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`the single prior art document as if it were explicitly contained therein. In other
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`9
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`Patent Owner adidas AG
`Exhibit 2002 - Page 9 of 81
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`words, when a document is “incorporated by reference” into a host document, such
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`as a patent, the referenced document becomes effectively part of the host document
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`as if it were explicitly contained therein.
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`B. Obviousness under 35 U.S.C. § 103
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`23.
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`I understand that a claim is invalid if the invention recited in the claim
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`would have been obvious to one of ordinary skill in the art at the time the invention
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`was made. I understand this means that even if all the requirements of the claim
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`cannot be found in a single prior art reference that would anticipate the claim, a
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`person of ordinary skill in the field of the invention knowledgeable of the prior art
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`would have come up with the claimed invention. In considering whether a claim is
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`obvious, I have been asked to consider (a) the level of skill in the art at the time of
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`the claimed invention, (b) the scope and content of the prior art, (c) any differences
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`between the prior art and the claims of the patent-in-suit, and (d) any “secondary
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`factors” related to obviousness, including commercial success, long-felt but
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`unresolved need, failure of others, copying, praise by others, unexpected results,
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`and simultaneous invention by others.
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`24.
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`I understand that a claim composed of several elements is not
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`necessarily proved obvious merely by demonstrating that each of its elements was
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`independently known in the prior art. I also understand that obviousness should
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`not be analyzed using the benefit of hindsight. Instead, it must be analyzed from
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`10
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`Patent Owner adidas AG
`Exhibit 2002 - Page 10 of 81
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`the standpoint of what was known and understood by a person of ordinary skill in
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`the art at the time of the claimed invention. In evaluating whether a claimed
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`combination would have been obvious, I understand that I may consider whether
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`there was a reason that would have prompted a person of ordinary skill in the field
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`to combine the elements or concepts from the prior art in the same manner as
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`claimed. I understand that, among other things, I can consider whether market
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`forces or other design incentives might have prompted the particular combination
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`claimed in the patent. I understand that I may also consider whether the
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`combination simply achieved a predictable result by using prior art elements
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`according to their known functions. I understand that I may consider whether there
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`is some teaching, motivation, or suggestion in the prior art to make the claimed
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`combination, although such a teaching, motivation, or suggestion is not a
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`requirement of proving obviousness. I understand that teachings, suggestions, and
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`motivations may also be found within the knowledge of a person with ordinary
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`skill in the art, including inferences and creative steps that a person of ordinary
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`skill in the art would employ.
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` Also, I understand that I should consider whether the claimed 25.
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`combination applies a known technique that had been used to improve similar
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`devices in a similar way. I understand that I may also consider whether the
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`claimed invention would have been obvious to try, meaning that the claimed
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`11
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`Patent Owner adidas AG
`Exhibit 2002 - Page 11 of 81
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`innovation was one of a relatively small number of possible approaches to the
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`problem with a reasonable expectation of success by those of ordinary skill in the
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`art.
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`26.
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`I understand that a single prior art reference, even though not
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`anticipating, could be modified to produce the claimed invention and thus render a
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`claim obvious.
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`C.
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`The Presumption of Validity
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`27.
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`It is my understanding that under 35 U.S.C. § 282, a patent is
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`presumed valid, and each claim of a patent is presumed valid.
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`VI. Claim Construction
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`28.
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`I understand that for purposes of an inter partes review of an
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`unexpired patent, all claims are to be construed with the broadest reasonable
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`interpretation in light of the specification. I have reviewed and considered the
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`Board’s discussion of the term “common file format” in the Institution Decision.
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`VII. Technology Background
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` To the extent that the meaning of claim terms is contested in this inter 29.
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`partes review, it is my opinion that the broadest reasonable interpretation of the
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`claim terms is readily understandable without the need for further construction.
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` Over the past 15 years, cell phones have evolved into the full-fledged 30.
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`programmable computing and communications devices that we refer to as
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`12
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`Patent Owner adidas AG
`Exhibit 2002 - Page 12 of 81
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`smartphones. The functionality of smartphones, like that of any computer, can be
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`changed by installing software applications. While these applications are stored
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`locally on the handset, many are networked, meaning that they communicate with
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`and share information with other entities within the network. For example,
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`networked mobile applications may share information with servers in the network
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`that make the information available on websites. To support mobile applications,
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`smartphones run operating system software which provides programming
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`interfaces that allow mobile app developers to use basic phone resources, such as
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`the display, the touchscreen, storage, networking, and positioning technologies
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`included on the phone. The operating systems most widely used on current
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`smartphones include iOS, an operating system developed by Apple that is only
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`available on Apple devices, Android, an operating system developed by Google,
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`and Windows Phone, an operating system developed by Microsoft.
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` An important feature of today’s smartphones is their ability to 31.
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`determine their own geographical position based on signals from reference objects
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`at a known location. The primary technology smartphones use to establish location
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`is the Global Positioning System (GPS). GPS is a satellite-based navigation
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`system that was originally developed for defense. The system consists of up to 32
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`satellites that continuously emit reference signals at a designated RF frequency.
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`Each GPS satellite includes an atomic clock, and the signals they emit include a
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`13
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`Patent Owner adidas AG
`Exhibit 2002 - Page 13 of 81
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`time stamp, as well as information on the satellite’s position in the sky. GPS
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`receivers use these signals to estimate the distance between the receiver and each
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`visible satellite. Once the receiver obtains the positions of and the distances to at
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`least four satellites, it can compute the location of the receiver through a process
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`called multilateration. In addition to using the GPS, modern cellular telephones
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`may also perform position determination using the cellular network or using Wi-Fi
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`access points.
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` Today, a number of different types of mobile applications use 32.
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`location-based services, including navigational systems, weather systems, and
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`friend-or-family finder applications that permit users to share their location with
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`their friends and family.
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`VIII. The ‘345 Patent and Alleged Prior Art
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` The ‘345 patent describes a customizable, modular personal network 33.
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`system wherein the individual components are designed to be worn, carried or
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`used on or about the user. Ex. 1001 at Abstract. In particular, the ‘345 patent
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`claims a portable electronic journal designed to be worn or carried by a user and a
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`method of providing said portable electronic journal. Ex. 1001 at 71:30-72:57.
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`Independent claim 1 is an exemplary claim of the ‘345 patent:
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`A portable electronic journal configured to be worn or carried
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`by a user comprising a memory to store journal entries, journal
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`14
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`Patent Owner adidas AG
`Exhibit 2002 - Page 14 of 81
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`software with which a user interacts and creates a new journal and is
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`capable of creating individual text or audio journal entries for the
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`journal and optionally linking one or more images to the journal, a
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`user input device that is used in creating journal entries, wherein the
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`user input device is selected from the group consisting of a voice input
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`device and a text input device to create journal entries, a digital
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`camera that creates images to store with the created journal entries, a
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`clock to tag the journal entries with date and time, a communication
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`device to upload the journal entries to a personal computer, and
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`software to format the journal entries to a common file format.
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`Ex. 1001 at 71:30-43. Independent claim 20 covers a method of providing a
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`portable electronic journal that generally corresponds to the limitations of claim 1.
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`Dependent claims 2-3, 6-11, and 15-17 include a variety of limitations regarding
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`the types of information collected by the journal, the manner in which the
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`information is collected, and how information is stored within the portable
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`electronic journal.
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` The ‘345 patent issued from U.S. Patent App. No. 12/617,985 filed on 34.
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`November 13, 2009. The ‘345 patent claims priority to U.S. Provisional
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`Application No. 60,270,400, filed on February 20, 2001.
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`15
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`Patent Owner adidas AG
`Exhibit 2002 - Page 15 of 81
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` U.S. Patent No. 6,513,532 (“Mault”) entitled “Diet and Activity-35.
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`Monitoring Device” issued on February 4, 2003 from U.S. Patent Application No.
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`09/745,373 filed on December 23, 2000. Mault discloses a diet and activity-
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`monitoring device that monitors the body activity of a subject and outputs a signal
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`indicative of the body activity. Ex. 1004 at Abstract. Mault identifies a number of
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`deficiencies with pre-existing diet and activity monitors. Id. at 1:29-3:6. Mault
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`then discloses that the invention described therein improves on the prior art by
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`providing a combination diet and activity monitor. Id. at 3:9-11. Specifically,
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`Mault discloses a number of different embodiments of a portable monitoring
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`device, including a body activity monitor that may include a heart rate monitor or a
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`GPS antenna. Id. at 3:34-48; 7:6-9.
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` U.S. Patent No. 6,321,158 36.
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`(“DeLorme”) entitled “Integrated
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`Routing/Mapping Information” issued on November 20, 2001 from U.S. Patent
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`Application No. 09/144,836 filed on August 31, 1998. DeLorme relates to an
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`integrated routing/mapping information system capable of allowing a user to plan
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`a route using specialized mapping software on a desktop computer and then
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`transfer that route to a handheld computing device, such as PDAs. Ex. 1005 at
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`4:21-26. The PDA of DeLorme “may be optionally linked to a GPS receiver.” Id.
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`at 4:26-27. The system described in DeLorme is used to provide route guidance
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`information for travel planning. Id. at 6:33-35.
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`16
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`Patent Owner adidas AG
`Exhibit 2002 - Page 16 of 81
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`37.
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`I understand the Board has instituted trial on whether claims 1-3, 6-
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`11, 15-17, and 20 are obvious over Mault and DeLorme. I refer to claims 1-3, 6-
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`11, 15-17, and 20 as the “Instituted Claims.”
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`IX. The Instituted Claims Are Patentable Over the References Upon Which
`Trial was Instituted
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`A.
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`The Instituted Claims are Patentable over Mault in view of
`DeLorme
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`1.
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`Petitioner has not demonstrated a Sufficient Motivation to
`Combine Mault and DeLorme
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`38.
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`In the Institution Decision, the Board found that for purposes of the
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`institution decision, Petitioner had sufficiently provided a “rationale sufficient to
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`demonstrate that the combination of Mault and DeLorme would have been
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`obvious.” Paper 9 at 14. In reaching this conclusion, the Board expressly relied
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`upon Petitioner’s suggestion that it would have been obvious to combine Mault
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`with DeLorme for various reasons, “including providing Mault with the additional
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`feature of a graphical map downloaded to the monitoring device ‘to assist the user
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`in tracking his or her location and activity.’” Id. at 14 (citing Petition at 27).
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`Further, the Board pointed to Petitioner’s assertion that Mault itself explicitly
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`discloses the use of a GPS device and that “the choice of a specific type of device
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`is merely a design choice.” Id. at 14 (Citing Petition at 11). In my opinion, the
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`Board’s Institution Decision relies on Petitioner’s unsupported overstatements
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`17
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`Patent Owner adidas AG
`Exhibit 2002 - Page 17 of 81
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`regarding the disclosures of Mault and DeLorme in view of the knowledge of a
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`person of ordinary skill.
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` Petitioner contends that Mault teaches “that a PDA can be used to 39.
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`record a user’s location over time.” Id. at 6 (citing Ex. 1004 at 8:47-53). This is
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`not an accurate description of the teachings of Mault. This passage from Mault
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`describes a “GPS Version of Monitor” and teaches that in one embodiment, the
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`body activity monitor includes a GPS antenna that is used to periodically or
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`continuously determine the location of the subject. Ex. 1004 at 8:47-53. In this
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`embodiment, the body activity monitor uses a position indicative signal from the
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`GPS-based activity monitor and a time signal from a timer to determine changes in
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`position of the subject as well as the rate of change in position. Id. at 8:53-61.
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`However, Mault does not teach that this embodiment takes the form of a PDA. In
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`fact, in describing this GPS embodiment of Mault’s system over nearly four full
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`columns, Mault does not even discuss communication between the GPS
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`embodiment and a PDA. See Ex. 1004 at 8:42-12:11; Fig. 4.
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` Mault’s disclosures regarding a PDA are limited at best. Mault 40.
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`discloses that in one embodiment, the monitoring device may take the form of a
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`wrist-mounted embodiment. Id. at 6:21-24. Mault discloses that this embodiment
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`may be enabled to communicate with a local computer or a PDA, but in no way
`
`suggests that the local computer or PDA are used to provide route directions to the
`
`18
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`Patent Owner adidas AG
`Exhibit 2002 - Page 18 of 81
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`
`
`
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`user. Id. at 6:41-65. This is primarily because Mault does not disclose that this
`
`embodiment includes or communicates with a GPS receiver or any other kind of
`
`location sensor. See, id. at 6:21-6:65; Fig. 1.
`
`41.
`
`
`In a single paragraph, Mault discloses that the monitoring device may
`
`take the form of a PDA, “that includes or communicates with a body activity
`
`monitor. The PDA may have an accelerometer built in or interconnect therewith . .
`
`. .” Ex. 1004 at 18:7-19. Importantly, Mault discloses three separate embodiments
`
`of the body activity monitor. “For example, in one preferred embodiment, the
`
`body activity monitor includes a global positioning system (GPS) antenna and
`
`associated circuitry allowing the monitor to determine the position of the
`
`subject…. Alternatively, the body activity monitor may take the form of a heart
`
`rate monitor…. In yet another embodiment, the body activity monitor includes a
`
`motion sensor such as a one, two, or three axis accelerometer.” Ex. 1004, 7:6-18.
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`Thus, a person of ordinary skill in the art would understand that the PDA
`
`embodiment, which is only described as including an accelerometer, necessarily is
`
`the accelerometer embodiment of Mault, and not the GPS embodiment.
`
`
`
` Moreover, Mault cautions against using this embodiment of the 42.
`
`monitor in that “[u]se of the PDA as the monitoring device allows enhanced
`
`functionality at the cost of additional bulk.” Id. at 18:14-15. The enhanced
`
`functionality described includes logging of actual foods consumed or to easily
`
`19
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`Patent Owner adidas AG
`Exhibit 2002 - Page 19 of 81
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`
`
`
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`input information as to activity level. Id. at 18:15-19. At no point does Mault
`
`describe that the PDA embodiment includes a GPS receiver or other location
`
`information, or that the PDA embodiment is used to provide navigational services.
`
`43.
`
`
`In sum, Mault discloses the use of a GPS antenna in one embodiment
`
`to determine user activity. However, Mault does not suggest the use of a GPS
`
`antenna to provide route guidance. Further, Mault’s limited discussion of a PDA
`
`embodiment makes no reference to incorporating a GPS antenna or functionality
`
`from distinct disclosed embodiments, and identifies certain disadvantages
`
`associated with the PDA embodiment. Id. at 18:14-15. Neither Petitioner nor Dr.
`
`Paradiso offer any argument as to how or why a person of ordinary skill in the art
`
`would be motivated to combine disparate embodiments disclosed in Mault, along
`
`with features that are not even referenced in Mault, to arrive at the invention
`
`claimed in the ‘345 patent.
`
`44.
`
`
`In contrast
`
`to Mault, DeLorme
`
`relates
`
`to an
`
`integrated
`
`routing/mapping information system capable of allowing cooperation between
`
`desktop computer cartographic applications and handheld devices, such as PDAs.
`
`Ex. 1005 at Abstract. The PDA of DeLorme “may be optionally linked to a GPS
`
`receiver.” Id. The highly specialized system described in DeLorme is used to
`
`provide location and route guidance information for travel planning. Id. at 13:2-6.
`
`20
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`Patent Owner adidas AG
`Exhibit 2002 - Page 20 of 81
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`45.
`
`
`In setting forth an alleged motivation to combine, Petitioner makes no
`
`attempt to address the clear difference in the needs of a user that is using a GPS
`
`receiver in combination with desktop mapping applications to provide route
`
`guidance for travel purposes as compared to a user that is simply using a GPS
`
`receiver to receive position points for evaluating athletic performance. Instead,
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`Petitioner summarily asserts that Mault and DeLorme both teach that a PDA can be
`
`used to record a user’s location over time. Petition at 10 (citing Ex. 1004 at 8:47-
`
`53, 5:57-61, 9:42-51,18:7-19; Ex. 1005 at Abstract, 10:47-55, 13:22-31). Not only
`
`is this statement factually incorrect, it also ignores that Mault and DeLorme seek to
`
`collect different kinds and quality of information regarding the user’s location.
`
`
`
` First, as discussed above, Petitioner is incorrect to assert that Mault 46.
`
`discloses a PDA that is used to record a user’s location over time. Instead, Mault
`
`merely discloses a PDA embodiment that includes or can be connected to an
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`accelerometer. Ex. 1004 at 18:7-19.
`
`
`
` Petitioner suggests that “there are no technical barriers preventing a 47.
`
`combination of Mault and DeLorme[‘s] disclosures.” Petition at 11 (citing Ex.
`
`1003 at ¶ 38). In reaching this erroneous conclusion, Petitioner relies exclusively
`
`on Dr. Paradiso’s unsupported statement that, presumably in the eyes of a person
`
`of ordinary skill in the art, “[t]he specific type of GPS device is a matter of simple
`
`design choice.” Petition at 11 (citing Ex. 1003 at ¶ 38). Tellingly, Dr. Paradiso’s
`
`21
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`Patent Owner adidas AG
`Exhibit 2002 - Page 21 of 81
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`
`
`
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`declaration does not assert that he was a person of ordinary skill in the art at the
`
`time of the invention of the ‘345 patent. Instead, Dr. Paradiso alleges “I have a
`
`good understanding of the capabilities of a person of ordinary skill in the relevant
`
`field.” Ex. 1003 at ¶ 12. The fact that Dr. Paradiso was not a person of ordinary
`
`skill in the art at the relevant time period is highlighted by his own admission that
`
`he has never personally designed any device that incorporates a GPS receiver.
`
`Q. Let me rephrase my question. Prior to 2001 had you ever
`
`worked on a device that directly implemented a GPS receiver?
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`A. Not myself.
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`Paradiso Dep. Ex. 2004 at 15:12-14; see also id. 36:12-37:20 (acknowledging he
`
`had not personally developed a travel planning suite that utilized GPS technology).
`
`Dr. Paradiso’s conclusion that implementation of a GPS receiver was nothing more
`
`than a “simple design choice,” is likely because he had never worked on a device
`
`that directly implemented a GPS receiver.
`
`
`
` This oversimplification regarding the interchangeability of GPS 48.
`
`receivers by Dr. Paradiso is underscored by the teachings of DeLorme. Petitioner
`
`relies heavily on various disclosures in DeLorme regarding a PDA embodiment of
`
`its system. Namely, Petitioner relies on disclosures relating to DeLorme’s use of
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`specialized mapping software called SOLUS as installed on Palm PDA devices.
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`See e.g., Petition at 15 (citing Ex. 1005 at 14:65-15:17). However, even if a person
`
`22
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`Patent Owner adidas AG
`Exhibit 2002 - Page 22 of 81
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`
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`of ordinary skill were motivated to combine Mault and DeLorme, disclosures
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`relating to the SOLUS software teach that the GPS receiver it contemplates has
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`limits as to its applications.
`
`
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` Figure 1 of DeLorme includes the following description of using the 49.
`
`SOLUS software to track a user’s position:
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`Safety Warning: Bring a passenger along to serve as GPS
`
`operator while you are driving a vehicle. Solus Pro should not be
`
`used in automatic navigation or guidance systems or for any purpose
`
`requiring precision measurement of distance or direction. See GPS
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`Position Accuracy for additional information.
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`Id. at Fig. 1A6-5; see also Ex. 1005 at 17:3-9. The warning and disclaimer are
`
`repeated throughout DeLorme (see DeLorme, at Figs. 1A6-1, 1A6-4, 1A6-5, 1A6-
`
`7, 1A6-8, 1A6-10, 1A6-12, 1A6-13, 14:47-52; 16:30-35) and the inability of the
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`SOLUS software to provide precise me
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