U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Under Armour Inc.,
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-000698
`
`Patent No. 8,092,345
`
`PATENT OWNER ADIDAS AG’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`IPR2015-00698
`Patent Owner’s Response
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Under Armour Inc.,
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`Case No. IPR2015-000698
`
`Patent No. 8,092,345
`
`PATENT OWNER ADIDAS AG’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`U.S. Pat. No. 8,092,345
`IPR2015-00698
`Patent Owner’s Response
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`Table of Contents
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`LEGAL STANDARD ..................................................................................... 4
`
`III. CLAIM CONSTRUCTION ............................................................................ 5
`
`IV. THE INSTITUTED CLAIMS ARE PATENTABLE OVER
`THE REFERENCES UPON WHICH TRIAL WAS
`INSTITUTED .................................................................................................. 6
`
`A.
`
`The Instituted Claims are Patentable over Mault in view
`of DeLorme ........................................................................................... 6
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioner has not demonstrated a Sufficient
`Motivation to Combine Mault and DeLorme ............................. 6
`
`Petitioner has not demonstrated that Mault in view
`of DeLorme renders obvious the claim limitations
`“software with which a user interacts and creates a
`new journal” or “creating a new journal using an
`interface with which the user interacts.” ................................... 15
`
`Petitioner has not demonstrated that Mault in view
`of DeLorme renders obvious the claim limitations
`“software to format the journal entries to a
`common file format” or “formatting the journal
`entry to a common file format.” ................................................ 18
`
`Petitioner has not demonstrated that Mault in view
`of DeLorme renders obvious the claim limitation
`“[t]he journal of claim 1 further comprising a
`database comprising a plurality of database entries
`wherein a journal entry may be tagged with one of
`the plurality of database entries.”.............................................. 22
`
`B.
`
`Petitioner Ignores Evidence of Secondary Considerations ................. 26
`
`V.
`
`CONCLUSION .............................................................................................. 52
`
`
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`U.S. Pat. No. 8,092,345
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`
`Exhibit
`Number
`2001
`2002
`2003
`2004
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`2010
`
`2011
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`2012
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`2013
`
`Patent Owner’s Exhibit List
`
`Description
`
`Biography of Jonathan D. Olinger
`Declaration of William R. Michalson, Ph.D.
`Declaration of Mark T. Jones, Ph.D.
`Deposition Transcript of Dr. Joseph Paradiso
`MapMyFitness, About Us (last visited November 15, 2015)
`http://about.mapmyfitness.com/about/company-history/
`Running USA, 2014 State of the Sport – Part II: Running Industry
`Report June 15, 2014
`http://www.runningusa.org/2014-running-industry-
`report?returnTo=annual-reports
`Bloomberg, Company Overview of MapMyFitness, Inc. (November
`15, 2015)
`http://www.bloomberg.com/research/stocks/private/snapshot.asp?priv
`capId=60835454
`Under Armour, Inc. SEC Form 10-K, for the fiscal year ended
`December 31, 2013
`Sterne Agee company Report, “Under Armour Inc.: 2Q15 Preview,”
`MapMyFitness Help and Support, Getting Started, (last visited
`November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200118014-
`Getting-started-with-the-app
`MapMyFitness Help and Support, Change Profile Photo, (last visited
`November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200117694-
`Change-Profile-Photo
`MapMyFitness Help and Support, How to Save and View Photos
`using the In-App Camera (last visited November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200118494-How-
`to-save-and-view-photos-using-the-in-app-camera
`MapMyFitness Help and Support, Where are my Workouts and
`Routes, (last visited November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/articles/200118224-
`Where-are-my-workouts-and-routes
`
`
`
`U.S. Pat. No. 8,092,345
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`2014
`
`Under Armour Connected Fitness, DOCS, (last visited November 19,
`2015)
`https://developer.underarmour.com/docs
`Under Armour Connected Fitness, Activity Type, (last visited
`November 19, 2015)
`https://developer.underarmour.com/docs/read/v71_Activity_Type
`MapMyFitness, Incorrect Calorie Calculations (last visited November
`16, 2015)
` https://support.mapmyfitness.com/hc/en-us/articles/200118084-
`Incorrect-Calorie-Calculations
`MobiHealthNews, “MapMyFitness Activity Feed Enables Social
`Sharing Across Devices” (Jan. 20, 2014)
`Google, “Mobile App Marketing Insights: How Consumers Really
`Find and Use Your Apps” (May 2015)
`Adobe Digital Index, “Social Intelligence Report” (Q1 2014)
`Running Shoes Guru, The 10 Best Running Apps for Android for
`2015 (December 26, 2014)
`www.runningshoesguru.com/2014/12/the-10-best-running-apps-for-
`android-for-2015
`adidas AG v. Under Armour, Inc. and MapMyFitness, Inc., Case No.
`14-cv-130 (D. Del.) D.I. 170 ¶ 227
`MapMyFitness Help and Support, Mobile App Questions, (last visited
`November 19, 2015)
`https://support.mapmyfitness.com/hc/en-us/categories/200003344-
`Mobile-App-Questions
`
`2015
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`2016
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`2017
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`2018
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`2019
`2020
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`2021
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`2022
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`U.S. Pat. No. 8,092,345
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`Patent Owner’s Response
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`I.
`
`INTRODUCTION
`
`Petitioner attempts to combine two references, Mault and DeLorme, to show
`
`that the claims of the ‘345 patent are unpatentable. However, in doing so,
`
`Petitioner mischaracterized various embodiments of the references to manufacture
`
`some motivation to combine the two.
`
`The ‘345 patent describes a customizable, modular personal network system
`
`wherein the individual components are designed to be worn, carried or used on or
`
`about the user. Ex. 1001 at Abstract. In particular, the ‘345 patent claims a
`
`portable electronic journal designed to be worn or carried by a user and a method
`
`of providing said portable electronic journal.
`
` Ex. 1001 at 71:30-72:57.
`
`Independent claim 1 is an exemplary claim of the ‘345 patent:
`
`A portable electronic journal configured to be worn or carried
`
`by a user comprising a memory to store journal entries, journal
`
`software with which a user interacts and creates a new journal and is
`
`capable of creating individual text or audio journal entries for the
`
`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
`
`device and a text input device to create journal entries, a digital
`
`1
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`U.S. Pat. No. 8,092,345
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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.
`
`Ex. 1001 at 71:30-43. See also Declaration of William R. Michalson, Ph.D., Ex.
`
`2002 at ¶ 33-34. Independent claim 20 covers a method of providing a portable
`
`electronic journal that generally corresponds to the limitations of claim 1. Id.
`
`Dependent claims 2-3, 6-11, and 15-17 include a variety of limitations regarding
`
`the types of information collected by the journal, the manner in which the
`
`information is collected, and how information is stored within the portable
`
`electronic journal. Id.
`
`U.S. Patent No. 6,513,532 (“Mault”) entitled “Diet and Activity-Monitoring
`
`Device” issued on February 4, 2003 from U.S. Patent Application No. 09/745,373
`
`filed on December 23, 2000. Mault discloses a diet and activity-monitoring device
`
`that monitors the body activity of a subject and outputs a signal indicative of the
`
`body activity. Ex. 1004 at Abstract. Mault identifies a number of deficiencies
`
`with pre-existing diet and activity monitors. Id. at 1:29-3:6. Mault then discloses
`
`that the invention described therein improves on the prior art by providing a
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`combination diet and activity monitor. Id. at 3:9-11. Specifically, Mault discloses
`
`2
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`
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`a number of different embodiments of a portable monitoring device, including a
`
`body activity monitor that may include a heart rate monitor or a GPS antenna. Id.
`
`at 3:34-48; 7:6-9; see also Ex. 2002 at ¶ 35.
`
`U.S.
`
`Patent No.
`
`6,321,158
`
`(“DeLorme”)
`
`entitled
`
`“Integrated
`
`Routing/Mapping Information” issued on November 20, 2001 from U.S. Patent
`
`Application No. 09/144,836 filed on August 31, 1998. DeLorme relates to an
`
`integrated routing/mapping information system capable of allowing a user to plan
`
`a route using specialized mapping software on a desktop computer and then
`
`transfer that route to a handheld computing device, such as PDAs. Ex. 1005 at
`
`4:21-26. The PDA of DeLorme “may be optionally linked to a GPS receiver.” Id.
`
`at 4:26-27. The system described in DeLorme is used to provide route guidance
`
`information for travel planning. Id. at 6:33-35; see also Ex. 2002 at ¶36.
`
`Mault and DeLorme relate to fundamentally distinct uses of GPS data and
`
`receivers. Contrary to the unsupported conclusions of Petitioner’s expert Dr.
`
`Paradiso, a person of ordinary skill in the art would not be motivated to combine
`
`these references. Importantly, Petitioner has not identified any disclosures in
`
`Mault that would motivate a person of ordinary skill in the art to modify its system
`
`to include a different kind of GPS receiver than is disclosed on the face of Mault.
`
`Moreover, Petitioner has not identified a rationale to modify Mault’s activity
`
`3
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`monitor system such that it would include more route guidance functionalities.
`
`Finally, for a number of limitations that Petitioner asserts would have been obvious
`
`impliedly based on the understanding of a person of ordinary skill in the art,
`
`Petitioner has not identified a reasoning, based on the limited disclosures in Mault,
`
`that would support modifying Mault’s disclosed system such that it would render
`
`obvious the claims of the ‘345 patent. Petitioner engages in nothing more than a
`
`hindsight analysis that cannot support its obviousness arguments. See Ex. 2002 at
`
`¶¶ 35-36.
`
`In short, Petitioner has failed to meet its burden to show that the instituted
`
`claims 1-3, 6-11, 15-17, and 20 of the ‘345 patent are unpatentable over the art
`
`upon which trial was instituted.
`
`II. LEGAL STANDARD
`To prevail in its challenges to the patentability of the claims, a petitioner
`
`must establish facts supporting its challenges by a preponderance of the evidence.
`
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable under 35 U.S.C.
`
`§ 103(a) only if the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person having ordinary skill in the
`
`art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`4
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`398, 406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations, including: (1) the scope and content of the prior
`
`art; (2) any differences between the claimed subject matter and the prior art; (3) the
`
`level of skill in the art; and (4) objective evidence of non-obviousness, i.e.,
`
`secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18
`
`(1966).
`
`III. CLAIM CONSTRUCTION
`The Petition must identify how each challenged claim is to be construed. 37
`
`C.F.R. § 42.104(b)(3). Because the ‘345 patent has not expired, all claims are to
`
`be construed with the broadest reasonable interpretation in light of the
`
`specification. See 37 C.F.R. § 42.100(b).
`
`For purposes of this proceeding, Patent Owner does not contest the Board’s
`
`constructions of the construed claim terms. Patent Owner submits that the terms
`
`that the Board did not construe need not be construed in order to resolve the issues
`
`that are contested in this inter partes review. To the extent that the meaning of
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`claim terms is contested in this inter partes review, Patent Owner submits that the
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`broadest reasonable interpretation of the claim terms is readily understandable
`
`without the need for further construction. See Ex. 2002 at ¶ 28. However, certain
`
`claims may require construction in another proceeding for a number of reasons.
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`For example, the contested issues may differ or the broadest reasonable
`
`interpretation standard may not apply. Accordingly, Patent Owner reserves the
`
`right to offer different claim construction positions in other proceedings.
`
`IV. THE INSTITUTED CLAIMS ARE PATENTABLE OVER THE
`REFERENCES UPON WHICH TRIAL WAS INSTITUTED
`A. The Instituted Claims are Patentable over Mault in view of
`DeLorme
`1.
`
`Petitioner has not demonstrated a Sufficient Motivation to
`Combine Mault and DeLorme
`
`In the Institution Decision, the Board found that for purposes of the
`
`institution decision, Petitioner had sufficiently provided a “rationale sufficient to
`
`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).
`
`Further, the Board pointed to Petitioner’s assertion that Mault itself explicitly
`
`discloses the use of a GPS device and that “the choice of a specific type of device
`
`is merely a design choice.” Id. at 14 (Citing Petition at 11). Patent Owner
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`respectfully submits that the Board’s Institution Decision relies on Petitioner’s
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`unsupported overstatements regarding the disclosures of Mault and DeLorme in
`
`view of the knowledge of a person of ordinary skill.
`
`Petitioner contends that Mault teaches “that a PDA can be used to record a
`
`user’s location over time.” Id. at 6 (citing Ex. 1004 at 8:47-53). This is not an
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`accurate description of the teachings of Mault. See Ex. 2002 at ¶¶ 38-39. This
`
`passage from Mault describes a “GPS Version of Monitor” and teaches that in one
`
`embodiment, the body activity monitor includes a GPS antenna that is used to
`
`periodically or continuously determine the location of the subject. Ex. 1004 at
`
`8:47-53. In this embodiment, the body activity monitor uses a position indicative
`
`signal from the GPS-based activity monitor and a time signal from a timer to
`
`determine changes in position of the subject as well as the rate of change in
`
`position. Id. at 8:53-61. However, Mault does not teach that this embodiment
`
`takes the form of a PDA. In fact, in describing this GPS embodiment of Mault’s
`
`system over nearly four full columns, Mault does not even discuss communication
`
`between the GPS embodiment and a PDA. See Ex. 1004 at 8:42-12:11; Fig. 4. See
`
`also Ex. 2002 at ¶ 39.
`
`Mault’s disclosures regarding a PDA are limited at best. See Ex. 2002 at ¶
`
`40. Mault discloses that in one embodiment, the monitoring device may take the
`
`form of a wrist-mounted embodiment. Id. at 6:21-24. Mault discloses that this
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`embodiment may be enabled to communicate with a local computer or a PDA, but
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`in no way suggests that the local computer or PDA are used to provide route
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`directions to the user. Id. at 6:41-65. This is primarily because Mault does not
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`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. See also Ex. 2002
`
`at ¶ 40.
`
`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.
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`1004 at 18:7-19. Importantly, Mault discloses three separate embodiments of the
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`body activity monitor. See Ex. 2002 at ¶41. “For example, in one preferred
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`embodiment, the body activity monitor includes a global positioning system (GPS)
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`antenna and associated circuitry allowing the monitor to determine the position of
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`the subject…. Alternatively, the body activity monitor may take the form of a
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`heart rate monitor…. In yet another embodiment, the body activity monitor
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`includes a motion sensor such as a one, two, or three axis accelerometer.” Ex.
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`1004, 7:6-18. Thus, the PDA embodiment, which is only described as including an
`
`accelerometer, necessarily is the accelerometer embodiment of Mault, and not the
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`GPS embodiment. See Ex. 2002 at ¶41.
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`Moreover, Mault cautions against using this embodiment of the monitor in
`
`that “[u]se of the PDA as the monitoring device allows enhanced functionality at
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`the cost of additional bulk.” Id. at 18:14-15. The enhanced functionality described
`
`includes logging of actual foods consumed or to easily input information as to
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`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
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`PDA embodiment is used to provide navigational services. See Ex. 2002 at ¶ 42.
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`In sum, Mault discloses the use of a GPS antenna in one embodiment to
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`determine user activity. See id. at ¶ 43. However, Mault does not suggest the use
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`of a GPS antenna to provide route guidance. Further, Mault’s limited discussion of
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`a PDA embodiment makes no reference to incorporating a GPS antenna or
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`functionality from other distinct embodiments, and identifies certain disadvantages
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`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
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`claimed in the ‘345 patent. See Ex. 2002 at ¶ 43.
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`In contrast to Mault, DeLorme relates to an integrated routing/mapping
`
`information system capable of allowing cooperation between desktop computer
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`cartographic applications and handheld devices, such as PDAs. Ex. 1005 at
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`Abstract. The PDA of DeLorme “may be optionally linked to a GPS receiver.” Id.
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`The highly specialized system described in DeLorme is used to provide location
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`and route guidance information for travel planning. Id. at 13:2-6. See also Ex.
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`2002 at ¶ 44.
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`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
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`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
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`receiver to receive position points for evaluating athletic performance. Ex. 2002 at
`
`¶ 45. Instead, 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.
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`1004 at 8:47-53, 5:57-61, 9:42-51,18:7-19; Ex. 1005 at Abstract, 10:47-55, 13:22-
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`31). Not only is this statement factually incorrect, it also ignores that Mault and
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`DeLorme seek to collect different kinds and quality of information regarding the
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`user’s location. Ex. 2002 at ¶ 45.
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`First, as discussed above, Petitioner is incorrect to assert that Mault discloses
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`a PDA that is used to record a user’s location over time. See id. at ¶ 46. Instead,
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`10
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`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
`
`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
`
`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
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`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
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`he has never personally designed any device that incorporates a GPS receiver.
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`Q. Let me rephrase my question. Prior to 2001 had you ever
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`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
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`had not personally developed a travel planning suite that utilized GPS technology).
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`Dr. Paradiso’s conclusion that implementation of a GPS receiver was nothing more
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`than a “simple design choice,” is likely because he had never worked on a device
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`that directly implemented a GPS receiver. Ex. 2002 at ¶ 47.
`
`This oversimplification regarding the interchangeability of GPS receivers by
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`Dr. Paradiso is underscored by the teachings of DeLorme. See id. at ¶ 48.
`
`Petitioner relies heavily on various disclosures in DeLorme regarding a PDA
`
`embodiment of its system. Namely, Petitioner relies on disclosures relating to
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`DeLorme’s use of specialized mapping software called SOLUS as installed on
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`Palm PDA devices. See e.g., Petition at 15 (citing Ex. 1005 at 14:65-15:17).
`
`However, even if a person of ordinary skill were motivated to combine Mault and
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`DeLorme, disclosures relating to the SOLUS software teach that the GPS receiver
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`it contemplates has limits as to its applications. See Ex. 2002 at ¶ 48.
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`Figure 1 of DeLorme includes the following description of using the SOLUS
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`software to track a user’s position:
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`Safety Warning: Bring a passenger along to serve as GPS
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`operator while you are driving a vehicle. Solus Pro should not be
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`used in automatic navigation or guidance systems or for any purpose
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`requiring precision measurement of distance or direction. See GPS
`
`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
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`repeated throughout DeLorme (see DeLorme, at Figs. 1A6-1, 1A6-4, 1A6-5, 1A6-
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`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 measurement of distance and direction is
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`further confirmed by DeLorme’s various Figures, such as Figures 1C and 1N,
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`wherein the scale and precision are unlikely to be useful to a user performing
`
`physical activity. See Ex. 2002 at ¶ 49. Thus, this embodiment upon which
`
`Petitioner and Dr. Paradiso rely contains two key disclaimers that would teach
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`away from using that system for tracking athletic performance: 1) the system
`
`should not be used in automatic navigation or guidance systems and 2) the system
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`should not be used for any purpose requiring precision measurement of distance or
`
`direction. Id.
`
`However, a system using route guidance for athletic purposes plainly
`
`requires both automatic navigation and precision measurement. Id. at ¶ 50. An
`
`individual using route guidance while on a run plainly will not want to have to
`
`continually use scroll buttons to zoom in and out of the map display to determine
`
`his position, heading, or the remainder of the route. See Ex. 1005 at 16:55-17:14.
`
`Further, the user would want precision measurement of distance, for at least
`
`obtaining accurate measurements of the user’s performance. See Ex. 2002 at ¶ 50.
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`13
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`Patent Owner’s Response
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`Thus, the portions relied upon by Dr. Paradiso plainly indicate that the GPS
`
`receiver recited by DeLorme’s system would not be useable to modify Mault’s
`
`system and to achieve the invention claimed by the ‘345 patent. The unambiguous
`
`disclosures of DeLorme wholly undermine Dr. Paradiso’s suggestion that the
`
`specific type of GPS device is a matter of “simple design choice.” Id.
`
`Finally, Dr. Paradiso ignores that in describing its GPS embodiment and
`
`features associated with that embodiment, Mault describes a GPS receiver that
`
`completely achieves the stated purposes of Mault. A person of ordinary skill
`
`reviewing Mault would recognize that Mault’s GPS receiver is fully operable for
`
`its intended function of the GPS embodiment described in Mault, namely, to
`
`collect position data for calculation of performance data. Id. at ¶ 51. A person of
`
`ordinary skill in the art would therefore have no need to modify the system
`
`disclosed in Mault and would not look towards disclosures in DeLorme, which
`
`describe at least one embodiment of a PDA combined with GPS receiver that
`
`includes numerous features that are not pertinent to a user of Mault’s system. Id.
`
`In sum, Mault describes one non-PDA embodiment that uses GPS
`
`technology to provide limited exercise related data for an individual. Conversely,
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`DeLorme claims utilization of a GPS receiver to provide location and navigation
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`services in conjunction with highly specialized mapping software. Further,
`
`14
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`Patent Owner’s Response
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`DeLorme expressly disclaims that its GPS technology should be used for automatic
`
`navigation or for activities requiring precise measurement of direction or speed.
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`See Ex. 2002 at ¶ 52.
`
`Petitioner provides no arguments as to why a person of ordinary skill would
`
`seek to combine Mault and DeLorme in view of the express teachings of the two
`
`references. This is especially true given that Mault further discloses that the PDA
`
`embodiment of its disclosed invention is limited to the accelerometer embodiment
`
`and has the significant disadvantage of added bulk—something that is highly
`
`undesirable for a user seeking a wearable activity monitor. See Ex. 2002 at ¶ 53.
`
`Petitioner and Dr. Paradiso have engaged in nothing more than hindsight
`
`reconstruction for obviousness based solely on the disclosures in the ‘345 Patent.
`
`For these reasons, Petitioner has not demonstrated an adequate motivation to
`
`combine Mault and DeLorme. Thus, claims 1-3, 6-11, 15-17, and 20 are
`
`patentable over the combination of Mault and DeLorme. See, Ex. 2002 at ¶ 54.
`
`2.
`
`Petitioner has not demonstrated that Mault in view of
`DeLorme renders obvious the claim limitations “software
`with which a user interacts and creates a new journal” or
`“creating a new journal using an interface with which the
`user interacts.”
`
`In the Institution Decision, the Board determined that Petitioner had
`
`sufficiently demonstrated that the claim limitations “software with which a user
`
`15
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`Patent Owner’s Response
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`interacts and creates a new journal” and “creating a new journal using an interface
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`with which the user interacts” in view of Dr. Paradiso’s testimony that “portable
`
`electronic devices required software installation and/or setup before use.” Paper 9
`
`at 11-12 (citing Ex. 1003 at ¶ 46). The Board concluded that this testimony
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`“demonstrates sufficient explanation as to why an ordinarily skilled artisan would
`
`have included software—i.e., to create a journal that would be capable of logging
`
`the journal entries explicitly disclosed in Mault.” Paper 9 at 12. Patent Owner
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`respectfully submits that the Board erred in reaching this conclusion based on
`
`incorrect assertions by Dr. Paradiso. See Ex. 2002 at ¶ 55.
`
`Patent Owner does not disagree that it would be obvious to a person of
`
`ordinary skill in the art to include software on Mault’s system. Certainly, Mault’s
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`disclosures regarding a user interacting with a monitoring device, which includes a
`
`computer processor and memory, would lead a person of ordinary skill to
`
`understand that the monitoring device likely contains some sort of software. See,
`
`generally Ex. 1004 at 6:46-10l; see also Ex. 2002 at ¶ 56.
`
`However, the relevant limitations from the ‘345 patent do not require the
`
`mere use or inclusion of software, but instead require that the user interacts with
`
`the software to create a new journal. Specifically, claim 1 recites “software with
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`which a user interacts and creates a new journal.” Ex. 1001 at 71:32-33
`
`16
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`
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`Patent Owner’s Response
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`(emphasis added). Similarly, claim 20 more explicitly recites a method that
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`includes the step of “creating a new journal using an interface with which the
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`user interacts.” Id. at 72:46-47. Thus, it is not sufficient to state it would have
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`been obvious to include software, but rather, Petitioner must show that it would
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`have been obvious to include software that allows the user to create a new
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`journal. See Ex. 2002 at ¶ 57.
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`As stated in Patent Owner’s preliminary response, Petitioner and Dr.
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`Paradiso have not articulated any explanation as to why a skilled person would
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`make the proposed modification to Mault’s system to require a user to “install, set
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`up, or configure that journal software for use.” Petition at 14 (citing Ex. 1003 at
`
`¶ 46). [R]ejections on obviousness cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at
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`418, (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Nothing identified
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`by Petitioner based on Mault’s disclosures, Mault II’s disclosures (to the extent it
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`is properly incorporated by reference or is available as an obviousness argument)
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`or DeLorme’s disclosures identify a motivation to design Mault’s system so as to
`
`require the installation, setup, or configuration of the activity monitor. See Ex.
`
`2002 at ¶ 58. Moreover, nothing in these disclosures identify a motivation to
`
`17
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`Patent Owner’s Response
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`design Mault’s system so as to require steps in installation, setup, or configuration
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`that creates a new journal. Contrary to Petitioner and Dr. Paradiso’s arguments, a
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`person of ordinary skill in the art would see no advantage to including in Mault’s
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`system, software which the user must interact to create a new journal. Id.
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`For these reasons, Petitioner has not demonstrated that the combination of
`
`Mault and DeLorme would render independent claims 1 and 20 obvious.
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`Accordingly, instituted claims 1-3, 6-11, 15-17, and 20 are patentable over the
`
`combination of Mault and DeLorme. See Ex. 2002 at ¶ 59.
`
`3.
`
`Petitioner has not demonstrated that Mault in view of
`DeLorme renders obvious the claim limitations “software to
`format the journal entries to a common file format” or
`“formatting the journal entry to a common file format.”
`
`In the Institution Decision, the Board found that Petitioner had demonstrated
`
`a sufficient rationale for adapting Mault to format its data to a common file format.
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`In particular, the Board gave weight to Petitioner’s suggestion that “it would have
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`been obvious to a person of ordinary skill in the art to adapt Mault to format data to
`
`a common file format either for simple uploading via HTML or for use by
`
`common programs.” Paper 9 at 12. Patent
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