Trials@uspto.gov
`571-272-7822
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`Paper 9
`Date: March 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`Case IPR2015-01891
`Patent 8,725,276 B2
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`
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`
`
`
`
`Paper 9
`Date: March 18, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNDER ARMOUR, INC.,
`Petitioner,
`
`v.
`
`ADIDAS AG,
`Patent Owner.
`
`
`
`Case IPR2015-01891
`Patent 8,725,276 B2
`
`
`
`
`Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
`JUSTIN BUSCH, Administrative Patent Judges.
`
`FITZPATRICK, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-01891
`Patent 8,725,276 B2
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`
`I.
`
`INTRODUCTION
`
`Petitioner, Under Armour, Inc., filed a Petition to institute an inter
`partes review of claims 1, 3, 6–10, 15–19, and 21–23 of U.S. Patent No.
`8,725,276 B2 (Ex. 1001, “the ’276 patent”) pursuant to 35 U.S.C. § 311(a).
`Paper 1 (“Pet.”). Patent Owner, adidas AG, responded by filing a statutory
`disclaimer of claims 1, 3, 6, and 7 pursuant to 35 U.S.C. § 235(a) and
`37 C.F.R. § 1.321(a) (Ex. 2001) and a Preliminary Response pursuant to
`35 U.S.C. § 313. Paper 6 (“Prelim. Resp.”).
`“No inter partes review will be instituted based on disclaimed
`claims.” 37 C.F.R. § 42.107(e). Thus, only claims 8–10, 15–19, and 21–23
`remain for our consideration.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The information presented
`in the Petition and the Preliminary Response shows that there is a reasonable
`likelihood that Petitioner would prevail with respect to at least one
`challenged claim. See 35 U.S.C. § 314(a). For the reasons explained below,
`we institute an inter partes review on claims 9, 10, and 15 but not on claims
`8, 16–19, and 21–23.
`
`A. Related Matters
`
`Patent Owner has asserted the ’276 patent along with additional
`patents against Petitioner in adidas AG, et. al. v. Under Armour, Inc. and
`MapMyFitness, Inc., Case No. 14-130-GMS (D. Del.). Pet. 1; Paper 5, 1.
`Petitioner has filed petitions to institute inter partes reviews of five related
`patents and three additional patents asserted in the Delaware lawsuit. See
`Pet. 1 (citing Cases IPR2015-00694, -00695, -00696, -00697, -00698,
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`-00700, -01528, and -01532); Paper 5, 1 (same). Patent Owner notes that
`Petitioner previously filed a petition for an inter partes review of the ’276
`patent, but that petition was dismissed prior to an institution decision based
`on Petitioner’s unopposed motion. Paper 5, 1 (citing Case IPR2015-01531).
`
`B. The ’276 Patent
`
`The specification of the ’276 patent is extensive. It describes a system
`of individual portable personal devices such as mobile phones, personal
`digital assistants (PDAs), medical monitoring devices, personal
`entertainment systems, and athletic monitoring systems, used in conjunction
`with a wireless personal network to provide flexibility in features,
`capabilities, and extensibility. Ex. 1001, 1:27–52, 3:30–4:26. Figure 100 of
`the ’276 patent is reproduced below.
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`Figure 100 is an overview of a “modular personal network (MPN)”
`that “allows multiple individual network components (INCs), each with one
`or more primary functions, to be used in a wireless personal network, and
`that INCs may be added and removed modularly to add or remove functions
`of the MPN.” Id. at 15:34, 3:32–38. The INCs “may be worn, carried,
`mounted on personal equipment, or otherwise used in proximity to the
`person associated with the MPN.” Id. at 3:40–42. The MPN is associated
`with user 1 and “[e]ach INC may include a wireless transceiver for
`communicating with other INCs in the MPN.” Id. at 15:40–45.
`Relevant to the challenged claims, the ’276 patent generally describes
`methods of monitoring the athletic performance of an individual. Ex. 1001,
`1 (Abstract).
`The methods may include receiving position data relating to
`geographical positions of the individual during an athletic
`activity with a global positioning satellite receiver, receiving
`performance data about the individual during the athletic activity
`with a performance monitor that is physically separate from the
`global positioning satellite
`receiver, displaying athletic
`performance information during the athletic activity based on the
`performance data received by the performance monitor, and
`correlating the performance data received by the performance
`monitor with the position data received by the global positioning
`satellite receiver.
`
`Id.
`
`C. The Challenged Claims
`
`The Petition challenges claims 1, 3, 6–10, 15–19, and 21–23. Pet. 2.
`Taking into account the statutory disclaimer of claims 1, 3, 6, and 7
`(Ex. 2001), however, only claims 8–10, 15–19, and 21–23 remain for our
`consideration. Independent claim 1, although disclaimed, is illustrative of
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`A method for monitoring an athletic activity,
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`Patent 8,725,276 B2
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`the claimed subject matter, as is independent claim 10. Claims 1 and 10 are
`reproduced below.
`1.
`comprising:
`receiving position data relating to the geographical
`positions of an individual during the athletic activity with a
`global positioning satellite receiver;
`receiving performance data about the individual during
`the athletic activity with a performance monitor that is
`physically separate from the global positioning satellite
`receiver;
`displaying athletic performance information with a
`display screen during the athletic activity based on the
`performance data received by the performance monitor; and
`correlating the performance data received by the
`performance monitor with the position data received by the
`global positioning satellite receiver with at least one processor.
`
`10. A method for monitoring athletic performance,
`comprising:
`receiving with a global positioning satellite receiver
`position data relating to a position of an individual during an
`athletic performance; and
`controlling with at least one processor playback of
`content provided to the individual based at least on the position
`data when the position data indicates that the individual has
`fallen outside of a predetermined performance zone having
`upper and lower limits for a performance characteristic.
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`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability:
`References
`Basis
`Claims Challenged
`Satava (Ex. 1004)1
`§ 102(a)2
`8, 9, 16–19, 21–23
`Satava
`§ 103(a)
`16–19, 21–23
`Satava and eTrex (Ex. 1005)3
`§ 103(a)
`9, 22
`Stubbs (Ex. 1006)4
`§ 102(e)
`10, 15
`Gardner (Ex. 1007)5
`§ 102(e)
`10, 15
`
`Pet. 8–10.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`“A claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.”
`37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should
`be read in light of the specification, as it would be interpreted by one of
`ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
`
`
`1 R. Satava, et. al., The Physiologic Cipher at Altitude: Telemedicine and
`Real-Time Monitoring of Climbers on Mount Everest, Telemedicine Journal
`and e-Health, Vol. 6, No. 3 (2000).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, took
`effect on March 18, 2013. Because the application from which the ’276
`patent issued was filed before that date, our citations to 35 U.S.C. §§ 102,
`103, and 112 are to their pre-AIA versions.
`3 eTrex Summit Personal Navigator, Owner’s Manual and Reference Guide,
`GARMIN Corporation (Feb. 2001).
`4 U.S. Patent No. 6,736,759 B1, filed Nov. 9, 1999 and issued May 18, 2004.
`5 U.S. Patent No. 7,454,002 B1, filed Jan. 8, 2001 and issued Nov. 18, 2008.
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`(Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and
`customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
`the term would have to a person of ordinary skill in the art in question.”)
`(internal quotation marks omitted).
`Petitioner proposes express constructions for two terms. Pet. 11–14.
`Patent Owner proposes express constructions for two additional terms. We
`address each proposal below.
`
`1. “position data”
`
`Each of independent claims 1, 10, and 16 recites “position data.”
`Petitioner proposes that this term be construed as “data relating to
`geographic position.” Pet. 11. Petitioner’s proposed construction is not
`unreasonable, but it is unwarranted. The plain and ordinary meaning of the
`term is readily apparent in light of the surrounding claim language and
`specification. For example, claim 1 recites “receiving position data relating
`to the geographical positions of an individual during the athletic activity
`with a global positioning satellite receiver.” See also Ex. 1001, 1 (Abstract)
`(similar recitation).
`
`2. “during”
`
`Claims 1 and 3 recite “during the athletic activity,” claim 10 recites
`“during an athletic performance,” and claim 16 recites “during [the] traversal
`of the route.” Petitioner proposes, with respect to each of these phrases, that
`“during” means while the recited activity (e.g., athletic performance) is
`occurring. Pet. 13–14. Again, Petitioner’s proposed construction is not
`unreasonable, but it is unwarranted. The plain and ordinary meaning of
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`“during” is readily apparent on its face. Its meaning is also evidenced by the
`surrounding claim language. For example, independent claims 1 and 10 are
`directed to “method[s] for monitoring” athletic activity/performance, as
`opposed to methods for reviewing such activity after the fact. Also, the
`specification differentiates between “during” and “after.” Ex. 1001 11:9–12
`(“Our invention may be configured to monitor the form of the athlete, such
`as an athlete’s running, walking, swimming, bicycling, or rowing form, and
`provide feedback, either during a training session or afterwards.”).
`
`3. “information based on athlete position data”
`
`Claims 8 and 9 recite “displaying . . . information based on athlete
`position data.” Patent Owner proposes that such information be construed to
`mean “information that is derived from or calculated using the position
`data.” Prelim. Resp. 9. In arguing patentability of claims 8 and 9, Patent
`Owner ultimately clarifies that its construction would exclude “athlete
`position data.” Prelim. Resp. 17–23. To support its construction, Patent
`Owner relies on specification excerpts that describe “secondary data”
`derived from collected primary data. Id. at 10 (citing Ex. 1001, 2:64–67,
`10:46–53). But, claims 8 and 9 do not recite “secondary data” or otherwise
`employ language to exclude athlete position data. And elsewhere, the
`specification describes displaying speed in conjunction with (and not in lieu
`of) position. See, e.g., Ex. 1001, 17:10–14 (“The MPN may support
`guidance functions 40, such as showing current position, speed, and
`elevation, providing route guidance, collecting and annotating position and
`speed data, and recommending an athletic training route.”).
`
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`We do not adopt Patent Owner’s proposed construction. The term
`“information based on athlete position data” is inclusive of athlete position
`data.
`
`4. “route”
`
`Independent claim 16, which is reproduced below with emphasis
`added, recites “route” numerous times.
`16. A method of displaying athletic performance
`information, comprising:
`receiving data relating to a route;
`receiving with a position monitor position data relating to
`a position of an individual during traversal of the route by the
`individual;
`receiving with a performance monitor performance data
`about the individual during the traversal of the route;
`correlating the performance data with the position data
`with at least one processor; and
`simultaneously displaying the position data and the
`performance data over a graphical representation of the route
`data during the traversal of the route with a display screen.
`
`Patent Owner proposes that “route” be construed as a “predetermined
`collection of waypoints.” Prelim. Resp. 11. Patent Owner’s supporting
`arguments, which focus exclusively on the “predetermined” aspect of its
`proposed construction, are based on the surrounding claim language. For
`example, Patent Owner notes that claim 16 recites “displaying the position
`data . . . over a graphical representation of the route data during the traversal
`of the route with a display screen.” Prelim. Resp. 11. Patent Owner argues
`that this limitation requires predetermined route data over which the position
`data can be displayed. Id. at 12. We agree.
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`If, by contrast, “data relating to a route” meant the position data of
`whatever path the individual happened to traverse, the first step of claim 16,
`i.e., “receiving data relating to a route,” would be superfluous of the second
`step, i.e., “receiving with a position monitor position data relating to a
`position of an individual during traversal of the route by the individual.”
`Such a result is disfavored. See, e.g., Merck & Co. v. Teva Pharm. USA,
`Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives
`meaning to all the terms of the claim is preferred over one that does not do
`so.”); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106,
`1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the
`claim language meaningless held improper).
`We agree with Patent Owner that, within the meaning of the
`challenged claims, “route” must be predetermined and not merely whatever
`path the individual happens to traverse. Patent Owner, however, does not
`address the remainder of its proposed construction: “collection of
`waypoints.” Accordingly, we see no reason to adopt that portion of the
`proposed construction. Instead, we construe “route” to mean
`“predetermined route.”
`
`B. Anticipation by Satava
`
`Petitioner asserts that claims 8, 9, 16–19, and 21–23 were anticipated
`by Satava under 35 U.S.C. § 102(a). Pet. 8–10.
`Satava discusses the monitoring of three climbers wearing vital-signs
`monitoring systems while climbing through the Khumbu Icefall on Mount
`Everest. Ex. 1004, 4 (Abstract). The climbers used a system called “the
`vital-signs monitoring (VSM) system of Fitsense, Inc.,” which included:
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`(1) “[n]on-invasive physiologic sensors to measure vital and physical signs”;
`(2) “[a]ccurate position tracking using the Global Positioning Satellite (GPS)
`system”; and (3) “[w]earable, wireless communication system with radio
`frequency (RF) transmission.” Id. at 6. Data from the VSM systems was
`transmitted to a laptop at Everest Base Camp (EBC) and then retransmitted
`to Yale University over the Internet. Id. at 4 (Abstract), 7. Figure 4 of
`Satava is reproduced below.
`
`
`Figure 4, above, shows the interface for viewing the data sent from the
`climbers’ VSM systems. Id. at 7. “On the left is the terrain map of Mount
`Everest with the overlay of the climbers’ position, and on the right are the
`individual climber's vital signs.” Id. at 5. “The inset in the lower left corner
`is a reference graphic representation of the vertical ascent usually taken to
`the summit with the numbers representing the locations of the four camps.”
`Id. at 10. “During the daily morning telemedicine conference between Yale
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`University and EBC on the day of the trek to Camp 1, vital signs[6] were
`retransmitted to Yale University in real time from the climbers, allowing
`physicians at Yale University to follow vital signs and location while the
`climbers were ascending through the icefall.” Id. at 8–9.
`Petitioner maps the limitations of the challenged claims (claims 8, 9,
`16–19, and 21–23) to the disclosure of Satava. Pet. 14–39. However,
`Petitioner does not demonstrate a reasonable likelihood of prevailing with
`respect to any of the claims.
`Independent claim 1, from which challenged claims 8 and 9 depend,
`recites “displaying athletic performance information with a display screen
`during the athletic activity based on the performance data received by the
`performance monitor.” To meet that limitation, the Petition relies on Satava
`as stating: “During the daily morning telemedicine conference between
`Yale University and EBC on the day of the trek to Camp 1, vital signs were
`retransmitted to Yale University in real time from the climbers, allowing
`physicians at Yale University to follow vital signs and location while the
`climbers were ascending through the icefall.” Pet. 16 (quoting Ex. 1004,
`8–9) (Petitioner’s emphasis). Patent Owner attempts to characterize this
`disclosure by focusing on the word “retransmitted,” implying that
`retransmission cannot occur during climbing. Prelim. Resp. 14–17. There is
`no basis for such an implication, and it is at odds with the additional
`
`
`6 “Vital signs” is sometimes used by Satava to refer not just to vital signs in
`a pure medical context but also to the collected position data. For example,
`the display in Figure 4 is titled “Vital Signs Monitor” even though it
`includes data beyond mere vital signs, such as a terrain map and position of
`the climbers. Ex. 1004, 8 (Fig. 4).
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`disclosure that the retransmission allows the physicians to follow vital signs
`and location while the climbers are ascending.
`Claim 8 recites “[t]he method of claim 1, further comprising
`displaying the athletic performance information with information based on
`the athlete position data on a map.” Petitioner asserts, but fails to persuade
`us, that this limitation is disclosed in Figure 4 of Satava. Figure 4 shows
`heart rate and body temperature (the asserted athlete position data) next to a
`map, not on a map. Ex. 1004, 8 (Fig. 4). Indeed, Petitioner quotes Satava as
`stating: “On the left is the terrain map of Mount Everest with the overlay
`of the climbers’ position, and on the right are the individual climber’s
`vital signs.” Pet. 25 (quoting Ex. 1004, 8.) Yet, Petitioner does not explain
`how such an arrangement could meet the “on a map” requirement of claim 8.
`See 37 C.F.R. § 42.104(b) (Petition must show how challenged claim is
`unpatentable including where each limitation is met).
`Claim 9 is identical to claim 8 except that it requires displaying of the
`data “on an elevation profile” as opposed to a map. Petitioner, relying on
`testimony from Ted Selker, Ph.D., asserts that “the terrain map [in Figure 4
`of Satava] is a type of elevation profile, which thereby also shows the
`approximate general relative ascents of each route.” Pet. 26 (citing Ex. 1003
`¶¶ 67–68). We are not persuaded. Dr. Selker’s opinion is based solely on
`his speculation that “others skilled in the art would agree” and that the
`terrain map “shows the general and approximate relative ascents of each
`route.” Ex. 1003 ¶ 68. His first point carries no weight because it is not
`supported by any cited evidence. His second point does not address
`elevation. In any event, as discussed above with respect to claim 8, the
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`athlete position data is not displayed on the terrain map; it is displayed next
`to it.
`
`Independent claim 16 recites “receiving data relating to a route.”
`Petitioner asserts that this limitation is met by both the terrain map and by
`the lower-left hand inset “[reference] graphic representation of the vertical
`ascent usually taken to the summit.” Pet. 27 (quoting Ex. 1004, 10). First,
`with respect to the terrain map, it does not include “data relating to a route,”
`as no predetermined route is depicted on the map. See Ex. 1004, 8 (Fig. 4).
`Second, with respect to the inset “reference graphic representation,” neither
`the asserted athlete position data nor performance data is displayed over it.
`Claim 16, however, requires “simultaneously displaying the position data
`and the performance data over a graphical representation of the route data.”
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`in showing that claims 8, 9, and 16 were anticipated by Satava. The same is
`true for claims 17–19 and 21–23, which depend from claim 16. See 35
`U.S.C. § 112 ¶ 4 (“A claim in dependent form shall be construed to
`incorporate by reference all the limitations of the claim to which it refers.”).
`
`C. Obviousness in View of Satava
`
`Petitioner asserts that claims 16–19 and 21–23 would have been
`obvious in view of Satava. Pet. 8–10. But, its obviousness challenge does
`not address the deficiency in its anticipation challenge of claim 16, which is
`that Satava does not disclose “receiving data relating to a route” and
`“simultaneously displaying the position data and the performance data over
`a graphical representation of the route data.” Rather, Petitioner’s
`obviousness challenge asserts that it would have been obvious to modify
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`Satava to “display[] the heart rate data either (1) on top of / overlaying the
`map data or (2) directly above the map data toward the top of the screen.”
`Pet. 39. As discussed above, the only possible predetermine route data in
`Satava is shown in the inset “reference graphic representation of the vertical
`ascent usually taken to the summit,” not in the terrain map.
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`in showing that claim 16, or claims 17–19 and 21–23, which depend from
`claim 16, would have been obvious over Satava. See In re Fine, 837 F.2d
`1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under
`section 103 if the independent claims from which they depend are
`nonobvious.”).
`
`D. Obviousness in View of Satava and eTrex
`
`Petitioner asserts that claims 9 and 22 would have been obvious over
`Satava and eTrex. Pet. 8–10.
`eTrex is an owner’s manual and guide for the eTrex Summit Personal
`Navigator by Garmin Corporation. Ex. 1005, 1.
`The eTrex Summit is [a] six ounce[,] 12 channel[,]
`hand held GPS receiver. . . . The eTrex Summit
`contains a full function GPS[,] electronic compass
`and barometric altimeter. The eTrex Summit will
`track barometric pressure and altitude changes
`providing data never before available in such a
`small package. Using the built in compass the
`eTrex Summit will provide you with reliable
`heading even while standing still. When moving
`the eTrex Summit will provide you with other data
`including speed[,] direction of movement[,] time[,]
`distance to destination[,] and more.
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`Pet. 41–42 (quoting Ex. 1005, 7). Notably, eTrex discloses providing an
`elevation profile. Ex. 1005, 16 (“The Elevation Page [of the Summit device]
`will provide the user with the current elevation, rate of ascent/descent, and a
`profile of elevation changes over distance or time.”).
`Claims 9 and 22 depend from claims 1 and 16, respectively, and
`include additional limitations directed to an elevation profile. Petitioner
`argues that “to the extent it is found that Satava does not disclose all the
`limitations of dependent claims 9 and 22 (specifically, the ‘elevation profile’
`limitations), such limitations would have been obvious to one of ordinary
`skill in the art over Satava in view of the Garmin eTrex Summit reference.”
`Pet. 41.
`With respect to claim 9, Patent Owner argues that Petitioner has not
`shown a reason that a person of ordinary skill in the art would have
`combined the relied-upon teachings. Prelim. Resp. 36–38. We are satisfied,
`however, with Petitioner’s stated reason that it “would have been obvious to
`combine eTrex Summit’s feature of displaying an elevation profile (along
`with certain information such as position and performance information),
`with Satava’s system that discloses displaying performance and position
`information along with map displays, such that Satava’s displays (like the
`one in Figure 4 of Satava) would include an elevation profile like the one
`disclosed by eTrex Summit.” Pet. 44.
`With respect to claim 22, Petitioner does not address the subject
`matter as a whole, which includes the limitations of base claim 16. More
`specifically, Petitioner does not show how the prior art meets “receiving data
`relating to a route” and “simultaneously displaying the position data and the
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`performance data over a graphical representation of the route data,” as
`recited in claim 16.
`Petitioner has demonstrated a reasonable likelihood of prevailing in
`showing that claim 9, but not claim 22, would have been obvious over
`Satava and eTrex.
`
`E. Anticipation by Stubbs
`
`Petitioner asserts that claims 10 and 15 were anticipated by Stubbs
`under 35 U.S.C. § 102(e). Pet. 8–10.
`Stubbs discloses “[a]n exercise monitoring system which includes an
`electronic positioning device; a physiological monitor; and a display unit
`configured for displaying data provided by the electronic positioning device
`and the physiological monitor.” Ex. 1006, 1 (Abstract). The system “may
`also include one or more alarms 79 which provide an audible and/or visible
`indication to the subject or other individual monitoring the subject’s
`performance. Data display component 7 may be programmed such that an
`alarm 79 will be activated if a data value departs from a predetermined limit
`or range. For example, the monitoring system of the present invention may
`be programmed such that an alarm 79 will be activated if the subject’s
`velocity, pace, distance traveled, blood oxygen level or heart rate is outside a
`predetermined range.” Ex. 1006, 16:39–48.
`Patent Owner argues that activation of the Stubbs alarm does not
`constitute “playback of content” as recited in claim 10. Patent Owner notes
`that the ’276 patent describes exemplary content consisting of “music” and
`“visual or audio prompts” and concludes that “Petitioner has in no way
`identified how a mere tone or a beep constitutes playback of audio content.”
`
`17
`
`
`
`IPR2015-01891
`Patent 8,725,276 B2
`
`Prelim. Resp. 42–43. The plain and ordinary meaning of content includes a
`tone and beep. Indeed, Patent Owner even points to “audio prompts” as
`exemplary content, and both a tone and a beep are audio prompts.
`Claim 15 depends from claim 10 and recites that “the content
`comprises one of audio and visual content.” Stubbs discloses playback of
`audio content. Ex. 1006, 16:39–48.
`Petitioner has demonstrated a reasonable likelihood of prevailing in
`showing that claims 10 and 15 were anticipated by Stubbs.
`
`F. Anticipation by Gardner
`
`Petitioner asserts that claims 10 and 15 were anticipated by Gardner
`under 35 U.S.C. § 102(e). Pet. 8–10.
`Gardner discloses personal data capture device 10 that “may be used
`by a person engaged in fitness activity.” Ex. 1007, 3:61–67. In one
`embodiment, the “personal data capturing functionality is provided by
`incorporating components of the personal data capture device into a device
`150 which may be a wireless communication device.” Id. at 8:12–17.
`“[T]he device 150 may include a GPS signal receiver 230” and “further
`includes a microprocessor 110 which is coupled to a memory 116 and a
`software program 282.” Id. at 8:18–19, 8:29–31. “In one embodiment, the
`personal data capture device 102 may include an electronic beeper 270 for
`providing audio signals related to the personal data. For example, the
`electronic beeper 270 can be set to signal low and high heart rate target
`limits, low and high pace limits, low and high weight limits, etc.” Id. at
`6:57–62. Petitioner relies on the pace (i.e., velocity) example. Pet. 58–59.
`
`18
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`IPR2015-01891
`Patent 8,725,276 B2
`
`Patent Owner argues that Gardner does not teach activation of its
`electronic beeper “when the position data indicates that the individual has
`fallen outside of a predetermined performance zone” because, in Gardner,
`pace is not necessarily determined from position data.7 Patent Owner is
`correct. Gardner discloses a motion sensor 250, which can be used to obtain
`pace. Ex. 1007, 8:17–19. Thus, Petitioner has not shown that Gardner
`teaches, as claim 10 requires, “receiving with a global positioning satellite
`receiver position data” and “controlling with at least one processor playback
`of content provided to the individual based at least on the position data when
`the position data indicates that the individual has fallen outside of a
`predetermined performance zone.”
`Petitioner has not demonstrated a reasonable likelihood of prevailing
`in showing that claims 10 and 15 were anticipated by Gardner.
`
`III. CONCLUSION
`
`We have considered the information presented in the Petition and
`Preliminary Response and determine that there is a reasonable likelihood
`that Petitioner would prevail with respect to claims 9, 10, and 15 but not
`with respect to claims 8, 16–19, and 21–23. See 35 U.S.C. § 314(a); 37
`C.F.R. § 42.108.
`
`
`7 Patent Owner additionally argues that the electronic beeping is not
`playback of content. We disagree for the same reason we disagreed that
`activation of Stubbs’s alarm is not playback of content.
`
`19
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`IPR2015-01891
`Patent 8,725,276 B2
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`of U.S. Patent No. 8,725,276 B2 is hereby instituted on the following
`grounds:
`
`claim 9 as obvious over Satava and eTrex; and
`claims 10 and 15 as anticipated by Stubbs;
`FURTHER ORDERED that no other ground of unpatentability
`alleged in the Petition for any claim is authorized for this inter partes
`review; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`commences on the entry date of this decision.
`
`20
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`
`
`IPR2015-01891
`Patent 8,725,276 B2
`
`Petitioner:
`Brian Ferguson
`Anish Desai
`WEIL, GOTSHAL & MANGES LLP
`brian.ferguson@weil.com
`anish.desai@weil.com
`
`Patent Owner:
`
`Mitchell G. Stockwell
`Wab P. Kadaba
`KILPATRICK TOWNSEND & STOCKTON LLP
`mstockwell@kilpatricktownsend.com
`wkadaba@kilpatricktownsend.com
`
`
`
`
`
`21
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