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` Paper 22
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` Date: July 19, 2017
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BODYMEDIA, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00545
`Patent 8,073,707 B2
`____________
`
`Before TREVOR M. JEFFERSON, MICHAEL J. FITZPATRICK, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
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`Patent 8,073,707 B2
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`I.
`
`INTRODUCTION
`
`Petitioner, Fitbit, Inc., filed a Petition to institute an inter partes
`review of claims 1–24 of U.S. Patent No. 8,073,707 B2 (Ex. 1001, “the ’707
`patent”) pursuant to 35 U.S.C. § 311(a). Paper 1 (“Pet.”). With our
`authorization to do so, Patent Owner, BodyMedia, Inc., filed a corrected
`Preliminary Response pursuant to 35 U.S.C. § 313. Paper 7 (“Prelim.
`Resp.”). In an August 8, 2016, Decision, we granted the Petition. Paper 8
`(“Inst. Dec.”).
`Patent Owner filed a Patent Owner Response (Paper 12, “PO Resp.”)
`to which Petitioner filed a Reply (Paper 18, “Reply”). Neither party
`requested a hearing for oral arguments, and none was held.
`As discussed below, claims 1–18 and 20–22 are no longer at issue
`because they have been held unpatentable in a decision in a separate
`proceeding that is now final, and Petitioner has shown by a preponderance of
`the evidence that the remaining claims of the ’707 patent—claims 19, 23,
`and 24—are unpatentable.
`
`A. Related Matters
`
`The ’707 patent previously was subjected to an inter partes
`reexamination bearing Control No. 95/002,376 (“the ’376 reexamination”),
`during which claims 1–18 and 20–22 were finally rejected as anticipated by
`Amano ’342 (Ex. 1004).1 A decision by the Board affirmed the final
`rejection. See Basis Science, Inc. v. Bodymedia, Inc., Reexamination
`
`
`1 U.S. Patent No. 6,030,342, filed (under 35 U.S.C. § 371) Feb. 9, 1998,
`issued Feb. 29, 2000.
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`Control No. 95/002,376 (PTAB Mar. 27, 2015). Claims 19, 23, and 24 were
`not subject to the ’376 reexamination. See id. Patent Owner appealed the
`Board’s decision to the Federal Circuit, which summarily affirmed. See
`Bodymedia, Inc. v. Basis Science, Inc., No. 2015-1788 (Fed. Cir. July 12,
`2016) (nonprecedential). The Federal Circuit’s judgment is now final.
`The parties identify the additional following matters involving the
`’707 patent: (1) AliphCom d/b/a Jawbone and BodyMedia, Inc. v. Fitbit,
`Inc., 3:15-cv-02579 (N.D. Cal.); and (2) Certain Activity Tracking Devices,
`Systems, and Components Thereof, 337-TA-963 (ITC). Pet. 3–4; Paper 5, 1.
`
`B. The ’707 Patent
`
`The ’707 patent relates to “a system for monitoring health, wellness
`and fitness.” Ex. 1001, 1:15–18. In particular, it relates “to a system for
`collecting[, using a sensor device,] and storing at a remote site data relating
`to an individual’s physiological state, lifestyle, and various contextual
`parameters, and making such data and analytical information based on such
`data available to the individual, preferably over an electronic network.” Id.
`at 1:18–23.
`Figure 1 of the ’707 patent is reproduced below.
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`Figure 1 shows “a system for monitoring physiological data and lifestyle
`over an electronic network according to the present [and challenged]
`invention.” Id. at 3:51–54. The system includes sensor device 10, which “is
`preferably worn by an individual user on his or her body.” Id. at 4:37–38.
`The sensor device generates data indicative of various physiological
`parameters of the individual, such as the individual’s heart rate, pulse rate,
`ECG, respiration rate, skin temperature, core body temperature, etc. Id. at
`4:47–55. Data indicative of these physiological parameters either can be
`signals directly from the sensors or data calculated by a microprocessor
`based on such signals. Id. at 4:55–60. The “[m]ethods for generating data
`indicative of various physiological parameters and sensors to be used
`therefor are well known.” Id. at 4:60–62.
`
`C. The Challenged Claims
`
`The patentability of only claims 19, 23, and 24 remains in dispute.
`See Basis Science, Inc. v. Bodymedia, Inc., Reexamination Control No.
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`95/002,376 (PTAB Mar. 27, 2015) (affirming final rejection of claims 1–18
`and 20–22), aff’d Bodymedia, Inc. v. Basis Science, Inc., No. 2015-1788
`(Fed. Cir. July 12, 2016); see also PO Resp. 8–12 (arguing the patentability
`of only claims 19, 23, and 24 on Ground 1), 12–22 (arguing the patentability
`of only claims 1, 19, 23, and 24 on Ground 2).2 Claims 19, 23, and 24
`depend from claim 1. Claims 1, 19, 23, and 24 are reproduced below.
`
`
`A system for detecting, monitoring, and reporting
`1.
`a status of an individual to a user, the system comprising:
`a first sensor adapted to generate data indicative of a first
`physiological parameter of the individual if said first sensor is
`in proximity to the individual;
`a second sensor adapted to generate data indicative of a
`second physiological parameter of the individual if said second
`sensor is in proximity to the individual;
`a processing unit in electronic communication with said
`first sensor and said second sensor;
`a central monitoring unit in electronic communication
`with at least one of said sensors and said processing unit; and
`an output device in electronic communication with at
`least one of said processing unit and said central monitoring
`unit, wherein at least one of said processing unit and said
`central monitoring unit is programmed
`
`
`2 Although Patent Owner argues that claim 1 is patentable, it does not
`include any arguments specific to claim 1. PO Resp. 12–22. The only
`claim-specific arguments it presents are for claims 19, 23, and 24. Id. at 14–
`19.
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`(a) to generate at least one of a derived physiological
`status parameter of the individual and a derived parameter
`related to an activity in which the individual has engaged said
`derived parameters based on both of said data indicative of said
`first physiological parameter of the individual and said data
`indicative of said second physiological parameter of the
`individual, and
`(b) to cause said output device to present to a user
`indicators of at least one of said derived parameters of the
`individual in relation to indicators of at least one of (i) said data
`indicative of said first physiological parameter of the
`individual, and (ii) said data indicative of said second
`physiological parameter of the individual.
`
`19. The system of claim 1 wherein said indicators
`presented to a user by the output device are tactile for at least
`one of (a) at least one of said derived parameters of the
`individual, (b) said data indicative of said first physiological
`parameter of the individual, and (c) said data indicative of said
`second physiological parameter of the individual.
`
`23. The system of claim 1 wherein at least one of said
`indicators are compared to a baseline parameter of the
`individual.
`
`24. The system of claim 1 wherein at least one of said
`central monitoring unit and said processing unit is programmed
`to provide suggestions, said suggestions being based on said
`relation of said indicators of at least one of said derived
`parameters of the individual to said indicators of at least one of
`said data indicative of said first physiological parameter of the
`individual and said data indicative of said second physiological
`parameter of the individual.
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`D. Grounds of Asserted Unpatentability
`
`We instituted trial on the following asserted grounds of
`unpatentability:
`References
`Amano ’342 (Ex. 1004)4
`
`Amano ’837 (Ex. 1006)5 and
`Goodman (Ex. 1007)6
`
`Basis3
`§ 102(a), (e)
`
`Claims Challenged
`1, 19, 23, and 24
`
`§ 103(a)
`
`1–24
`
`Inst. Dec. 18. Taking into consideration, however, that claims 1–18 and 20–
`22 already have been held unpatentable in a final judgment, the narrowed
`grounds of unpatentability before us are as follows:
` References
`Basis
`Amano ’342
`§ 102(a), (e)
`Amano ’837 and Goodman § 103(a)
`
`Claims Challenged
`19, 23, and 24
`19, 23, and 24
`
`
`
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`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284 (September 16, 2011), took effect on March 18, 2013.
`Because the application from which the ’707 patent issued was filed before
`that date, our citations to 35 U.S.C. §§ 102 and 103 are to their pre-AIA
`version.
`4 U.S. Patent No. 6,030,342, filed (under 35 U.S.C. § 371) Feb. 9, 1998,
`issued Feb. 29, 2000.
`5 U.S. Patent No. 5,941,837, filed (under 35 U.S.C. § 371) Oct. 14, 1997,
`issued August 24, 1999.
`6 U.S. Patent No. 6,616,613 B1, filed Apr. 27, 2000, issued Sept. 9, 2003.
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`II. ANALYSIS
`
`A. Claim Construction
`
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued 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 (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). Any special definition for a claim term must be set forth with
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Neither party proposes an express construction for any limitation of
`claim 19, 23, or 24. See Pet. 12–13 (proffering express construction for only
`“life activities data” (claims 5, 6, and 10)); PO Resp. 7–8 (likewise
`proffering express construction for only “life activities data”). We do not
`adopt an express construction for any claim limitation.
`
`B. Anticipation by Amano ’342
`
`A panel of this Board affirmed a finding, during the ’376
`reexamination, that Amano ’342 anticipates claim 1. See Basis Science,
`Reexamination Control No. 95/002,376, at 2 (PTAB Mar. 27, 2015). The
`panel’s decision was affirmed in a judgment by the Federal Circuit, which is
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`now final. See Bodymedia, No. 2015-1788 (Fed. Cir. July 12, 2016).
`Nevertheless, to obtain a holding in this inter partes review that
`claims 19, 23, and 24 are anticipated by Amano ’342, Petitioner must prove
`by a preponderance of the evidence that Amano ’342 discloses all of the
`limitations of claims 19, 23, and 24. See 35 U.S.C. § 316(e). By statute, all
`of the limitations recited in claim 1 are incorporated into claims 19, 23, and
`24. See 35 U.S.C. § 112, ¶4 (now codified as 35 U.S.C. § 112(d)) (“A claim
`in dependent form shall be construed to incorporate by reference all the
`limitations of the claim to which it refers.”). Accordingly, this Decision will
`address the limitations recited by claim 1, as well as those recited by claims
`19, 23, and 24.
`
`1. Summary of Amano ’342
`
`Amano ’342 discloses a device, such as a wristwatch, that has a sensor
`that detects body motion from which it can generate data indicative of
`whether an individual is in a state of rest or activity exercise, a sensor that
`measures the skin temperature around the radial artery from which it can
`generate data indicative of the individual’s deep body temperature, and a
`sensor that measures the pulse pressure around the individual’s radial artery
`from which it can generate data indicative of the individual’s pulse rate.
`Ex. 1004, 6:57–7:7, 11:6–13, 12:41–42, 12:66–13:18.
`Figures 3a and 3b are reproduced below.
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`Figures 3a and 3b respectively show bottom and top views of wristwatch
`embodiment 300 disclosed by Amano ’342. The wristwatch includes
`pressure sensors Ps1–Ps6 and temperature sensors Ts1–Ts6. Id. at 13:33–
`34.
`
`A processing unit, CPU 201, within the wristwatch derives
`physiological parameters, such as calorie expenditure, from sensor data. Id.
`at 12:21–30. For example, Amano ’342 describes the calculation of calorie
`expenditure using data collected from both pressure and body motion
`sensors. Id. at 18:6–52. The wristwatch can transmit the individual’s
`derived calorie expenditure data and/or physiological data to an “external
`device main body,” which is described as a personal computer, for storage
`and further analysis. Id. at 21:52–23:12. The face of the wristwatch
`includes display 205, which can present indicators of derived physiological
`status data, such as the individual’s calorie expenditure over time. Id. at
`19:27–33; see also id. at Fig. 19 (exemplary diagram of the display). The
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`wristwatch can likewise present to the individual indicators of his
`physiological data used to determine the calorie expenditure, such as his
`pulse rate and deep body temperature over time. Id. at 23:66–24:14, 27:56–
`67, 26:45–27:12, Figs. 19, 37, 40.
`
`2. Analysis of Anticipation Challenge
`
`Petitioner presents a detailed analysis in its Petition of how Amano
`’342 discloses all of the limitations of claims 19, 23, and 24. See Pet. 17–23
`(showing the limitations recited in claim 1 are met by Amano ’342), 24–27
`(showing the additional limitations recited in claims 19, 23, and 24 are met
`by Amano ’342).
`In its Response, Patent Owner does not dispute that Amano ’342
`discloses the limitations recited in claim 1. PO Resp. 8–12. Patent Owner
`disputes only whether Amano ’342 discloses the additional limitations
`recited in claims 19, 23, and 24. Id.
`
`a) Limitations Recited in Claim 1
`
`Claim 1 recites “a first sensor adapted to generate data indicative of a
`first physiological parameter of the individual if said first sensor is in
`proximity to the individual.” To meet this limitation, Petitioner identifies
`two features of the wristwatch embodiment illustrated in Figures 3a and 3b
`of Amano ’342, both of which meet the recited claim language. First,
`Petitioner argues that “body motion detector 101 (i.e., a first sensor) . . .
`generates data indicative of body movements and when an individual is
`active or resting (i.e., a first physiological parameter).).” Pet. 18 (citing
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`Ex. 1004, 6:57–7:7; Ex. 1002 ¶41).7 Second, Petitioner argues that
`“temperature sensors Ts1~Ts6 form a body temperature detector 121 (i.e., a
`first sensor) [that] measures the temperature of the skin surface around the
`individual’s radial artery[] and generates data indicative of deep body
`temperature (i.e., a first physiological parameter).” Id. (citing Ex. 1004,
`13:8–23; Ex. 1002 ¶41). We are persuaded by both arguments. Petitioner
`has shown that this limitation is taught by Amano ’342.
`Claim 1 recites “a second sensor adapted to generate data indicative of
`a second physiological parameter of the individual if said second sensor is in
`proximity to the individual.” To meet this limitation, Petitioner relies on
`pulse wave detector 111 of the same wristwatch embodiment of Amano
`’342. In particular, Petitioner argues “pulse pressure sensors Ps1~Ps6 that
`form pulse wave detector 111 (i.e., a second sensor), . . . generate data
`indicative of pulse rate (i.e., a second physiological parameter) in proximity
`to the individual.” Pet. 18 (citing Ex. 1002 ¶41; see also Ex. 1004, 12:66–
`13:3 (cited at Pet. 19). We are persuaded by this argument. Petitioner has
`shown that this limitation is taught by Amano ’342.
`Claim 1 recites “a processing unit in electronic communication with
`said first sensor and said second sensor.” To meet this limitation, Petitioner
`relies on the wristwatch’s CPU 201, which is in electrical communication
`with the asserted first and second sensors (i.e., body motion detector 101,
`body temperature detector 121, and pulse wave detector 111). Pet. 19 (citing
`
`
`7 Exhibit 1002 is a declaration by Mark A. Musen, M.D., Ph.D. See
`Ex. 1002 ¶¶4–5. “Paragraph” 41 of Dr. Musen’s declaration is not actually a
`paragraph, but rather a claim chart mapping claim 1 to teachings of
`Amano ’342.
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`Ex. 1004, 6:61–67, 12:21–23, 18:13–15, Figs. 2, 17; Ex. 1002 ¶41).
`Petitioner has shown that this limitation is taught by Amano ’342.
`Claim 1 recites “a central monitoring unit in electronic
`communication with at least one of said sensors and said processing unit.”
`To meet this limitation, Petitioner relies on external device main body 600,
`which is “equivalent to an ordinary personal computer.” Ex. 1004, 16:4–5;
`Pet. 19–20. Petitioner correctly notes that the external computer includes
`transmission and receiving controllers, which allow sending and receiving
`information between the external computer and CPU 201. Ex. 1004, 15:65–
`16:27, 22:3–6, 22:45–51, Fig. 9; Pet. 19–20 (citing the same). Petitioner has
`shown that this limitation is taught by Amano ’342.
`Claim 1 recites “an output device in electronic communication with at
`least one of said processing unit and said central monitoring unit.” To meet
`this limitation, Petitioner relies on the wristwatch’s LCD display 205.
`Pet. 20. Petitioner correctly notes that the LCD display is in electronic
`communication with CPU 201, the asserted processing unit. Id. (citing
`Ex. 1004, 12:45–49, Fig. 2; Ex. 1002 ¶41). Petitioner has shown that this
`limitation is taught by Amano ’342.
`Claim 1 concludes with the following recitation:
`
`wherein at least one of said processing unit and said central
`monitoring unit is programmed
`(a) to generate at least one of a derived physiological status
`parameter of the individual and a derived parameter related to an
`activity in which the individual has engaged said derived
`parameters based on both of said data indicative of said first
`physiological parameter of the individual and said data indicative
`of said second physiological parameter of the individual, and
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`(b) to cause said output device to present to a user indicators of
`at least one of said derived parameters of the individual in
`relation to indicators of at least one of (i) said data indicative of
`said first physiological parameter of the individual, and (ii) said
`data indicative of said second physiological parameter of the
`individual.
`To meet Limitation (a), Petitioner relies on the wristwatch’s CPU 201
`being programmed to generate calorie expenditure from data collected from
`the motion, temperature, and pressure sensors. Pet. 21 (citing Ex. 1004, 1:6–
`9, 12:21–23, 6:57–7:56, 8:62–9:44; Ex. 1002 ¶41). We find that evidence
`sufficient to establish that Limitation (a) is taught by Amano ’342.
`To meet Limitation (b), Petitioner relies on the wristwatch’s LCD
`display of an individual’s calorie expenditure over time and the individual’s
`body temperature over time. Pet. 22 (citing Ex. 1004, 12:45–49, 18:46–52,
`19:22–33, 23:22–28, 23:66–24:14, Figs. 19, 37; Ex. 1002 ¶41). Indeed,
`Figure 19 discloses a display of calorie expenditure, which is a derived
`parameter, over time, and Figure 37 discloses a display of body temperature,
`which is data indicative of a physiological parameter, over time. Ex. 1004,
`Figs. 19, 37. In Patent Owner’s appeal to this Board in the ’376
`Reexamination, a panel held the following: “Because both calorie
`expenditure and body temperature are displayed with respect to time [in
`Amano ’342], calorie expenditure is presented in relation to body
`temperature.” Basis Science, Reexamination Control No. 95/002,376
`(PTAB Mar. 27, 2015), 5–6. We agree with that holding; Amano ’342
`discloses Limitation (b) by virtue of its displaying both calorie expenditure
`and body temperature, each with respect to time.
`In sum, Petitioner has shown that Amano ’342 discloses all limitations
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`of claim 1, which are incorporated into challenged claims 19, 23, and 24.
`
`b) Claim 19
`
`Claim 19 recites the following:
`
`19. The system of claim 1 wherein said indicators presented
`to a user by the output device are tactile for at least one of (a) at
`least one of said derived parameters of the individual, (b) said
`data indicative of said first physiological parameter of the
`individual, and (c) said data indicative of said second
`physiological parameter of the individual.
`To meet the additional language of claim 19, Petitioner notes that
`Amano ’342 states that its wristwatch embodiment is not limited to visually
`displaying calculated results and that notification to the user may be made
`by any of the five senses. Pet. 24 (citing Ex. 1004, 34:20–32). In fact, as
`Petitioner further points out, Amano ’342 states that “a design is … possible
`which relies on the tactile sense by employing vibration in the notification”
`of the calculated expenditure. Ex. 1004, 34:30–32; Pet. 24 (quoting the
`same).
`Patent Owner responds that it is not clear whether the “calculated
`results are equivalent to a derived parameter, data indicative of a first
`physiological parameter or a second physiological parameter.” PO Resp. 8–
`9 (citing Ex. 2005 ¶49). But, the only evidence to which Patent Owner
`cites—Exhibit 2005 ¶49—has been expunged.8 Accordingly, Patent Owner
`has no evidence to support its argument that the relied-upon teaching in
`
`8 Exhibit 2005 was a declaration by Thomas Blackadar that was expunged
`because Mr. Blackadar was not made available for cross-examination. See
`Paper 17 (expunging both of Mr. Blackadar’s declarations along with his
`curriculum vitae (i.e., Exhibits 2001, 2002, and 2005)).
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`Amano ’342 is unclear. Second, Patent Owner’s interpretation of Amano
`’342 is erroneous. Amano ’342 teaches notification to the user “of the
`calculated calorie expenditure . . . by means of a synthesized voice” and then
`immediately states that such notification alternatively could “rel[y] on the
`tactile sense by employing vibration in the notification” of the calculated
`expenditure. Ex. 1004, 34:27–32. The calculated calorie expenditure is a
`derived parameter of the individual. It is not measured directly; it is derived
`from data collected from the motion, temperature, and pressure sensors.
`Ex. 1004, 1:6–9, 6:57–7:56, 8:62–9:44, 12:21–30.
`Petitioner has shown, by a preponderance of the evidence, that Amano
`’342 anticipates claim 19.
`
`c) Claim 23
`
`Claim 23 recites the following: “The system of claim 1 wherein at
`least one of said indicators are compared to a baseline parameter of the
`individual.” To meet the additional language of claim 23, Petitioner points
`to three separate features of the wristwatch of Amano ’342. Pet. 24–26. We
`address two of these features, both of which meet the required claim
`language.
`With respect to the first feature we address here, Petitioner quotes
`Amano ’342 as disclosing the following: “In order to obtain calorie
`expenditure with good accuracy, the device is provided with a basal
`metabolic state specifying element (142) which specifies the subject’s basal
`metabolic state . . . correcting the stored regression formulas using the basal
`metabolic state.” Pet. 24–25 (quoting Ex. 1004, Abstract). Petitioner
`persuasively argues that, “[w]hen an individual’s [calorie] expenditure is
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`calculated, it is done by comparison to the basal metabolic baseline and the
`regression formulas that baseline defines.” Pet. 25 (citing Ex. 1004, 22:60–
`23:6, Figs. 10a–b; Ex. 1002 ¶43).
`Patent Owner responds that, “[o]n the contrary, Amano ‘342 does not
`disclose a comparison of basal metabolic rate baseline to derived caloric
`expenditure; rather, Amano ‘342 discloses a basal metabolic rate being used
`to help calculate a caloric expenditure via a regression formula.” PO Resp.
`9 (citing Ex. 1004, Abstract, 8:43–46). Patent Owner’s argument is based
`on an unstated and unsupported construction of the word “compared” that is
`unreasonably narrow. In particular, the unstated construction presumes that
`comparing and calculating are mutually exclusive subject matter. Patent
`Owner, however, does not explain that presumption or support it with
`evidence. We instead determine that Amano ’342’s calculation of calorie
`expenditure from basal metabolic baseline includes a comparison of the two
`within the meaning of claim 23. The regression formula defines that
`comparison.
`With respect to the second feature we address here, Petitioner argues
`that Amano ’342 teaches comparing indicators of an individual’s parameters
`to recent baseline values on the wristwatch’s LCD display. Pet. 25.
`Petitioner argues, for example, that the display may show “a current,
`calculated respiration rate in comparison to the most recent baseline basal
`respiration rate.” Id. (citing Ex. 1004, 27:57–67). The Petitioner-cited
`portion of Amano ’342 states:
`In the current value measuring mode, CPU 201 measures the
`current pulse rate, respiration, body temperature, and the
`temperature of the surrounding environment. The results of this
`measurement are displayed in area 2051 or 2052. CPU 201
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`switches the area in which display is conducted in response to
`operations by the subject. Here, when displaying each of the
`current standard values in area 2052, the subject is able to
`compare the standard values for the current day, which are
`displayed in area 2051. Thus, it is possible for the subject to
`know the degree of daily change based on his own physiological
`state.
`Ex. 1004, 27:57–67.
`Patent Owner responds, arguing that the “standard value[]” reference
`in Amano ’342 is not a “baseline parameter” within the meaning of claim
`23. To support that argument, Patent Owner points out that Dr. Musen
`(Petitioner’s declarant) testified on cross-examination that “a baseline
`parameter refers to a physiologic measurement or a derivation of a
`physiologic measurement which corresponds to a situation where the
`individual is at baseline.” PO Resp. 10 (quoting Ex. 2006, 37:6–13).
`Applying Dr. Musen’s interpretation, Patent Owner concludes that the
`“standard values referred to in the cited portions of Amano ‘342 do not
`appear to be related to any measurement of a physiologic measurement or a
`derivation of a physiologic measurement.” Id. at 10 (citing expunged
`Ex. 2005 ¶53). Patent Owner offers no evidence of record for that
`conclusion.
`In any event, Patent Owner’s argument is erroneous. Amano ’342
`teaches that “current value[s]” of “pulse rate, respiration, body temperature,
`and the temperature of the surrounding environment” are compared to
`“standard values.” Ex. 1004, 27:57–67. Clearly, the first three of these
`“current values” are physiological. And, it is implicit that the standard
`values—to which the current values are compared—must be for the same
`fields. In other words, Amano ’342 teaches comparing a current value of
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`pulse rate to a standard value of pulse rate, a current value of respiration to a
`standard value of respiration, a current value of body temperature to a
`standard value of temperature. See id. at 27:65–67 (“Thus, it is possible for
`the subject to know the degree of daily change based on his own
`physiological state.”).
`Petitioner has shown that Amano ’342 anticipates claim 23.
`
`d) Claim 24
`
`Claim 24 recites the following:
`
`The system of claim 1 wherein at least one of said central
`monitoring unit and said processing unit is programmed to
`provide suggestions, said suggestions being based on said
`relation of said indicators of at least one of said derived
`parameters of the individual to said indicators of at least one of
`said data indicative of said first physiological parameter of the
`individual and said data indicative of said second physiological
`parameter of the individual.
`To meet the additional language of claim 24, Petitioner relies on,
`among other things, Amano ’342’s teaching that “the wristwatch is
`programmed to calculate an ‘achievement rate’ that is based on the
`individual’s calorie expenditure (i.e., a derived parameter) as compared to a
`target calorie expenditure value entered by a user.” Pet. 26 (citing Ex. 1004,
`19:34–49). Petitioner also points to the additional feature of a “face chart
`. . . displayed in response to the achievement rate.” Ex. 1004, 19:60–61, Fig.
`22; Pet. 26–27. As shown in Figure 22, the face chart can display an array
`of faces, such as fully smiling, slightly smiling, slightly frowning, and fully
`frowning, depending on the user’s achievement rate. Ex. 1004, Fig. 22.
`Petitioner argues that the face chart provides a suggestion, with a smiling
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`IPR2016-00545
`Patent 8,073,707 B2
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`face suggesting that the user need not increase its rate of exercise (and could
`even reduce it) because he is currently above the achievement rate and a
`frowning face suggesting that the user needs to exercise more rigorously
`because he is below the achievement rate. Pet. 26–27 (citing Ex. 1004,
`19:34–49, Fig. 22).
`Patent Owner responds, arguing that the achievement rate, which is a
`comparison of calorie expenditure to a target calorie expenditure, does not
`constitute a “suggestion” within the meaning of claim 24. PO Resp. 11–12.
`The meaning of “suggestion” was at issue at institution of this inter
`partes review. In our Decision granting the Petition, we stated:
`Neither party offers an express construction for the term
`“suggestion.” On the record presented, the achievement rate
`appears to fall within the scope of the broadest reasonable
`construction of that term in the context of the specification of the
`challenged patent. For example, the ’707 patent states the
`following:
`The Activity Level Health Index piston level is
`preferably determined with respect to a suggested
`healthy daily routine that includes: exercising
`aerobically for a pre-set time period, preferably 20
`minutes, or engaging in a vigorous lifestyle activity
`for a pre-set time period, preferably one hour, and
`burning at least a minimum target number of
`calories, preferably 205 calories, through the
`aerobic exercise and/or lifestyle activity. The
`minimum target number of calories may be set
`according to information about the user, such as sex,
`age, height and/or weight.
`Ex. 1001, 16:37–46 (emphasis added).
`Inst. Dec. 15–16.
`During trial, Patent Owner did not proffer an express construction for
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`Patent 8,073,707 B2
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`“suggestion.” See PO Resp. 7–8 (proffering express construction for only
`“life activities data” (claims 5, 6, and 10)). Petitioner also did not propose
`one during trial. See Pet. 12–13 (proffering express construction for only
`“life activities data” (claims 5, 6, and 10)); see generally Reply (proffering
`no express constructions). Regardless, the parties continue to dispute
`whether “suggestion” encompasses Amano ’342’s achievement rate and/or
`its face chart.
`Patent Owner argues that the achievement rate does not meet the
`limitation because it “is simply a numerical value that fails to provide any
`suggestion.” PO Resp. 11. Patent Owner’s argument is not persuasive. The
`achievement rate equals summed value/targeted value multiplied by 100.
`Ex. 1004, 19:49. Summed value, in turn, may be “calorie expenditure
`during [a] specific time interval,” whereas targeted value is the targeted
`number of calories to be burned during that same time interval. Id. at 19:64–
`20:3. Thus, an achievement rate below 100 suggests to the user to exercise
`more vigorously; an achievement above 100 suggests to the user that he may
`exercise less vigorously and still achieve his targeted rate of calorie
`expe
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