`
`Filed on behalf of: Fitbit, Inc.
`
`Paper No. __
`Filed: April 25, 2017
`
`By: Naveen Modi (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Yar R. Chaikovsky (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Michael C. Hendershot (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`David T. Okano (PH-Fitbit-Aliph-IPR@paulhastings.com)
`
`Paul Hastings LLP
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`FITBIT, INC.,
`
`Petitioner,
`
`v.
`
`ALIPHCOM, INC. D/B/A JAWBONE,
`
`Patent Owner.
`
`____________________
`
`Case IPR2016-00714
`Patent No. 8,446,275
`____________________
`
`PETITIONER’S REPLY
`
`

`

`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`
`TABLE OF CONTENTS
`
`I. 
`II. 
`
`B. 
`
`Introduction ..................................................................................................... 1 
`Claim construction .......................................................................................... 1 
`A. 
`The Board’s interpretation of “target score” according to its
`ordinary meaning is correct .................................................................. 1 
`Patent Owner’s negative construction of “target score” is
`unreasonably narrow ............................................................................ 3 
`1. 
`Patent Owner identifies no support in the specification
`for its lexicography construction ............................................... 4 
`Patent Owner’s claim construction is premised on a
`flawed level of skill of the POSITA applied by its expert ......... 5 
`Patent Owner’s construction is unsupported by the claims ....... 6 
`Patent Owner’s attempt to exclude points which can be
`used for rewards and scores that are based on athletic and
`nonathletic parameters is unfounded ......................................... 8 
`III.  The challenged claims are invalid ................................................................ 15 
`A. 
`Claims 1–5, 8–9, 13–15, and 19 are anticipated by Hoffman ............ 15 
`1. 
`Hoffman teaches the recited “score” and “target score” ......... 15 
`2. 
`Hoffman teaches the “target score” even under Patent
`Owner’s unreasonable construction ......................................... 19 
`Patent Owner’s other arguments are unsupported and lack merit ..... 20 
`1. 
`Hoffman teaches “modify[ing] the target score” ..................... 20 
`2. 
`Petitioner does not combine multiple embodiments ................ 21 
`Claims 10, 18, and 19 are obvious over Hoffman in view of
`Gilley .................................................................................................. 23 
`IV.  Conclusion .................................................................................................... 25 
`
`2. 
`
`3. 
`4. 
`
`B. 
`
`C. 
`
`
`
`
`
`-i-
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`

`

`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Amazon.com, Inc. v. Personalized Media Commc’ns, LLC,
`IPR2014-01534, 2016 WL 1133371 (P.T.A.B. Mar. 22, 2016) ......................... 11
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 25
`
`In re Paulson,
`30 F.3d 1475 (Fed. Cir. 1994) .............................................................................. 5
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 4
`
`Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp.,
`811 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 9
`
`Other Authorities
`
`37 C.F.R. § 42.24 ..................................................................................................... 26
`
`37 C.F.R. § 42.24(d) ................................................................................................ 26
`
`
`
`
`ii
`
`

`

`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`
`LIST OF EXHIBITS
`
`Previously
`Submitted
`X
`X
`X
`X
`
`X
`
`X
`
`X
`
`X
`X
`X
`
`X
`
`X
`X
`
`
`Description
`
`1003
`
`1004
`
`Exhibit
`No.
`1001 U.S. Patent No. 8,446,275 to Utter et al.
`1002 Declaration of Dr. Mark A. Musen
`U.S. Patent Application Pub. No. 2012/0041767 to
`Hoffman et al.
`U.S. Patent Application Pub. No. 2008/0076637 to Gilley
`et al.
`Prosecution file history of U.S. Patent Application No.
`13/454,040
`Prosecution file history of U.S. Patent Application No.
`13/433,204
`Certain Activity Tracking Devices, Systems, and
`Components Thereof, Inv. No. 337-TA-963, Order No.
`31, Commission Investigative Staff’s Initial Markman
`Brief (Nov. 20, 2015)
`Reserved
`Reserved
`Prosecution file history of U.S. Patent Application No.
`13/871,843
`Product review, Nike + iPod Sport Kit, PC Magazine
`(July 14, 2006),
`1011
`C.V. of Dr. Mark A. Musen
`1012
`1013 Declaration of Michael C. Hendershot
`1014 Deposition Transcript of Dr. Darrin J. Young
`
`
`1005
`
`1006
`
`1007
`1008
`1009
`
`1010
`
`iii
`
`

`

`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`Petitioner Fitbit, Inc. (Petitioner) replies to Patent Owner’s Response (Paper
`
`No. 11, Response) filed by AliphCom, Inc. d/b/a Jawbone (Patent Owner) and the
`
`Board’s decision to institute inter partes review (Paper No. 8, Institution Decision)
`
`of U.S. Patent No. 8,446,275 (the ’275 patent).
`
`I.
`
`INTRODUCTION
`
`This trial turns on claim construction. In the record are two proposed
`
`constructions of the term “target score.” Petitioner and the Board have interpreted
`
`this term according to its ordinary meaning. In contrast, Patent Owner contends
`
`that it acted as its own lexicographer to narrow the term and specifically exclude
`
`the asserted prior art. The Board’s ordinary meaning construction is consistent with
`
`the specification and record and should be adopted. Patent Owner identifies no
`
`support in the specification for its lexicography construction, relying instead on
`
`flawed and inconsistent testimony from its expert. Patent Owner’s attempt to
`
`narrow and contort the term to carve out the asserted prior art should be rejected
`
`and the challenged claims found unpatentable.
`
`II. CLAIM CONSTRUCTION
`A. The Board’s interpretation of “target score” according to its
`ordinary meaning is correct
`
`The Board determined none of the terms in the challenged claims require
`
`construction, and interpreted the claims according to their ordinary meaning.
`
`Institution Decision at 6. The Board also determined a “reward item [that] c[ould]
`
`1
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`

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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`be selected as a goal” meets the claimed “target score” limitation, suggesting that
`
`the ordinary meaning of “target score” encompasses a “goal.” Id. at 8. The
`
`Board’s determinations are supported by Petitioner’s declarant, Dr. Musen, who
`
`testified that (1) the terms of the challenged claims had well-understood ordinary
`
`meanings to a person of ordinary skill in the art (POSITA), and (2) a POSITA
`
`would have understood a “target score,” under its ordinary meaning, to encompass
`
`a “goal” or “reward.” See Ex. 1002 ¶¶ 25, 40.
`
`Second, the Board’s understanding is consistent with the specification,
`
`which explains that “target scores” can provide indicators of “progress or
`
`fulfillment of . . . health and wellness goals.” Ex. 1001 at 36:19–21. “A target score
`
`can be a range of values or can be a function of any number of health and wellness
`
`representations.” Id. at 35:62–64. This “target value or score can be modified
`
`dynamically to motivate a user to continue toward a health and wellness goal.” Id.
`
`at 35:29–31. Modifying the “target score” requires a “baseline profile against
`
`which a user’s progress can be measured in modifying behavior when working
`
`toward a goal (e.g., overall target score) that is consistent with a healthy lifestyle.”
`
`Id. at 41:21-251; Ex. 1002 ¶ 22. For example, “if the user attains or fulfills the
`
`
`1 As used herein, all emphases added.
`
`2
`
`

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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`goals,” it can correspond to “the target score having a value of 100.” Ex. 1001 at
`
`43:61–64.
`
`B.
`
`Patent Owner’s negative construction of “target score” is
`unreasonably narrow
`
`Patent Owner contends the “target score” should be construed to carve out
`
`the prior art from its claim scope, arguing the claimed “target score” is “a value
`
`indicative of a state or conditions of health and physical wellness for a user that the
`
`user strives to attain, which . . . excludes the cited subject matter of Hoffman.”
`
`Response at 4; Ex. 1014 at 39:4–21. This negative construction of “target score” is
`
`unsupported by the intrinsic evidence.
`
`Term
`
`Board/Petitioner construction Patent Owner’s construction
`
`“target score” ordinary meaning, encompassing
`
`“a value indicative of a state or
`
`a “goal”
`
`conditions of health and
`
`physical wellness for a user
`
`that the user strives to attain,
`
`which excludes reward goals
`
`bought with rewards points,
`
`such as the one described in
`
`Hoffman” (Response at 13)
`
`
`
`3
`
`

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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`Patent Owner’s construction is contrary to the claims, specification, and its
`
`own expert’s testimony, and is unreasonably narrow for the four following reasons.
`
`1.
`
`Patent Owner identifies no support in the specification for
`its lexicography construction
`
`To escape the presumed ordinary meaning of “target score,” Patent Owner
`
`contends it acted as its own lexicographer to “define” the term differently.
`
`Response at 4-5. To do so, Patent Owner relies on its expert Dr. Young, who
`
`testified that “the ordinary meaning should not apply because the specification
`
`define[s] the term.” Ex. 1014 at 38:17–21. However, Patent Owner’s proposed
`
`lexicographical definition of “target score” does not appear in the specification.
`
`Indeed, key phrases of Patent Owner’s lexicographical redefinition—
`
`“rewards points” and “physical wellness”—are absent from the specification.
`
`When confronted with this, Dr. Young could only recall the specification discussed
`
`a reward system, id. at 53:2–9, and confirmed “physical wellness” was added by
`
`him to “focus on the physical [exercises/activities] part” of the patent, id. at 40:2–
`
`41:11. And nothing in the specification supports Patent Owner’s attempt to
`
`specifically exclude Hoffman, as that reference—much less an exhortation to
`
`exclude its subject matter—does not appear in the specification.
`
`As the Board noted, the presumption a term carries its ordinary meaning is
`
`strong. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). To
`
`overcome this presumption, the patentee must act as its own lexicographer to
`
`4
`
`

`

`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`redefine the term with “reasonable clarity, deliberateness, and precision.” In re
`
`Paulson, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Here, Patent Owner identifies no
`
`definition of “target score” in the specification to support its negative construction.
`
`2.
`
`Patent Owner’s claim construction is premised on a flawed
`level of skill of the POSITA applied by its expert
`
`With no support for its construction in the specification, Patent Owner relies
`
`on Dr. Young, contending “[a] POSITA would understand that the claims exclude
`
`rewards systems as in Hoffman as a target score.” Response at 5. However, Dr.
`
`Young’s construction is a product of applying a flawed level of ordinary skill.
`
`Despite offering a construction dependent on the ability to identify values
`
`“indicative of a state or conditions of health or physical wellness,” Dr. Young
`
`testified the POSITA need not have any experience with health and wellness
`
`management. See Ex. 2001 ¶ 15; Ex. 1014 at 16:5–9, 22:4–14. Instead, he testified
`
`the POSITA would only be required to have experience in one of the following
`
`fields: “electrical and electronic hardware, computer software, wired and wireless
`
`network communications, or computing devices.” Ex. 2001 ¶ 15.2
`
`
`2 When presented with this at his deposition, Dr. Young testified
`
`inconsistently, contending a POSITA would also require background knowledge
`
`obtained from a bachelor’s degree in engineering, even though such requirement
`
`
`
`5
`
`

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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`The relevance of Dr. Young’s flawed level of skill was exposed by his
`
`inability to answer a simple question: the difference between “health” and
`
`“physical wellness” in his own construction. See Ex. 1014 at 5:4–6 (“I don’t
`
`remember I give my opinion regarding the difference between health and
`
`wellness”); see also id. at 6:20–7:2 (unable to classify “pain in your leg or back,”
`
`which he identified in his testimony as relating to health or physical wellness). And
`
`he admitted his opinions on claim construction were provided under this flawed
`
`level of skill, and no other. See Ex. 1014 at 13:21–14:9. Thus, Dr. Young’s
`
`opinions should be given minimal, if any, weight and cannot support Patent
`
`Owner’s desired construction.
`
`Patent Owner’s construction is unsupported by the claims
`
`3.
`Patent Owner’s contention that the recited “target score” excludes “reward
`
`goals bought with reward points,” Response at 13, is also unreasonable in view of
`
`the claim language. In particular, nothing in the claims supports a negative
`
`limitation that gerrymanders some—but not all—health-related activity from the
`
`scope of the “target score.”
`
`
`
`
`was not part of the level of skill under which he provided the opinions in his
`
`declaration. Ex. 1014 at 16:23–17:6.
`
`6
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`

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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`And nothing in the claims prohibits the “target score” from acting as an
`
`indicator encompassing aspects of both the user’s athletic activities (such as
`
`exercise) and nonathletic activities (such as fitness-related social media and
`
`shopping). Indeed, claim 1 makes clear the “target score” is merely “indicative of
`
`. . . standards against which to compare . . . groups of the values aggregated to
`
`form the score,” and “based on” data representing “health-related activities.” Ex.
`
`1001 at 47:35–37, 47:42–44.3 “Based on” and “indicative of” are terms of
`
`inclusion, not exclusion.
`
`In short, nothing in the claims prohibit the “target score” from
`
`encompassing, for example, reward goals that can be bought with points—so long
`
`as those reward goals are tied to “health-related activities.” The use of the language
`
`“based on” and “indicative of” do not support Patent Owner’s negative
`
`construction. Indeed, as discussed in section II.B.4, the ’275 patent specification
`
`makes clear the same points used to measure progress towards the “target score”
`
`can be used to purchase rewards in a currency-like manner, as in Hoffman.
`
`
`3 Similarly, nothing in claim 19 prohibits the “target score” from encompassing
`
`both a user’s athletic and non-athletic activities. Indeed, as to the “target score,”
`
`claim 19 merely recites an apparatus that establishes a “target score” from “data
`
`representing a [user’s] profile.” Ex. 1001 at 49:18–21.
`
`7
`
`

`

`4.
`
`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`Patent Owner’s attempt to exclude points which can be
`used for rewards and scores that are based on athletic and
`nonathletic parameters is unfounded
`
`Patent Owner premises its construction on arguments that (1) “scores” and
`
`“target scores” cannot represent both athletic and nonathletic activities and (2)
`
`“‘scores’ and ‘points’ are two separate and distinct components of the inventions
`
`disclosed in the ’275 patent.” Response at 2. Both arguments are dispelled by the
`
`specification and testimony of Patent Owner’s expert.
`
`a.
`
`“[T]arget score[s]” can be based on both athletic and
`nonathletic activities
`
`Patent Owner’s contention the “target score” is limited to and excludes
`
`everything but “a value indicative of a state or conditions of health and physical
`
`wellness” (Response at 4, 13-14), cannot be reconciled with the specification and
`
`dependent claims. First and foremost, the specification explains “[a] target score
`
`can be a range of values or can be a function of any number of health and wellness
`
`representations.” Ex. 1001 at 35:62–64. There is no requirement the “target score”
`
`be anything but a simple “range of values” unconnected to any state or condition of
`
`health and physical wellness. Second, even treating the “target score” as a
`
`“function of . . . health and wellness representations,” Patent Owner’s assertion the
`
`“target score” does not include nonathletic activities is inconsistent with the
`
`intrinsic evidence.
`
`8
`
`

`

`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`For example, the dependent claims require the claimed “target score” to
`
`encompass participation in location-related events and tracking of nonathletic
`
`social-related activities. Dependent claim 6 recites that data representing subsets of
`
`acquired parameters includes “social-” and “location-related” activities. Id. at
`
`47:63–48:2. Dependent claim 7 recites that these nonathletic activities are used to
`
`“generat[e] a context score,” which is then “aggregat[ed] . . . to form the target
`
`score.” Id. at 48:3–9. In short, Patent Owner’s negative construction of “target
`
`score” excluding consideration of any nonathletic activities contradicts the
`
`dependent claims and is thus unreasonably narrow for this reason alone. See
`
`Trustees of Columbia Univ. in City of N.Y. v. Symantec Corp., 811 F.3d 1359, 1370
`
`(Fed. Cir. 2016) (“[C]onstruing the independent claim to exclude material covered
`
`by the dependent claim would be inconsistent.”).
`
`Dr. Young repeatedly agreed during his deposition that a user’s “score” in
`
`the ’275 patent can be increased based on nonathletic activities. See Ex. 1014 at
`
`70:5–10 (confirming “under [his] construction of score and target score, a score is
`
`measured in points and the value for those points may be earned through physical
`
`activity or miscellaneous or social activities”); see also id. at 44:7–14, 50:9–12,
`
`83:15–84:15; 111:3–9; 118:6–16; 124:12–21; 125:16–21 (same). And he agreed
`
`the claimed “score” was merely “a representation of . . . a user’s progress towards
`
`a target score.” Id. at 45:14–16; see id. at 99:8–13 (characterizing “score” as a
`
`9
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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`percentage of the “target score”). Although Dr. Young attempted to distinguish the
`
`user’s “score” from its “target score,” see id. at 73:11–25, he agreed the “score”
`
`and “target score” would “have the same unit of measurement,” id. at 45:14–20,
`
`and would “have some correlation” to nonathletic location-based and social
`
`activities, id. at 78:3–13. He also agreed “the target score is adjusted ba/sed on the
`
`score” and “can be influenced by [nonathletic activities like] the contact [sic] score
`
`or the social parameters.” Id. at 80:22–81:3. He also agreed the “target score” can
`
`“represent and be indicative of a level of social activities, in addition to other
`
`things,” and be “formed . . . based on a user’s social activities, in addition to other
`
`factors.” Id. at 83:15–84:15.
`
`Dr. Young’s testimony, although inconsistent with his declaration, is
`
`consistent with the specification, which explains the score “aggregation engine”
`
`includes managers for tracking a user’s nonathletic activities, such as an
`
`“environmental manager,” a “social manager,” and “any number of generic
`
`managers.” Ex. 1001 at 36:31–38, Figs. 15A, 16A. These managers aggregate
`
`point values earned by users for nonathletic “miscellaneous activities” such as
`
`“sending a message to a friend, gifting to a friend, donating, receiving gifts, etc.”
`
`Id. at 25:44–55. A conversion module calculates “scores” from the point values
`
`earned through these nonathletic activities and then “aggregate[s]” those “scores”
`
`to “form an overall health and wellness score, which can be compared against a
`
`10
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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`target score indicative of an optimal state or conditions of health and wellness for a
`
`user.” Id. at 38:21–48.
`
`Thus, the specification teaches the user’s “score” can be based on data from
`
`a user’s athletic and nonathletic activities. Id. at 39:61–67. Patent Owner provides
`
`no justifiable reason to exclude these disclosures from the scope of the claims. See
`
`Amazon.com, Inc. v. Personalized Media Commc’ns, LLC, IPR2014-01534, 2016
`
`WL 1133371, at *7 (P.T.A.B. Mar. 22, 2016) (citing In re Katz Interactive Call
`
`Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011) (“[T]here is a
`
`strong presumption against a claim construction that excludes a disclosed
`
`embodiment.”)).
`
`b.
`
`“Scores” and “reward points” are related and
`interchangeable concepts
`
`Patent Owner next attempts to support its negative construction with the bare
`
`assertions that points used as a currency for rewards in the ’275 patent “have
`
`nothing to do with” points used to measure “scores” and progress towards “target
`
`scores,” and that “the ’275 patent’s rewards system based on points is a separate
`
`and distinct aspect compared with scores.” Response at 9, 19. But the specification
`
`and Dr. Young’s testimony undermines Patent Owner’s assertions.
`
`In particular, the specification discloses a single point system, which is both
`
`a component of the “score” and “target score,” and used as a reward currency. For
`
`example, the specification explains how a user can achieve a “target score” for
`
`11
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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`nutritional goals by earning points. For a user “goal to consume 45 milligrams of
`
`vitamin C per day,” the system may create a profile for that user “that equates 45
`
`milligrams as 20 points (i.e., a target score for this nutrient).” Ex. 1001 at 44:12–
`
`21; Petition at 6; Ex. 1002 ¶ 23. And if the user consumes 22 milligrams of
`
`vitamin C, it will achieve “approximately half of the goal,” or “10 points as the
`
`value.” Id. This “[s]core can be calculated at a first processor based on data
`
`representing the values,” and represents “an attained portion” of the “goal,” or
`
`“target score for this nutrient.” Ex. 1001 at 44:15–24.
`
`Both Patent Owner and Dr. Young rely heavily on their assertion the
`
`calculated points and scores addressed in Figure 8 are entirely unrelated to and
`
`distinct from Figures 10–11, which they contend describe “reward points.” See
`
`Response at 11–12; Ex. 1014 at 54:19–55:17. Nothing in the specification draws
`
`this line they advance as the foundation of their claim construction. To the
`
`contrary, the specification expressly ties Figure 8 to Figures 10–11, explaining that
`
`the latter are depictions of the points and scores calculated in Figure 8. Ex. 1001 at
`
`25:38–26:54. Dr. Young acknowledged this, and further admitted the purported
`
`“reward point” figures depict the same points calculated in what Patent Owner
`
`pointed to as the allegedly separate and distinct “target score” embodiment. Ex.
`
`1014 at 57:4–59:24, 61:25–62:14 (agreeing “[t]he points [a user] accumulate[s] . . .
`
`12
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`Case IPR2016-00714
`U.S. Patent No. 8,446,275
`to increase [its] score are the same points that can later be used . . . to acquire a
`
`reward”).
`
`The specification emphasizes “these points may be used for obtaining
`
`various types of rewards, or as virtual or actual currency, for example, in an online
`
`wellness marketplace.” Ex. 1001 at 28:62–65, 28:7–23; Petition at 6; Ex. 1002
`
`¶ 24. Nothing in the specification separates these points from the “health and
`
`wellness” aspect of the disclosed system. Indeed, the specification emphasizes
`
`these points are for use as “virtual or actual currency” in “an online wellness
`
`marketplace,” as described herein, “e.g., a fitness marketplace” and can be used for
`
`prizes such as fitness bands. Id.
`
`During his deposition, Dr. Young testified “the reward points are the same
`
`points as [sic] go into the score.” Ex. 1014 at 149:4–11; see id. at 146:11–21
`
`(agreeing that “score versus reward points” are the “same kind of points”); id. at
`
`59:13–24, 62:1–14, 121:22–122:22; 149:4–11; see also Ex. 1001 at 28:7–23,
`
`28:62–65. He testified a user can spend the same points they accumulated towards
`
`a score to obtain a reward. Ex. 1014 at 121:18–22; id. at 125:22–25 (agreeing “the
`
`points that represent th[e] aggregate score value may be used [or expressed] as
`
`reward points in the ’275 patent”). He also testified the unit of measurement for
`
`“target scores,” “scores,” and what he referred to as “reward points” in the ’275
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`patent was the same—a “point.” Id. at 141:7–15.
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`U.S. Patent No. 8,446,275
`Thus, Patent Owner’s contention that scores and reward points are “separate
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`and distinct concept[s]” (Response at 9) is contradicted by the specification—
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`which treats points as being components of the “target score” and the basis for
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`obtaining rewards—and Dr. Young’s testimony, where he admits the two concepts
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`are related and intertwined. Indeed, the entire basis of Patent Owner’s contention is
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`a snippet of a paragraph in the specification indicating that “points and values, as
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`well as a use of a target score are just a few ways to implement the variety of
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`techniques and/or structures described herein.” Id. at 12; Ex. 1001 at 35:60–62.
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`This sentence does not support Patent Owner’s all-or-nothing assertion, as it
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`merely observes there are many ways to implement the claimed points, values, and
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`target scores.
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`In sum, Patent Owner’s attempt to import a negative limitation into “target
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`score” is not supported by the claims, and runs afoul of the dependent claims and
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`specification. Patent Owner’s unreasonable construction should be rejected. In
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`contrast, the Board’s interpretation of “target score” that encompasses a “goal” is
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`consistent with its ordinary meaning and supported by the intrinsic evidence. The
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`Board should not depart from this reasonable construction.
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`U.S. Patent No. 8,446,275
`III. THE CHALLENGED CLAIMS ARE INVALID
`A. Claims 1–5, 8–9, 13–15, and 19 are anticipated by Hoffman
`Patent Owner contends Hoffman does not anticipate the challenged claims
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`because it does not disclose the “score” and “target score” recited in independent
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`claims 1 and 19. Patent Owner does not challenge Hoffman’s disclosure of any
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`other limitations of those claims. See Ex. 1014 at 63:10–23. Under the Board’s
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`construction, Hoffman discloses the claimed “score” and “target score,” and thus
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`anticipates the challenged claims.
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`1. Hoffman teaches the recited “score” and “target score”
`To begin, Patent Owner’s Response ignores key elements of Hoffman’s
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`disclosure. In particular, Patent Owner attempts to bury the fact the Hoffman
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`activity points and activity point goal, like the “score” and “target score,” are
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`intended to “encourage individuals to participate in athletic activities and improve
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`their fitness levels.” Ex. 1003 ¶ 0004; Petition at 10; Ex. 1002 ¶ 26. Compare id.,
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`with Ex. 1001 at 38:58–59 (“[T]arget score calculations ensure the user is
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`motivated or induced to continue to improve his or her health.”).
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`Hoffman repeatedly emphasizes the purpose of activity point goals are to
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`improve the user’s general health and wellness. See Ex. 1003 ¶¶ 0077 (activity
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`points “motivate and encourage athletic activity among users”), 0131 (activity
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`points “encourage and motivate the user to engage in athletic activities and
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`improve his or her fitness”); Petition at 13, 18. Dr. Young agreed “Hoffman
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`discloses using goals to encourage individuals to engage in physical activity.” Ex.
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`1014 at 67:20–23.
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`Like the recited “score” and “target score,” activity points and the activity
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`point goal simply “allow[] users to view their fitness level and activity in a more
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`practical manner.” Ex. 1003 ¶ 0131; Petition at 18. Hoffman’s primary focus is an
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`“athletic monitoring and tracking device and service” that converts athletic activity
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`detected by wearable devices to activity points. See Ex. 1003, Abstract. Indeed,
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`Hoffman provides numerous specific examples for the conversion of specific
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`athletic activities into activity points. See id. ¶¶ 0077 (running, walking,
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`weightlifting), 0078 (gym device), 0092 (running, soccer), 0093 (football,
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`swimming), 0125 (fitness achievements). There can be no question Hoffman’s
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`activity points represent and are based on athletic or exercise activities such as
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`those measured by sensors in the system’s athletic-monitoring device. Petition at
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`14; Ex. 1003 ¶¶ 0080, 0091. And Dr. Young agreed “Hoffman discloses measuring
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`[physical activity] goals in certain amounts of activity points.” Ex. 1014 at 67:24–
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`68:33; see id. at 121:7–122:4.
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`Patent Owner also ignores that, although Hoffman’s activity points can be
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`augmented with points earned from nonathletic fitness-related activities, the core
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`of a user’s activity points are intended to be earned through athletic activity. That
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`activity points may also reflect nonathletic activity is similar to the ’275 patent’s
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`“score” and “target score.” See, e.g., Ex. 1001 at 47:63–48:9; Ex. 1014 at 83:15–
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`84:15; section II.B.4.a.
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`For example, the primary way to earn activity points in Hoffman is through
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`athletic activities. Ex. 1003 ¶¶ 0080, 0091, Petition at 13–14. While nonathletic
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`activity may also earn points, those points can be limited in comparison to points
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`earned through athletic activity. See Ex. 1003 ¶¶ 0006 (“[The] system may limit
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`the number of activity points that may be earned through non-athletic activities.”),
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`0007 (“[S]hopping may accumulate activity points at a slower rate . . . than
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`performing athletic activities.”); Petition at 14, 36, 38.
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`Moreover, the purpose of awarding points for certain nonathletic activity is
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`to “merge athletic activity and non-athletic activity into a single ecosystem to
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`garner enhanced user interest by providing incentives and motivation to engage in
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`athletic activities.” Ex. 1003 ¶ 0004; Ex. 1002 ¶ 41; Petition at 22. Hoffman
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`explains “a user’s non-athletic activities may also be monitored . . . to improve
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`their interest and motivation” so “a user may be further motivated to engage in
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`athletic activities by incorporating other facets of a user’s life into a fitness-
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`oriented environment.” Ex. 1003 ¶ 0069; Petition at 13. Integration of points for
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`nonathletic activities may help “users that are not inclined to exercise” to be “more
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`willing or motivated to access the fitness-oriented service or system” because the
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`system is “customized to the user’s particular interests.” Ex. 1003 ¶ 0076.
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`That users can supplement points earned through athletic activity with points
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`earned through nonathletic activity does not somehow render meaningless the
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`points earned through athletic activity. Put another way, that a user can receive
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`some activity points from fitness-related shopping for running shoes does not
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`destroy the “health-related activity” significance of activity points earned from
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`running 30 miles in those shoes the following week. Because Hoffman teaches
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`activity point conversion rates favoring athletic over nonathletic activity (see id.
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`¶¶ 0077–0078, 0080; Petition at 16–17), a user’s activity points will necessarily be
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`indicative of that user’s health and physical wellness. See Ex. 1003 ¶¶ 0120
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`(“[A]ctivity points may be converted or used to determine an amount of athletic
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`activity performed.”), 0104–105 (explaining “athletic and non-athletic activity
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`data” can be used to determine the “health status of a user” as well as “an overall
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`athleticism score (e.g., SPARQ score)”); Petition at 20.
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`In short, Patent Owner’s contention activity points “do not depend on a state
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`or condition of any aspect of health and physical wellness for a user” and “are only
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`indicative of the amount of virtual currency that a user holds” (Response at 17–18)
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`is unfounded. The claims do not require a specific one-to-one relationship between
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`the “target score” and some specific health and wellness index. Rather, claim 1
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`merely requires the “target score” to be “indicative of one or more standards
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`