`
`
`
`
`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 8,446,275 B2
`____________
`
`Record of Oral Hearing
`Held: June 13, 2017
`____________
`
`
`
`
`
`Before BRYAN F. MOORE, TREVOR M. JEFFERSON, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DAVID OKANO, ESQ.
`NAVEEN MODI, ESQ.
`MICHAEL C. HENDERSHOT, ESQ.
`Paul Hastings LLP
`1117 South California Avenue
`Palo Alto, California 94304
`
`ON BEHALF OF PATENT OWNER:
`
`
`RICHARD TORCZON, ESQ.
`WES DERRYBERRY, ESQ.
`Wilson Sonsini Goodrich & Rosati
`1700 K Street, NW, Fifth Floor
`Washington, DC 20006-3817
`
`
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`June 13, 2017, commencing at 10:00 a.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE MOORE: Good morning. We are here for the
`hearing in IPR2016-00714. I am Judge Moore and with me today
`are Judges Jefferson and, remotely, Judge Quinn.
`Starting with the Petitioner, who do we have here
`
`today?
`
`MR. OKANO: David Okano with Paul Hastings for
`Fitbit, Incorporated.
`MR. HENDERSHOT: Michael Hendershot of Paul
`Hastings for Petitioner Fitbit.
`MR. MODI: Good morning, Your Honors, Naveen
`Modi on behalf of Fitbit as well.
`JUDGE MOORE: And for Patent Owner?
`MR. TORCZON: Richard Torczon for Aliphcom,
`doing business as Jawbone. With me Wes Derryberry, and
`shadowing from our office we have Shan Liu.
`JUDGE MOORE: Thank you.
`Petitioner has the burden, Petitioner will go first, will
`have 30 minutes with an opportunity to reserve time for rebuttal,
`and following your opening presentation, Patent Owner will have
`30 minutes.
`Unless there's any questions, Petitioner, you may begin.
`MR. OKANO: Your Honors, may I approach?
`JUDGE MOORE: Certainly.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 3
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`MR. OKANO: One quick question before we start.
`Will there be a timer for me to see my remaining time or is that
`something I will need to keep track of on my own?
`JUDGE MOORE: Yeah, I think you need to take care
`of that. We have something here, but I think the only thing that
`they can see is the lights.
`MR. OKANO: Okay.
`JUDGE MOORE: So, yeah, the best for you is going to
`be to keep the time yourself. I certainly can --
`MR. OKANO: That's fine, as long as I know.
`JUDGE MOORE: I certainly can let you know once
`you tell me how much time you're going to take for your opening,
`I can let you know when you're close.
`MR. OKANO: I would like to reserve 10 minutes for
`rebuttal.
`JUDGE MOORE: Ten minutes.
`MR. HENDERSHOT: I have a watch, Your Honor,
`you won't be offended if I pass him a note to let him know the
`time?
`
`JUDGE MOORE: Certainly, you can pass notes.
`MR. HENDERSHOT: Very much appreciate it.
`JUDGE MOORE: Sure. And any time you're ready.
`MR. OKANO: Okay, again, I'm David Okano of Paul
`Hastings for Fitbit, Incorporated, and the patent we are
`challenging today issued without the benefit of its claims being
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 4
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`properly shaped by a relevant prior art reference. This reference,
`of course, is Hoffman, which is Exhibit 1003 in the record.
`Our papers highlight the teachings of this reference,
`which is assigned to Nike and is entitled an athletic activity user
`experience and environment. In response, the Patent Owner
`advances a broadest reasonable interpretation of the phrase
`"target score" that is inconsistent with the language of the
`independent claims, inconsistent with the language of the
`dependent claims, inconsistent with the teachings of the
`specification, and also inconsistent with an agreed-upon
`construction in a related proceeding.
`On the other hand, the Board's preliminary construction
`of "target score" under its ordinary meaning to encompass a goal
`is consistent with the intrinsic evidence. That being said, in our
`papers, we submit that we have shown that even under the
`affirmative portion of Patent Owner's narrow construction,
`Hoffman anticipates the relevant challenged claims of the '275
`patent.
`
`So, in my opening time here, I plan to discuss the
`disputed "target score" term, as that is kind of the center of the
`parties' dispute, and perhaps provide a more full and accurate
`characterization of the Hoffman reference than is in Patent
`Owner's response. And, of course, I'm happy to answer any
`questions from the panel.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`JUDGE MOORE: And I don't think I mentioned it, but
`as you go through the slides, please mention the slide number
`because the remote judge, I'm not sure, sometimes in this room
`she can see the demonstratives, but usually she cannot.
`MR. OKANO: Okay.
`JUDGE MOORE: So if you would do that, and if you
`refer to evidence on the ELMO or something other than your
`demonstratives, please describe it and give us a moment as she's
`going to have to find it and pull it up.
`MR. OKANO: Very clear, I will be --
`JUDGE MOORE: Obviously for both sides.
`MR. OKANO: I will be very explicit in any references
`to the slides and to the evidence.
`JUDGE MOORE: Thank you.
`MR. OKANO: So, as I mentioned earlier, the primary
`dispute here centers on the phrase "target score," and whether the
`Hoffman reference teaches this target score under its broadest
`reasonable interpretation. And just to kind of narrow the issues,
`Patent Owner in this trial has chosen to limit its responses to this
`term, and to Hoffman's alleged, purported and we believe clear
`disclosure of that term.
`In fact, the testimony of Petitioner's expert, Dr. Musen,
`is unrebutted and unchallenged as to the factual issues underlying
`the disclosure of all the other references or limitations of the '275
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 6
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`patent's claims. And Patent Owner has not offered any argument
`supported by testimony by its declarant for any other limitation.
`And to be candid, Patent Owner has also made several
`other arguments, all of which rely, however, on subsidiary factual
`issues, again, where the testimony of Petitioner's expert,
`Dr. Musen, is unrebutted and unchallenged in the record.
`We believe we have adequately responded to these
`issues and arguments in our papers, but certainly if the Board has
`any questions, I'm happy to talk about them.
`JUDGE QUINN: Counsel, you stated in your
`introduction that there was a -- there had been an agreed
`construction?
`MR. OKANO: That is correct.
`JUDGE QUINN: In related litigation. What was that
`agreed construction?
`MR. OKANO: So, as mentioned in our petition, this
`dispute arose out of an ITC investigation where Patent Owner has
`asserted infringement of the '275 patent, among others, against
`Petitioner Fitbit. This proceeding proceeded through claim
`construction, at which time the parties agreed of the number of
`patents that were in the investigation, only three terms required
`construction, and all other terms carried their ordinary meaning.
`And none of the -- and the parties agreed that all terms of the '275
`patent should be interpreted under their ordinary meaning,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 7
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`according to the Phillips standard, you know, applicable at the
`ITC.
`
`So that is -- you know, that, again, is actually in our
`petition, why one of the -- one of the many reasons why we
`interpreted all terms under their ordinary meaning, because that is
`consistent with what the parties had done in this related
`proceeding.
`JUDGE QUINN: Understood, but on your petition, you
`didn't expressly state a construction, you just stated that the term
`has a plain and ordinary meaning.
`MR. OKANO: That is correct. You know, as the
`Board cited in the TriVascular decision, you know, the terms
`need only be construed to the extent required to resolve the
`parties' dispute, and here, it is sufficient that the term is
`interpreted under its ordinary meaning, and to encompass a goal,
`you know, as was noted in our petition, and by the Board in its
`institution decision.
`JUDGE QUINN: Is the term in dispute at this point on
`the scope of the plain and ordinary meaning, or is it a dispute that
`the plain and ordinary meaning does not apply to this term?
`MR. OKANO: The dispute is that the plain and
`ordinary meaning does not apply to this term. During -- if I may,
`Patent Owner's response clearly states that they intend to define
`the term, and I will -- I can read that off to you verbatim, I have
`it. In the table of contents, under their claim construction, for
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 8
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`"target score," they say, section 3(a)(1), "the claims in
`specification define target score as a value indicative of state or
`conditions of health and physical wellness for a user that the user
`strives to maintain."
`And certainly in our deposition of their expert, who
`Patent Owner relies on for its construction, he repeatedly, and,
`you know, expressly said, this is a case of lexicography. I will go
`to -- I am looking at slide number 6 of our demonstratives and I
`will just read this into the record. The question is, "And is that
`consistent with the analysis you applied in construing the claims,
`that the ordinary meaning should not apply because the
`specification defined the term 'target score?'
`"Answer: That's correct."
`That's at the transcript, Exhibit 1014, page 38, lines 17
`through 21. And their declarant also stated that he read through
`the legal section in the Board's institution decision on the legal
`standard required for lexicography as opposed to ordinary
`meaning, and he again confirmed that that is what he believed
`applied here.
`JUDGE QUINN: So, my question is, then, if we do
`agree with you that the plain and ordinary meaning applies, is
`there a need to expressly construe the term, and if so, what is your
`proposal for that construction?
`MR. OKANO: Your Honor, we believe that there is no
`need to expressly construe the term, other than to note that it is --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 9
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`it can be understood according to its ordinary meaning under its
`broadest reasonable interpretation, and in this context, that
`encompasses a simple goal, a target number, a simple goal. Or as
`we discuss in our reply, I'm looking at slide 9 of our
`demonstratives, and this refers to the '275 patent, Exhibit 1001 at
`35, lines 56 to 67. And here, the specification, again, we're not
`saying this is definition, but the specification is giving examples
`of what a target score may encompass, and it says, "A target score
`can be a range of values or can be a function of any number of
`health and wellness representations."
`JUDGE MOORE: All right, can you go to column 38
`of the spec at line 46 and 47, if I'm lining it up correctly. Can you
`bring that up?
`MR. OKANO: Your Honor, I apologize, I'll have to
`bring up the -- switch to the ELMO.
`JUDGE MOORE: If you have it in front of you.
`MR. OKANO: I have it in front of me.
`JUDGE MOORE: Well, we can work with that and
`then I will just read it here. It says, and I'm omitting the leading
`in, but it says, "Target score indicative of an optimal state or
`condition of health and wellness for a user." And so my question
`to you is, why is that not definitional of "target score?"
`MR. OKANO: Your Honor, that is -- we understand
`that is an example of what target score may be. In fact, we
`don't -- Petitioner does not dispute that a target score can
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 10
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`encompass what Patent Owner proposes as its definition. That is
`part of the -- that falls under and within the ordinary meaning of
`the target score; however, you know, as the specification makes
`clear, it's not so limited. I mean, this portion of the spec gives
`other examples of target score, which say it can be a range of
`values or, you know, a function of any number of health and
`wellness representations. These, again, are additional examples
`that fall within the scope of the term under its broadest reasonable
`interpretation.
`So the portion you read, that is a target score, we do not
`dispute that; however, that is just one example. That is an
`example of something that the term encompasses within its
`broadest reasonable interpretation.
`JUDGE MOORE: All right. And does a target score
`need to exclusively be related to health and wellness, and if not,
`why not?
`MR. OKANO: So, again, returning to this portion of
`the specification, the target score -- it clearly explains that the
`target score can be a simple range of values, and, in fact, that is
`borne out in other examples as well. I'm looking, Judge Quinn, at
`slide 11 on our demonstratives. This is Exhibit 1001 at 44:12-24.
`And there are two examples of a target score as explained in the
`spec. This is the first of them. Here, they equate "45 milligrams
`as 20 points (i.e., a target score for this nutrient."
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 11
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`So, again, this is -- 20 points is an abstraction. We
`asked their declarant at deposition what 20 points or the other
`example is a target score of 100, what these meant, and his
`answer was he didn't know what is 100? It's an abstracted
`number. So the two examples of target scores that are disclosed
`in the specification are simple numbers, and yes, they can be --
`it's not like a body mass index. This is not something that carries
`an inherent, you know, health implication. It can. Again, we --
`Petitioner submits that the target score can encompass -- I mean,
`the term is broad, its broadest reasonable interpretation is a range
`of values that can be the number 20, that can be the number 100.
`The purpose of it is a motivating -- something that motivates the
`user to earn values, or as are described in both the '275 patent and
`the Hoffman reference, points or activity points.
`JUDGE MOORE: Okay. So, I guess the -- it seems to
`me from reading Patent Owner's papers, another argument they're
`making is that the specification separates a concept of getting
`rewards and getting a score related to rewards from a concept of a
`health goal and optimizing a user's health. And you can see the
`description of those relates to different figures, as in different
`sections of the specification.
`So, why are they not correct that those are separate
`embodiments and anything dealing with rewards is unrelated to
`the health goals section?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 12
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`MR. OKANO: Well, to begin, Your Honor, first of all,
`we would dispute that these are in separate sections. You know,
`we have looked through the spec, there is no headings that say,
`'275 patent system using scores, '275 patent system using points.
`They've just arbitrarily cut off paragraphs at various columns and
`line numbers.
`Furthermore, you know, I believe that they say the
`section related to reward points or points is section 27 to 29,
`columns 27 to 29, and the sections related to points is section 33
`to 45. I mean, they don't even attempt to explain about the other
`portions of the patent, which also talk about scores and points.
`And, in fact, they concede in their Patent Owner response that
`their break of sections is not even clean, that it -- the patent
`occasionally generally mentions points elsewhere, and then
`without any supporting evidence, they say but these are -- you
`know, where it says points, it really means scores.
`And Petitioner submits that, you know, this is just
`attorney argument rather than based on the intrinsic evidence in
`the record. And secondly, if I can return to claim 1, you know,
`on a more fundamental level on scores and reward points, is that
`the claim, which is what we are here challenging, is focused on
`what happens to earn these reward points. What happens
`before -- you know, the steps that are taken in order to obtain a
`reward point, or obtain a value is what the term and the claim is,
`which is you have a profile.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 13
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`This profile includes various parameters, and the target
`score is -- only needs to be established, and again, the claim uses
`the word based on one or more health-related activity. It doesn't
`use physical health, it doesn't use -- it doesn't limit itself to
`health-related activities. As long as the score is established based
`on, you know, one health-related activity, that's what the claim
`requires.
`Then the claim requires acquiring data from a number
`of sources, but it must also include at least one set of data from a
`wearable sensor. Again, this happens -- these claims are talking
`about what happens to earn the points. Then the score is -- these
`values are translated using reference values into a common
`denominator, as is described in the specification. Here, you
`know, as their expert conceded, everything is a point. It's a point.
`Even under their own alleged separation between scores and
`points, everything is a point. So that there's these conversion
`factors that are used, and then these conversion factors are used to
`calculate a score. And in the patent, the figures, you know, the
`score includes an activity sleep nutrition value and it includes a
`location and social value. I mean, this is not limited to only
`physical activity.
`And finally, you know, it calculates a score that is
`compared to the target score. Again, this happens before. You
`know, this is all about -- these claims are all about earning the
`points. And what happens afterwards is -- you know, that's not
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 14
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`what the claims are limited to. The claims are broad enough to
`encompass both points that are kind of used in an abstracted
`fashion. You just earn them and they sit there. You compare
`them to an abstracted number, and points that are then
`subsequently used to -- because you were motivated to purchase
`something tangible, such as running shoes.
`JUDGE QUINN: But the claims make a distinction
`between the calculated score and the target score, so there are two
`different points or numbers that we are looking at here, and it
`seems like the distinction is, yes, you can earn things as you go
`along, but in the end, there's got to be this target that it gets
`compared to. And to look at the claim, and only the claim
`language, it seems like that last paragraph on the wherein clause
`just says this has to be indicative of one or more standards. So,
`how does the reward meet that limitation?
`MR. OKANO: So, the reward -- and I assume, Judge
`Quinn, that you were talking about the reward that is disclosed in
`the Hoffman reference?
`JUDGE QUINN: Correct.
`MR. OKANO: So, again, there is a -- and if I may read
`out a section of Hoffman, and this is --
`JUDGE MOORE: We're about a minute in. I'm going
`to grant you a few more minutes because I'm going to have
`another line of questioning, but if you could wrap up, and
`obviously answer any of Judge Quinn's questions.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 15
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`MR. OKANO: So, Judge Quinn, I'm looking at
`paragraph 123 of Hoffman, which was cited in our petition, and it
`says, "a track option may be provided below, one or more
`rewards, such as a reward to allow a user to use reward 1601, and
`an activity point cost thereof as a goal on a user's athletic
`performance monitoring site."
`So what this passage is saying is that the reward in
`Hoffman is essentially the activity point goal. There's a point of
`values associated with it, it's a standard against which to compare
`the scores that have been -- that the user has earned. It's just as an
`additional way of motivation, instead of saying 100, which is the
`example given in the '275 patent, the kind of the -- the underlying
`implication of Hoffman is that we understand human nature.
`People -- some people certainly may be happy to achieve 100, but
`others may be more motivated if that 100 now is associated with
`some reward, such as running shoes, and that might provide them
`more motivation. And that's the underlying goal of Hoffman,
`which is to encourage users to exercise more.
`So, I guess the short answer to the question is that
`Hoffman clearly equates the two. It's you associate a target score,
`which is an activity reward point cost, with a tangible item for the
`purpose of improving and increasing the user's motivation to
`exercise.
`JUDGE MOORE: Okay. As I said, I want to lead you
`down one more path before we switch over. There is an
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 16
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`argument that Patent Owner makes that because this is an
`anticipation case, you can't combine embodiments, and they
`claim that you're combining the embodiment of a web page with
`the embodiment of a activity wrist -- activity tracker that you
`would wear on your wrist. And so help me understand your --
`how you see that argument.
`MR. OKANO: Certainly. I think the first point is this:
`This is, you know, questions of anticipation are factual, and as we
`noted earlier, Patent Owner has not offered any evidence in the
`record from its declarant supporting its assertion. The only
`evidence in the record is from Petitioner's expert, Dr. Musen, to
`begin.
`
`More substantively, Petitioner submits that Patent
`Owner's argument lacks merit, simply because, yes, the Hoffman
`system includes a watch, includes a wearable band, it includes an
`online environment. It can include a server. You know, just like
`the system of the '275 patent, which includes a wearable device.
`There is an online environment, which, you know, it appears in
`many of the figures. Petitioner, or sorry, Patent Owner is
`confusing elements of the system for different embodiments. The
`system that is claimed, the system that Petitioner is advancing as
`anticipatory includes multiple pieces. That's how these fitness
`environments are designed, they're designed to be immersive.
`I mean, again, the purpose of Hoffman is to provide as
`many touch points to the user to try to keep them in the program,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 17
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`understanding that, you know, many people fall out of fitness
`programs.
`So the -- you know, to that end, Hoffman describes its
`system as, you know, something that can be put in the shoe, an
`exercise tracker, or something that may be worn on the wrist, a
`band, or in a watch, and that interfaces with an online
`environment that allows additional inputs, that allows the user an
`easier place to track their goals, because obviously it's hard to --
`often times there's no screen on something you're going to wear
`in your shoe or the screen is minimal perhaps on the watch. But
`again, this is exactly how the '275 patent is set up as well. There
`is a wearable component and then there is a kind of back end,
`which is accessible via computer.
`So, again, the bottom line takeaway is Patent Owner is
`confusing elements of the same system with different
`embodiments.
`JUDGE MOORE: Okay. Unless there are any other
`questions, you've run your 20 minutes.
`MR. OKANO: Well, I appreciate that.
`JUDGE MOORE: If you have more, you certainly can
`go, but you're going to cut into your rebuttal time.
`MR. OKANO: I will save the remainder of my time for
`rebuttal. I appreciate the grant of the free time, so to speak.
`Thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 18
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`
`JUDGE MOORE: All right. And so on the clock here,
`I have that there were sort of four extra minutes, so certainly
`Patent Owner, you can use 34 minutes if you choose.
`MR. TORCZON: Your Honor, I hope to be much
`briefer than that. Good morning, Your Honors, may it please the
`Board. I would like to start with the tail end of Mr. Okano's
`answer to Judge Quinn, where he said some people might be
`satisfied with 100 points, other people will want a reward to
`motivate them. A perfect characterization of an intrinsical award
`or an intrinsical and an extrinsical.
`This is also a dichotomy that's reflected in the
`specification of the Utter patent. There are different ways to
`motivate people. The claims are talking about one way, Hoffman
`is talking about another.
`I would agree with Mr. Okano that this case really is
`about -- let me do this. I would agree with Mr. Okano and Fitbit
`that the place to start is with claim construction. And I think this
`slide, which comes from the reply brief.
`JUDGE JEFFERSON: And we're looking at slide 5?
`MR. TORCZON: I'm sorry, yes, we're looking at slide
`5, Judge Quinn. If we look at their proffered constructions here,
`which comes from their reply brief, I think it tells you a lot of
`things. The first thing is they say that they just want ordinary
`meaning. Frankly, I think if you take ordinary meaning, we win.
`But that's not what they're proposing here. They say, "ordinary
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 19
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`meaning encompasses a goal." They're saying target score is
`broader than a goal. That, I submit, is ridiculous.
`A target score is a type of goal. That's what the patent
`says, that's what our briefing says. A target score is a goal. Much
`in the same way that an apple is a fruit. A reward price may also
`be a goal, in much the same way as an orange is also a fruit. It
`does not follow that an apple is an orange. So this is a classic
`example of where blurring is going on in this.
`I would also like to point out, just as an aside, that what
`they're characterizing as our construction is not right. That's
`clearly an argument. We know better than to define our own
`claim terms in negative terms with respect to somebody else's
`patent.
`
`I think the other thing that really classically shows the
`kind of blurring that's going on, is if you go to their slide 9 --
`JUDGE MOORE: And before we go forward, if you're
`saying that they're mischaracterizing your construction, so why
`don't you here on the record tell us what your construction is so
`that we have it clearly in the record.
`MR. TORCZON: A target score is precisely that, it is a
`score that is a target. So you cannot divorce it from the rest of the
`claim language, Your Honor. So the rest of the claim talks about
`values that are input -- well, let me back up.
`If we go to 7 -- I'll get the direction on this clicker right
`yet. If we go to claim 7, target score is used three times in the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 20
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`claim. I submit that the hierarchy of claim interpretation is you
`start with the plain language of the claim, but remember, it's the
`claim as a whole. It's not isolating little bits of it.
`The second best source of meaning is the specification.
`Frankly, I think we're consistent in both places, so it's not even
`really a question of lexicography. Both are saying the same
`thing.
`
`But let's look at the claim language here. It's curious
`the way the highlighting in the underlying claim goes here,
`because the target score is actually established upon the profile
`parameters, if you read that, based on one or more health-related
`activities. So it's the parameters that are based on one or more
`health-related activities, the target score is based on the
`parameters.
`So this is important because it means the profile
`parameters, the profile of the user, is what's being used to identify
`the target score that they are shooting for. So it's a goal. It's a
`goal. It's like -- it's like saying I want to make at least 90 points
`on a test, right? That is a score. You can have other goals in life.
`I want to climb Mount Everest, that's not a score. It's -- it's a
`goal, however.
`So we've got a score that's based on the user's profile,
`and the parameters are admittedly health-related activities. Of
`course they are. That's what this whole invention is about. The
`other places where target score comes up is we have to have a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 21
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`representation of a target score, and I think Judge Moore, you
`touched on this a bit when you talked about how they were
`combining two different representations without any guidance in
`Hoffman to do that combination, which fails as an obvious -- as a
`matter of obviousness, much less as a matter of anticipation.
`JUDGE MOORE: Well, I feel like I need to back up a
`minute and get to that point. You say that target score is based on
`parameters.
`MR. TORCZON: Right.
`JUDGE MOORE: Which you say must be health
`
`related.
`
`MR. TORCZON: Right.
`JUDGE MOORE: So at the end of the day, are you
`saying that a target score has to be based on health-related
`activities exclusively with no impurity, just purely a score that
`only represents health-related activity?
`MR. TORCZON: I think our expert put it best when he
`said they all have to have some physical component, but that is
`actually what our specification talks about. So they keep on
`going to figure 8 and the miscellaneous activities, but if you look
`at that, those are all specifically identified as indications of
`wellness. So it is entirely possible for social activities to feed into
`wellness.
`You'll also note that if you look at figure 8, that they get
`very little value, okay? They're minor contributions to overall
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 22
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`
`health and wellness. So that's not a problem. I think what they've
`tried to do is leverage that to say that other activities like
`Hoffman's shopping is a wellness activity.
`First of all, there's no support for that in Hoffman.
`Hoffman doesn't draw any connection there. And in fact,
`Hoffman suggests exactly the opposite, because if you look at
`Hoffman, you only get points if you shop at a sponsoring
`company. Well if you can divide between sponsored shopping
`and unsponsored shopping, then clearly the points have nothing
`to do with the health-related activity. It certainly doesn't
`distinguish between shopping online and shopping in a mall. So
`the difference --
`JUDGE MOORE: So, I think -- and I'm sorry to
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
