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` Paper 8
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` Entered: September 15, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`ALIPHCOM, INC.,
`Patent Owner.
`_______________
`
`
`
`
`
`Case IPR2016-00714
`Patent 8,446,275 B2
`____________
`
`
`
`Before BRYAN F. MOORE, TREVOR M. JEFFERSON, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
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`IPR2016-00714
`Patent 8,446,275 B2
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`
`INTRODUCTION
`I.
`Fitbit, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
`an inter partes review of claim claims 1–5, 8–10, 13–15, and 18–19 of U.S.
`Patent No. 8,446,275 (Ex. 1001, “the ’275 patent”) pursuant to 35 U.S.C.
`§§ 311–319. AliphCom, Inc., . (“Patent Owner”) filed a Preliminary
`Response to the Petition. (Paper 7, “Prelim. Resp.”). We have jurisdiction
`under 35 U.S.C. § 314(a). Section 314(a) provides that an inter partes
`review may not be instituted “unless . . . there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” After considering the Petition, the Preliminary
`Response, and associated evidence, we conclude that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in showing
`unpatentability of claims 1–5, 8–10, 13–15, 18, and 19.
`
`A. Related Proceedings
`The parties state that the ’275 patent has been asserted in AliphCom
`d/b/a Jawbone and BodyMedia, Inc. v. Fitbit, Inc., No 3:15-cv-02579 (N.D.
`Cal.), and Certain Activity Tracking Devices, Systems, and Components
`Thereof, Inv. No. 337-TA-963 (ITC). Pet. 2; Paper 5, 2. Petitioner also has
`filed petitions for inter partes review challenging claims 1–26 of the U.S.
`Patent No. 8,529,811 patent and claim 2 of U.S. Patent No. 8,793,522 patent,
`Fitbit, Inc. v. AliphCom, Inc., Nos. IPR2016-00607 and IPR2016-00658.
`
`B. The ʼ275 Patent
`The ’275 patent relates to a health and wellness monitoring system
`and device. Ex. 1001, Abstract. The system claims to be a “general health
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`and wellness management” device and system which receives “user data”
`from the user that includes “profile” and “preferences” information (id. at
`20:62–64), tracks the user’s activity using wearable devices having sensors
`(id. at Abstract), and then rewards a user’s activity with “points” determined
`based on “reference values” that define activity to-point conversion rates.
`(id. at 44:6–12). The system can also set a “target score” for a user as a
`means of increasing user motivation to reach health and wellness goal. Id. at
`38:58–59.
`
`C. Challenged Claim
`Independent claim 2 is reproduced below (Ex. 1001, 30:41–31:7):
`1. A method comprising:
`receiving data representing a profile defining
`parameters upon which a target score is established based
`on one or more health-related activities;
`acquiring data representing one or more subsets of
`acquired parameters based on one or more sensors
`disposed in a wearable computing device;
`determining data representing values for the one or
`more subsets of the acquired parameters based on
`reference values for the parameters set forth in the profile;
`calculating at a first processor a score based on data
`representing the values, the score representing an attained
`portion of the one or more health-related activities;
`causing presentation of a representation of the score
`relative to the target score; and
`adjusting a determination upon which to modify the
`target score,
`wherein the target score is indicative of one or more
`standards against which to compare one or more groups of
`the values aggregated to form the score.
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`D. Asserted Grounds of Unpatentability
`The information presented in the Petition sets forth proposed grounds
`of unpatentability for the claims of the ’275 patent as follows (Pet. 3):
`
`Reference[s]
`
`Basis
`
`Hoffman1
`
`35 U.S.C. § 102
`
`Hoffman and Gilley2
`
`35 U.S.C. § 103
`
`Claims
`1–5, 8–9, 13–15,
`and 19
`10, 18, and 19
`
`II. ANALYSIS
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 579 U.S. ___ (2016), No. 15-446, slip op. 13 (June 20, 2016).
`(upholding the use of the broadest reasonable interpretation standard as the
`claim interpretation standard to be applied in inter partes reviews). Under
`this standard, we interpret claim terms using “the broadest reasonable
`meaning of the words in their ordinary usage as they would be understood
`by one of ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that may be afforded by
`the written description contained in the applicant’s specification.” In re
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We presume that claim terms
`
`
`1 U.S. Patent Application Pub. No. 2012/0041767 published Feb. 16, 2012
`(“Hoffman”) (Ex. 1003).
`2 U.S. Patent Application Pub. No. 2008/0076637 published Mar. 27, 2008
`(“Gilley”) (Ex. 1004).
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`have their ordinary and customary meaning. See Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“Under a broadest
`reasonable interpretation, words of the claim must be given their plain
`meaning, unless such meaning is inconsistent with the specification and
`prosecution history.”); 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 citation and quotation marks omitted)). A patentee, however, may
`rebut this presumption by acting as his or her own lexicographer, providing a
`definition of the term in the specification with “reasonable clarity,
`deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Only those terms that are in controversy need to be construed, and
`only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Neither party provides any express claim constructions for terms in the
`challenged claims. Pet. 7–9; Prelim. Resp. 4. Patent Owner notes generally
`that “[t]he specification also explains that the target score corresponds to a
`health and wellness goal.” Prelim. Resp. 7. However, Patent Owner does
`not offer an express construction of the term “target score.” Patent Owner
`further contends that Petitioner’s failure to construe the claims is a sufficient
`basis for the Board to deny institution. Id. at 6–7. We disagree. Petitioner
`has stated that the terms of the challenged claims should be given their plain
`and ordinary meaning. Pet. 9. And we need not construe any particular term
`in order to determine whether to institute. Vivid Techs., Inc. v. Am. Science
`& Eng’g, Inc., 200 F.3d 795, 803, (Fed. Cir. 1999) (“[O]nly those terms
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`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”). For purposes of this Decision, we presume the
`claims carry their plain meaning, and we determine that no terms require
`construction at this juncture.
`
`B. Anticipation Based on Hoffman (Ex. 1003)
`1. Hoffman
`Hoffman teaches an activity monitoring system that can, among other
`things, “encourage individuals to participate in athletic activities and
`improve their fitness levels.” Ex. 1003 ¶ 4. In particular, the system
`motivates users to perform activities by rewarding them with “activity
`points” when they perform certain athletic and nonathletic activities. Id. ¶ 5.
`Accumulated activity points can then be “spent” on rewards such as
`products, services, discounts, and status upgrades. Id.
`The system includes a “platform that maintains user account
`information.” Ex. 1003 ¶ 69. This allows users to “register with [the
`system] to track and monitor their athletic performance and other types of
`activity.” Id. The system collects and stores information likely to “produce
`insights into various aspects of the user” such as their interests in sports,
`personal styles, and strengths, their preferences for events or event locations,
`shopping and/or browsing interests, their social network memberships, and
`event participation and workout data. Id. ¶ 73. This allows the system to
`“customize content based [] user interests” and to “personalize the user’s
`experience” with the system. Id.
`Based on the user’s interests in their profile, the system can suggest
`rewards that may be “purchased” with a certain number of activity points.
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`See Ex. 1003 ¶¶ 5, 114, 122–23. These rewards can include “VIP treatment”
`at stores or events, product and/or service discounts, and “video game
`related items.” Id. ¶ 122. Hoffman teaches modifying the “cost” of these
`rewards based on the user’s interests, for example discounting the price for
`items relating to those interests. See id.
`The system also displays the user’s accumulated activity points
`relative to their reward in order to “visually represent [the] progress a user
`has made toward earning a number of activity points needed to purchase [a]
`corresponding reward.” Ex. 1003 ¶¶ 87, 114, 123, 130, Figs. 14–16. This
`allows the user to compare their progress towards their reward over multiple
`types of athletic and non-athletic activities. See id. ¶¶ 91, 123.
`2. Analysis
`Petitioner contends that claims 1–5, 8–9, 13–15, and 19 are
`anticipated by Hoffman. Pet. 10. To support its contentions, Petitioner
`provides detailed explanations as to how the prior art meets each claim
`limitation. Id. at 10–43. Petitioner also relies upon a Declaration of
`Dr. Mark A. Musen, who has been retained as a Declarant by Petitioner for
`the instant proceeding. Ex. 1002.
`3. Claim 1
`The present record supports the contention that Hoffman describes
`receiving data representing a profile defining parameters upon which a target
`score is established based on one or more health-related activities as recited
`in claim 1. Pet. 10–14; Ex. 1003 (multiple paragraphs cited in Petition).
`The present record also supports the contention that Hoffman describes
`acquiring data representing one or more subsets of acquired parameters
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`based on one or more sensors disposed in a wearable computing device as
`recited in claim 1, for example. Pet. 15–16; Ex. 1003 (multiple paragraphs
`cited in Petition). The present record also supports the contention that
`Hoffman describes determining data representing values for the one or more
`subsets of the acquired parameters based on reference values for the
`parameters set forth in the profile as recited in claim 1, for example. Pet.
`16–17; Ex. 1003 (multiple paragraphs cited in Petition). The present record
`also supports the contention that Hoffman describes calculating at a first
`processor a score based on data representing the values, the score
`representing an attained portion of the one or more health-related activities
`as recited in claim 1. Pet. 17–18; Ex. 1003 (multiple paragraphs cited in
`petition). The present record supports the contention that Hoffman describes
`causing presentation of a representation of the score relative to the target
`score as recited in claim 1. Pet. 18–19; Ex. 1003 (multiple paragraphs cited
`in petition). The present record supports the contention that Hoffman
`describes adjusting a determination upon which to modify the target score,
`wherein the target score is indicative of one or more standards against which
`to compare one or more groups of the values aggregated to form the score as
`recited in claim 1. Pet. 19–22; Ex. 1003 (multiple paragraphs cited in
`petition).
`Petitioner asserts: that “[t]he number of activity points necessary to
`‘purchase’ a reward is established and presented to the user as a ‘goal’ (i.e.,
`a target score).” Petition 13–14 (citing Ex. 1003 ¶¶ 114, 123). Patent
`Owner argues that Petitioner’s reliance on reward items as the target score is
`misplaced. Prelim. Resp. 13–21. Patent Owner argues that “the price of a
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`reward item is not set ‘based on one or more health-related activities’” (id. at
`18), as required by claim 1. Additionally, Patent Owner argues that
`“Hoffman still fails to disclose a target score that is ‘established based one or
`more health-related activities’ because it is the user who selects the reward
`item.” Id. at 19. We disagree. The Petition states that the activity points
`(which include athletic activity) in Hoffman are converted to a form of
`currency that can be used to buy reward items. Pet. 13 (citing Ex. 1003 ¶¶ 5,
`77). Thus, athletics (a health related activity) is used to establish the price of
`the reward item in activity points. Additionally, the reward item can be
`selected as a goal based on a user’s interest in athletics. Pet. 13–14 (citing
`Ex. 1003 ¶¶ 114, 123). Additionally, while it may be true that the user
`ultimately selects the reward, as noted above, the activity point price of the
`reward, which is the claimed “target score,” is established based on the
`activity, for example athletics. Thus, we are not persuaded by Patent
`Owner’s argument.
`Claim 1 also recites that “the target score is indicative of one or more
`standards against which to compare one or more groups of the values
`aggregated to form the score.” Petitioner relies on the activity point value of
`the reward the “standard” by which to compare groups of values. Pet. 21–
`22. Patent Owner argues that “Petitioner appears to be using the reward
`price as both the target score and the standards the target score
`indicates . . . .” Prelim. Resp. 21. Patent Owner misses the point. The
`claims recite that the target score itself is indicative of the standards. Thus,
`Petitioner adequately points to the activity point value of the reward item as
`the target score, which is indicative of the standard (activity points) against
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`which groups of values (point accumulated from various activities) are
`compared. Thus, we are not persuaded by Patent Owner’s argument.
`Claim 1 also recites “determining data representing values for the one
`or more subsets of the acquired parameters based on reference values for the
`parameters set forth in the profile.” Petitioner relies on Hoffman’s
`conversion of, for example, steps taken during a walking workout to activity
`points. Pet. 17. In other words, the conversion rate of steps to activity
`points provides a reference value for the steps (the acquired parameters).
`Patent Owner argues essentially that the steps, in this example, are not
`parameters in the profile. Prelim. Resp. 24. We disagree. Hoffman
`suggests that “activity level” is part of the profile. Pet. 17; Ex. 1003 ¶ 78.
`We determine that the number of steps that a person takes in a walking
`activity is an activity level that can, according to Hoffman, be included in
`the profile. Thus, we are not persuaded by this argument.
`4. Claims 2–5, 8–9, 13–15, and 19
`For the reasons above, we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claim 1. Claim 1 is similar in
`scope to independent claim 19, however, we have considered any
`differences in scope in analyzing claim 19. Also, as to the Ground based on
`Hoffman alone, the parties argue these claims collectively, choosing claim 1
`as representative. See, e.g., Pet. 52–56; Prelim. Resp. 8. Accordingly, the
`previous discussion with respect to claim 1 equally applies to claim 19. We
`are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
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`challenge claim 19. For claims 2–5, 8–9, and 13–15, each of which depends
`directly or indirectly from independent claim 1, on this record, we agree that
`Petitioner has adequately shown Hoffman’s disclosure of the additional
`limitations of claims 2–5, 8–9, and 13–15.
`5. Summary
`We have reviewed the proposed ground of anticipation by Hoffman
`against claims 1–5, 8–9, 13–15, and 19, and we are persuaded, at this
`juncture of the proceeding, that Petitioner has established a reasonable
`likelihood that Petitioner would prevail in its challenge to claims 1–5, 8–9,
`13–15, and 19 on this ground.
`
`C. Obviousness Based on Hoffman (Ex. 1003) and Gilley (Ex. 1004)
`1. Gilley
`Gilley establishes a user profile that defines a variety of health and
`activity parameters (Ex. 1004 ¶¶ 15, 45, 84), monitors and analyzes activity
`data from sensors disposed in a wearable computing device (id. ¶¶ 14, 71,
`82, 89, 90), sets health and activity targets for a user (id. ¶¶ 17, 49, 75, 96,
`105), tracks and provides feedback regarding a user’s progress towards those
`targets (id. ¶¶ 16, 99, 169), and includes a reward system through which an
`attained amount of activity can be exchanged for a reward (id. ¶¶ 73, 182).
`Gilley’s system is designed to “maintain the user’s motivation” to
`engage in exercise and to “assist or motivate the user” to meet activity goals.
`Id. ¶¶ 67, 75, 140. For example, Gilley’s system can “assign an activity
`level to the user’s profile, e.g., beginner, intermediate, or advanced” in order
`to “suggest fitness activities in step 104 that are more suited to . . . the
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`capabilities of the user” (id. ¶¶ 49–50) and later update a user’s level based
`on collected activity data. See id. ¶ 72.
`To assist users in meeting fitness goals, Gilley also teaches that its
`system determines the difference between a user’s progress and their target
`and recommends that a user engage in a health-related activity that the
`system predicts will compensate for a user’s projected shortfall by, for
`example, “increas[ing] the level or intensity of future workout(s).” Id. ¶ 76.
`Where “the collected data (e.g., sensor data) indicates that the user will not
`reach a target” the system also can “reduce the target performance metric to
`a level that is more attainable” and “adjust the user's fitness goals to be less
`ambitious to maintain the user's motivational level.” Id. ¶¶ 75, 140.
`2. Analysis
`Petitioner contends that Hoffman and Gilley teach the limitations of
`claims 10, 18, and 19. Pet. 43. To support its contentions, Petitioner
`provides detailed explanations as to how the prior art meets each claim
`limitation. Id. at 43–54. Petitioner also relies upon a Declaration of Dr.
`Musen. Ex. 1002.
`The present record supports the contention that the combination of
`Hoffman and Gilley describes determining a magnitude of a difference
`between the score and the target score; predicting a subset of the acquired
`parameters to reduce the difference between the score and the target score;
`and generating data representing a recommendation to present to a user to
`engage in a health-related activity as recited in claim 10. Pet. 45–49; Exs.
`1003, 1004 (multiple paragraphs cited in Petition). The present record
`supports the contention that the combination of Hoffman and Gilley
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`describes determining a subset of scores; changing a classification associated
`with a user based on the subset of scores, wherein changing the classification
`including leveling up to a first classification or leveling down to a second
`classification as recited in claim 18. Pet. 49–52; Exs. 1003, 1004 (multiple
`paragraphs cited in Petition). The present record also supports the
`contention that the combination of Hoffman and Gilley describes a general
`health and wellness module configured to facilitate modification of a value
`of an acquired parameter associated with a state of a user to change the
`target score as recited in claim 19. Pet. 52–54; Exs. 1003, 1004 (multiple
`paragraphs cited in Petition). Finally, Petitioner provides a reasonable
`rationale to combine Hoffman and Gilley. Pet. 47–49, 51–52, 54.
`As to claim 19, the Petition states that Gilley teaches reducing the
`user’s long-term goals to more attainable levels if collected data indicates
`that users are falling short of their fitness goals. Pet. at 53 (citing Ex. 1004
`¶ 75). The petition then argues that one of ordinary skill “would have been
`motivated to combine the Hoffman and Gilley systems based on teachings in
`both references” and that this modification involves “[u]sing the target score
`adjustments taught by Gilley in the Hoffman system.” Pet. at 54 (citation
`omitted).
`Patent Owner argues that Petitioner does not specify what
`modification would be made to Hoffman to incorporate the teaching of
`Gilley to meet the claim limitation for claim 19. Prelim. Resp. 29.
`Additionally, Patent Owner argues that any modification of Hoffman to
`adjust the reward item, and thus, adjust the target score, would be non-
`sensical because the reward item has a price that must be set by sellers and
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`because lowering the price would reduce incentive to exercise by making the
`goal easier to obtain. Id. at 30–31. We disagree. Petitioner states that the
`reward goal (the activity points price of a reward item) is the thing being
`modified in the combination. Additionally, Hoffman explicitly suggest that
`the price of reward items can be discounted. Thus, reducing the price of a
`reward item is not “non-sensical.” Additionally, we determine that it is
`reasonable, as the Petition suggests, to make goals more attainable in order
`to increase a person’s motivation to achieve those goals. See Pet. 54. Thus,
`we are not persuaded by this argument.
`For the reasons above, we are persuaded, at this juncture of the
`proceeding, that Petitioner has established a reasonable likelihood that
`Petitioner would prevail in its challenge to claim 19. For claims 10 and 18,
`each of which depends directly from independent claim 1, on this record, we
`agree that Petitioner has adequately shown Hoffman’s disclosure of the
`additional limitations of claims 10 and 18. Prelim. Resp. 25–26.
`3. Summary
`We have reviewed the proposed ground of obviousness over the
`combination of Hoffman and Gilley against claims 10, 18, and 19, and we
`are persuaded, at this juncture of the proceeding, that Petitioner has
`established a reasonable likelihood that Petitioner would prevail in its
`challenge to claims 10, 18, and 19 on this ground.
`
`III. CONCLUSION
`For the foregoing reasons, we determine that the information
`presented in the Petition establishes a reasonable likelihood that Petitioner
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`would prevail in its challenge to claims 1–5, 8–10, 13–15, 18, and 19 of the
`’275 patent. At this juncture, we have not made a final determination with
`respect to the patentability of the challenged claims, nor with respect to
`claim construction.
`
`ORDER
`IV.
`For the foregoing reasons, it is
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted for the following grounds of unpatentability:
`
`Reference[s]
`
`Basis
`
`Claims
`
`Hoffman
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`35 U.S.C. § 102
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`1–5, 8–9, 13–15, and 19
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`Hoffman and Gilley
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`35 U.S.C. § 103
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`10, 18, and 19
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` ;
`
` and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`will commence on the entry date of this Decision.
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`PETITIONER:
`
`Naveen Modi
`Yar Chaikovsky
`David Okano
`PH-Fitbit_Aliph-IPR@paulhastings.com
`
`
`
`PATENT OWNER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Andrew Brown
`asbrown@wsgr.com
`
`Richard Torczon
`rtorczon@wsgr.com
`
`Jose Villarreal
`jvillarreal@wsgr.com
`
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