Paper No. 25
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`
`
`
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`Trials@uspto.gov
`571-272-7822 Entered: March 11, 2018
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOMTOM, INC., Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02023
`Patent 6,434,212 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 11, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TOMTOM, INC., Petitioner,
`
`v.
`
`BLACKBIRD TECH, LLC d/b/a BLACKBIRD TECHNOLOGIES, LLC
`Patent Owner.
`____________
`
`Case IPR2017-02023
`Patent 6,434,212 B2
`____________
`
`
`
`Before DEBRA K. STEPHENS, THOMAS L. GIANNETTI, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`STEPHENS, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`
`
`
`INTRODUCTION
`
`
`
`We have authority to hear this inter partes review under 35 U.S.C.
`
`§ 6(c), and this Final Written Decision is issued pursuant to 35 U.S.C.
`
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons that follow, we determine
`
`that TomTom, Inc. (“Petitioner”) has shown by a preponderance of the
`
`evidence that claims 1–5 of U.S. Patent No. 6,434,212 B2 (Ex. 1001, “the
`
`’212 patent”) are unpatentable and Petitioner has not shown by a
`
`preponderance of the evidence that claims 6–8 of the ’212 patent are
`
`unpatentable.
`
`
`
`Procedural History
`
`Petitioner filed a Petition requesting an inter partes review of claims
`
`1–8 (“the challenged claims”) of the ’212 Patent (Paper 1 (“Pet.”)).
`
`Petitioner relies on the following references in asserting their grounds:
`
`Levi et. al., U.S. Patent 5,583,776 (Ex. 1003 (hereinafter, “Levi”));
`
`Jimenez et al., U.S. Patent 4,367,752 (Ex. 1002 (hereinafter,
`“Jimenez”)); and
`
`Ebeling et. al., U.S. Patent 6,145,389 (Ex. 1004 (hereinafter,
`“Ebeling”))
`
`(Pet. 4–5). Blackbird Tech LLC (“Patent Owner”) filed a Preliminary
`
`Response (Paper 6 (“Prelim. Resp.”)). Pursuant to 35 U.S.C. § 314(a), we
`
`instituted an inter partes review (Paper 7, “Dec.”) of claims 1–5 as
`
`2
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`
`
`IPR2017-02023
`Patent 6,434,212 B2
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`unpatentable under 35 U.S.C. § 103(a)1 in view of Jimenez, Levi, and
`
`“knowledge of a person having ordinary skill in the art” (Dec. 36).
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`
`in the petition (SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018)).
`
`Subsequent to the holding in SAS, we modified our institution decision to
`
`institute on all challenged claims and all grounds presented in the Petition
`
`(Paper 10). Specifically, we modified our institution decision to include
`
`review of
`
`Claims 1–8 under 35 U.S.C. § 103(a) as obvious over Jimenez, Levi,
`and “knowledge of a person having ordinary skill in the art”; and
`
`Claims 1–8 under 35 U.S.C. § 103(a) as obvious over Jimenez,
`Ebeling, and “knowledge of a person having ordinary skill in the art”
`
`(id.).
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`
`(Paper 15, “PO Resp.”), to which Petitioner filed a Reply (Paper 17,
`
`“Reply”). Pursuant to guidance provided in the Patent Trial and Appeal
`
`Board issued an updated Trial Practice Guide (PTAB Trail Practice Guide
`
`Update (August 2018)). Patent Owner requested authorization to file a sur-
`
`reply (Exhibit 3002). We authorized Patent Owner to file a sur-reply (id.;
`
`Paper 21), and Patent Owner thus filed a Sur-Reply (Paper 19).
`
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 100 et seq. effective on March 16, 2013. The ’212 Patent issued
`from an application filed before March 16, 2013; therefore, we apply the
`pre-AIA versions of the statutory bases for unpatentability.
`3
`
`
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`IPR2017-02023
`Patent 6,434,212 B2
`
`
`At the parties’ request (Papers 18, 20), an Oral Hearing was held on
`
`December 11, 2018, a transcript of which is included in the record (Paper
`
`24, “Tr.”).
`
`
`
`Related Matters
`
`The parties advise us that the ’212 Patent is at issue in the following:
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Garmin
`International, Inc. and Garmin USA, Inc., Case No. 16-CV-689 (D.
`Del.),
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Fitbit, Inc., Case
`No. 16-CV-683 (D. Del.),
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Aliphcom d/b/a
`Jawbone, Case No. 16-CV-684 (D. Del.),
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Sony Corp. et
`al., Case No. 16-CV-685 (D. Del.),
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Timex Group
`USA, Inc., Case No. 16-CV-686 (D. Del.),
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. TomTom, Inc.,
`Case No. 16-CV-687 (D. Del.), and
`
`Blackbird Tech LLC d/b/a Blackbird Technologies v. Wahoo Fitness,
`Inc., Case No. 16-CV-688 (D. Del.)
`
`(Pet. 1–2; Paper 4, 2). The ’212 Patent was additionally at issue in IPR2017-
`
`01058 (Garmin International, Inc. v. Blackbird Tech LLC d/b/a Blackbird
`
`Technologies), now terminated, and IPR2017-02025 (TomTom, Inc. v.
`
`Blackbird Tech LLC d/b/a Blackbird Technologies), not instituted; and
`
`remains at issue in IPR2017-02012 (Fitbit, Inc. v. Blackbird Tech LLC d/b/a
`
`Blackbird Technologies) and IPR 2019-00275 (Wahoo Fitness LLC v.
`
`4
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`IPR2017-02023
`Patent 6,434,212 B2
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`Blackbird Tech LLC d/b/a Blackbird Technologies) (joined with IPR2017-
`
`02012).
`
`
`
`The ’212 Patent
`
`
`
`The ’212 Patent, entitled “Pedometer,” relates to a “pedometer having
`
`improved accuracy by calculating actual stride lengths of a user based on
`
`relative stride rates” (’212 Patent, Abstract). More particularly, the patent
`
`relates to “pedometers having a waist mounted stride-counting device and
`
`transmitter, and a wrist-mounted receiver and display” (id. at 1:9–11). The
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`device calculates a distance walked or run based on converting a base stride
`
`length and a base stride rate to an actual stride length and using that to
`
`calculate distance traveled (id. at 1:12–17).
`
`
`
`Specifically, a step counter, which is an inertia device, counts the
`
`number of steps a user takes (id. at 3:7–8). A data processor includes a data
`
`archive that stores historic data on stride length and pace and closed loop or
`
`fuzzy logic programming that continually or periodically replaces the base
`
`stride rate and length with recently calculated stride rates and lengths (id. at
`
`3:39–47).
`
`
`
`The pedometer of the ’212 Patent may optionally require the user to
`
`operate a “‘sampling mode’” (id. at 3:56–57). In this mode, a user walks or
`
`runs a predetermined distance with the distance then divided by the number
`
`of strides counted (id. at 3:58–62). The result is the average stride length,
`
`which is stored in the data archive as the “Base Stride Length” (id. at 3:62–
`
`64). The data processor further divides the number of strides by the time of
`
`the run or walk to calculate a “‘Base Stride Rate’” (id. at 3:65–67).
`
`5
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`IPR2017-02023
`Patent 6,434,212 B2
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`
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`According to the ’212 Patent, using a fixed average stride length does
`
`not account for changes in the user’s pace or improved performance (id. at
`
`4:19–29). To correct for this, a “‘Use Mode’” is activated that causes the
`
`data processor to calculate an “Actual Stride Rate” (’212 Patent, 4:30–33).
`
`The “Actual Stride Rate” is calculated periodically, based on data from the
`
`stride counter and the clock (id. at 4:30–36). An “Actual Stride Length” is
`
`calculated by determining a percentage change between the Actual Stride
`
`Rate and the Base Stride Rate (id. at 4:36–38). More specifically, the Actual
`
`Stride Length is calculated by the following formula:
`
`Actual Stride Length=Base Stride Length + Base Stride Length
`*(((Actual Stride Rate-Base Stride Rate)N)/Base Stride Rate)
`
`Where: N=1 when Actual Stride Rate is less than or equal to Base
`Stride Rate multiplied by 1.02, and N=3 when Actual Stride Rate
`is greater than Base Stride Rate multiplied by 1.02, although
`other N values in the range of one to three can be used
`
`(id. at 4:50–58). To further improve accuracy, an N value is derived for the
`
`user by using a number of samples to establish Stride Length and N (id. at
`
`5:1–6:9). Specifically, a first sample S1 establishes Base Stride and Base
`
`Steps Per Second:
`
`S1 Stride=Base Stride=Distance/Number of Steps
`
`S1 Steps Per Second or S1 Steps Per Second=Base Steps Per
`Second=Number of Steps Per Second
`
`(id. at 5:2–8). A second sample, S2, is then taken, with the user traversing
`
`the same distance at a faster pace (id. at 5:10–14). S2 is used to calculate an
`
`N2 value for each individual “which reflects the effect an increase in Steps
`
`Per Second has on this individual’s stride length” (id. at 5:14–17).
`
`6
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`
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`IPR2017-02023
`Patent 6,434,212 B2
`
`
`N2=((S2 Stride * S1 Steps Per Second) – (S1 Stride * S1 Steps per
`second))/ (S1 Stride (S2 Steps Per Second – S1 Steps Per Second))
`
`(id. at 5:26–28) where Fast Stride Length (S2) and Fast Steps Per Second
`
`(S2 Steps Per Second) can be calculated from the second sample S2 (id. at
`
`5:29–32).
`
`
`
`A third sample, S3, is acquired from a user traversing the same
`
`distance at a slower pace that does not exceed S1’s pace (id. at 5:33–36). An
`
`N3 value for each individual is calculated:
`
`N2=((S3 Stride * S1 Steps Per Second) – (S1 Stride * S1 Steps per
`second))/ (S1 Stride (S[3] Steps Per Second – S1 Steps Per Second))
`
` (id. at 5:47–54).
`
`If: Actual Steps Per Second is less than or equal to Base Steps Per
`Second, Then: Stride Length=Base Stride+Base Stride*(((Actual
`Steps Per Second-Base Steps Per Second)N)/Base Steps Per Second)
`And N=N3 (Stored Value)
`
`If: Actual Steps Per Second is [greater than] Base Steps Per Second,
`Then: Stride Length=Base Stride+Base Stride*(((Actual Steps Per
`Second-Base Steps Per Second)N)/Base Steps Per Second) And N=N2
`(Stored Value)
`
`(id. at 5:58–6:9 (reformatted)). The ’212 Patent further describes “[i]f an
`
`individual’s running or walking style is progressing with training and
`
`practice (as seen by significantly improved times), then it may be beneficial
`
`for them to “recalibrate their device by repeating the three samples every 3
`
`to 6 months” (id. at 6:14–18).
`
`Once the actual stride length is calculated for a given period of
`time, the value can be multiplied by the number of strides in that
`period to obtain a total distance for that period to be stored in a
`data archive file for that particular walk or run and added to other
`
`7
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`IPR2017-02023
`Patent 6,434,212 B2
`
`
`actual stride lengths or distances for other periods in which stride
`length was calculated.
`
`(id. at 6:34–38).
`
` Challenged Claims
`
`
`
`Petitioner challenges claims 1–8 of the ’212 Patent (Pet. 4–5). The
`
`’212 Patent has four independent claims, 1, 2, 5, and 6, and four dependent
`
`claims, 3 and 4 (depending from claim 2), and 7 and 8 (depending from
`
`claim 6) (Ex. 1001, Claims). Claims 1 and 6 are illustrative of the
`
`challenged claims and are reproduced below:
`
` 1. An exercise monitoring device comprising:
`
`a strap for releasably securing the exercise monitoring
`device to a user;
`
`
`
`
`
`a step counter joined to the strap;
`
`a heart rate monitor joined to the strap; and
`
`a data processor programmed to calculate a distance
`traveled by multiplying a number of steps counted by the
`step counter by a stride length that varies according to a
`rate at which steps are counted.
`
`
`
`6. A pedometer comprising:
`
`a step counter;
`
`a transmitter in communication with the step counter to
`generate a step count signal corresponding to each step and
`transmit the step count signal;
`
`a receiver mountable on a user body portion to receive the step
`count signal transmitted from the transmitter; and
`
`a data processor programmed to calculate a distance traveled by
`multiplying a number of steps counted by a stride length that
`8
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`IPR2017-02023
`Patent 6,434,212 B2
`
`
`varies according to a rate at which steps are taken, and further
`programmed to derive an actual stride length from a range of
`stride lengths calculated from a range of corresponding stride
`rates.
`
` ANALYSIS
`
`
`
`Claim Construction
`
`In an inter partes review filed before November 13, 2018, a district
`
`court-type claim construction approach may be applied if a party requests
`
`such a construction and certifies that the involved patent will expire within
`
`18 months from the entry of the Notice of Filing Date Accorded to Petition,
`
`in a motion under 37 C.F.R. § 42.20.
`
`Here, neither party submitted a motion for district court-type claim
`
`construction in accordance with 37 C.F.R. § 42.100(b), certifying that the
`
`challenged patent will expire within 18 months of the entry of the Notice of
`
`Filing Data Accorded to Petition, indicating Patent Owner did not oppose
`
`the motion (compare IPR 2017-02012, Papers 6, 8). In the Patent Owner
`
`Response, however, Patent Owner asserts the claim terms in the ’212 patent
`
`should be construed under district court-type claim construction (PO Resp.
`
`9–10).
`
`In the Petitioner’s Reply, Petitioner does not address Patent Owner’s
`
`assertion (see generally Pet. Reply); rather, Petitioner asserts it “adopt[s]
`
`Patent Owner’s proposed claim constructions for the purposes of this
`
`proceeding” and argues particular claim interpretations without addressing
`
`Patent Owner’s proffered standard (Pet. Reply 3–5).
`
`We adopt Patent Owner’s approach and take judicial notice that the
`
`9
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`IPR2017-02023
`Patent 6,434,212 B2
`
`patent will expire within eighteen months from the entry of the Notice of
`
`Filing Date Accorded to Petition. We thus apply district court-type claim
`
`construction, due to the expiration date of the patent and the desire for
`
`consistency in interpretation between this IPR2017-02023 and IPR2017-
`
`02012. We note our rules do not preclude us from deciding to apply district
`
`court-type claim construction under the circumstances presented here.
`
` Under district court-type claim construction, claim terms are given
`
`their ordinary and customary meaning, as would be understood by a person
`
`of ordinary skill in the art, at the time of the invention, in light of the
`
`language of the claims, the specification, and the prosecution history of
`
`record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc);
`
`see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims
`
`are generally given their broadest possible scope during prosecution, the
`
`Board’s review of the claims of an expired patent is similar to that of a
`
`district court’s review.”) (internal citation omitted)). “In determining the
`
`meaning of the disputed claim limitation, we look principally to the intrinsic
`
`evidence of record, examining the claim language itself, the written
`
`description, and the prosecution history, if in evidence” (DePuy Spine, Inc.
`
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`
`(citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,”
`
`however, “that a claim term carries its ordinary and customary meaning”
`
`(CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)
`
`(citation omitted)).
`
`We construe expressly the following terms.
`
`10
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`IPR2017-02023
`Patent 6,434,212 B2
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`
`
`
` “a plurality of calibrations”
`
`
`
`In our Decision to Institute, we encouraged the parties to develop the
`
`record regarding the meaning of calibration (Dec. 22).
`
`Patent Owner proposes “‘calibration’ should be construed as a
`
`‘process which correlates a particular user’s stride rate and stride length’”
`
`(PO Resp. 11 (citing Ex. 2001 ¶¶ 27–29)). Specifically, Patent Owner
`
`asserts “calibration” must be specific to a user because of how claims 3 and
`
`4 use the term “recalibration” (PO Resp. 12). Patent Owner also points to
`
`the ’212 patent’s Specification for support (id. at 13). Specifically, Patent
`
`Owner points to disclosure of “[a] preferred embodiment [that] uses a
`
`plurality of sample runs over known distances [i.e. calibration] to derive an
`
`accurate N value [the correlation coefficient relating stride length to stride
`
`rate] for each individual” (id. at 13 (citing ’212 Patent, 2:56–59)).
`
`According to Patent Owner, “every embodiment of ‘calibration’ described in
`
`the ’212 Specification discusses a process by which ‘the user’ calibrates the
`
`device for his or her own stride rate/stride length correlation” (id.).
`
`Patent Owner additionally directs us to an amendment in the
`
`prosecution history of U.S. Patent 6,175,608, parent to the ’212 patent,
`
`which shares a specification with the ’212 patent (PO Resp. 14). In that
`
`amendment, Patent Owner documented an Examiner interview (id. at 14; Ex.
`
`1010, 101). Patent Owner states the Examiner had indicated that a
`
`distinction between the art of record and the present pedometer invention is
`
`the “use of data input from runs or walks over known distances to establish a
`
`range of stride rate versus stride length data that can be used in subsequent
`
`runs or walks to derive actual stride lengths from actual stride rates” (PO
`
`11
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`IPR2017-02023
`Patent 6,434,212 B2
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`Resp. 14; Ex. 1010, 101). This alleged distinction, however, is not
`
`mentioned in the Examiner’s Interview Summary (see Ex. 1010, 104).
`
`Petitioner does not provide an interpretation for “calibration”; rather,
`
`Petitioner argued the term “was not a disputed term in the district court
`
`litigation” and Patent Owner’s proffered construction of “calibration” relies
`
`on a preferred embodiment from the Specification to read the phrase “for a
`
`particular user” into the claims (Reply 4–5). Petitioner asserts, however,
`
`that even if Patent Owner’s proposed interpretation were to be adopted, the
`
`prior art would still render the claims unpatentable (id. at 5).
`
`Turning to the ’212 Patent’s Specification, the only use of the term
`
`“calibration” is in discussion regarding a prior art patent:
`
`U.S. Pat. No. 5,117,444 discloses pedometer and calibration method
`with two calibration modes. First, a user travels a predetermined
`“half-distance” for the device to count and store the number of strides
`in that distance. Next, the user travels a second distance with the step
`counter comparing actual steps to the steps in memory and a current
`trip memory are incremented by a tenth of a "whole unit" distance.
`There is no correlation between stride length and stride rate which
`requires the user to re-calibrate the device when walking as opposed
`to running.
`
`(’212 Patent, 1:56–65). Other disclosures in the ’212 Patent discuss
`
`“recalibration” or “recalibrate,” but do not provide any discussion as to how
`
`the term “calibration” or “calibrate” should be construed. For example, the
`
`’212 Patent describes
`
`If an individual’s running or walking style is progressing with training
`and practice (as seen by significantly improved times), then it may be
`beneficial for them to recalibrate their device by repeating the three
`samples every 3 to 6 months. If there are no significant improvements
`in time, then recalibration is not necessary
`12
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`
`
`IPR2017-02023
`Patent 6,434,212 B2
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`(id. at 6:14–19 (emphasis added); see also ’212 Patent, 1:56–65, 4:25–28).
`
`We find the ’212 Patent is directed to data for a particular user (see,
`
`e.g., ’212 Patent, Abstract). This conclusion is supported by the
`
`Specification. Indeed, all discussion in the ’212 patent is directed to a
`
`pedometer for use by and relying on data obtained from an individual user.
`
`Thus, the Specification suggests that the term “calibration” should be
`
`construed as a process that correlates a user’s stride rate and stride length.
`
`The Oral hearing confirms this conclusion. In the Oral Hearing, Petitioner’s
`
`counsel, Mr. Doshi, responded to a request to identify the calibration and the
`
`plurality of calibrations as follows:
`
`JUDGE STEPHENS: So what are you pointing at in the 212 patent as
`being [a] calibration and the plurality of calibrations?
`
`MR. DOSHI: That’s in column 5. So at column 5 it says that after a
`proper warm up the user completes a sample run or walk on the track
`at normal pace, et cetera, et cetera. So it's saying that here’s S1 and
`following completion of the first run, so here it’s saying you’re doing
`different walks at different speeds . . .where you're having the user
`walk at different walking speeds and measuring their step size as you
`do that
`
`(Trans. 21:1–10; see also Tr. 19:4–7)
`
`JUDGE ZADO: Okay. And then so taking that further then, I
`understand your argument to be that in the 212 patent the runner for
`the first sample S1 will run at one pace and that’s, according to
`Petitioner, that's one calibration and then the runner will run at a
`second pace for the S2 sample and that’s the second calibration, and
`then the runner will run at a third pace and then that's the S3 sample
`and then that's a third calibration? Is that Petitioner's argument?
`
`MR. DOSHI: Yes
`
`13
`
`
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`IPR2017-02023
`Patent 6,434,212 B2
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`(Tr. 22:4–11). Therefore, based on Petitioner’s statements at the Oral
`
`Hearing, the term “calibration” should be construed as the process of taking
`
`a sample that correlates step rate and step length for an individual.
`
`Patent Owner’s counsel, Mr. Davis, responding to our request to
`
`identify where the ’212 Patent discloses a calibration, asserted a portion of
`
`the Specification discusses the calibration:
`
`JUDGE STEPHENS: So, Counsel, what do you point to in the 212
`patent as the calibration, as a calibration?
`
`MR. DAVIS: So, Your Honor, the Patent Owner’s response is
`instructive in this regard. On pages 12 and 13 of the Patent Owner's
`response where we go into the construction of the term calibration
`there’s a section on the specification on page 13. This is not fully
`limiting but it's certainly an example and you will see in that
`discussion on page 13. Your Honor, that we discuss a preferred
`embodiment that uses a plurality of sample runs over known distances
`to derive an accurate N value for each individual.
`
`JUDGE STEPHENS: So then it's the sample runs?
`
`MR. DAVIS: Yes, Your Honor.
`
`JUDGE STEPHENS: Each of the sample runs is a calibration?
`
`MR. DAVIS: Yes, Your Honor.
`
`(Trans. 31:14–32:2). Thus, Patent Owner’s response is consistent with their
`
`proffered construction of the term “calibration.”
`
`
`
`We determine that the expert testimony in the case also favors this
`
`construction. In his deposition, Petitioner’s technical expert, Thomas
`
`Blackadar testified “[c]alibration would be to have an individual perform a
`
`known walk or run in order to capture their biometric parameters . . . I would
`
`14
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`IPR2017-02023
`Patent 6,434,212 B2
`
`add to profile an individual” and “[t]o have an individual perform a series of
`
`known walk/run events to capture their physiological profile” (Ex. 1022,
`
`52:7–15, 53:2–4).
`
`Similarly, Patent Owner’s expert, Dr. Michael Caloyannides, testified
`
`“calibration should be construed as a process which correlates a particular
`
`user stride rate and stride length” (Ex. 1023, 54:4–7). Dr. Caloyannides
`
`further testified “I think calibration . . . only makes sense, rather, for [an]
`
`individual user. It makes no sense to average apples and oranges. For a
`
`particular user, it makes sense. Otherwise, there would be no need to
`
`recalibrate if one just averages out the whole world . . . it makes no [sense]
`
`to me to calibrate in any other way” (id. at 55:12–56:1).
`
`Thus, both the parties’ experts are consistent in their interpretation of
`
`calibration as being a process particular to an individual user.
`
`Accordingly, in light of the Specification, Patent Owner’s and
`
`Petitioner’s assertions, and both parties’ declarants’ statements, we construe
`
`the term “calibration” as “a process that correlates a particular user’s stride
`
`rate and stride length.”
`
`
`
`Additional claim terms
`
`We determine that no additional claim terms require express
`
`construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (Only terms which are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy)).
`
`15
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`
`
`
`Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
`
`between the subject matter sought to be patented and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains” (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007)). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`
`i.e., secondary considerations (see Graham v. John Deere Co. of Kansas
`
`City, 383 U.S. 1, 17–18 (1966)).
`
`“A determination of whether a patent claim is invalid as obvious
`
`under § 103 requires consideration of all four Graham factors, and it is error
`
`to reach a conclusion of obviousness until all those factors are considered”
`
`(Apple v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`
`banc) (citations omitted)). “This requirement is in recognition of the fact
`
`that each of the Graham factors helps inform the ultimate obviousness
`
`determination” (id.).
`
`“In an [inter partes review], the petitioner has the burden from the
`
`onset to show with particularity why the patent it challenges is unpatentable”
`
`(Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`
`(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
`
`identify “with particularity . . . the evidence that supports the grounds for the
`
`challenge to each claim”))). This burden never shifts to Patent Owner (see
`16
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`
`partes review)). Furthermore, Petitioner cannot satisfy its burden of proving
`
`obviousness by employing “mere conclusory statements” (In re Magnum Oil
`
`Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016)).
`
`Thus, to prevail in an inter partes review, Petitioner must explain how
`
`the proposed combinations of prior art would have rendered the challenged
`
`claims unpatentable. At this final stage, we determine whether a
`
`preponderance of the evidence of record shows that the challenged claims
`
`would have been obvious over the proposed combinations of prior art.
`
`We analyze the instituted grounds of unpatentability in accordance
`
`with the above-stated principles.
`
`
`
`Level of Ordinary Skill in the Art
`
`In determining whether an invention would have been obvious at the
`
`time it was made, we consider the level of ordinary skill in the pertinent art
`
`at the time of the invention (Graham, 383 U.S. at 17). “The importance of
`
`resolving the level of ordinary skill in the art lies in the necessity of
`
`maintaining objectivity in the obviousness inquiry” (Ryko Mfg. Co. v.
`
`Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). The person of ordinary
`
`skill in the art is a hypothetical person who is presumed to have known the
`
`relevant art at the time of the invention (In re GPAC, Inc., 57 F.3d 1573,
`
`1579 (Fed. Cir. 1995)). The level of ordinary skill in the art may be
`
`reflected by the prior art of record (Okajima v. Bourdeau, 261 F.3d 1350,
`
`17
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`1355 (Fed. Cir. 2001)). Factors that may be considered in determining the
`
`level of ordinary skill in the art include, but are not limited to, the types of
`
`problems encountered in the art, the sophistication of the technology, and
`
`educational level of active workers in the field (GPAC, 57 F.3d at 1579). In
`
`a given case, one or more factors may predominate (id.). Generally, it is
`
`easier to establish obviousness under a higher level of ordinary skill in the
`
`art (Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed.
`
`Cir. 2011) (“A less sophisticated level of skill generally favors a
`
`determination of nonobviousness . . . while a higher level of skill favors the
`
`reverse.”)).
`
`The level of skill in the art is a factual determination that provides a
`
`primary guarantee of objectivity in an obviousness analysis (Al-Site Corp. v.
`
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383
`
`U.S. at 17–18; Ryko Mfg. Co., 950 F.2d at 718)).
`
`Petitioner’s declarant, Mr. Blackadar, opines that a person of ordinary
`
`skill in the art relevant to the ’212 Patent
`
`
`
`would have been [1] a person with a bachelor’s degree in
`mechanical engineering, electrical engineering, or a similar field
`with at least two years of experience in motion tracking, motion
`analysis, inertial sensing, or signal analysis, or [2] a person with
`a master’s degree
`in mechanical engineering, electrical
`engineering, or a similar field with a specialization in motion
`tracking, motion analysis, inertial sensing, or signal analysis
`
`(Ex. 1005 ¶ 36; Pet. 16).
`
`Patent Owner does not dispute the educational level or experiential
`
`aspects of Petitioner’s definition in its Response (see generally PO Resp.),
`
`18
`
`
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`IPR2017-02023
`Patent 6,434,212 B2
`
`despite Patent Owner’s declarant, Dr. Caloyannides, opining that the level of
`
`ordinary skill would not be so limited as proposed by Mr. Blackadar:
`
`I note that although the qualifications Mr. Blackadar describes would
`qualify one as a PHOSITA in this case, I do not believe the definition
`of a PHOSITA here would be so limited. The technology of the ‘212
`Patent implicates other fields, such as Sports Medicine, Exercise
`Science, and Physiology. I believe that a bachelor’s degree in one of
`these fields, or a similar field, with at least two years of practical
`experience working with pedometers and/or health or fitness trackers
`or sensors, or an advanced degree in one of these areas, could qualify
`one as a PHOSITA in this case
`
`(Ex. 2001 ¶ 26). Petitioner argues that Patent Owner’s definition of a person
`
`of ordinary skill in the art would mean a “[person having ordinary skill in
`
`the art] under Patent Owner’s definition would be more well-informed than
`
`Patent Owner’s own expert” (Pet. Reply. 2); however, we do not read Patent
`
`Owner’s assertion or Dr. Caloyannides’ testimony as suggested by
`
`Petitioner. Rather, we read Dr. Caloyannides’ testimony as expanding the
`
`fields of expertise.
`
`We do not observe a meaningful difference between the parties’
`
`assessments of a person of ordinary skill in the art. We further note that
`
`either assessment appears consistent with the level of ordinary skill in the art
`
`at the time of the invention as reflected in the prior art in the instant
`
`proceeding (see Okajima, 261 F.3d at 1355). Our analysis in this Decision is
`
`supported by either assessment. Based on our review of the ’212 Patent, the
`
`types of problems and solutions described in the ’212 Patent and cited prior
`
`art, and the testimony of Mr. Blackadar and Dr. Caloyannides, we adopt and
`
`19
`
`
`
`IPR2017-02023
`Patent 6,434,212 B2
`
`apply Mr. Blackadar’s definition of a person of ordinary skill in the art at the
`
`time of the claimed invention for purposes of this Decision.
`
` Overview of the Asserted Prior Art
`
` Jimenez
`
`Jimenez is a patent entitled “Apparatus for Testing Physical Condition
`
`of a Subject” (Jimenez, [54]). Jimenez is related to “apparatus for testing the
`
`physical condition of a subject,” and in particular, “for testing the physical
`
`condition of a subject in response to signals indicative of heart activity of the
`
`subject and of the distance traversed by a limb of the subject during a timed
`
`testing period” (Jimenez, 1:6–12). Jimenez teaches combining monitored
`
`heart rate functionality and monitored distance traveled functionality into a
`
`single device that monitors both heart rate and distance traveled (id. at 1:8–
`
`2:10, 2:38–44).
`
` Levi
`
`Levi is a patent entitled “Dead Reckoning Navigational System Using
`
`Accelerometer to Measure Foot Impacts.” Levi is directed to an electronic,
`
`portable navigational method and system that use radionavigational data and
`
`dead reckoning for foot navigatio
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