throbber
Trials@uspto.gov
`571-272-7822
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`Paper 8
`Date: November 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
`AND GARMIN LTD.,
`Petitioner,
`v.
`PHILIPS NORTH AMERICA LLC,
`Patent Owner.
`____________
`
`IPR2020-00910
`Patent No. 7,088,233
`____________
`
`DECISION
`Granting Institution of Inter Partes Review
`Granting Motion for Joinder
`35 U.S.C. §§ 314, 315(c)
`
`
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`
`
`Before STACEY G. WHITE, MICHELLE N. WORMMEESTER, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
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`IPR2020-00910
`Patent 7,088,233
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`INTRODUCTION
`I.
`On May 15, 2020, Garmin International, Inc., Garmin USA, Inc., and
`Garmin Ltd. (“Petitioner”) filed a Petition (“Pet.”) pursuant to 35 U.S.C.
`§§ 311–319 to institute an inter partes review of claims 1, 7–10, 13–16, 22,
`and 24–26 of U.S. Patent No. 7,088,233 (“the ’233 patent”). Paper 1.
`Petitioner also filed a Motion for Joinder (“Motion”). Paper 3. On August
`20, 2020, Philips North America LLC (“Patent Owner”) filed a Preliminary
`Response (“Prelim. Resp.”). Paper 7.
`The standard for instituting an inter partes review is set forth in
`35 U.S.C. § 314(a), which provides that an inter partes review may not be
`instituted unless the information presented in the Petition and any
`preliminary response shows that “there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.”
`For the reasons explained below, we institute an inter partes review as
`to all challenged claims and on all grounds raised in the Petition. We also
`grant the Motion for Joinder.
`
`II. BACKGROUND
`A. The ’233 Patent
`The ’233 patent, titled “Personal Medical Device Communication
`System and Method,” was filed on June 7, 2002, issued on August 8, 2006,
`and recites various continuation-in-part and continuation applications as
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`related. Ex. 1001, codes (54), (22), (45), (63), (60).1 The patent also states
`that it is related to “[p]rovisional application No. 60/135,862, filed on May
`25, 1999, provisional application No. 60/105,493, filed on Oct. 23, 1998,
`and provisional application No. 60/279,401, filed on Mar. 28, 2001.” Id. at
`code (60); see Exs. 1013–1015.
`Petitioner assumes for purposes of its challenge that the earliest
`effective filing date for all but claims 13, 24, and 25 of the ’233 patent is the
`October 23, 1998 filing date of application No. 60/105,493. Pet. 3. For
`claims 24 and 25, Petitioner argues that the earliest effective filing date is
`the May 25, 1999 filing date of application No. 60/135,862. Id. at 3–4, 19–
`20 (citing Paradiso Decl. ¶¶ 45–46). For claim 13, Petitioner argues that the
`earliest effective filing date is the March 28, 2001 filing date of application
`No. 60/279,401. Id. at 4, 20 (citing Paradiso Decl. ¶¶ 45, 47). Patent Owner
`does not address this issue, and for the purposes of this Decision, we need
`not resolve this issue at this time.
`The ’233 patent describes a “personal and/or institutional health and
`wellness communications system, which may be used for a variety of
`emergency and non-emergency situations using two-way communication
`devices and a bi-directional communication network.” Id. at code (57).
`Figure 5 of the ’233 patent is reproduced below.
`
`
`1 The ’233 patent states that it is a “[c]ontinuation-in-part of application No.
`09/956,474, filed on Sep. 19, 2001, which is a continuation of application
`No. 09/384, 165, filed on Aug. 27, 1999, now Pat. No. 6,356,192,
`application No. 10/165,624, which is a continuation-in-part of application
`No. 10/112,669, filed on Mar. 28, 2002, and a continuation-in-part of
`application No. PCT/US01/18734, filed on Jun. 8, 2001.” Id. at code (63).
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`Figure 5 is a network diagram showing communications with various system
`components. Id. at 2:47–48. Figure 5 shows Personal Medical Device 100,
`which may be implanted, or carried on the person, of Victim V. Id. at
`11:49–50. For example, Personal Medical Device 100 could be a
`pacemaker. As another example, Personal Medical Device 100 could have
`one or more sensor inputs connected to external or embedded “detectors
`140” (not shown on Figure 5) that:
`may be any sensor of bodily or physiological parameters such
`as, but not limited to: temperature, motion, respiration, blood
`oxygen content, electrocardiogram (ECG), electroencepha-
`logram (EEG), and other measurements.
`Id. at 3:27–33.
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`Figure 5 shows that Personal Medical Device 100 may communicate
`with Medical Device Interface 600 (elsewhere numbered “200”), which in
`turn can communicate via network 400 with other agents or devices that
`would be involved in addressing the medical problem or emergency
`involving Victim V. Id. at Fig. 5, 3:12–15. One such device is a central
`communications base station which in turn can communicate with personal
`medical devices or a central monitoring station that can imitate emergency
`dispatch services, for example. Id. at Fig. 1, 8:40–63, 10:14–17.
`The ’233 patent discloses that Personal Medical Device 100 includes a
`power module, such as a battery, a memory, and a processor, and may
`include connections to the above-mentioned sensors, a user interface module
`with a display and other user input/output devices, and a short range wireless
`communications module. Id. at Figs. 2, 3, 3:18–33, 3:50–4:10. Personal
`Medical Device 100 can also include a GPS (Global Positioning System)
`receiver to enable determining the location of the victim. Id. at 12:63–13:8.
`In addition, Personal Medical Device 100 can include power management
`circuitry to save battery life by powering off the communications module
`when not needed. Id. at 14:15–60.
`The short range wireless communications module of Personal Medical
`Device 10 can communicate with Medical Device Interface 600 and the
`central communications base station, which also may include short range
`wireless communications modules. Id. at Fig. 4A, 4:14–21, 7:55–57, 8:41–
`46. One mode of short range wireless communication uses the Bluetooth
`standard. Id. at 4:49–60. The ’233 patent “impos[es]” a “meaning” on the
`phrase, “short-range [wireless] communication”: “[T]o include premises
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`and facility based wireless networks and not to describe long-range networks
`such as cellular telephone networks used to communicate over long-
`distances.” Id. at 5:61–65.
`The ’233 patent further provides for security arrangements to restrict
`the exchange of information to authorized agents. Id. at 13:24–14:14.
`Exemplary arrangements include the use of passwords, and various
`encryption techniques such as security keys and public/private key
`exchange. Id. at 8:12–15, 13:43–65.
`In sum, the ’233 patent states that a purpose of providing
`communications between the personal medical device and other agents or
`devices is:
`to provide health care professionals with access to information
`for remote diagnostic capabilities; to provide notification of
`acute conditions possibly requiring immediate assistance,
`transportation to a medical center, or remote treatment action; to
`provide a location information of mobile persons for caregivers;
`to notify responsible parties of the occurrence of a medical
`condition; and to provide remote intervention assistance by
`caregivers through verbal or visual interaction.
`Id. at 2:11–22.
`
`B. Illustrative Claim
`Independent claim 1 is reproduced below.
`1. A bi-directional wireless communication system
`comprising:
`(a) a first personal device, the first personal device
`further comprising:
`(i) a processor;
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`(ii) a memory;
`(iii) a power supply;
`(iv) at least one detector input; and
`(v) a short-range bi-directional wireless
`communications module;
`(b) a second device communicating with the first
`device, the second device having a short-range bi-
`directional wireless communications module
`compatible with the short-range bi-directional
`wireless communications module of the first device;
`and
`(c) a security mechanism governing information
`transmitted between the first personal device and the
`second device.
`Ex. 1001, 14:62–15:12. Comparing claim 1 to Figure 5 of the ’233 patent
`and its accompanying description, we understand Personal Medical
`Device 100 to be an example of the claimed first personal device, and
`Medical Device Interface 600 to be an example of the claimed second
`device.
`
`C. References
`Petitioner relies on the following references (Pet. 2–3):
`• Jacobsen et al., U.S. Patent No. 6,198,394. Exhibit 1005
`(“Jacobsen”).
`• Say et al., U.S. Patent No. 6,175,752. Exhibit 1006 (“Say”).
`• Quy, U.S. Patent No. 6,602,191. Exhibit 1007 (“Quy”).
`• Geva, U.S. Patent No. 6,366,871. Exhibit 1008 (“Geva”).
`• Reber et al., U.S. Patent No. 5,961,451. Exhibit 1020 (“Reber”).
`• Gabai et al., U.S. Patent No. 6,160,986. Exhibit 1040 (“Gabai”).
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`Petitioner also relies on the declaration of Dr. Joseph Paradiso. Ex. 1002
`(“Paradiso Decl.”).
`Patent Owner relies on testimony of Dr. Thomas L. Martin elicited
`during Philips North America LLC v. Fitbit, Inc., No. 1:19-cv-11586
`(D. Mass.) (“the Fitbit case”) discussed below. Ex. 2007 (“Martin Decl.”).
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1, 7–10, 13–16, 22,
`and 24–26 of the ’233 patent on the following grounds (Pet. 2–3)2:
`
`Claims Challenged
`1, 7–10, 14
`1, 7–10, 14
`1, 7–10, 14
`13
`24, 25
`26
`15, 16, 22
`
`35 U.S.C. §
`102
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`References
`Jacobsen
`Say
`Jacobsen, Say
`Jacobsen, Say, Quy
`Jacobsen, Say, Geva
`Jacobsen, Say, Reber
`Say, Gabai
`
`E. Real Parties in Interest
`The parties identify themselves as the real parties in interest. Pet. 1;
`Paper 5, 1.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective after the filing of the
`application for the ’233 patent. Therefore, we apply the pre-AIA versions of
`these sections.
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`F. Related Proceedings
`The parties identify the Fitbit case and Philips North America LLC v.
`Garmin International, Inc. et al., Case No. 2:19-cv-06301-AB-KS,
`(C.D.Ca.) (“the Garmin case”) as related proceedings. Pet. 1; Paper 5, 1.
`Both patent litigations involve the ’233 patent. Id.
`In addition, IPR2020-00783 (“IPR783”), brought by Fitbit, Inc.,
`challenges the same claims of the ’233 patent. Paper 5, 1–2. The Petition
`here is substantively identical to Fitbit’s Petition, and Petitioner has moved
`for joinder with the IPR783 proceeding.
`
`III. ANALYSIS
`A. Level of Skill in the Art
`Petitioner relies on its expert to contend:
`At the time of the alleged inventions a person of ordinary
`skill in the art (“POSITA”) would have had at least a B.S. in
`computer science, electrical engineering, or an equivalent, and
`at least two years of experience in the relevant field, i.e.,
`wireless communications. More education can substitute for
`practical experience and vice versa.
`Pet. 5–6; Paradiso Decl. ¶ 15.
`Patent Owner relies on its expert’s testimony in the Fitbit case:
`[A] person of ordinary skill in the art of the patented inventions
`as of the earliest claimed priority date on the face of each
`patent, is an individual with a.) at least a bachelor’s degree in
`electrical engineering, computer engineering, or computer
`science and b.) some experience with activity and/or health
`monitoring technologies, or the equivalent thereof . . . [and]
`would also have experience with security in the context of
`wireless communications.
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`Prelim. Resp. 20 (citing Martin Decl. ¶ 11).
`Although the respective positions are very similar and our analysis
`would be the same under either Patent Owner’s or Petitioner’s definition of
`the ordinary artisan, from our review of the record, we find Patent Owner’s
`more specific articulation of the relevant experience best suited for our
`analysis and consistent with the disclosure of the ’233 patent and the prior
`art of record. Thus, we adopt Patent Owner’s description for the purposes of
`this Decision.
`
`B. Claim Construction
`The Petition was accorded a filing date of May 5, 2020. Paper 4, 1.
`In an inter partes review for a petition filed on or after November 13, 2018,
`a claim “shall be construed using the same claim construction standard that
`would be used to construe the claim in a civil action under
`35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). We apply the claim
`construction standard from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (en banc).
`Under that standard, claim terms are generally given their ordinary
`and customary meaning, as would be understood by one with ordinary skill
`in the art in the context of the specification, the prosecution history, other
`claims, and even extrinsic evidence including expert and inventor testimony,
`dictionaries and learned treatises, although extrinsic evidence is less
`significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually,
`the specification is dispositive, and it is the single best guide to the meaning
`of a disputed term. Id. at 1315.
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`“Importantly, the person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Id. at 1313. “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). However, in construing the claims, care should be
`taken to avoid improperly importing a limitation from the specification into
`the claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 797–98
`(Fed. Cir. 2019) (“[U]se of the phrase ‘present invention’ or ‘this invention’
`is not always . . . limiting, such as where . . . other portions of the intrinsic
`evidence do not support applying the limitation to the entire patent.”
`(citations omitted)). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017).
`
`1. means for signaling the bi-directional communications module to
`transition from the powered-down state to the powered-up state
`Claim 26 of the ’233 patent requires “a means for signaling the bi-
`directional communications module to transition from the powered-down
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`state to the powered-up state.” Ex. 1001, 16:18–20. Petitioner proposes to
`construe this portion of the claim pursuant to 35 U.S.C. § 112 ¶ 6, including
`specifying the disclosed structure corresponding to the recited function as
`“components capable of providing a magnetic, mechanical, sound or
`ultrasound, infrared, or radio frequency signal, and structural equivalents
`thereof.” Pet. 21–22 (citing Ex. 1001, 14:15–60, 16:16–30; Paradiso Decl.
`¶¶ 49–60). However, Petitioner also states that “[t]he ’233 patent explains
`that the ‘means for signaling’ can be ‘a mechanical signal, such as throwing
`a switch or applying pressure to a pad.’” Pet. 84; see Ex. 1001, 14:35–36).
`Therefore, we are not persuaded that Petitioner’s proposal is correct. Patent
`Owner does not offer its position on the corresponding structure for this
`claim limitation. Prelim. Resp. 8–9.
`For the present purposes, it is sufficient to note that the disclosed
`structure that performs the function claimed by this limitation includes a
`switch that turns the bi-directional communications module on and off.
`
`2. wireless communication
`Claim 1 of the ’233 patent requires both the “first personal device”
`and the “second device” to comprise a “wireless communications module.”
`Ex. 1001, 15: 3–9. Patent Owner proposes that “wireless communication”
`refers to “an over-the-air communication (e.g. using radiofrequency (RF),
`infrared, or optical techniques),” and that it “does not encompass
`transmission of an electrical signal over a conductor.” Prelim. Resp. 10.
`Patent Owner asserts that Petitioner would more broadly define “wireless
`communication” as “simply [communications] without wires.” Id. (citing
`Pet. 32–33). However, no such proposed construction appears at the cited
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`portion of the Petition, or elsewhere in the record to our knowledge. In any
`event, as further discussed in Section E.2 below, Patent Owner relies on this
`interpretation in order to rule out the possibility that communication that
`makes use of the conductivity of the human body could be considered
`wireless communication. Prelim. Resp. 23–24. We agree that, in the
`context of the ’233 patent, transmission via the human body would not be
`considered wireless communication by one of ordinary skill in the pertinent
`art.
`
`Accordingly, we apply Patent Owner’s definition, and interpret
`“wireless communication” as “an over-the-air communication (e.g. using
`radiofrequency (RF), infrared, or optical techniques).”
`
`3. governing information transmitted between the first personal device and
`the second device
`Claim 1 requires “a security mechanism governing information
`transmitted between the first personal device and the second device.”
`Ex. 1001, 15:10–12. Patent Owner proposes to interpret “governing
`information transmitted between the first personal device and the second
`device” as “controlling the transmission of information between the first
`personal device and the second device” — in essence, Patent Owner would
`replace the word “governing” with “controlling.” Prelim. Resp. 11. Patent
`Owner then uses this rewording in an attempt to limit the phrase to require
`“an additional level of security for controlling the transmission of
`information beyond what might be provided by any particular
`communications protocol used to effectuate transmission (but which does
`not control the transmission).” Id. In particular, as further discussed in
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`Sections E.2 and F.2 below, Patent Owner would narrow this claim
`requirement to exclude the use of passwords, or encryption techniques such
`as security keys and public/private key to protect information, which Patent
`Owner contends does not “govern” or “control” information. Id. at 25, 28–
`29.
`
`Patent Owner relies on the testimony of its expert Dr. Thomas Martin,
`who in turn relies on various statements in the ’233 patent regarding the
`importance of limiting access of communications with the victim to
`authorized persons or devices administering aid. Martin Decl. ¶¶ 28–30. In
`particular, Dr. Martin relies on a statement in the Abstract providing for
`“multiple levels of prioritization, authentication of a person (task, step,
`process or order), and confirmation via interrogation of person, device, or
`related monitor.” Id. at ¶ 28. In addition, Dr. Martin relies on the
`description of Figure 5, which refers to communication between the victim
`and a bystander, and states that the bystander “should not be allowed [a
`higher] level of access, even though the bystander B’s personal wireless
`device 600 may be acting as an intermediary in communication from the
`personal device 100 to the dispatcher D.” Id. at ¶ 29 (citing Ex. 1001, Fig. 5,
`13:30–41). Dr. Martin further relies on a dictionary, which defines
`“govern[ing]” as “control[ling].” Id. at ¶ 35. From this, Dr. Martin opines
`that one of ordinary skill would not consider security measures such as
`encryption to satisfy the claim requirement of “governing” transmission of
`information. Id. at ¶¶ 33–34.
`We are not persuaded by this argument. The ’233 patent explicitly
`discloses that the use of passwords or encryption can be used to secure
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`information transmitted between personal device 100 and other points on the
`network to restrict access to authorized persons. Ex. 1001, 8:12–22, 13:25–
`67. The use of passwords or security keys certainly provides a form of
`“govern” or “control” falling within the ambit of the “security mechanism”
`of claim 1. We note that the Court in the Garmin case has concluded
`likewise, finding that “Dr. Martin’s conclusory opinion should not be
`afforded any weight.” Ex. 3002, 14. For present purposes, we see no need
`to construe the phrase at issue, and do not agree that such techniques as the
`use of passwords or encryption fall outside of the scope of claim 1.
`
`4. Data Input/Output Port
`Dependent claim 14 requires the first personal device and the second
`device to have data input/output ports. In Section E.4 below, our analysis of
`Petitioner’s challenge to that claim includes construction of this term.
`
`C. Legal Standards
`“A claim is anticipated only if each and every element as set forth
`in the claim is found, either expressly or inherently described, in a single
`prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
`F.2d 628, 631 (Fed. Cir. 1987). “The identical invention must be shown
`in as complete detail as is contained in the . . . claim.” Richardson v.
`Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “These
`elements must be arranged as in the claim under review, but this is not an
`‘ipsissimis verbis’ test”. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
`(citations omitted).
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`If the prior art reference does not expressly set forth a
`particular element of the claim, that reference still may anticipate
`if that element is “inherent” in its disclosure. . . . “Inherency,
`however, may not be established by probabilities or possibilities.
`The mere fact that a certain thing may result from a given set of
`circumstances is not sufficient.”
`In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
`Inherency requires that “the allegedly inherent characteristic necessarily
`flows from the teachings of the applied prior art.” Ex parte Levy, 17
`USPQ2d 1461, 1464 (BPAI 1990) (emphasis in original).
`A claim is unpatentable for obviousness if, to one of ordinary skill
`in the pertinent art, “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.” KSR Int’l
`Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C.
`§ 103(a)). The question of obviousness is resolved on the basis of
`underlying factual determinations, including “the scope and content of
`the prior art”; “differences between the prior art and the claims at issue”;
`and “the level of ordinary skill in the pertinent art.”3 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`
`
`3 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Neither party, however,
`has presented any such evidence for us to consider at this stage of the
`proceeding.
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`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. Rather, an obviousness determination requires finding
`“both ‘that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements [in the way the claimed] new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted).
`Further, an assertion of obviousness “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
`Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
`articulation[] of motivation to combine”; “instead, the finding must be
`supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`17
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`
`
`

`

`IPR2020-00910
`Patent 7,088,233
`
`
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.”).
`The motivation to combine must be “accompanied by a reasonable
`expectation of achieving what is claimed in the patent-at-issue.”
`Intelligent Bio-Sys, 821 F.3d at 1367. “The reasonable expectation of
`success requirement refers to the likelihood of success in combining
`references to meet the limitations of the claimed invention.” Id.
`
`D. Discretionary Denial of Institution under 35 U.S.C. § 314(a)
`Patent Owner argues that the Board should exercise its discretion and
`deny institution due to the allegedly advanced state of the parallel Fitbit
`case. Prelim. Resp. 14–19. Patent Owner filed both the Fitbit and Garmin
`cases on July 22, 2019, accusing Petitioner and Garmin of infringing the
`’233 patent and several other patents. Exs. 2001, 2010.
`Under § 314(a), the Director has discretion to deny institution. See 35
`U.S.C. § 314(a) (stating “[t]he Director may not authorize an inter partes
`review to be instituted unless the Director determines that the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition”) (emphasis added); Harmonic Inc. v. Avid Tech,
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but
`never compelled, to institute an IPR proceeding.”). In determining whether
`to exercise that discretion on behalf of the Director, we are guided by the
`Board’s precedential decision in NHK Spring Co. v. Intri-Plex Techs, Inc.,
`
`
`
`
`18
`
`

`

`IPR2020-00910
`Patent 7,088,233
`
`
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018). In NHK, the Board found
`that the “advanced state of the district court proceeding” was a “factor that
`weighs in favor of denying” the petition under § 314(a). NHK, Paper 8 at
`20. The Board determined that “[i]nstitution of an inter partes review under
`these circumstances would not be consistent with ‘an objective of the AIA
`. . . to provide an effective and efficient alternative to district court
`litigation.’” Id. (citing Gen. Plastic, Paper 19 at 16–17 (precedential in
`relevant part)).
`The Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (“Fintiv”) sets forth six
`factors that we consider when determining whether to use our discretion to
`deny institution due to the advanced state of parallel district court litigation:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`3.
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6. “[I]n evaluating the factors, the Board takes a holistic view of
`whether efficiency and integrity of the system are best served by denying or
`19
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`
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`

`

`IPR2020-00910
`Patent 7,088,233
`
`
`instituting review.” Id. at 6. We authorized the parties to further address
`these factors in the Reply and Sur-reply. We now apply these six factors to
`the facts and circumstances present here.
`
`1. Factor 1
`A district court stay of the litigation pending resolution of the PTAB
`trial allays concerns about inefficiency and duplication of efforts, which fact
`strongly weighs against exercising the authority to deny institution. Fintiv,
`Paper 11 at 6. The district court in the Garmin case has not granted a stay or
`been asked to do so, nor has the district court in the Fitbit case.4 Prelim.
`Resp. 16. Patent Owner argues that even if Petitioner or Fitbit were to move
`for a stay, it would be unlikely to be granted given the advanced stages of
`the district court cases. Id.
`We recognize that it is possible that the Courts in the Fitbit or Garmin
`cases would grant a stay if this proceeding is instituted, but on the other hand
`the relatively advanced stages of the those cases (discussed below) is a
`contraindication. See Fintiv, Paper 11 at 7, n. 12 (“[T]he district court, in
`considering a motion for stay, may consider similar factors related to the
`amount of time already invested by the district court and proximity of the
`trial date to the Board’s deadline for a final written decision”). Accordingly,
`
`
`4 The circumstances of the Fitbit case are relevant to our analysis of whether
`to deny institution under Section 314 given that the same patent and prior art
`are at issue in both cases, and given the fact that we are granting Petitioner’s
`Motion for Joinder to the IPR783 proceeding in an “understudy” role. See
`Section IV below.
`
`
`
`
`20
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`

`

`IPR2020-00910
`Patent 7,088,233
`
`
`we decline to speculate as to the likelihood of a stay of the district court
`proceedings. Therefore, we consider the first Fintiv factor to be neutral.
`
`2. Factor 2
`If the district court’s trial date is earlier than the projected statutory
`deadline, the Board generally has weighed this fact in favor of exercising
`discretion to deny institution. If the court’s trial date is at or around the
`same time as the projected statutory deadline or even significantly after the
`projected statutory deadline, the decision whether to institute will likely
`implicate other Fintiv factors, such as the resources that have been invested
`in the parallel proceeding. Fintiv, Paper 11 at 9.
`Patent Owner asserted in the Preliminary Response that “the Garmin
`trial is to begin March 31, 2021 and the Fitbit trial will likely take place in
`summer 2021.” Prelim. Resp. 16 (citing Exs. 2006, 2003). However, the
`current docket for the Garmin case shows that, on September 21, 2020 (after
`the briefs in this proceeding were filed), the Court granted the parties’
`stipulated extension to the

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