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`Case: 19-2389 Document: 23 Page: 1 Filed: 02/19/2020
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`2019-2389
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`United States Court of Appeals
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`for the Federal Circuit
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`UNILOC 2017 LLC,
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`– v. –
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`APPLE INC.,
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`Appellant,
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`Appellee.
`
`On Appeal from the United States Patent and Trademark Office,
`Patent Trial and Appeal Board in No. IPR2018-00294
`
`BRIEF OF APPELLANT
`
`
`BRETT MANGRUM
`RYAN S. LOVELESS
`JAMES ETHERIDGE
`ETHERIDGE LAW GROUP
`2600 East Southlake Boulevard
`Suite 120-324
`Southlake, Texas 76092
`(817) 470-7249
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`
`Counsel for Appellant
`
`FEBRUARY 19, 2020
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`COUNSEL PRESS, LLC
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` (888) 277-3259
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`

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`Case: 19-2389 Document: 23 Page: 2 Filed: 02/19/2020
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`FORM 9. Certificate of Interest
`
` Form 9
` Rev. 10/17
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`Uniloc 2017 LLC
`Apple Inc.
`v.
`19-2389
`
`Case No.
`CERTIFICATE OF INTEREST
`
`Counsel for the:
`(cid:133) (petitioner) (cid:133) (appellant) (cid:133) (respondent) (cid:133) (appellee) (cid:133) (amicus) (cid:133) (name of party)
`
`Uniloc 2017 LLC
`certifies the following (use “None” if applicable; use extra sheets if necessary):
`
`1. Full Name of Party
`Represented by me
`
`Uniloc 2017 LLC
`.
`
`2. Name of Real Party in interest
`(Please only include any real party
`in interest NOT identified in
`Question 3) represented by me is:
`Uniloc 2017 LLC
`
`3. Parent corporations and
`publicly held companies
`that own 10% or more of
`stock in the party
`CF Uniloc Holdings LLC
`
`4. The names of all law firms and the partners or associates that appeared for the party or amicus now
`represented by me in the trial court or agency or are expected to appear in this court (and who have not
`or will not enter an appearance in this case) are:
`James L. Etheridge
`Ryan S. Loveless
`Brett A. Mangrum
`Etheridge Law Group, PLLC
`2600 East Southlake Blvd, Suite 120-324
`Southlake, TX 76092
`
`

`

`Case: 19-2389 Document: 23 Page: 3 Filed: 02/19/2020
`
`FORM 9. Certificate of Interest
`
` Form 9
` Rev. 10/17
`
`5. The title and number of any case known to counsel to be pending in this or any other court or agency
`that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
`R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
`Uniloc USA, Inc. et al v. Apple Inc., 2:17-cv-00708, (E.D. Texas)
`
`2/19/2020
` Date
`
`Please Note: All questions must be answered
`
`All counsel of record via CM/EC
`
`cc:
`
`/s/ Brett Mangrum
`Signature of counsel
`Brett Mangrum
`Printed name of counsel
`
`Reset Fields
`
`

`

`Case: 19-2389 Document: 23 Page: 4 Filed: 02/19/2020
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`TABLE OF CONTENTS
`
`Page
`
`
`CERTIFICATE OF INTEREST ................................................................................ i
`
`TABLE OF CONTENTS ......................................................................................... iii
`
`TABLE OF AUTHORITIES ..................................................................................... v
`
`STATEMENT OF RELATED CASES ..................................................................... 1
`
`JURISDICTIONAL STATEMENT .......................................................................... 2
`
`STATEMENT OF THE ISSUES............................................................................... 3
`
`STATEMENT OF THE CASE .................................................................................. 5
`
`A. The ’759 Patent ........................................................................................... 5
`
`B. The Claims of the ’759 Patent on Appeal .................................................. 7
`
`SUMMARY OF THE ARGUMENT ........................................................................ 8
`
`APPLICABLE STANDARDS ................................................................................13
`
`ARGUMENT ...........................................................................................................13
`
`I. The Board erred in determining Petitioner met its burden to show
`obviousness based on Fry and Newell. ..........................................................13
`
`A. The Board misunderstood and misapplied this Court’s previous
`interpretation of “displaying real-time data” in Claims 1 and 29. ...........13
`
`B. The Board erred in determining that Fry in combination with Newell
`teaches “said display unit separate from said data acquisition unit” (claim
`1) or “separate from said electronic positioning device” (claim 29) .......28
`
`II. The Board erred in determining Petitioner met its burden to show
`obviousness based on Vock and Arcelus. ......................................................34
`
`A. “a display unit configured for displaying real-time data provided by said
`electronic positioning device and said physiological monitor” (claim 1) 34
`
`
`
`iii
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`

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`Case: 19-2389 Document: 23 Page: 5 Filed: 02/19/2020
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`B. “a data acquisition unit comprising an electronic positioning device and a
`physiological monitor, said data acquisition unit configured to be worn
`by a subject performing a physical activity” ............................................42
`
`III. APJs are Unconstitutionally Appointed Principal Officers ...........................45
`
`CONCLUSION ........................................................................................................48
`
`ADDENDUM ................................................................................................... Appx1
`
`CERTIFICATE OF SERVICE
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`
`
`iv
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`

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`Case: 19-2389 Document: 23 Page: 6 Filed: 02/19/2020
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Abiomed, Inc. v. Maquet Cardiovascular, LLC,
`IPR2017- 01204, -01205, Paper 8 (PTAB Oct. 23, 2017) ...................................39
`
`Alza Corp. v. Mylan Labs., Inc.,
`464 F.3d 1286 (Fed. Cir. 2006) .................................................................... 31, 34
`
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .................................................................... 31, 43
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) ........................................................ 12, 45, 47, 48
`
`Bd. of Regents of the Univ. of Tex. Sys. v. BenQAmerica Corp.,
`533 F.3d 1362 (Fed. Cir. 2008) ...........................................................................27
`
`Belden, Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ...........................................................................46
`
`DSS Tech. Mgmt. v. Apple Inc.,
`885 F.3d 1367 (Fed. Cir. 2018) ........................................................ 42, 43, 44, 45
`
`Edmond v. US,
`520 U.S. 651 (1997) ...................................................................................... 12, 47
`
`In re Cuozzo Speed Techs. LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ...........................................................................13
`
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000) ...........................................................................13
`
`In re Gordon,
`733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) .................................................29
`
`In re Grasselli,
`713 F.2d 731 (Fed. Cir. 1983)..............................................................................29
`
`In re Gurley,
`27 F.3d 551 (Fed. Cir. 1994)................................................................................29
`
`
`
`v
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`

`

`Case: 19-2389 Document: 23 Page: 7 Filed: 02/19/2020
`
`In re ICON Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ...........................................................................29
`
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ...........................................................................13
`
`In re Magnum Oil Tools Int’l Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ................................................. 29, 33, 34, 35, 41
`
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011)............................................................... 13, 30, 34
`
`In re NuVasive,
`842 F.3d 1376 (Fed. Cir. 2016) ................................................... 29, 32, 34, 35, 41
`
`In re Skvorecz,
`580 F.3d 1262 (Fed. Cir. 2009) ...........................................................................27
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .................................................................... 31, 34
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ................................................................................ 29, 34, 43
`
`Lucia v. SEC,
`138 S. Ct. 2044 (2018) .................................................................................. 46, 47
`
`Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,
`138 S. Ct. 1365 (2018) .........................................................................................46
`
`Paragon Solutions, LLC v. Timex Corp.,
`566 F.3d 1075 (Fed. Cir. 2009) ...... 3, 9, 11, 13, 14, 15, 16, 17, 18, 22, 25, 27, 35, 36
`
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017)................................................................. 32, 35, 41
`
`Ramspeck v. Federal Trial Examiners Conference,
`345 U.S. 128 (1953) ...................................................................................... 46, 47
`
`Schweiker v. McClure,
`456 U.S. 188 (1982) .............................................................................................46
`
`
`
`vi
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`

`

`Case: 19-2389 Document: 23 Page: 8 Filed: 02/19/2020
`
`Teva Pharms. U.S.A., Inc. v. Sandoz, Inc.,
`135 S. Ct. 831 (2015) ...........................................................................................13
`
`TriVascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .............................................................. 30, 31, 34
`
`Vessel v. Office of Pers. Mgmt.,
`29 F.3d 600 (Fed. Cir. 1994)................................................................................47
`
`Wong Yang Sung v. McGrath,
`339 U.S. 33 (1950) ........................................................................................ 46, 47
`
`
`
`Statutes
`
`U.S. Const., Art. II, Section 2, Clause 2 (Appointments Clause) ........................4, 45
`
`5 U.S.C. § 556(b) .....................................................................................................46
`
`5 U.S.C. § 7521(a) ...................................................................................................46
`
`28 U.S.C. § 1295(a)(4)(A) ......................................................................................... 2
`
`35 U.S.C. § 103(a) ...................................................................................................29
`
`35 U.S.C. § 141(c) ..................................................................................................... 2
`
`35 U.S.C. § 314 .......................................................................................................... 2
`
`
`
`vii
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`

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`Case: 19-2389 Document: 23 Page: 9 Filed: 02/19/2020
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`STATEMENT OF RELATED CASES
`
`There is no other appeal in or from the same IPR proceeding that was
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`previously before this or any other appellate court.
`
`The following cases involving the same patents may directly affect or be
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`directly affected by this Court’s decision:
`
`Uniloc USA, Inc. et al v. Apple Inc., 2:17-cv-00708 (E.D. Tex.).
`
`
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`1
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`

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`Case: 19-2389 Document: 23 Page: 10 Filed: 02/19/2020
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`JURISDICTIONAL STATEMENT
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`Appellant Uniloc 2017 (“Uniloc” or “Patent Owner”) brings this appeal
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`pursuant to 35 U.S.C. § 141(c) from the Final Written Decision (Appx1-69) issued
`
`by the Patent Trial and Appeal Board (“Board”) of the United States Patent and
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`Trademark Office (“PTO”) on April 12, 2019, in IPR Case Nos. IPR2018-00294
`
`(Paper 20). The Board determined challenged claims 1–32 of U.S. Patent No.
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`6,736,759 (“the ’759 patent,” Appx116-143) were unpatentable, and denied Uniloc’s
`
`request for rehearing (Paper 21, Appx419-428) on July 9, 2019 (Paper 24, Appx70-
`
`76). This appeal is from a final decision that disposes of all parties’ claims. But for
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`the unconstitutionality of Administrative Patent Judge (“APJ”) appointments, as
`
`discussed further below, the Board had jurisdiction over the IPR pursuant to 35
`
`U.S.C. § 314.
`
`Uniloc timely filed a Notice of Appeal from these decisions on September 10,
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`2019. This Court has jurisdiction over the appeal pursuant to 28 U.S.C.
`
`§ 1295(a)(4)(A) and 35 U.S.C. § 141(c).
`
`
`
`2
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`

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`Case: 19-2389 Document: 23 Page: 11 Filed: 02/19/2020
`
`STATEMENT OF THE ISSUES
`
`The primary issues on appeal include:
`
`1.
`
`Whether the Board erred in misunderstanding and misapplying this
`
`Court’s previous interpretation of “displaying real-time data” (independent claims
`
`1 and 29) as construed in Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075
`
`(Fed. Cir. 2009).
`
`2. Whether the Board erred in determining that Fry1 in combination with
`
`Newell2 teaches “said display unit separate from said data acquisition unit” (claim
`
`1) or “separate from said electronic positioning device” (claim 29), and based its
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`analysis on improper hindsight reasoning.
`
`3. Whether the Board erred in finding the combination of Vock3 and
`
`Arcelus4 teaches “displaying real-time data” under the Court’s construction in
`
`Paragon.
`
`4. Whether the Board erred in relying on hindsight reasoning to find the
`
`combination of Vock and Arcelus teaches “a display unit configured for displaying
`
`real-time data provided by said electronic positioning device and said
`
`physiological monitor,” as recited in claim 1.
`
`
`1 U.S. Pat. No. 6,002,982. Appx751-760.
`2 U.S. Pat. No. 6,466,232. Appx761-786.
`3 U.S. Pat. No. 6,539,336. Appx787-870.
`4 U.S. Pat. No. 6,149,602. Appx905-923.
`
`3
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`

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`Case: 19-2389 Document: 23 Page: 12 Filed: 02/19/2020
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`5. Whether the Board erred in relying on hindsight reasoning to find the
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`combination of Vock and Arcelus teaches “a data acquisition unit comprising an
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`electronic positioning device and a physiological monitor, said data acquisition
`
`unit configured to be worn by a subject performing a physical activity.”
`
`6. Whether the appointments of administrative patent judges violates
`
`the Appointments Clause of Article II, and Board decisions must be set aside,
`
`because administrative patent judges are appointed by the Secretary of Commerce,
`
`in consultation with the Director of the USPTO, but without appointment by the
`
`President and confirmation by the Senate in violation of Article II, Section 2,
`
`Clause 2 of the Constitution.
`
`
`
`
`
`
`
`4
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`

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`Case: 19-2389 Document: 23 Page: 13 Filed: 02/19/2020
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`STATEMENT OF THE CASE
`
`Apple Inc. (“Apple” or “Petitioner”) filed the petition in the underlying IPR
`
`on December 18, 2017. The Petition challenged claims 1–32 of the ’759 patent based
`
`on alleged obviousness over nine combinations of seven different references. See
`
`Appx154.
`
`Uniloc filed a Patent Owner Preliminary Response, Appx236-264, along with
`
`the Declaration of William C. Easttom, Appx1327-1374. The Board instituted
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`review on May 21, 2018. Appx77-111. Uniloc filed its Patent Owner Response.
`
`Appx272-303. Petitioner filed a Reply.
`
`The Board determined all claims of the ’759 patent were unpatentable based
`
`on the grounds presented in the petition. Uniloc appeals these determinations.
`
`A. The ’759 Patent
`
`The ’759 patent is titled “Exercise Monitoring System and Methods.”
`
`Appx116. The ʼ759 patent issued May 18, 2004, from U.S. Patent Application No.
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`09/436,515, filed November 9, 1999. Id.
`
`The ’759 patent observes that while more and more people were exercising to
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`improve general health and fitness, monitoring typical measurements of physical
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`fitness and progress, such as weight loss, often failed to meet expectations. This
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`often results in a lack of motivation, which in turn leads to a cessation of exercise.
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`Appx129 (1:17−20).
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`
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`5
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`Case: 19-2389 Document: 23 Page: 14 Filed: 02/19/2020
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`The ’759 patent also observes that while athletes of all ages are usually able
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`to overcome motivational hurdles, athletes often have difficulty in accurately
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`measuring their progress. Many athletes also do not know how to train effectively
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`for maximal improvement. For example, competitive runners may have difficulty
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`determining whether their training pace on a given day is too fast or too slow. While
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`running on a track or treadmill may allow the runner to monitor speed, speed alone
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`is often an inadequate way to monitor optimal training levels. Additionally, human
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`nature often demands instantaneous feedback for motivation and encouragement. Id.
`
`(1:27−37).
`
`The ’759 patent teaches an innovative exercise monitoring system, as well as
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`training and analytical methods useful for subjects performing physical activities.
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`As an example, certain disclosed embodiments provide real-time data and feedback
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`useful to individuals (such as athletes) performing a physical activity. The
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`monitoring system may include an electronic positioning device (such as a GPS
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`device) and/or a physiological monitor (such as an oximeter or a heart rate monitor).
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`Appx131 (6:36−44); Appx1331-1332 (Easttom Decl., ¶¶ 10−12).
`
`A particular embodiment of the monitoring system includes both an electronic
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`positioning device and a physiological monitor (such as an oximeter or heart rate
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`monitor) as part of an integrated monitoring system. Such an integrated monitoring
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`system allows velocity, pace, and/or distance traveled information provided by the
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`
`
`6
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`Case: 19-2389 Document: 23 Page: 15 Filed: 02/19/2020
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`electronic positioning device to be used in conjunction with data provided by the
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`physiological monitor. In this manner, exercising subjects can monitor, control
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`and/or analyze their performance while exercising at any location. Appx131
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`(6:61−7:4). The teachings of the ’759 patent also provide analytical and training
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`methods which utilize data provided by: (a) a physiological monitor; (b) an
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`electronic positioning device (such as a GPS device); or (c) the combination of an
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`electronic positioning device and a physiological monitor (such as a heart rate
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`monitor or an oximeter). Appx132 (7:5−10); Appx1331-1332 (¶¶ 10−12).
`
`B. The Claims of the ’759 Patent on Appeal
`
`Claims 1 and 29 are the only independent claims of the ’759 patent. These
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`independent claims are reproduced below, with italics emphasizing the primary
`
`claim language at issue:
`
`1.
`
`An exercise monitoring system, comprising:
`
`(a) a data acquisition unit comprising an electronic positioning
`device and a physiological monitor, said data acquisition unit
`configured to be worn by a subject performing a physical activity; and
`
`(b) a display unit configured for displaying real-time data
`provided by said electronic positioning device and said physiological
`monitor, said display unit separate from said data acquisition unit;
`
`wherein said display unit is configured to be worn by the subject,
`worn by someone other than the subject, or attached to an apparatus
`associated with the physical activity being performed by the subject so
`as to be visible to the subject while performing the physical activity,
`and
`
`
`
`7
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`

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`Case: 19-2389 Document: 23 Page: 16 Filed: 02/19/2020
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`further wherein said system is configured such that said display
`unit displays real-time data comprising at least one of a subject’s
`location, altitude, velocity, pace, and distance traveled.
`
`Appx142.
`
`29. An exercise monitoring system, comprising:
`
`(a) an electronic positioning device configured to receive
`electromagnetic signals from three or more sources so that said
`monitoring system can determine at least one of a subject’s velocity or
`pace, wherein said electronic positioning device is provided as part of
`a data acquisition unit;
`
`(b) a physiological monitor;
`
`(c) a display unit configured to be worn by a user and for
`simultaneously displaying real-time data provided by said electronic
`positioning device and said physiological monitor, wherein said
`display unit is separate from said electronic positioning device; and
`
`(d) an alarm, wherein said alarm is activated when a subject’s
`velocity or pace does not meet a predetermined target.
`
`Appx143.
`
`Challenged claims 2–28 depend directly or indirectly from independent claim
`
`1. Appx142-143. Challenged claims 30–32 depend directly or indirectly from
`
`independent claim 29. Appx143.
`
`SUMMARY OF THE ARGUMENT
`
`The Board’s judgments that the challenged claims of the ’759 patent are
`
`unpatentable should be reversed, or at least vacated and remanded, or vacated
`
`and dismissed, for the following overarching reasons:
`
`Uniloc argues claim 1 of the ’759 patent as representative of the issues on
`
`
`
`8
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`

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`Case: 19-2389 Document: 23 Page: 17 Filed: 02/19/2020
`
`appeal.
`
`For the first main issue on appeal, the Board misunderstood and misapplied
`
`this Court’s previous construction of “displaying real-time data” to mean “displaying
`
`data without intentional delay, given the processing limitations of the system and the
`
`time required to accurately measure the data.” Paragon Solutions, LLC v. Timex
`
`Corp., 566 F.3d 1075, 1092–93 (Fed. Cir. 2009). In this case, the Fry reference relied
`
`upon in the Petition and by the Board intentionally delays displaying the claimed
`
`data “provided by said electronic positioning device and said physiological
`
`monitor,” at least while collecting other unclaimed data. The Board incorrectly
`
`determined Fry’s other collection activity can be considered “processing” as used in
`
`this Court’s interpretation, such that it does not count as “intentional delay,” and also
`
`incorrectly determined that the only relevant “intentional delay” is storing for later
`
`review after the activity is over. See Appx18-23.
`
`For the second main issue on appeal, the Petition lacks the required factual
`
`inquiry into reasons for combining Fry and Newell to result in “said display unit
`
`separate from said data acquisition unit” (claim 1) or “separate from said electronic
`
`positioning device.” The Petition and Board decision lack any “explanation as to
`
`how or why the references would be combined to produce the claimed invention.”
`
`The Petitioner relies, instead, on impermissible hindsight reconstruction.
`
`For example, the Petition merely makes the conclusion that “[a] PHOSITA
`
`
`
`9
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`Case: 19-2389 Document: 23 Page: 18 Filed: 02/19/2020
`
`would understand that these teachings effectively direct a skilled artisan to re-
`
`arrange the Fry components in a manner that is safe, ergonomic, and efficient for
`
`runners.” Appx164. The Petition then offers the conclusory statement that “[a]
`
`PHOSITA would recognize that an eyeglass-mounted heads-up display is well-
`
`suited to a running application because it allows the user to maintain a view of their
`
`surroundings unlike wrist-mounted displays that require the user to either stop
`
`running or to divert their full view from their surroundings to the displayed
`
`information.” Appx165. For this and other conclusory statements, the Petition cites
`
`to its declarant’s testimony as the sole support. However, Petitioner cannot merely
`
`speculate through its declarant to carry its burden.
`
`The Board states that Patent Owner’s arguments “overlook Petitioner’s
`
`articulation of how the combined teachings of Fry and Newell would have rendered
`
`obvious the claimed subject matter.” Appx24. What follows, however, is merely a
`
`restatement of these alleged reasons. See Appx24-25. The Board did not provide
`
`any meaningful explanation as to why it concludes that Petitioner satisfactorily
`
`addresses the inquiry, and improperly shifted the burden to Patent Owner to prove
`
`one of ordinary skill in the art would not have made the combination.
`
`As to the third main issue on appeal, the Petition’s theory as to “displaying
`
`real-time data” in the combination of Vock and Arcelus fails for at least the same
`
`reason that it fails as to Fry and Newell. The Board erred in finding the combination
`
`
`
`10
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`

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`Case: 19-2389 Document: 23 Page: 19 Filed: 02/19/2020
`
`of Vock and Arcelus teaches “displaying real-time data” under the Court’s
`
`construction in Paragon.
`
`The fourth main issue on appeal involves the Board’s adoption, without
`
`sufficient explanation, of the Petition’s speculation, for example, that “a PHOSITA
`
`would have recognized that pulse/heart rate monitoring with real- time display would
`
`be an obvious extension of [Vock’s] express teachings and would be easily
`
`incorporated into the Vock system,” Appx196, and that a PHOSITA would have
`
`sought to consolidate the GPS receiver and heart rate monitor into a single measuring
`
`unit to allow these devices to share a common power supply and to reduce the
`
`number of components that need to be worn by the user.
`
`As to the fifth main issue on appeal, the Board errs in relying on hindsight
`
`reasoning to find the combination of Vock and Arcelus teaches “a data acquisition
`
`unit comprising an electronic positioning device and a physiological monitor, said
`
`data acquisition unit configured to be worn by a subject performing a physical
`
`activity.” The Petition argues “[a] PHOSITA would have understood that the GPS
`
`positioning and physiological heart rate monitor could be combined in a single
`
`embodiment.” Appx195 (emphasis added) (summarizing conclusory testimony at
`
`Appx483, ¶ 67). Missing limitations cannot be cured by such conclusory hindsight
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`analysis. And the Board’s conclusory statement that the alleged reasons “provide[]
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`articulated reasoning with rational underpinning” fails even to constitute a
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`reviewable finding that one of ordinary skill in the art would have been motivated to
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`make the alleged modifications. Appx51.
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`As to the sixth main issue on appeal, the decision of the Board should be
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`vacated and the appeal dismissed based on the unconstitutional appointment of APJs.
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`The Arthrex decision’s remedy (invalidation of the statutory limitations on removal
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`of APJs) impermissibly re-writes the statutes governing APJs, including by severely
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`limiting their impartiality and independence. In addition, the ability to remove APJs
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`at will is insufficient to render APJs inferior officers. The importance placed on
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`review of the decisions of Court of Criminal Appeals Judges in Edmond v. US, 520
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`U.S. 651 (1997), is inconsistent with Arthrex’s determination that invalidation of
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`statutory limitations on the removal of APJs is sufficient to render APJs inferior
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`officers. See Edmond, 520 U.S. at 665 (“What is significant is that the judges of the
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`Court of Criminal Appeals have no power to render a final decision on behalf of the
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`United States unless permitted to do so by other Executive officers.”).
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`In view of these issues, only Congress can fix the IPR statutory scheme, and
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`the decision of the Board must be vacated and this appeal dismissed. If the Court
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`should decide otherwise, Patent Owner alternatively requests that the Board’s
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`decision be vacated and this appeal be remanded to the Board consistent with
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`Arthrex.
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`APPLICABLE STANDARDS
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`This Court reviews the Board’s legal conclusions de novo and its factual
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`findings for substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
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`2000). Thus, the Board’s ultimate determination of obviousness is reviewed de novo,
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`and any underlying factual findings are reviewed for substantial evidence. In re
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`Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). Obviousness and prior-art teachings
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`present questions of fact and are reviewed for substantial evidence. In re NTP, Inc.,
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`654 F.3d 1279, 1297 (Fed. Cir. 2011).
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`Where there are no underlying factual determinations on which the claim
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`constructions rest, the ultimate construction of a claim is a legal conclusion
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`reviewed de novo. In re Cuozzo Speed Techs. LLC, 793 F.3d 1268, 1279-80 (Fed.
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`Cir. 2015) (citing Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841
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`(2015)).
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`ARGUMENT
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`I. The Board erred in determining Petitioner met its burden to show
`obviousness based on Fry and Newell.
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`A. The Board misunderstood and misapplied this Court’s previous
`interpretation of “displaying real-time data” in Claims 1 and 29.
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`In the context of an infringement dispute, in 2009 this Court construed certain
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`terms of the ’759 patent. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075
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`(Fed. Cir. 2009). In this case, the Board’s Final Written Decision misunderstood and
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`misapplied the Court’s previous construction of “displaying real-time data,” which
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`is recited in independent claims 1 and 29.
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`In Paragon, this Court construed “displaying real-time data” to mean
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`“displaying data without intentional delay, given the processing limitations of the
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`system and the time required to accurately measure the data.” 566 F.3d at 1092–93.
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`In this case, the Fry reference relied upon in the Petition and by the Board
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`intentionally delays displaying the claimed data “provided by said electronic
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`positioning device and said physiological monitor,” at least while collecting other
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`unclaimed data. The Board incorrectly determined Fry’s other collection activity
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`can be considered “processing” as used in this Court’s interpretation, such that it
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`does not count as “intentional delay,” and also incorrectly determined that the only
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`relevant “intentional delay” is storing for later review after the activity is over. See
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`Appx18-23. The Board misunderstood this Court’s previous interpretation of
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`“displaying real-time data” and misapplied it in this case.
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`Paragon resolved a dispute about whether “displaying real-time data” meant
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`instantaneous display at the moment in time that the measurement occurs. See 566
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`F.3d at 1087-88. The patentee, argued that instantaneous display was not possible in
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`practice. Id. The Court agreed. The Court considered the claim language and noted
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`that, because transmission of data takes a non-zero amount of time, “what the claims
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`describe as ‘displaying real-time data’ cannot possibly mean displaying data literally
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`instantaneously.” Id. at 1088. The Court also considered specific types of data
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`recited in the claim and determined that some types “require the electronic
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`positioning device to receive three or more signals that enable the device to calculate
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`a position.” Id. “Receiving and processing these signals necessarily takes a non-zero
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`amount of time.” Id. Similarly, the Court determined that velocity and pace, two
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`types of data recited in claim 1, are calculations of a rate of movement, which
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`requires the passage of a non-zero amount of time to calculate. Id. Likewise for data
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`provided by “said physiological monitor,” of which heart rate is a claimed example
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`(claim 14), the Paragon Court determined that “measurement of a heart rate
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`necessarily requires the passage of time between at least two heartbeats.” Id. Thus,
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`the Court determined from the claim language that “‘real-time’ cannot mean
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`instantaneous, and must permit at least some amount of time to pass to allow for
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`both the processing limitations of the system and the time required to accurately
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`measure the data that is to be displayed.” Id.
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`The Paragon Court also considered certain passages of the Specification. Id.
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`at 1088–91. The Court determined that the Specification did not criticize prior art
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`for not providing “instantaneous” feedback, but that its “criticism of prior art is more
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`appropriately read to distinguish the invention’s ‘real-time’ display from prior art
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`methods that stored data for review only after the activity was complete.” Id. at 1089.
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`“Thus, the specification supports a construction of ‘real-time’ in this case that
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`precludes intentionally delaying the display of data by storing it for later review.”
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