Professional Documents
Culture Documents
gov Paper 11
571-272-7822 Entered February 10, 2017
v.
Case IPR2016-01464
Patent 7,454,002 B1
____________
DECISION
Instituting Inter Partes Review
37 C.F.R. 42.108
IPR2016-01464
Patent 7,454,002 B1
I. INTRODUCTION
Petitioner filed a Petition for inter partes review of claims 116 of
U.S. Patent No. 7,454,002 B1 (Ex. 1001, the 002 patent). Paper 2
(Pet.). Patent Owner filed a Preliminary Response. Paper 8 (Prelim.
Resp.). Institution of an inter partes review is authorized by statute when
the information presented in the petition . . . and any 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. 35 U.S.C.
314(a); see 37 C.F.R. 42.108.
Upon consideration of the Petition and the Preliminary Response, we
are persuaded Petitioner has demonstrated a reasonable likelihood that it
would prevail in establishing the unpatentability of claims 116 of the 002
patent. Accordingly, we institute an inter partes review.
A. Related Matters
The 002 patent is the subject of multiple lawsuits filed by SportBrain
Holdings, LLC against numerous defendants as listed in Patent Owners and
Petitioners Mandatory Notices. Papers 3, 6, 7, 10.
The 002 patent is also the subject of pending Reissue Application No.
14/567,016 filed December 11, 2014 (the reissue application).
2
IPR2016-01464
Patent 7,454,002 B1
3
IPR2016-01464
Patent 7,454,002 B1
4
IPR2016-01464
Patent 7,454,002 B1
C. Illustrative Claim
Claims 1 and 9 of the challenged claims of the 002 patent are
independent. Claim 1 is illustrative of the claimed subject matter:
1. A method for integrating personal data capturing
functionality into a wireless communication device and for
analyzing and supplying feedback information to a user, the
method comprising:
receiving personal data of said user by at least one
personal parameter receiver, the personal data comprising step
data corresponding to a number of steps counted during an
activity of said user;
capturing the personal data in the wireless communication
device;
periodically transmitting the personal data from the
wireless communication device to a network server over a
wireless network;
at the network server, storing in a repository of personal
data maintained by, or accessible from, the network server, the
personal data from said user;
at the network server, analyzing the personal data to
generate feedback information for said user;
at the network server, posting the feedback information to
a web site that is accessible to said user;
wherein said receiving, capturing, periodically
transmitting, storing, analyzing and posting are performed with
respect to personal data for each of a plurality of users received
from their corresponding wireless communication devices, and
wherein said analyzing further comprises comparing
personal data for said user with personal data for at least one
other different user from the received personal data from said
plurality of users, and
wherein posting comprises posting comparisons between
the personal data of said user and personal data for said at least
one other different user.
5
IPR2016-01464
Patent 7,454,002 B1
D. References
Petitioner relies on the following references. Pet. 89.
Shum US 6,585,622 B1 Jul. 1, 2003 Ex. 1002
Nikolic US 6,436,052 B1 Aug. 20, 2002 Ex. 1003
Root US 6,013,007 Jan. 11, 2000 Ex. 1004
Browne US 5,598,849 Feb. 4, 1997 Ex. 1005
Vock WO 98/54581 Dec. 3, 1998 Ex. 1006
Smith US 5,485,402 Mar. 21, 1994 Ex. 1007
Onari US 6,132,391 Oct. 17, 2000 Ex. 1008
II. ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. 42.100(b);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 214446 (2016)
(upholding the use of the broadest reasonable interpretation standard as the
claim interpretation standard to be applied in inter partes reviews).
6
IPR2016-01464
Patent 7,454,002 B1
7
IPR2016-01464
Patent 7,454,002 B1
B. Asserted Obviousness Over Vock, Smith, and Onari: Claims 14, 712,
15, and 16
Petitioner, relying on the Declaration of Charles Eldering, Ph.D. (Ex.
1009), challenges claims 14, 712, 15, and 16 as obvious over the
combination of Vock, Smith, and Onari. Pet. 2445.
1. Vock (Ex. 1006)
Vock relates generally to monitoring and quantifying sport movement
(associated either with the person or with the vehicle used or ridden by the
person), including the specific parameters of air time (referring to an
amount and altitude of a lofting motion of a skier), power, speed, and drop
distance. Ex. 1006, 1:57. Figure 1 of Vock is reproduced below.
8
IPR2016-01464
Patent 7,454,002 B1
9
IPR2016-01464
Patent 7,454,002 B1
particular person tags the performance data with a code to identify the
particular person, and base station server 82 stores the tagged performance
data. Id. at 34:2025. Base station 70 can process the performance data to
compare the persons performance data to other performers within a sporting
activity. Id. at 6:2430, 24:1118. The data stored at base station 70 is
available for access through the Internet using a World Wide Web (WWW)
interface or by using bulletin boards. Id. at 7:511, 24:1123, 81:2182:5.
2. Smith (Ex. 1007)
Smith discloses a gait activity monitor that includes an accelerometer
to determine and record the number of steps taken by a wearer during
selected intervals. Ex. 1007, Abstract, 2:5162, 3:5157. The gait activity
data stored by the monitor can be downloaded to a computer over a wireless
network for analyzing the data and generating reports. Id. at Abstract, 3:28
40, Figs. 2, 4, 5.
3. Onari (Ex. 1008)
Onari discloses a portable position detector equipped with a
pedometer. Ex. 1008, Abstract. The pedometer detects the number of steps
a person walks using an accelerator. Id. at 8:5051, 9:24. The portable
position detector detects the moved distance of a walker by multiplying the
number of steps by the length of a step. Id. at Abstract. The portable
position detector is carried by a person as a child station that communicates
information with a base station using radio communication. Id. at 17:1839.
A control program in the child station repeatedly transmits the moved
10
IPR2016-01464
Patent 7,454,002 B1
position of the child station to the base station. Id. at 19:4220:8, Figs. 14
16.
4. Analysis of Claims 14, 712, 15, and 16
Petitioner contends receiving personal data of said user by at least
one personal parameter receiver, the personal data comprising step data
corresponding to a number of steps counted during an activity of said user,
as recited in claims 1 and 9, is disclosed by Vock in describing a sensing
unit that can serve as a pedometer for a jogger. Pet. 2829 (citing Ex. 1006,
47:2932, 50:35, 1719); Pet 41. Petitioner relies on testimony from Dr.
Eldering to contend a person of ordinary skill in the art would have
recognized that a pedometer counts and stores a number of steps taken
during an activity. Pet. 29 (citing Ex. 1032; Ex. 1009 47).
Petitioner also contends Smith discloses that collecting step data
corresponding to a number of steps was a well-known feature of a
pedometer at the time of invention. Pet. 2931 (citing Ex. 1007, 2:5162,
3:3640, 5157). Petitioner relies on testimony from Dr. Eldering, who
testifies that a person of ordinary skill in the art would have modified the
sensing unit of Vock to measure, record, and transmit a number of steps
taken by a user, and would have modified the base station of Vock to
provide feedback to a user based on the number of steps, in light of the
teachings of Smith, for the benefit of providing a user with additional
information with which to quantitatively assess performance during a
physical activity. Id. (citing Ex. 1009 4652). For purposes of this
Decision, we credit this testimony, which is uncontroverted, and determine
that at this stage of the proceeding Petitioner has articulated sufficient
reasoning to adequately establish a reasonable likelihood that the
11
IPR2016-01464
Patent 7,454,002 B1
12
IPR2016-01464
Patent 7,454,002 B1
13
IPR2016-01464
Patent 7,454,002 B1
14
IPR2016-01464
Patent 7,454,002 B1
15
IPR2016-01464
Patent 7,454,002 B1
Petitioner relies on the testimony of Dr. Eldering, who testifies that a person
of ordinary skill in the art would have modified the sensing unit of Vock to
implement Onaris technique of connecting a pedometer to the sensing unit
over a cable and connector for the benefit of providing a user with the
flexibility of choosing to use a pedometer that the user prefers. Pet. 3738
(citing Ex. 1009 7480). Patent Owner does not address Petitioners
contentions for these dependent claims or those of any other dependent
claim.
We are persuaded at this stage of the proceeding that Petitioner has
articulated sufficient reasoning to support its conclusion that attaching a
pedometer to a sensing unit over a cable and connector as taught by the
combination of Vock and Smith would have been obvious. For purposes of
this Decision, we determine the Petition and supporting evidence adequately
establishes a reasonable likelihood that claims 2 and 10 would have been
obvious over the combination of Vock, Smith, and Onari.
Claim 3 recites wherein the at least one personal parameter receiver
is contained in the wireless communication device. Ex. 1001, 12:46.
Claim 11 recites a similar limitation. Ex. 1001, 12:6163. Petitioner
contends Vock discloses this limitation in describing the sensing unit
includes sensors and a data transmit section that wirelessly transmits
performance data. Pet. 38 (citing Ex. 1006, 29:118, 49:2123, 50:419);
Pet. 44.
For purposes of this Decision, we determine the Petition and
supporting evidence adequately establishes a reasonable likelihood that
claims 3 and 11 would have been obvious over the combination of Vock,
Smith, and Onari.
16
IPR2016-01464
Patent 7,454,002 B1
17
IPR2016-01464
Patent 7,454,002 B1
18
IPR2016-01464
Patent 7,454,002 B1
19
IPR2016-01464
Patent 7,454,002 B1
20
IPR2016-01464
Patent 7,454,002 B1
21
IPR2016-01464
Patent 7,454,002 B1
22
IPR2016-01464
Patent 7,454,002 B1
calculated, assigned, and tracked based on the level of use determined from
the data. Id. The user can redeem rewards or compare performance with
other athletes who use other remote devices. Id.
2. Nikolic (Ex. 1003)
Nikolic relates to a method and system for determining an individuals
rate of oxygen consumption in order to measure the amount of work
performed by the individuals body. Ex. 1003, 1:1518. A heart monitor
measures the heart rate and an accelerometer measures acceleration of a
body. Id. at Abstract. The heart rate and acceleration outputs are stored
locally on a storage device, and can be downloaded to a local base station
that in turn transmits the outputs to a central clearinghouse. Id. The heart
rate and acceleration outputs can be uploaded from the base station to the
clearinghouse once per day; however, the uploading frequency can be
shorter, longer, or adaptive. Id. at 9:2024.
3. Analysis of claims 1 and 9
Petitioner contends Shum discloses receiving personal data of said
user by at least one personal parameter receiver, the personal data
comprising step data corresponding to a number of steps counted during an
activity as recited in claims 1 and 9, in describing a sensor that can count
steps taken by an athlete. Pet. 56 (citing Ex. 1002, 4:2843).
Petitioner contends Shum discloses capturing the personal data in the
wireless communication device as recited in claims 1 and 9, in describing
the device includes a memory that stores the measured performance
information, and wirelessly transmits the performance information. Pet. 56
57. Petitioner also contends Shum discloses this limitation in describing a
computer receiving the performance information from the device, and the
23
IPR2016-01464
Patent 7,454,002 B1
24
IPR2016-01464
Patent 7,454,002 B1
25
IPR2016-01464
Patent 7,454,002 B1
26
IPR2016-01464
Patent 7,454,002 B1
III. CONCLUSION
For the foregoing reasons, we determine that the information
presented in the Petition establishes that there is a reasonable likelihood that
Petitioner would prevail with respect to claims 116 of the 002 patent.
Any discussion of facts in this Decision is made only for the purposes
of institution and is not dispositive of any issue related to any ground on
27
IPR2016-01464
Patent 7,454,002 B1
which we institute review. The Board has not made a final determination on
the patentability of any challenged claim. The Boards final determination
will be based on the record as fully developed during trial.
IV. ORDER
Accordingly, it is
ORDERED that pursuant to 35 U.S.C. 314, we institute an inter
partes review on the following grounds:
1. Claims 14, 712, 15, and 16 of the 002 patent as unpatentable
under 35 U.S.C. 103 over Vock, Smith, and Onari;
2. Claims 5 and 13 of the 002 patent as unpatentable under 35 U.S.C.
103 over Vock, Smith, Onari, and Root;
3. Claims 6 and 14 of the 002 patent as unpatentable under 35 U.S.C.
103 over Vock, Smith, Onari, and Browne; and
4. Claims 1 and 9 of the 002 patent as unpatentable under 35 U.S.C.
103 over Shum, Nikolic, and Root.
FURTHER ORDERED that inter partes review is not instituted with
respect to any other ground of unpatentability; and
FURTHER ORDERED that pursuant to 35 U.S.C. 314(a), inter
partes review of the 002 patent is hereby instituted commencing on the
entry date of this Order, and pursuant to 35 U.S.C. 314(c) and 37 C.F.R.
42.4, notice is hereby given of the institution of a trial.
28
IPR2016-01464
Patent 7,454,002 B1
PETITIONER:
David L. Cavanaugh
Michael Van Handel
Wilmer, Cutler, Pickering, Hale and Dorr, LLP
david.cavanaugh@wilmerhale.com
michael.vanhandel@wilmerhale.com
Jonathan Stroud
jonathan@unifiedpatents.com
PATENT OWNER:
Isaac Rabicoff
RABICOFF LAW LLC
isaac@rabilaw.com
Brian Lynch
blynch@niro-mcandrews.com
29