Unified Patents Inc. v. Sportbrain Holdings, LLC IPR2016-01464 (July 22, 2016)

IPR201601464
Patent 7,454,002
DOCKET NO.: 221172600127US1
Filed on behalf of Unified Patents Inc.
By: David L. Cavanaugh, Reg. No. 36,476
Michael Van Handel, Reg. No. 68,292
Wilmer Cutler Pickering Hale and Dorr LLP
1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 6636000
Email: [email protected]
Jonathan Stroud, Reg. No. 72,518
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Tel: (202) 8058931
Email: [email protected]
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
HARRY HESLOP & SPORTBRAIN HOLDINGS, LLC
IPR201601464
Patent 7,454,002
PETITION FOR INTER PARTES REVIEW OF
U.S. PATENT NO. 7,454,002
CHALLENGING CLAIMS 116
UNDER 35 U.S.C. 312 AND 37 C.F.R. 42.104
IPR201601464
Patent 7,454,002
TABLE OF CONTENTS
I.
Mandatory Notices .............................................................................................1

A. Real PartyinInterest ...................................................................................1
B.
Related Matters..............................................................................................1
C.
Counsel ..........................................................................................................7
D. Service Information, Email, Hand Delivery, and Postal ...............................7

II. Certification of Grounds for Standing ...............................................................7
III. Overview of Challenge and Relief Requested .................................................7
A. Prior Art Patents and Printed Publications ....................................................7
B.
Grounds for Challenge ..................................................................................9
IV. Technology background ...................................................................................9

V. Overview Of the 002 patent..............................................................................9
A. Summary of the Alleged Invention ...............................................................9
B.
Level of Ordinary Skill in the Art ...............................................................13
C.
Prosecution History .....................................................................................13
1.
241 Application Prosecution History .....................................................13
2.
016 Application Prosecution History .....................................................15
VI. Claim Construction .........................................................................................20

VII.
Specific Grounds for Petition ......................................................................23
A. Ground I: Claims 14, 712, 15, and 16 are obvious over Vock, Smith, and
Onari ....................................................................................................................24
1.
Overview of Vock .....................................................................................25
2.
Claim 1 is obvious in view of Vock, Smith, and Onari ............................27
3.
4.
5.
6.
7.

i
8.
IPR201601464
Patent 7,454,002
9.
Claim 10 is obvious in view of Vock, Smith, and Onari ..........................44
10.
Claim 11 is obvious in view of Vock, Smith, and Onari.......................44
11.
12.
13.
B. Ground II: Claims 5 and 13 are obvious in view of Vock, Smith, Onari, and
Root .....................................................................................................................46
1.
Claim 5 is obvious in view of Vock, Smith, Onari, and Root ...................46
2.
Claim 13 is obvious in view of Vock, Smith, Onari, and Root ................48
C. Ground III: Claims 6 and 14 are obvious in view of Vock, Smith, Onari,
and Browne ..........................................................................................................49
1.
Claim 6 is obvious in view of Vock, Smith, Onari, and Browne .............49
2.
Claim 14 is obvious in view of Vock, Smith, Onari, and Browne ...........51
D. Ground IV: Claims 1 and 9 are obvious in view of Shum, Nikolic, and
Root .....................................................................................................................51
1.
Overview of Shum ....................................................................................52
2.
Claim 1 is obvious in view of Shum, Nikolic, and Root ..........................55
3.
Claim 9 is obvious in view of Shum, Nikolic, and Root ..........................66
VIII. Conclusion ...................................................................................................69
ii
IPR201601464
Patent 7,454,002
I.
MANDATORY NOTICES
A.
Real PartyinInterest
Pursuant to 37 C.F.R. 42.8(b)(1), Unified Patents Inc. (Unified or
Petitioner) certifies that Unified is the real party-in-interest, and further certifies
that no other party exercised control or could exercise control over Unifieds
participation in this proceeding, the filing of this petition, or the conduct of any
ensuing trial. In this regard, Unified has submitted voluntary discovery. See
Petitioners Voluntary Interrogatory Responses (EX1031)).
B.
Related Matters
U.S. Pat. No. 7,454,002 (002 patent) (EX1001) is owned by Harry Heslop
(Patent Owner) and is exclusively licensed to SportBrain Holdings, LLC

(Sportbrain or Exclusive Licensee). Between November 2, 2012 and July 12,
2016, SportBrain filed lawsuits asserting the 002 patent against numerous
defendants, including (by common names) United Healthcare Services, Inc.,
Aetna, Fitbit, Adidas, Nike, Medtronic, Garmin, Huawei, Pebble, Tag Heuer,
Fossil, Timex, TomTom, Casio, Under Armour, Microsoft, Philips, Epson, Acer,
Sony, Motorola, Haier, New Balance, Samsung, LG, MAD Apparel, and other
companies, claiming that products that integrate personal data capturing
functionality and wireless communication, and that provide for analyzing and
supplying feedback information to a user through the combined use of a personal
parameter receiver, a wireless communication device, a network server, and a
1
IPR201601464
Patent 7,454,002
website infringe the 002 patent. The status of each of these litigations is provided
in the table below.
Case Caption
Sportbrain Holdings
LLC v. Wellograph,
Inc. et al.
Sportbrain Holdings
LLC v. Amiigo, Inc.
Sportbrain Holdings
LLC v. United
Healthcare Services,
Inc.
Sportbrain Holdings
LLC v. Aetna, Inc.
Sportbrain Holdings
LLC v. Pivotal
Corporation
Sportbrain Holdings
LLC v. Virgin Pulse,
Inc.
Sportbrain Holdings
LLC v. TCL
Communications Inc.
et al.
Sportbrain Holdings
LLC v. Microsoft
Corporation
Sportbrain Holdings
LLC v. Medtronic,
Inc.
Sportbrain Holdings
LLC v. Kersh Risk
Management, LLC
Sportbrain Holdings
LLC v. LG
Electronics USA, Inc.
Case
Number
1:16cv
07167
District
Case Filed
Status
NDIL
July 12, 2016
Pending
1:16cv
07168
1:16cv
06943
NDIL
July 12, 2016
Pending
NDIL
July 4, 2016
Pending
1:16cv
06944
1:16cv
06581
NDIL
July 4, 2016
Pending
NDIL
June 23, 2016
Pending
1:16cv
06583
NDIL
June 23, 2016
Dismissed,
June 24, 2016
1:16cv
06360
NDIL
June 20, 2016
Pending
1:16cv
06362
NDIL
June 20, 2016
Pending
1:16cv
06363
NDIL
June 20, 2016
Pending
1:16cv
06023
NDIL
June 9, 2016
Pending
1:16cv
06024
NDIL
June 9, 2016
Pending
IPR201601464
Patent 7,454,002
et al.
Sportbrain Holdings
LLC v. Samsung
Electronics America,
Inc. et al.
Sportbrain Holdings
LLC v. EB Brands
Holdings, Inc.
Sportbrain Holdings
LLC v. Soleus Global,
Inc.
Sportbrain Holdings
LLC v. Atlas
Wearables, Inc.
Sportbrain Holdings
LLC v. Xtreme Time,
Inc. d/b/a Zunammy
Sportbrain Holdings
LLC v. Everlast
Worldwide, Inc.
Sportbrain Holdings
LLC v. MAD Apparel,
Inc.
Sportbrain Holdings
LLC v. PVH Corp.
Sportbrain Holdings
LLC v. Haier America
Company, LLC et al.
Sportbrain Holdings
LLC v. IMPLUS LLC
d/b/a New Balance
Sportbrain Holdings
LLC v. Motorola
Mobility LLC
Sportbrain Holdings
LLC v. Sony
Corporation of
America et al.
Sportbrain Holdings
1:16cv
06025
NDIL
June 9, 2016
Pending
1:16cv
05688
NDIL
May 30, 2016
Pending
1:16cv
05689
NDIL
May 30, 2016
Pending
1:16cv
05376
NDIL
May 19, 2016
Pending
1:16cv
05377
NDIL
May 19, 2016
Pending
1:16cv
05226
NDIL
May 15, 2016
Pending
1:16cv
05227
NDIL
May 15, 2016
Pending
1:16cv
05209
1:16cv
04399
NDIL
May 13, 2016
Pending
NDIL
April 18, 2016
Dismissed,
June 8, 2016
1:16cv
04400
NDIL
April 18, 2016
Pending
1:16cv
04186
NDIL
April 10, 2016
Pending
1:16cv
04187
NDIL
April 10, 2016
Pending
1:16cv
NDIL
April 1, 2016
Pending
IPR201601464
Patent 7,454,002
LLC v. Acer America
Corp. et al.
Sportbrain Holdings
LLC v. Epson
America, Inc. et al.
Sportbrain Holdings
LLC v. Physical
Enterprises, Inc. d/b/a
Mio Global
Sportbrain Holdings
LLC v. Philips
Electronics North
America Corporation
et al.
Sportbrain Holdings
LLC v. Under
Armour, Inc.
Sportbrain Holdings
LLC v. Casio
America, Inc. et al.
Sportbrain Holdings
LLC v. Omron
Healthcare, Inc.
Sportbrain Holdings
LLC v. ASUSTeK
Computer Inc. et al.
Sportbrain Holdings
LLC v. MiTAC
Digital Corporation
d/b/a Magellan
Sportbrain Holdings
LLC v. TomTom, Inc.
et al.
Sportbrain Holdings
LLC v. Striiv, Inc.
SportBrain Holdings
LLC v. Spree
Wearables, Inc.
Sportbrain Holdings
03953
1:16cv
03906
NDIL
March 31,
2016
Pending
1:16cv
03908
NDIL
March 31,
2016
Pending
1:16cv
03909
NDIL
March 31,
2016
Pending
1:16cv
03910
NDIL
March 31,
2016
Pending
1:16cv
03620
NDIL
March 25,
2016
Pending
1:16cv
03621
NDIL
March 25,
2016
Pending
1:16cv
03054
NDIL
March 11,
2016
Dismissed,
June 23, 2016
1:16cv
03064
NDIL
March 11,
2016
Pending
1:16cv
03069
NDIL
March 11,
2016
Dismissed,
July 13, 2016
1:16cv
03094
1:16cv
02860
NDIL
NDIL
March 11,
2016
March 4, 2016
Dismissed,
May 12, 2016
Dismissed,
July 5, 2016
NDIL
March 4, 2016
Pending
1:16cv
IPR201601464
Patent 7,454,002
LLC v. Wahoo
Fitness, LLC
Sportbrain Holdings
LLC v. Runtastic
GmbH et al.
Sportbrain Holdings
LLC v. Olio Devices,
Inc.
Sportbrain Holdings
LLC v. ICON Health
& Fitness, Inc.
Sportbrain Holdings
LLC v. Timex Group
USA, Inc. et al.
Sportbrain Holdings
LLC v. Fossil Group,
Inc. et al.
Sportbrain Holdings
LLC v. Tag Heuer
USA et al.
Sportbrain Holdings
LLC v. Adidas
America, Inc.
Sportbrain Holdings
LLC v. Withings Inc.
Pebble Technology,
Corp. v. Sportbrain
Holdings LLC
Sportbrain Holdings
LLC v. Huawei
Technologies Co. Ltd.
et al.
Sportbrain Holdings
LLC v. Moov Inc.
Sportbrain Holdings
LLC v. Basis Science,
Inc.
Sportbrain Holdings
LLC v. Garmin
02862
1:16cv
02548
NDIL
February 24,
2016
1:16cv
02550
NDIL
February 24,
2016
1:16cv
02551
NDIL
February 24,
2016
Dismissed,
June 23, 2016
1:16cv
02553
NDIL
February 24,
2016
Pending
1:16cv
02182
NDIL
February 12,
2016
1:16cv
02184
NDIL
February 12,
2016
Dismissed,
March 28,
2016
Dismissed,
June 8, 2016
1:16cv
02011
NDIL
February 6,
2016
1:16cv
02012
5:16cv
00592
NDIL
February 6,
2016
February 3,
2016
NDCA
Dismissed,
March 3,
2016
Pending
Dismissed,
March 3,
2016
Pending
Dismissed,
March 11,
2016
Pending
1:16cv
01231
NDIL
January 27,
2016
1:16cv
01237
1:16cv
00591
NDIL
January 27,
2016
January 15,
2016
Dismissed,
April 4, 2016
January 15,
2016
Dismissed,
April 13,
1:16cv
0600
NDIL
NDIL
Pending
International, Inc.
Sportbrain Holdings
LLC v. AliphCom
d/b/a Jawbone
Sportbrain Holdings
LLC v. Misfit, Inc.
d/b/a Misfit
Wearables
Corporation
Sportbrain Holdings
LLC v. Pebble
Technology, Corp.
SportBrain Holdings
LLC v. Polar Electro
Inc.
SportBrain Holdings
LLC v. Fitbug, Inc.
IPR201601464
Patent 7,454,002
2016
Dismissed,
June 15, 2016
1:16cv
00605
NDIL
January 15,
2016
1:16cv
00608
NDIL
January 15,
2016
Dismissed,
March 39,
2016
1:16cv
00610
NDIL
January 15,
2016
1:15cv
00240
DDE
March 13,
2015
1:14cv
00552
DDE
April 25, 2014
SportBrain Holdings
LLC v. Polar Electro
Inc.
SportBrain Holdings
LLC v. Withings, Inc.
1:14cv
00553
DDE
April 25, 2014
1:14cv
00554
DDE
April 25, 2014
SportBrain Holdings
LLC v. Fitbit, Inc.
2:13cv
00212
EDTX
March 15,
2013
SportBrain, Inc. v.
Nike, Inc.
2;13cv
00001
EDTX
January 2,
2013
SportBrain, Inc. v.
Adidas America, Inc.
2:12cv
00700
EDTX
November 2,
2012
SportBrain, Inc. v.
Fitbit, Inc.
2:12cv
00701
EDTX
November 2,
2012
Dismissed,
February 12,
2016
Stayed,
October 15,
2015
Stayed,
September
22, 2015
Dismissed,
March 16,
2015
Dismissed,
March 16,
2015
Dismissed,
February 7,
2014
Dismissed,
January 3,
2014
Dismissed,
February 7,
2013
Dismissed,
March 18,
2013
IPR201601464
Patent 7,454,002
The pending cases listed above that have not settled are mostly still in their
early stages.
C.
Counsel
Lead Counsel: David L. Cavanaugh (Registration No. 36,476)
Backup Counsel: Michael Van Handel (Registration No. 68,292)
Backup Counsel: Jonathan Stroud (Registration No. 72,518)
D.
Service Information, Email, Hand Delivery, and Postal

Unifed consents to electronic service at [email protected]
and [email protected]. Petitioner can be reached at Wilmer, Cutler,

Pickering, Hale and Dorr, LLP, 1875 Pennsylvania Ave., NW Washington, DC
20006 and (202) 6636000, Fax: 2026636363 and Unified Patents Inc., 1875
Connecticut Ave. NW, Floor 10, Washington, D.C., 20009, (650) 9990899.
II.
CERTIFICATION OF GROUNDS FOR STANDING

Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
review is sought is available for inter partes review and that Petitioner is not
barred or estopped from requesting an inter partes review challenging the patent
claims on the grounds identified in this Petition.
III.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)(2), Petitioner challenges
claims 116 of the 002 patent.

A.
Prior Art Patents and Printed Publications

7
IPR201601464
Patent 7,454,002
The following references are pertinent to the grounds of unpatentability
explained below: 1
1. PCT Application Publication No. WO 98/54581 (published December 3,
1998) (Vock (EX1006)), which is prior art under 35 U.S.C. 102(b) and
102(a).
2. U.S. Patent No. 5,485,402 (filed March 21, 1994; published January 16,
1996) (Smith (EX1007)), which is prior art under 35 U.S.C. 102(b).
3. U.S. Patent No. 6,132,391 (filed December 29, 1998, published October 17,
2000) (Onari (EX1008)), which is prior art under 35 U.S.C. 102(a) and
102(e).
4. U.S. Patent No. 6,013,007 (filed March 26, 1998; published January 11,
2000) (Root (EX1004)), which is prior art under 35 U.S.C. 102(a) and
102(e).
5. U.S. Patent No. 5,598,849 (filed January 20, 1995; published February 4,
1997) (Browne (EX1005)), which is prior art under 35 U.S.C. 102(b).
6. U.S. Patent No. 6,585,622 (filed December 3, 1999; published July 1, 2003)
(Shum (EX1002)), which is prior art under 35 U.S.C. 102(e).
The 002 patent issued from an application filed prior to enactment of the
America Invents Act (AIA). Accordingly, pre-AIA statutory framework applies.
IPR201601464
Patent 7,454,002
7. U.S. Patent No. 6,436,052 (filed October 8, 1999; published August 20,
2002 (Nikolic (EX1003)), which is prior art under 35 U.S.C. 102(e).
B.
Grounds for Challenge

This Petition, supported by the declaration of Charles Eldering (Eldering
Declaration or Eldering (EX1009)), requests cancellation of challenged claims

1-16 as unpatentable under 35 U.S.C. 103. See 35 U.S.C. 314(a).
IV.
TECHNOLOGY BACKGROUND
The Eldering Declaration discusses technology described in this Petition in
greater detail, specifically the concepts of collection of personal data (see Eldering
11-12 (EX1009)), periodic wireless transmission (see Eldering Decl. at 1315 (EX1009)), and providing aggregated personal data through a website (see
Eldering 16 (EX1009)).
V.
OVERVIEW OF THE 002 PATENT
A.
Summary of the Alleged Invention

The 002 patent concedes that, prior to its filing date, devices providing
feedback relating to user fitness were known. 002 patent, 1:2245 (EX1001). For
example, pedometers for counting a users steps were wellknown prior to the date
of filing. 002 patent, 1:3240 (EX1001). However, the 002 patent alleges that
these devices provided only physiological information to users, not processed
feedback. 002 patent, 1:4346 (EX1001). The 002 patent also asserts that
conventional devices meant users would monitor their own activity, thus
9
IPR201601464
Patent 7,454,002
interfering with their focus on physical exercise. 002 patent, 1:4653 (EX1001);
Eldering 17 (EX1009).
In response, the 002 filing described a system for monitoring a users
physical data via a portable device, and then wirelessly transmitting the data from
the device to a server that provides feedback information to the user. 002 patent,
3:5557, 4:813, 4:2325 (EX1001). The 002 filing argued that this system made
it possible to provide users access to information about their activities and thus
assist them in monitoring exercise. 002 patent, 1:5053 (EX1001); Eldering 18
(EX1009).
As one example of the system, illustrated in annotated FIG. 1C below,
the 002 patent discloses a device (outlined in green), a wireless network (outlined
in blue), and a server (outlined in red).
10
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Patent 7,454,002
002 patent, FIG. 1C (EX1001) (Annotated).

The device can be portable and can capture personal data with a personal data
receiver. 002 patent, 8:928, 9:38, FIGs. 1A1C, 2 (EX1001). The personal
data receiver can capture personal data during an activity, such as walking or
running. 002 patent, 6:1316 (EX1001). The data may include, for example,
global positioning system (GPS) data, positional data, velocity data, motion sensor
data, heart rate data, blood pressure data, glucose data, pace data, or weight
data. 002 patent, 6:1035, 6:5962, FIG. 2 (EX1001). In one embodiment, the
personal data can relate to a number of steps counted during a users fitness
11
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Patent 7,454,002
activity. 002 patent, 8:5156 (EX1001). The personal data can be stored in a
memory of the device. 002 patent, 9:1528, FIG. 3 (EX1001). The device can
then transfer the personal data to the server over a wireless network, for instance,
when requested by the user, or periodically. 002 patent, 7:4550, 8:4245, 4:10
13 (EX1001); Eldering 19 (EX1009).
Once received by the server, the personal data can be stored in a
repository. 002 patent, 10:3853, 10:6611:3 (EX1001). The personal data can
then be processed by a software program or a human third party (e.g., a fitness
instructor, athletic trainer, diet or nutrition specialist, physician, fitness or health
specialist) to generate feedback information for the user. 002 patent, 7:638:6,
10:5411:22 (EX1001).
The feedback information can include, for example,
graphs, tables, map overlays, progressive charts, comparisons with data of other
users, or instructions provided by specialists. 002 patent, 11:412 (EX1001). The
feedback information can then be displayed to the user on a web site. Id. The 002
patent also discloses that the server can receive personal data from multiple users
using the devices, and can provide feedback to the users, including comparing it to
data from other users. 002 patent, 4:2125, 11:912 (EX1001); Eldering 20
(EX1009).
But as the cited prior art demonstrates, at the time of the alleged invention,
the purported problem of generating and providing feedback conveniently was well
12
IPR201601464
Patent 7,454,002
known, and there were many well-known, obvious solutions to these abstract
problems. At least the primary references of Vock (EX1006) and Shum (EX1002)
and the combinations discussed here, show clearly that all of the claims are
unpatentable as obvious. Eldering 21 (EX1009).
B.
Level of Ordinary Skill in the Art

A person of ordinary skill in the art (POSA) for the 002 patent would
have had at least two years of work towards a Bachelors Degree in electrical
engineering, computer science, or a related subject or the equivalent, or at least one
year of experience working with computer networks and web sites. Eldering 22
(EX1009).
C.
Prosecution History
The 002 patent includes 16 claims, and corresponds to U.S. Patent
Application No. 09/757,241 (241 Application), which was filed January 8,

2001. The 002 patent claims priority as a continuation-in-part to U.S. Application
No. 09/476,142 (142 Application), which was filed January 3, 2000. A reissue
application (U.S. Application No. 14/567,016 (016 Application) of the 002
patent is pending and under examination.
1.
241 Application Prosecution History

During prosecution of the 241 application, the Patent Office initially
rejected all 47 claims under 35 U.S.C. 102(e) or 35 U.S.C. 103(a). See File
History (FH) of 241 Application, Office Action (OA) of 12/15/2003, 26
13
(EX1010).
In response, Applicant amended the claims.
IPR201601464
Patent 7,454,002
See FH of 241
Application, Response of 05/17/2004, 319 (EX1011).

The Patent Office then issued a Final OA, which introduced a new reference
(WO 00/68913 (Uchida)). See FH of 241 Application, OA of 08/05/2004, 28
(EX1012). In response, Applicant filed declarations under 37 C.F.R. 1.131 in an
attempt to establish invention prior to Uchida.
See FH of 241 Application,
Response of September 19, 2005, 641 (EX1013); see also FH of 241

Application, Response of October 31, 2005, 811 (EX1014). The Examiner was
persuaded by the declarations, but introduced a new reference and rejected the
claims under 35 U.S.C. 103(a). See FH of 241 Application, OA of 01/24/2006,
2 (EX1015).
In responses filed on July 25, 2006, February 20, 2007, and October 16,
2007, Applicant further amended the claims, and cancelled claims 2347. See FH
of 241 Application, Response of 07/25/2006, 210 (EX1016); see also 241
Application, Response of 02/20/2007, 26 (EX1017), 241 Application, Response
of 10/16/2007, 27 (EX1018).
A Notice of Allowance issued on July 17, 2008, indicating that the prior art
did not teach at the network server, posting the feedback information generated
from personal data to a website; the personal data corresponding to a number of
steps counted during an activity of the user, comparing and posting the personal
14
IPR201601464
Patent 7,454,002
data of said user with personal data from a different user from the received
wireless data from a plurality of users. See FH of 241 Application, Notice of
Allowance of 07/17/2008, 2 (EX1019). However, as further described herein,
these elements were wellknown at the time of the alleged invention.
2.
016 Application Prosecution History

On December 11, 2014, Applicant filed a reissue application (the 016
Application) of the 002 patent. Applicant did not amend patented claims 18 and
1016 of the 002 patent, but amended independent claim 9 to replace wireless
communication devices with portable computing devices, and added new
dependent claims 1729. See FH of 016 Application, Preliminary Amendment of
12/11/2014, 29 (EX1020).
On July 22, 2015, the Patent Office issued an OA rejecting all 29 claims
(including original patent claims 18 and 1016 and amended original patent claim
9 from the 002 patent) under 35 U.S.C. 103(a) based on Onari in view of US
Patent No. 6,539,336 to Vock et al. (336 Vock) (which appears to be related to
Vock), and Root. See FH of 016 Application, OA of 07/22/2015, 917 (EX1021).
None of these references were cited in the 002 patent.
In a Final OA issued October 26, 2015, the Examiner maintained the
rejection of claims 129 under 35 U.S.C. 103(a) based on Onari in view of 336
Vock and Root, and rejected claims 3038 under 35 U.S.C. 103(a) based on
15
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Patent 7,454,002
Onari in view of 336 Vock, Root, and Smith (which also was not cited in the 002
patent). See FH of 016 Application, OA dated 10/26/2015, 1639 (EX1022).
Applicant filed a response on December 15, 2015 with a declaration under 37
C.F.R. 1.132 as to the commercial success of the SportBrain iSTEP. See FH of
016 Application, Response of 12/15/2015, 111, 1421, (EX1023); see also FH of
016 Application, 1.132 Affidavit of 12/15/2015, 1-23 (EX1024).
In the OA of April 12, 2016, the Examiner rejected claims 1, 9, 30, and 33
under 35 U.S.C. 102(e) based on a new reference, Shum, and rejected claims 1
38 under 35 U.S.C. 103(a) based on Shum in view of Root and Onari. (See FH
of 016 Application, OA of 04/12/2016, 2145 (EX1025)). The Examiner also
found the declaration under 37 C.F.R. 1.132 to be unpersuasive, i.e., insufficient
to overcome the strong showing of obviousness. See id. at 4244 (EX1025).
In a response filed on July 12, 2016, Applicant argued that Shum is not prior
art. (See FH of 016 Application, Response of 07/12/2016, 1624 (EX1026)).
Applicant appears to allege that the claims are entitled to the priority date of the
142 application, of which the 002 patent is a continuation-in-part.
(EX1026).
See id.
Applicant further submits a declaration under 37 C.F.R. 1.131
alleging that the claimed invention was conceived prior to December 3, 1999 and
that Applicant was diligent in constructively reducing the invention to practice.
See id. at 1624 (EX1026); see also FH of 016 Application, 1.131 Affidavit of
16
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Harry Heslop of 07/12/2016, 1-4 (EX1027), FH of 016 Application, 1.131
Affidavit of Marina Portnova of 07/12/2016, 1-55 (EX1028).
Applicants declarations submitted on July 12, 2016 are insufficient for
several reasons. First, none of the declarations were signed by the inventors or a
party under 37 C.F.R. 1.42, 1.43, or 1.47, and it has not been shown that it is not
possible to produce the declaration of the inventors. See M.P.E.P. 715.04.
Second, Applicant has not established conception of the invention prior to
Shum. Applicant relies on a draft of the 142 application allegedly printed on
December 20, 1999 (12/20 draft), and a declaration from a representative of
Applicant indicating no new matter was received from the inventors for inclusion
in the 12/20 draft between December 2, 1999 and December 20, 1999. See FH of
016 Application, Response of 07/12/2016, 1623 (EX1026); see also FH of 016
Application, 1.131 Affidavit of Marina Portnova of 07/12/2016, 2 (EX1028).
However, even if this were correct, the December 20, 1999 draft and the 142
application fail to disclose the entirety of the claimed invention. See FH of 142
Application, Application of 01/03/2000 (EX1030).
For example, Applicant points to the background and claim 16 of the 12/20
draft as allegedly disclosing 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. See FH of 016
17
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Application, Response of 07/12/2016 at 18 (EX1026). However, the background
section cited by Applicant merely describes a known device that can detect the
users body motion at each step for performing step counting and that can display
the results. See FH of 016 Application, 1.131 Affidavit of Marina Portnova of
07/12/2016, 13 (EX1028). There is also no relationship disclosed between this
section and the language recited in claim 16 of the draft. See id. at 39 (EX1028).
Thus, the sections cited by Applicant do not support the language of the 002
patent claims.
This is particularly true given the narrow construction of this limitation
being advanced by Applicant.
See FH of 241 Application, Response of
02/20/2007, 8 (arguing the claims require wirelessly transmitting the step data by
way of a wireless network service provider and the Internet such that it reaches a
network server) (EX1017); see also FH of 016 Application, Response of
08/24/2015, 1213 (arguing the claims require[] that the personal data
transmitted to the network server must include the number of steps counted
during the activity of the user) (EX1029)). Applicant has also previously argued
that support for this construction is found at column 10, lines 2530 of the 002
patent (see id. at 14); however, the disclosure in column 10, lines 2530 of the
002 patent was not included in the 142 Application or the 12/20 draft. See 142
18
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Application 01/03/2000 (EX1030); see also FH of 016 Application, 1.131
Affidavit of Marina Portnova, 11-50 (EX1028).
Applicant also points to sections of the 12/20 draft as allegedly disclosing
periodically transmitting the personal data from the wireless communication
device to a network server over a wireless network. See FH of 016 Application,
Response of 07/12/2016, 18 (EX1026).
However, the cited sections merely
disclose transmitting data over a telephone line when connected to a cradle or

transmitting data wirelessly. They do not disclose periodically transmitting.
This is particularly true given the narrow construction of this limitation being
advanced by Applicant. See FH of 241 Application, Response of 07/25/2006, 11
13 (seemingly arguing that periodically transmitting involves transmission that is
neither continuous or near real time, that does not occur upon powering a system
on, and that is not a repeated transmission) (EX1016).
Third, the declaration of Harry Heslop is insufficient to establish conception
of the invention prior to the filing date of Shum. The Heslop declaration is based
on the declaration of Marina Portnova (addressed above) and an expense report
listing expenses that were allegedly incurred developing a prototype. See FH of
016 Application, 1.131 Affidavit of Harry Heslop of 07/12/2016 (EX1027). But
the report lists nothing but purchases of generic computer components. (See id.
19
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(EX1027). Thus, the Heslop declaration is insufficient to show that conception of
the invention occurred prior to the priority date of the Shum reference.
Notably, in the response filed on July 12, 2016, Applicant concedes many
similarities between Shum and the claims, but argues that the cited references still
do not anticipate or render obvious the claims. See FH of 016 Application,
Response of 07/12/2016, 2426 (EX1026).
Not so, for at least the reasons
provided herein.
The 016 Application is currently pending and under examination.
VI.
CLAIM CONSTRUCTION
Claim terms of an unexpired patent in inter partes review are given the
broadest reasonable construction in light of the specification.
37 C.F.R.
42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 127981 (Fed. Cir.
2015), affd sub nom. Cuozzo Speed Techs., LLC v. Lee, No. 15446, slip op. 20
(U.S. June 20, 2016). Any claim that lacks a definition in the specification is
therefore given a broad interpretation.2 In re ICON Health & Fitness, Inc., 496
F.3d 1374, 1379 (Fed. Cir. 2007). Under the broadest reasonable interpretation
2
Petitioner applies the broadest reasonable interpretation standard as required by
the governing regulations. 37 C.F.R. 42.100(b). Petitioner reserves the right to

pursue different constructions in a district court, where a different standard is
applicable.
20
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Patent 7,454,002
standard, claim terms are given their ordinary and customary meaning, as they
would be understood by one of ordinary skill in the art, in the context of the
disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Any special definition for a claim term must be set forth in the specification with
reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994).
The following proposes constructions and offers support for those
constructions.
Any claim terms not included should be given their broadest
reasonable interpretation in light of the specification, as commonly understood by

those of ordinary skill in the art. Should the Patent Owner, to avoid the prior art,
content that a claim term has a construction different from its broadest reasonable
interpretation, the appropriate course is for the Patent Owner to seek to amend the
claim to expressly correspond to its contentions in this proceeding. See 77 Fed.
Reg. 48764 (Aug. 14, 2012).
A.
step data corresponding to a number of steps

The term step data corresponding to a number of steps should be
interpreted to mean data related to a number of steps, which can include data
gathered by a pedometer. The 002 patent does not define step data. Eldering
31 (EX1009).
21
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Applicant has previously argued that corresponding should be interpreted
as having the same characteristic: matching something else, and that therefore
the step data must include the actual number of steps counted. See FH of 016
Application, Response of 08/24/2015, 1415 (EX1029). The Examiner disagreed
with Applicant, noting that the open-ended phrase corresponding to did not
require inclusion of the actual number of steps, but rather could mean inclusion of
data developed from the number of steps. See FH of 016 Application, OA of
10/26/2015, 35 (EX1022); Eldering 32 (EX1009).
In a response filed February 20, 2007 in the 241 Application, Applicant
argued that the personal data comprised pedometer step data. See FH of 241
Application, Response of 02/20/2007, 8 (EX1017). It is therefore clear from
Applicants own admission that, at a minimum, the step data can include data from
a pedometer. Eldering 33 (EX1009).
The proposed construction is consistent with the specification of the 002
patent, and with the ordinary use of the term step data corresponding to a number
of steps. Eldering 34 (EX1009).
B.
periodically
The term periodically should be interpreted to mean from time to time.
The 002 patent does not define periodically. However, the 002 patent discloses
the personal data [can be transmitted] to the network server 122 periodically and
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that [a]lternatively, . . . the user [can] request transmission of the personal data to
the network server 122. 002 patent, 7:4550 (EX1001); see also id. at 9:2934,
10:1518 (EX1001). (Eldering 35 (EX1009)).
Applicant appears to have previously argued variously that transmitting data
as soon as it is received, continuously, repeatedly, in near real time, or upon
powering on is not the same as transmitting data periodically. See FH of 241
Application, Response of 07/25/2006, 12 (EX1016). Applicant appears to argue
that periodic transmission requires that data be captured and held for subsequent
transmission. See id. at 13 (EX1016). However, nowhere does the 002 patent
support such a narrow interpretation of the term periodically. Eldering 36
(EX1009).
The proposed construction is consistent with the specification of the 002
patent, and with the ordinary use of the term periodically. See Definition 2 of
periodically, Websters New World College Dictionary, Third Edition, 1997,
1004 (defining periodically as from time to time; recurrently) (EX1032);
VII. SPECIFIC GROUNDS FOR PETITION
Pursuant to Rule 42.104(b)(4)(5), the following sections (as confirmed in
the Eldering 38-221 (EX1009)) detail the grounds of unpatentability, the
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limitations of the challenged claims of the 002 patent, and how these claims were
therefore obvious in view of the prior art.
A.
Ground I: Claims 14, 712, 15, and 16 are obvious over Vock, Smith,
and Onari
U.S. Patent No. 6,539,336 (Vock 336) was applied by the Examiner as a
secondary reference in OAs mailed July 22, 2015 and October 26, 2015 in the 016
Application. See FH of 016 Application, OA of 10/26/2015, 1731 (EX1022); see
also FH of 016 Application, OA of 07/22/2015, 917 (EX1021). Vock 336
appears to be related to Vock. In the OA of April 12, 2016 in the 016 Application,
the Examiner did not apply the Vock 336 reference, but rather, relied upon new
grounds of rejection based in part on Shum. See FH of 016 Application, OA of
04/12/2016 at 2144 (EX1025).
However, as further discussed below, the
disclosure of Vock is highly relevant to the claims of the 002 patent.

Smith was applied by the Examiner as a secondary reference in an OA
mailed October 26, 2015 in the 016 Application. See FH of 016 Application, OA
of 10/26/2015, 2531 (EX1022).
In the OA of April 12, 2016 in the 016
Application, the Examiner did not apply the Smith reference, but rather, relied
upon new grounds of rejection based in part on Shum. See FH of 016 Application,
OA of 04/12/2016 at 2144 (EX_FH0412/2016). However, as further discussed
below, the disclosure of Smith is highly relevant to the claims of the 002 patent.
24
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Patent 7,454,002
Onari was applied by the Examiner in all three OAs in the 016 Application,
including the most recent OA. See FH of 016 Application, OA of 07/22/2015, 9
18 (EX1021); see also FH of 016 Application, OA of 10/26/2015, 1731
(EX1022), FH of 016 Application, OA of 04/12/2016, 3140 (EX1025). The
disclosure of Onari is highly relevant to the claims of the 002 patent, as discussed
below.
1.
Overview of Vock
As depicted in annotated Figure 1 below, Vock discloses a system that
collects sports performance information from a plurality of persons using portable

sensing units. The system includes sensing units (outlined in green), a wireless
network (outlined in blue), and a base station (outlined in red).
25
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Patent 7,454,002
Vock, FIG. 1 (EX1006) (Annotated).

Vock discloses that a sensing unit includes one or more sensors for measuring a
variety of performance data associated with a users sports movements during
physical activity, such as skiing, snowboarding, or running. Vock, 2:1126, 4:13
18 (EX1006).
For example, Vock discloses that a sensing unit could be an
accelerometer sensor that can serve as a pedometer for a jogger. Vock, 50:35,
47:2932 (EX1006). The sensing unit includes a memory that stores performance
data received from the sensors.
Vock, 4:2732 (EX1006).
Once stored, the
performance data can be wirelessly transmitted to a base station. Vock, 6:1920,

32:26 (EX1006); Eldering 39-40 (EX1009).
26
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Patent 7,454,002
The base station collates, stores, compares, assesses, processes, and provides
collected performance data. Vock, 6:2125, 7:57 (EX1006). Vock discloses that
the base station can receive raw sensor data from sensing units, and can calculate
and quantify performance data based on the raw sensor data. Vock, 6:317:2
(EX1006). For example, a user can receive a report providing a comparison of the
users performance data to that of other users. Vock, 6:2527 (EX1006). Vock
discloses that the report can be provided to the user via the Internet, for instance,
on a website. Vock, 7:511, 82:15 (EX1006); Eldering 41 (EX1009).
2.
Claim 1 is obvious in view of Vock, Smith, and Onari
a)
[a] method for integrating personal data capturing functionality into a
wireless communication device and for analyzing and supplying feedback
information to a user
Vock discloses a sensing unit that measures performance data associated
with a users sports movements, such as the users gait, air time, speed, drop
distance, power or energy absorbed, energy spent, vibration information, or other
data. Vock, 50:1719, 2:1126 (EX1006). The users performance data can be
measured during a sports activity, such as skiing, snowboarding, or running. Vock,
4:1316 (EX1006). Vock discloses that the sensing unit can include one or more
sensors, such as an accelerometer, an airtime sensor, a speed sensor, a power
sensor, and/or a drop distance sensor. Vock, 4:2325, 47:2932 (EX1006). The
collected performance data can then be transmitted wirelessly from the sensing unit
27
to a base station.
Vock, 6:1920, 32:26 (EX1006).
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Thus, Vock discloses
integrating performance data capturing capability into a sensing unit that can
communicate wirelessly (integrating personal data capturing functionality into a
wireless communication device). Eldering 44 (EX1009).
Vock also discloses that the base station can collate, store, compare, assess,
process, and provide the collected performance data.
Vock, 6:2125, 7:57
(EX1006). The base station can receive raw sensor data from a sensing unit, and
can calculate and quantify performance data based on the raw sensor data. Vock,
6:317:2 (EX1006). For example, the base station can provide a user with a report
of his/her performance data, and/or with a comparison to performance data of other
users. Vock, 6:2527 (EX1006). Thus, Vock discloses analyzing performance
information of a user and providing the user with a report of the performance
information, including comparisons with other user performance information
(analyzing and supplying feedback information to a user). Eldering 43, 45
(EX1009).
b)
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
Vock discloses a sensing unit that includes one or more sensors (personal
parameter receiver) for collecting performance data for a user. Vock, 4:2332
(EX1006). Vock discloses that the sensing unit may include an accelerometer
28
sensor that can serve as a pedometer for a jogger.
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Patent 7,454,002
Vock, 50:35, 47:2932
(EX1006). The jogger can then use the unit to evaluate, among other things,
his/her gait and/or running efficiency. Vock, 50:1719 (EX1006). A POSA would
have recognized that a pedometers purpose is to count and store a number of steps
taken during an activity. See Definition of pedometer, Websters New World
College Dictionary, Third Edition, 1997, 996 (defining pedometer as an
instrument carried by a walker, which measures approximately the distance
covered in walking by recording the number of steps) (EX1032). Thus, Vock
discloses receiving performance data of a user using an accelerometer (receiving
personal data of said user by at least one personal parameter receiver) that serves
as a pedometer (the personal data comprises step data corresponding to a number
of steps counted during an activity of said user). Eldering 46-47 (EX1009).
To the extent one might argue that Vock does not disclose collecting step
data corresponding to a number of steps counted during an activity of a user, prior
art shows that step data was a well-known feature of pedometers and similar
devices at the time of the alleged invention. Eldering 46, 48 (EX1009).
For example, Smith discloses a portable monitor that records gait activity of
a user. Smith, Abstract (EX1007). Smith discloses that the monitor can include a
sensor, such as an accelerometer, that is used to determine and record a number of
steps taken by a wearer. Smith, 2:5162, 3:5157 (EX1007). The data can be
29
downloaded to a computer over a wireless network.
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Smith, 3:2836, FIG. 2
(EX1007). The computer can then analyze the data and generate reports, such as
graphs of steps taken per time of day or steps per minute over a percentage of a
day.
Smith, 3:3640, FIGs. 4, 5 (EX1007); Eldering 49 (EX1009).

Vock and Smith are both directed to systems that use portable devices to
monitor performance data of a user during physical activity, and that wirelessly
transmit the performance data to a station for analysis. Like Smith, Vock discloses
that the sensing unit includes an accelerometer, which can be used by a jogger as a
pedometer to evaluate his/her gait. Vock, 47:2932, 49:319 (EX1006); see also
Smith at 3:5157, 4:316 (EX1007). Smith is explicit about doing so. To a POSA
at the time of the alleged invention, it would have been obvious to modify the
sensing unit of Vock to measure, record, and transmit a number of steps taken by a
user, and to modify the base station of Vock to provide feedback based on the
number of steps, in light of the teachings of Smith. Eldering 46, 50 (EX1009).
Given the similarities in structure, objectives, and operation between Vock
and Smith, a POSA would have been motivated to implement Smiths technique of
counting, recording, transmitting, and analyzing a number of steps taken by a user,
to provide a user with additional information with which to quantitatively assess
performance during a physical activity. Eldering 46, 51 (EX1009); see also
Vock at 2:38 (EX1006).
30
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Patent 7,454,002
Modifying the programming in Vocks sensing unit to count a number of
steps, and modifying the programming in Vocks base station to analyze number of
step data, would have been well within the abilities of a POSA and could be easily
accomplished with a high chance of success. Eldering 46, 52 (EX1009).
c)
capturing the personal data in the wireless communication device

Vock discloses that performance data for the user is stored in a sensing unit.
Vock, 4:2332 (EX1006). The performance data is then transmitted from sensing
unit 10 over a wireless network. Vock, 31:3032:6, 34:34 (EX1006). Thus, Vock
discloses that the performance data of a user (the personal data) is captured in a
sensing unit that can communicate wirelessly (in the wireless communication
device). Eldering 53-54 (EX1009).
d)
periodically transmitting the personal data from the
communication device to a network server over a wireless network
wireless
Vock discloses that the performance data is accumulated by the sensing unit
before being transmitted over a wireless network to a base station. Vock, 24:1112
(EX1006). Vock also discloses that a user can view his/her performance data from
the base station on a daily basis. Vock, 6:1927, 7:1517 (EX1006). Vock also
discloses transmitting performance data continuously throughout an activity. Vock,
47:1719 (EX1006). Thus, Vock discloses transmitting a users performance data
(transmitting the personal data) from the sensing unit to a base station over a
wireless network (from the wireless communication device to a network server
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over a wireless network) from time to time (periodically). Eldering 55-56
(EX1009).
To the extent a narrow interpretation of the term periodically is taken, and
to the extent one might argue that Vock does not disclose this element, this element
was wellknown at the time of the alleged invention.
Eldering 55, 57
(EX1009).
For example, Onari discloses a system for determining a position of a person
using a portable position detector. Onari, 1:510 (EX1008). The detector includes
a pedometer that detects a number of steps a person walks.
Onari, 8:5061
(EX1008). The pedometer could be, for example, an accelerator sensor that detects
the motion of a person. Onari, 9:210 (EX1008). The detector estimates distance
moved by a person by calculating a number of steps taken by the person. Onari,
9:2325 (EX1008); Eldering 58 (EX1009).
Onari discloses a control program for the detector in a system where a base
station monitors the positions of detectors being used by mountaineers. Onari,
17:1839, 19:4050, FIG. 11 (EX1008). Steps in the control program (illustrated
in FIGs. 1416 of Onari) include reading new information from the pedometer
(step S3 of FIG. 14) and transmitting a new position to the base station based on
the reading (step S25 of FIG. 16). Onari, 19:5153, 19:6620:8, FIGs. 1416
(EX1008). This process repeats itself (periodically) as can be seen from the
32
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Patent 7,454,002
return to 1 in FIG. 16, which leads back to 1 in FIG. 14. See Onari, FIGs. 1416 (EX1008). In doing so, the base station monitors the positions of the detectors.
Onari, 21:1013 (EX1008); Eldering 59 (EX1009).
Vock and Onari are each directed to systems that use portable devices to
monitor user data during physical activity. For example, both Vock and Onari
disclose pedometers that monitor a user during physical activity. To a POSA at the
time of the alleged invention, it would have been obvious to modify Vock so that
performance data gathered by the sensing unit is periodically transmitted to a base
station, in light of the teachings of Onari. Eldering 55, 60 (EX1009).
Given the similarities in structure, objectives, and operation between Shum
and Onari, a POSA would have been motivated to implement Onaris technique of
periodically transmitting data, such as pedometer data, gathered by a portable
device to a base station, to provide other users and/or third parties with updates on
the performance of a user as new data is collected. Eldering 55, 61 (EX1009).
Modifying Vock to periodically transmit data as it is collected would have
been well within the abilities of a POSA and could be easily accomplished with a
high chance of success. Eldering 55, 62 (EX1009).
e)
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
Vock discloses that a users performance data is transmitted from the sensing
unit to a base station, where it is stored. Vock, 6:2130, 7:34 (EX1006). For
33
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Patent 7,454,002
example, the base station can include a web site server that connects the base
station to other base stations via the Internet, so that performance data from users
can be collated, stored, compared, and/or provided for a variety of purposes. Vock,
7:511, 24:1123 (EX1006). Vock discloses that performance data can be stored
in a server database at the base station. Vock, 34:1729, 81:3182:5 (EX1006).
Thus, Vock discloses that the base station stores the users performance data in a
database of performance data (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). Eldering 63-64 (EX1009).
f)
at the network server, analyzing the personal data to generate feedback
information for said user
Vock discloses that a users performance data can be analyzed to provide
comparisons with performance data of other users. Vock, 6:1930, 7:517, 24:24
25, 81:3182:11 (EX1006). Vock also discloses that the performance data received
by the base station can be raw sensor data, and that the base station can analyze,
calculate, and quantify the performance data. Vock, 6:317:4, 34:1518, 34:2629
(EX1006). For example, instances, averages, or rankings of performance data can
be calculated and provided to a user. Vock, 8:319:9, 24:1122 (EX1006). Vock
further discloses that a users performance data can be used to calculate and
provide awards or prizes to the user. Vock, 24:2428 (EX1006). Thus, Vock
discloses that the base station analyzes a users performance data to generate
34
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Patent 7,454,002
comparison data, averages, rankings, awards, and/or prizes for the user (feedback
information for said user). Eldering 65-66 (EX1009).
g)
at the network server, posting the feedback information to a web site that
is accessible to said user
Vock discloses that the base station can include a web site server that
connects the base station to the Internet so that performance data from users can be
collated, stored, and compared, and so that a user can obtain his/her performance
data from a computer via the Internet.
Vock, 7:511, 24:1123, 81:2182:5
(EX1006). Thus, Vock discloses, at the base station (network server), providing
performance data or comparisons of performance data (posting the feedback
information) from a web site server (to a web site) that is accessible to the user
(that is accessible to said user). Eldering 67-68 (EX1009).
h)
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, 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 different user
Vock discloses that multiple users engaged in a sporting activity can use
sensing units, and that a base station can collect performance data from each of the
sensing units and compare a users performance data with performance data of
other users. Vock, 6:197:17, 24:1128, 34:329, 81:2182:11 (EX1006). For
35
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Patent 7,454,002
example, sensing units can tag performance data with a code identifying a
particular person, so that information can later be provided for a particular person.
Vock, 34:2024 (EX1006). Vock discloses that the base station can make the
performance data and comparisons available to the users through an Internet web
site. Vock, 7:511, 24:1123, 81:2182:11 (EX1006); (Eldering 70 (EX1009).
Thus, Vock discloses that the sensing units and base station would function
in the same manner for each of a plurality of athletes (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).
Vock also discloses comparing a users
performance data with that of other users (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
providing the performance data and comparisons via an Internet website (wherein
posting comprises posting comparisons between the personal data of said user and
personal data of said at least one different user). Eldering 69, 71 (EX1009).
3.

Claim 2 depends from claim 1.
a)
wherein the at least one personal parameter receiver is contained in a
personal data capture device attachable to the wireless communication device
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Patent 7,454,002
As discussed above in Sections VII.A.2.c and VII.A.2.d, Vock discloses that
sensing unit 10 transmits performance data over a wireless network. Eldering
74-75 (EX1009).
To the extent one might argue that Vock does not disclose a sensor device
that is attachable to the wireless communication device, this element was well
known at the time of the alleged invention. Eldering 74, 76 (EX1009).
For example, as noted above in Section VII.A.2.d, Onari discloses a system
for determining a position of a person using a portable position detector that
communicates wirelessly. The portable position detector includes a pedometer that
detects a number of steps a person walks. Onari, 8:5061 (EX1008). Onari
discloses that the pedometer may be a commercially available pedometer
separately provided that is input to the detector via a cable and connector. Onari,
9:1417 (EX1008); Eldering 77 (EX1009).
Vock and Onari are each directed to systems that use portable devices to
monitor data of a user during physical activity. For example, both Vock and Onari
disclose pedometers that monitor a user during physical activity. To a POSA at the
time of the alleged invention, it would have been obvious to modify Vock to
connect a pedometer to the sensing unit over a cable and connector, in light of the
teachings of Onari. Eldering 74, 78 (EX1009).
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and Onari, a POSA would have been motivated to implement Onaris technique of
connecting a pedometer to a sensing unit over a cable and connector, to provide a
user with the flexibility of choosing to use a pedometer that the user may prefer.
(Eldering 74, 79 (EX1009)).
Modifying Vocks sensing unit to connect to a pedometer over a cable and
connector would have been well within the abilities of a POSA and could be easily
4.

a)
wherein the at least one personal parameter receiver is contained in the
wireless communication device
Vock discloses that the sensing unit includes one or more sensors (personal
parameter receivers) and a data transmit section that wirelessly transmits
performance data. Vock, 29:118, 50:419, 32:26, 34:34, 49:2123 (EX1006).
Thus, Vock discloses that the sensors are included in a wireless-capable sensing
unit (the at least one personal parameter receiver is contained in the wireless
communication device). Eldering 83-84 (EX1009).
5.

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a)
wherein analyzing comprises analyzing the personal data according to
health and/or fitness of said user such that the feedback information comprises
information pertaining to health or fitness of said user
Vock discloses that a sensing unit can measure energy expended by a user
engaged in a sporting activity (e.g., running), which can then be compared at the
base station with energy expended by other users. Vock, 1:811, 2:1821, 3:24
32, 13:2022, 23:519 (EX1006). Vock also discloses measuring performance data
during a workout.
Vock, 48:3031 (EX1006).
Vock further discloses that
performance data can be measured and feedback provided so that a user can gauge
the impact of the sporting activity on his/her body.
Vock, 50:14, 50:1019
(EX1006). Vock still further discloses that a sensing unit can record the pulse of a
user, or a state of aerobic health for the user. Vock, 50:68 (EX1006). Thus, Vock
discloses that the base station analyzes performance data related to energy
expended by users during an activity (e.g., a workout), an impact on a users body,
and/or a pulse or aerobic health of a user (analyz[es] the personal data according
to health and/or fitness of said user) and provides awards based on the
performance data or comparisons of the performance data with that of other users
through a website (such that the feedback information comprises information
pertaining to health or fitness of said user). Eldering 87-88 (EX1009).
6.

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Patent 7,454,002
a)
wherein posting comprises posting the feedback information to a web site
that is accessible by said plurality of users
Vock discloses that the base station can include a web site server providing a
web site through which users can access collected performance data and
comparisons of performance data. Vock, 7:511, 24:1123, 81:3182:5 (EX1006).
Thus, Vock discloses providing (posting) collected performance data and
comparisons of performance data (feedback information) to a web site accessible
by the plurality of users. Eldering 91-92 (EX1009).
7.

a)
wherein posting comprises posting the feedback information and the
personal data of said user to a personal web site of said user
As discussed above in Section VII.A.6.a, Vock discloses providing
performance data and comparisons of performance data to a web site. Vock also
discloses that security can be provided by the web site so that a user can only
access his or her own performance data. Vock, 24:2223, 82:35 (EX1006). Thus,
Vock discloses providing (posting) performance data and comparisons of
performance data (feedback information and the personal data of said user)
through a web site on which only a user can access his or her performance data
(to a personal web site of said user). Eldering 95-96 (EX1009).
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8.
a)
portable computing device and for analyzing and supplying feedback
As noted above in Section VII.A.2.a, Vock discloses a sensing unit that
measures performance data of a user (integrat[es] personal data capturing
functionality). Vock discloses that the sensing unit can be mounted on a variety of
platforms, or integrated into an object (e.g., a watch, shoe). Vock, 5:830, 50:312
(EX1006). Thus, the sensing unit is small and easily transportable from location to
location (portable).
As noted above in Section VII.A.2.f, Vock discloses
analyzing the performance data and providing feedback information (e.g.,

comparison data, averages, rankings, awards, and/or prizes) to a user. Eldering
98-99 (EX1009).
b)
As discussed above in Section VII.A.2.b, Vock 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
of said user. Additionally, to the extent one might argue that Vock does not
disclose collecting step data corresponding to a number of steps counted during an
activity of a user, this element was wellknown at the time of the alleged
invention. Section VII.A.2.b; Eldering 100-101 (EX1009).
41
c)
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Patent 7,454,002
capturing the personal data in the portable computing device
As discussed above in Sections VII.A.2.c and VII.A.8.a, Vock discloses that
the sensing unit can be portable, and collects and stores performance data from one
or more sensors in a memory (captur[es] the personal data in the portable
computing device). Eldering 102-103 (EX1009).
d)
periodically transmitting the personal data from the portable computing
device to a network server over a wireless network
As discussed above in Section VII.A.2.d, Vock discloses transmitting the
performance data (personal data) from a portable sensing unit (portable
computing device) to the base station (network server) wirelessly (over a
wireless network) from time to time (periodically). Additionally, to the extent a
narrow interpretation of the term periodically is taken, and to the extent one
might argue that Vock does not disclose this element, this element was wellknown
at the time of the alleged invention. Section VII.A.2.d; Eldering 104-105
(EX1009).
e)
by, or accessible from, the network server, personal data from said user
As discussed above in Section VII.A.2.e, Vock discloses at the network
server, storing in a repository of personal data maintained by, or accessible from,
the network server, personal data from said user. Eldering 106-107 (EX1009).
f)
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As discussed above in Section VII.A.2.f, Vock discloses at the network
server, analyzing the personal data to generate feedback information for said user.
Eldering 108-109 (EX1009).
g)
As discussed above in Section VII.A.2.g, Vock discloses at the network
server, posting the feedback information to a web site that is accessible to said
user. Eldering 110-111 (EX1009).
h)
personal data for said at least one other different user
As discussed above in Section VII.A.2.h, Vock discloses 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
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personal data of said user and personal data for said at least one other different
9.

a)
wherein the at least one personal parameter receiver is contained in a
personal data capture device attachable to the portable computing device
As discussed above in Sections VII.A.2.c and VII.8.a, Vock discloses that a
sensing unit is a portable computing device that transmits performance data over a
wireless network. Additionally, to the extent one might argue that Vock does not
disclose that the at least one personal parameter receiver is contained in a personal
data capture device attachable to the portable computing device, this element was
well-known at the time of the alleged invention. Section VII.A.3.a; Eldering
116-117 (EX1009).
10.

a)
wherein the at least one personal parameter receiver is contained in the
portable computing device
As discussed above in Sections VII.A.8.a and VII.A.4.a, Vock discloses that
the sensing unit is portable, and includes one or more sensors (personal parameter
receivers). Thus, Vock discloses that one or more sensors (the at least one
personal parameter receiver) are included in the sensing unit (is contained in the
portable computing device). Eldering 120-121 (EX1009).
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11.

a)
wherein analyzing comprises analyzing the personal data according to
health and/or fitness of said user such that the feedback information contains
information contains feedback information pertaining to health or fitness of said
user
As discussed above in Section VII.A.5.a, Vock discloses wherein analyzing
comprises analyzing the personal data according to health and/or fitness of said
user such that the feedback information contains feedback information pertaining
to health or fitness of said user. Eldering 123-124 (EX1009).
12.

a)
wherein posting comprises posting the feedback information to a web site
that is accessible by said plurality of users
As discussed above in Section VII.A.6.a, Vock discloses that posting
comprises posting the feedback information to a web site that is accessible by said
plurality of users. Eldering 127-128 (EX1009).
13.

a)
personal data of said user to a personal web site of said user
As discussed above in Section VII.A.7.a, Vock discloses that posting
comprises posting the feedback information and the personal data of said user to a
personal web site of said user. Eldering 131-132 (EX1009).
45
B.
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Ground II: Claims 5 and 13 are obvious in view of Vock, Smith, Onari,
and Root
Root was applied as a secondary reference in all three Office Actions in the
reissue application. See FH of 016 Application, OA of 04/12/2016, 3140

(EX1025); see also FH of 016 Application, OA of 10/26/2015, 1725 (EX1022),
FH of 016 Application, OA of 07/22/2015, 917 (EX1021). As further discussed
below, Root is highly relevant to the claims of the 002 patent.
1.
Claim 5 is obvious in view of Vock, Smith, Onari, and Root

a)
personal data in a form comprising one or more of: graphs, charts, tables and
map overlays
Vock discloses that the base station can catalog user performance data
according to age, date, and type. Vock at 6:2930 (EX1006). Vock also discloses
that the base station can store successive records of performance data, averages and
totals of performance data, or rankings of performance data. Vock, 8:319:9,
11:2812:1 (EX1006). Vock further discloses that performance data can be sorted
and provided to the user as needed through toggle functionality. Vock, 13:14
(EX1006). Vock still further discloses that performance data is tagged by
individual when stored at the base station. Vock, 34:2629 (EX1006). Vock also
discloses generating graphs, tables, and/or maps based on user performance data.
Vock, 36:1921, 37:715, FIGs. 6, 6A, 6B (EX1006). Thus, Vock discloses
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Patent 7,454,002
providing (posting) records, rankings, graphs, maps, and/or tables of
performance data and the performance data (posting the feedback information and
the personal data in a form comprising one or more of: graphs, charts, tables and
map overlays). Eldering 137-138 (EX1009).
To the extent one might argue that Vock does not post feedback information
and personal data in a form comprising one or more of: graphs, charts, tables and
map overlays, this element was well-known at the time of the alleged invention.
Eldering 137, 139 (EX1009).
For example, Root discloses a system with personal athletic performance
monitors that gather performance data for athletes (e.g., runners, hikers, walkers)
and transfer the performance data to a remote computer for storage and display on
an Internet web site. Root, Abstract, 1:813, 6:1222 (EX1004). Root discloses
that the remote computer can collect, store, and compile data sets uploaded from
participants from around the planet and present the information, comparisons of
the information, and prizes on an Internet web site. Root, 6:1922, 8:589:10
(EX1004).
Figure 9 of Root further illustrates that a website displaying an
athletes performance in comparison with other participating athletes may include

graphs and/or map overlays of athlete performance information. Root, 6:2941,
FIG. 9 (EX1004); Eldering 140 (EX1009).
Vock and Root are each directed to systems that use portable devices to
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monitor performance data of a user during a physical activity, and that wirelessly
transmit the data to a station for analysis. Vock and Root each further disclose
comparing a users performance data with performance data of other users. To a
POSA at the time of the alleged invention, it would have been obvious to modify
Vock to provide graphs and/or map overlays that display comparisons of an
athletes performance information with the performance information of other
athletes, in light of the teachings of Root. Eldering 137, 141 (EX1009).
and Root, a POSA would have been motivated to implement Roots technique of
displaying comparisons of an athletes performance information with that of other
athletes in the forms of graphs and/or map overlays, to display information in a
manner that is pleasing to users and easy for users to comprehend. (Eldering
137, 142 (EX1009).
Further, modifying the Internet web server of Vock to implement Roots
technique of displaying comparisons of an athletes performance information with
that of other athletes in the form of graphs and/or map overlays would have been
within the abilities of one of ordinary skill in the art and could be easily
2.
Claim 13 is obvious in view of Vock, Smith, Onari, and Root

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a)
personal data in a form comprising one or more of: graphs, charts, tables and
map overlays
As discussed above in Section VII.B.1.a, Vock discloses that posting
comprises posting the feedback information and the personal data in a form
comprising one or more of: graphs, charts, tables and map overlays. Additionally,
to the extent one might argue that Vock does not post feedback information and
personal data in a form comprising one or more of: graphs, charts, tables and map
overlays, this element was wellknown at the time of the alleged invention.
Section VII.B.1.a; Eldering 146-147 (EX1009).
C.
Ground III: Claims 6 and 14 are obvious in view of Vock, Smith, Onari,
and Browne
1.
Claim 6 is obvious in view of Vock, Smith, Onari, and Browne

a)
wherein analyzing further comprises generating for presentation to said
user in the feedback information instructions from one or more of: a fitness
instructor, physician, athletic trainer, nutritionist
Vock discloses that instructors, judges, or coaches can use the performance
data collected at the base station. Vock, 34:713, 34:3032, 50:1012 (EX1006);
To the extent one might argue that Vock does not disclose providing
feedback information including instructions from one or more of a fitness
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Patent 7,454,002
instructor, physician, athletic trainer, or nutritionist, this element was well-known
at the time of the alleged invention. Eldering 152, 154 (EX1009).
For example, Browne discloses a fitness monitoring system that includes a
personal user monitor for guiding a user in an exercise.
Browne, Abstract
(EX1005). The monitor stores values of a physical parameter taken from a user
during an exercise event, and transmits the data to a master data processor.
Browne, 3:117, 4:5567 (EX1005). The master data processor provides reports
based on the user data to personal trainers. Browne, 11:1728 (EX1005). The
master data processor also enables a personal trainer to leave a message for a user
in the master data processor. Browne, 11:4044 (EX1005). Then, when the user
connects to the master data processor to download further exercise data, the user
can receive a message, such as cool it, from the personal trainer based on his/her
exercise report. Browne, 11:4351 (EX1005); Eldering 155 (EX1009).
Vock and Browne are each directed to systems that use portable devices to
monitor performance data of a user during physical activity. Vock and Browne
both also disclose that a trainer, such as an instructor, can review a users
performance data. To a POSA at the time of the alleged invention, it would have
been obvious to modify the website server of Vock so that a trainer can provide
instructions to the user based on the users performance data, in light of the
teachings of Browne. Eldering 152, 156 (EX1009).
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and Browne, a POSA would have been motivated to implement Brownes
technique of providing feedback to a user through a central computer, to provide a
user with expert advice on whether an exercise is being correctly followed.
Eldering 152, 157 (EX1009); see also Browne at 1:1720, 1:3033 (EX1005).
Modifying Vocks Internet web site server to provide fitness instructions
from a trainer would have been well within the abilities of a POSA and could be
easily accomplished with a high chance of success.
Eldering 152, 158
(EX1009).
2.
Claim 14 is obvious in view of Vock, Smith, Onari, and Browne

a)
wherein analyzing further comprises generating for presentation to said
user in the feedback information instructions from one or more of: a fitness
instructor, physician, athletic trainer and nutritionist
As discussed above in Section VII.C.1.a, it was well-known at the time of
the alleged invention to present feedback information including instructions from
one or more of a fitness instructor, physician, athletic trainer, or nutritionist as a
result of analyzing performance information. Eldering 161-162 (EX1009).
D.
Ground IV: Claims 1 and 9 are obvious in view of Shum, Nikolic, and
Root
Shum was applied in the most recent OA in the reissue application. See FH
of 016 Application, OA of 04/12/2016, 2140 (EX1025). In a response filed July
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12, 2016 in the 016 Application, Applicant argues that Shum is fundamentally
different in that the patent was filed by one of the worlds largest sporting goods
manufacturers, and the reference is directed to an advertising/loyalty system to be
used by manufacturers of sporting goods. See FH of 016 Application, Response
of 07/12/2016, 24 (EX1026). Applicant further argues that [t]he system disclosed
by Shum is optimized to be an advertising/loyalty system for manufacturers and
that Shum does not disclose that each of the storing, analyzing, and posting
steps occur at the network server as required by the claims. See id. at 2425
(EX1026).
As discussed below, Petitioner disagrees and submits that Shum
teaches each of the claimed elements. Moreover, even if it could be reasonably

argued that Shum fails to teach the claimed elements, which it cannot, then as
discussed below, Root remedies these deficiencies. Nikolic was not considered in
the prosecution of the 002 patent.
1.
Overview of Shum
As depicted in the example shown in annotated Figure 7 below, Shum
discloses a system that collects performance information from persons using

remote athletic performance measurement devices.
The system includes the
devices (outlined in red), a wireless network (outlined in blue), and an Internet

website server (outlined in green).
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Shum, FIG. 7 (EX1002) (Annotated).

Shum discloses that the device includes one or more sensors 12 that measure any
one of a variety of performance values during an activity of an athlete. Shum,
4:3036, 6:2631 (EX1002). The sensors can measure, for example, pulse rate,
distance traveled, calories burned, average pulse rate, or average speed. Shum,
5:2129 (EX1002). Shum also discloses that a sensor can be an impact sensor that
detects a pulse each time a shoe impacts the ground, and that counts each step
taken by the athlete. Shum, 4:4043, 5:3843 (EX1002). Shum further discloses
that a sensor could be an accelerometer for detecting acceleration of a shoe, or a
pedometer.
Shum, 4:4345, 5:4045 (EX1002).
Performance information
measured by a sensor can be stored in a memory of the device. Shum, 4:4851

(EX1002); Eldering 165 (EX1009).
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Shum discloses that performance information can be gathered over a period
of time, and then wirelessly transmitted to an Internet website server at a common
location (e.g., manufacturer, reward determining location). Shum, 3:4555, 8:1
10, 8:1323 (EX1002). Shum discloses that the device can transmit performance
information to a computer, and that the computer can then wirelessly transmit the
performance information to the website server. Shum, 6:3864, 7:1451, 8:3537
(EX1002). Alternatively, the device can transmit the performance information
directly to the website server using a wireless modem. Shum, 8:110, 8:3236
(EX1002). The common location can store an athletes performance information
in detailed records for later retrieval by the athlete or other authorized requestors.
Shum, 9:3650 (EX1002); Eldering 166 (EX1009).
Shum discloses that the common location can provide an athlete or other
authorized requestor with records of an athletes performance information, rewards
based on the athletes performance information, and/or comparisons of an athletes
performance information with that of other athletes gathered from other athletic
performance measurement devices. Shum, 9:3665 (EX1002). For example, an
Internet website provided by the common location can provide authorized users
such desired information. Shum, 9:4350 (EX1002); Eldering 167 (EX1009).
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2.
Claim 1 is obvious in view of Shum, Nikolic, and Root
a)
wireless communication device and for analyzing and supplying feedback
Shum discloses an athletic performance measurement device (e.g., device of
Figs. 37) that includes a sensor (e.g., sensor of Figs. 37) for measuring
performance of an athlete.
Shum, 4:2845, 5:1924 (EX1002).
Performance
information is collected from the sensor and stored in a memory. Shum, 4:4851
(EX1002); Eldering at 170 (EX1009).
Once the performance information has been collected, it can be wirelessly
transmitted directly from the device to a common location (e.g., Internet website
server of a manufacturer). Shum, 8:110 (EX1002). Shum also discloses that the
performance information can be first sent from the device to a computer, and that
the computer can then wirelessly transmit the performance information. Shum,
6:4864 (EX1002).
Thus, Shum discloses a wireless device (e.g., athletic
performance measurement device or computer) that collects an athletes

performance information (integrat[es] personal data capturing functionality into a
wireless communication device). Eldering 169, 171 (EX1009).
Shum discloses that, once received, the performance information can be
reviewed and feedback information can be provided based on the performance
information. Shum, 9:3665 (EX1002). The feedback information can include, for
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Patent 7,454,002
example, a reward determined in proportion to the athletes measured athletic
performance, information relating to a reward, information comparing the
performance of two or more athletes, or performance information of a particular
athlete. Shum, 4:321, 9:2065 (EX1002); Eldering 169, 172 (EX1009).
b)
Shum discloses that a device 10 includes a sensor 12 (personal parameter
receiver) that can measure any one of a variety of athletic performance values.
Shum, 4:2840 (EX1002). For example, the device can include an impact sensor
that produces a pulse each time a shoe impacts the ground, and that can count steps
taken by the athlete.
Shum, 4:40-43 (EX1002).
Thus, the sensor (personal
parameter receiver) counts the number of steps taken by an athlete (receiv[es]

personal data of said user, the personal data comprising step data corresponding to
a number of steps) by producing a pulse each time a shoe of the athlete impacts
the ground (during an activity of said user). Eldering 173-174 (EX1009).
c)
capturing the personal data in the wireless communication device

Shum discloses that the device can communicate the performance
information wirelessly. Shum, 8:410, 5:1217 (EX1002). Shum further discloses

that the device includes a memory that stores the measured performance
information until it is to be transmitted. Shum, 4:4850 (EX1002). Thus, Shum
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discloses storing (capturing) the performance information (personal data) in
the device (in the wireless communication device).
Eldering 175-176
(EX1009).
Additionally, Shum discloses that the device can transmit the performance
information to a computer (e.g., a computer kiosk 32 or a personal computer 34),
and that the computer can then wirelessly transmit the performance information.
Shum, 6:4864, 7:2446 (EX1002).
Thus, when receiving the performance
information at a computer and then wirelessly transmitting the performance

information from the computer, the computer also captur[es] the personal data in
the wireless communication device. Eldering 175, 177 (EX1009).
d)
periodically transmitting the personal data from the
communication device to a network server over a wireless network
wireless
Shum discloses that the device measures athletic performance over a period
of time, and that at the end of the period, the gathered performance information is
transmitted to the common location. Shum, 3:4655, 4:4854 (EX1002). As
discussed above in Sections VII.D.2.a and VII.D.2.c, Shum discloses that the
performance information can be transmitted wirelessly. Thus, Shum discloses
transmitting the performance information (personal data) from the device
(wireless communication device) wirelessly (over a wireless network) from
time to time (periodically). Eldering 178-179 (EX1009).
As discussed above in Sections VII.D.2.a and VII.D.2.c, Shum discloses that
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the device can transmit the performance information to a computer (e.g., computer
kiosk 32 or personal computer 34), and that the computer can then wirelessly
transmit the performance information. Shum discloses that this transmission can
be immediate, or can be postponed until a specific amount of information has been
collected.
Shum, 6:667:3, 7:1423, 7:4351 (EX1002).
Thus, Shum also
discloses that the computer (wireless communication device) can transmit the
performance information (personal data) wirelessly (over a wireless network)
after a specific amount of performance information has been collected
(periodically). Eldering 178, 180 (EX1009).
Shum also discloses that the performance information can be transmitted
from the device or the computer to an Internet web site server at the common
location (e.g., a manufacturers Internet website server 36). Shum, 1:1517, 8:14
23, 8:3237, Fig. 7 (EX1002). Thus, Shum discloses transmitting performance
information (personal data) from time to time or when a certain amount of
performance information has been collected (periodically) from the device
(wireless communication device) or computer (wireless communication
device) to an Internet website server (to a network server) wirelessly (over a
wireless network). Eldering 178, 181 (EX1009).
To the extent a narrow interpretation of the term periodically is taken, and
to the extent one might argue that Shum does not disclose this element, this
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element was well-known at the time of the alleged invention. Eldering 178, 182
(EX1009).
For example, Nikolic discloses a system for determining an individuals rate
of oxygen consumption. Nikolic, Abstract (EX1003). A monitor measures heart
rate and acceleration outputs of an individual during an activity, such as when the
individual is running, jogging, or walking. Nikolic, Abstract, 4:417 (EX1003).
Nikolic discloses that the output information can be stored locally in the monitor,
and that a base station periodically requests the monitor to wirelessly upload the
information to the base station. Nikolic, Abstract, 6:1323, 8:4862 (EX1003).
Upon receipt of the request, the monitor wirelessly transmits the output
information to the base station. Nikolic, 8:2638, 9:3038 (EX1003). Nikolic also
discloses that the base station uploads the output information to a clearinghouse on
a periodic basis, such as once per day. Nikolic, 9:2024, 9:5365 (EX1003);
Shum and Nikolic are each directed to systems that use portable devices to
transmit the data to a station for analysis. To a POSA at the time of the alleged
invention, it would have been obvious to modify Shum so that the Internet website
server periodically requests collected performance information, and so that the
device transmits the information in response to the periodic request, in light of the
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teachings of Nikolic. Eldering 178, 184 (EX1009).
and Nikolic, a POSA would have been motivated to implement Nikolics technique
of periodically requesting and transmitting collected data, to identify when a
connection is available between a device and a server, and to free up memory at a
device on an ongoing basis for storage of additional data. Eldering 178, 185
(EX1009); see also Nikolic at 2:2125, 6:1929 (EX1003).
Modifying Shums server to periodically request transmission of data from
the performance measurement device, and modifying Shums performance
measurement device to respond to these requests, would have been well within the
abilities of a POSA and could be easily accomplished with a high chance of
success. Eldering 178, 186 (EX1009).
e)
by, or accessible from, the network server, the personal data for said user
Shum discloses that the performance information is transmitted to a common
location (e.g., manufacturer, reward determining location, Internet website server).
Shum, 8:1323, Fig. 7) (EX1002).
Shum also discloses that the athletes
performance information, as well as that of other athletes, is compiled and

accessible from an Internet website at the common location.
Shum, 9:3665
(EX1002). Thus, Shum discloses an Internet website server (network server) that
collects performance information from the athlete, as well as from other athletes,
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Patent 7,454,002
and provides access to the performance information (stor[es] in a repository of
personal data maintained by, or accessible from, the network server, the personal
data from said user). Eldering 187-188 (EX1009).
f)
Shum discloses that the common location calculates a reward based on the
performance information and provides the reward to the athlete. Shum, 1:1321,
3:534:21, 8:2431, 9:2035 (EX1002). Shum also discloses that the common
location can provide an athlete or an authorized user (e.g., the athlete, the athletes
coach, the athletes doctor) with the performance information of an athlete or of
other athletes, or with information comparing the athletes performance to that of
other athletes. Shum, 9:3665 (EX1002). Thus, reward, performance, and/or
comparison information are calculated based on the collected performance
information (analyz[es] the personal data to generate feedback information for
said users) at the Internet website server (at the network server). Eldering
189-190 (EX1009).
g)
Shum discloses that the reward, performance, and/or comparison information
can be provided to an athlete through a website provided by the common location.
Shum, 8:1431, 9:3665 (EX1002). Thus, Shum discloses that the Internet web
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Patent 7,454,002
site server (network server) provides (posts) reward, performance information,
and/or comparison information (feedback information) to the athlete by way of a
website (a web site that is accessible to said user). Eldering 191-192
(EX1009).
h)
Shum discloses that other athletes also use the devices, and that performance
information for the other athletes is also collected and compiled at the common
location. Shum, 9:5910:5, 1:1221, 2:4560 (EX1002). Shum also discloses
using labels to distinguish sources of performance information. Shum, 8:459:17
(EX1002). Thus, Shum discloses that the devices and Internet website server
function in the same manner for a plurality of athletes (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). Eldering 193-194 (EX1009).
Shum discloses that the common location can provide the athlete with
information comparing the athletes performance to that of other athletes. Shum,
9:5110:8, 1:2021, 4:1521 (EX1002). Thus, Shum discloses that the common
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Patent 7,454,002
location prepares a comparison of the performance information of different
athletes, and provides (post[s]) the prepared comparison through an Internet
website (wherein said analyzing further comprises comparing personal data for
said user with personal data for at least one other different user form 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 on other different user). Eldering 193, 195 (EX1009).
i)
at the network server and storing in a repository of personal data
maintained by, or accessible from, the network server
Shum uses various terms (e.g., reward determining location, Internet website
server, common location, manufacturer) in discussing the entity that collects
performance information from athletes, calculates rewards, makes comparisons,
and provides performance information. See Shum, 1:1516 (transferring [] data . .
. to a common location, such as an Internet web site server); see also id. at 2:45
48 ([A] reward determination location, such as an athletic shoe manufacturer,
collects product use information from a plurality of remote product use information
gathering devices), 8:1931 ([T]he computer device communicates with the
manufacturers Internet website server 36. . . . The athlete can then take immediate
advantage of his reward . . . through the manufacturers website), 9:4150 (The
athlete also can use his collected performance information as a detailed record of
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Patent 7,454,002
his own use. . . . This feature is particularly useful in conjunction with an Internet
website), 3:6266 (EX1002); Eldering 196 (EX1009).
A POSA reading Shum would understand the website server of Shum, as
being capable of collecting, storing, and analyzing performance information from
athletes, and of posting records, comparisons, and/or rewards based on the
performance information to a website. Additionally, to the extent one might argue
that these steps are not performed at the website server of Shum, this element was
well-known at the time of the alleged invention. Eldering 197 (EX1009).
For example, Root discloses a system with monitors that gather performance
data for athletes (e.g., runners, hikers, walkers) and that transfer the performance
data to a remote computer for storage and display on an Internet web site. Root,
Abstract, 1:813, 6:1222 (EX1004). The monitor can include sensors that collect
performance data (e.g., heart rate, pace, calories burned). Root, 5:4049, 7:4148
(EX1004); Eldering 198 (EX1009).
Root discloses that the performance data can be uploaded from the monitor
to the remote computer. Root, 6:1219, 8:5865, FIG. 8 (EX1004). The remote
computer can collect, store, and compile uploaded data sets from participants from
around the planet, and present performance information, comparisons of
performance information among athletes, and prizes on an Internet web site. Root,
6:1922, 8:589:10 (EX1004); Eldering 199 (EX1009).
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Patent 7,454,002
Shum and Root are each directed to systems that use portable devices to
transmit the data to a station for analysis. As discussed above, Shum discloses
collecting performance information from athletes, maintaining records of the
performance information, and providing the records, prizes, and comparisons of
performance information among athletes. To a POSA at the time of the alleged
invention, it would have been obvious to modify the website server of Shum to
perform the storing and analyzing of the performance information to generate
records, prizes, and/or comparisons of performance information, and to perform
the posting of the records, prizes, and/or comparisons of performance information
in light of the teachings of Root. Eldering 200 (EX1009).
and Root, a POSA would have been motivated to implement Roots technique of
performing the storing, analyzing, and posting steps discussed above at the same
server to speed up processing time. That is, by having everything collected, stored,
and compiled at the same network location, coordination and retrieval of data from
disparate network servers would not be necessary. Eldering 201 (EX1009).
Further, modifying the web server of Shum to implement Roots technique
of collecting, storing, and compiling performance data at the server would have
been within the abilities of one of ordinary skill in the art and could be easily
65
IPR201601464
Patent 7,454,002
accomplished with a high chance of success. Eldering 202 (EX1009).
3.
Claim 9 is obvious in view of Shum, Nikolic, and Root
a)
portable computing device and for analyzing and supplying feedback
As noted above in Section VII.D.2.a, Shum discloses a device that collects
an athletes performance information (integrat[es] personal data capturing
functionality). Shum discloses that the device can be portable. Shum, 4:3032,
5:2945 (EX1002). As also noted above in Section VII.A.2.a, Shum discloses
analyzing performance information and providing feedback information (e.g.,
performance records, comparison information, reward information) to an athlete.
Eldering 204-205 (EX1009).
b)
As discussed above in Section VII.D.2.b, 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
of said user. Eldering 206-207 (EX1009).
c)
capturing the personal data in the portable computing device

As discussed above in Sections VII.D.2.c and VII.D.2.a, Shum discloses that
the athletic performance measurement device can be a portable device, includes a

sensor and a memory, collects performance information from the sensor and stores
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IPR201601464
Patent 7,454,002
the performance information in the memory (captur[es] the personal data in the
portable computing device). Eldering 208-209 (EX1009).
d)
periodically transmitting the personal data from the portable computing
device to a network server over a wireless network
As discussed above in Section VII.D.2.d, Shum discloses transmitting the
performance information (personal data) from the athletic performance
measurement device (portable computing device) to an Internet website server
(to a network server) wirelessly (over a wireless network) from time to time
(periodically). Additionally, to the extent a narrow interpretation of the term
periodically is taken, and to the extent one might argue that Shum does not
disclose this element, this element was well-known at the time of the alleged
invention. Section VII.D.2.d; Eldering 210-211 (EX1009).
e)
by, or accessible from, the network server, personal data from said user
As discussed above in Section VII.D.2.e, Shum discloses at the network
server, storing in a repository of personal data maintained by, or accessible from,
the network server, personal data from said user. Eldering 212-213 (EX1009).
f)
As discussed above in Section VII.D.2.f, Shum discloses at the network
server, analyzing the personal data to generate feedback information for said user.
Eldering 214-215 (EX1009).
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Patent 7,454,002
g)
As discussed above in Section VII.D.2.g, Shum discloses at the network
server, posting the feedback information to a web site that is accessible to said
h)
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
As discussed above in Section VII.D.2.h, Shum discloses 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
i)
at the network server and storing in a repository of personal data
maintained by, or accessible from, the network server
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Patent 7,454,002
As discussed above in Section VII.D.2.i, a POSA reading Shum would
understand the website server of Shum as being capable of collecting, storing, and
analyzing the performance information, and of posting records of the performance
information, comparisons among the performance information, and/or rewards to a
website. Additionally, to the extent one might argue that the above steps are not
performed at the website server of Shum, this element was well-known at the time
of the alleged invention. Section VII.D.2.i; Eldering 220 (EX1009).
VIII. CONCLUSION
The challenged claims of the 002 patent recites are unpatentable. The
Petitioner requests institution of an inter partes review to cancel these claims.
Respectfully Submitted,
/David L. Cavanaugh/
David L. Cavanaugh
Registration No. 36,476
Michael Van Handel
Jonathan Stroud
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IPR201601464
Patent 7,454,002
Table of Exhibits for U.S. Patent 7,454,002 Petition for Inter Partes Review
Exhibit
1001
1002
1003
1004
1005
1006
1007
1008
1009
1010
1011
1012
1013
1014
1015
1016
1017
1018
1019
1020
1021
1022
1023
1024
1025
1026
Description
U.S. Patent No. 7,454,002
U.S. Patent No. 6,585,622 (Shum) (filed on December 3,
1999, published on July 1, 2003)
U.S. Patent No. 6,436,052 (Nikolic) (filed on October 8,
1999, published on August 20, 2002)
U.S. Patent No. 6,013,007 (Root) (filed on March 26, 1998,
published on January 11, 2000)
U.S. Patent No. 5,598,849 (Browne) (filed on January 20,
1995, published on February 4, 1997)
PCT Application Publication No. WO 98/54581 (Vock)
(published on December 3, 1998)
U.S. Patent No. 5,485,402 (Smith) (filed on March 21,
1994, published on January 16, 1996)
U.S. Patent No. 6,132,391 (Onari) (filed on December 29,
1998, published on October 17, 2000)
Declaration of Charles Eldering, Ph.D
File History, 241 Application, Office Action (12/15/2003)
File History, 241 Application, Response (05/17/2004)
File History, 241 Application, Notice of Allowance
(07/17/2008)
File History, 016 Application, Preliminary Amendment
(12/11/2014)
File History, 016 Application, 1.132 Affidavit (12/15/2015)
i
1027
1028
1029
1030
1031
1032
IPR201601464
Patent 7,454,002
File History, 016 Application, 1.131 Affidavit of Harry
Heslop (07/12/2016)
File History, 016 Application, 1.131 Affidavit of Marina
Portnova (07/12/2016)
File History, 142 Application (01/03/2000)
Petitioners Voluntary Interrogatory Responses
Definitions of pedometer and periodically, Websters
New World College Dictionary, 1997, pp. 995-997, 10031005.
ii
IPR201601464
Patent 7,454,002
CERTIFICATE UNDER 37 CFR 42.24(d)
Under the provisions of 37 CFR 42.24(d), the undersigned hereby certifies
that the word count for the foregoing Petition for Inter Partes Review totals 13,977
which is less than the 14,000 words allowed under 37 CFR 42.24(a)(i).
Respectfully submitted,
Dated: July 22, 2016
/Michael Van Handel/

Michael Van Handel
Reg. No. 68,292
Wilmer Cutler Pickering Hale and Dorr LLP

1875 Pennsylvania Ave., NW
Washington, DC 20006
Tel: (202) 663-6000
IPR201601464
Patent 7,454,002
CERTIFICATE OF SERVICE
I hereby certify that on July 22, 2016, I caused a true and correct copy of the
foregoing materials:
Petition for Inter Partes Review of U.S. Patent No. 7,454,002 Under 35
U.S.C. 312 and 37 C.F.R. 42.104
Exhibit List
Exhibits for Petition for Inter Partes Review of U.S. Patent No. 7,454,002
(EX1001EX1032)
Power of Attorney
Word Count Certification Under 37 CFR 42.24(d)
to be served via Federal Express on the following correspondent of record as listed
on PAIR:
Edell, Shapiro & Finnan, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
/Michael Van Handel/
Michael Van Handel
Reg. No. 68,292
ii

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Mandatory Notices .............................................................................................1

D. Service Information, Email, Hand Delivery, and Postal ...............................7

Grounds for Challenge ..................................................................................9

IV. Technology background ...................................................................................9

Level of Ordinary Skill in the Art ...............................................................13

Prosecution History .....................................................................................13

241 Application Prosecution History .....................................................13

016 Application Prosecution History .....................................................15

VI. Claim Construction .........................................................................................20

Specific Grounds for Petition ......................................................................23

Overview of Vock .....................................................................................25

Claim 1 is obvious in view of Vock, Smith, and Onari ............................27

Claim 2 is obvious in view of Vock, Smith, and Onari ............................36

Claim 3 is obvious in view of Vock, Smith, and Onari ............................38

Claim 4 is obvious in view of Vock, Smith, and Onari ............................38

Claim 7 is obvious in view of Vock, Smith, and Onari ............................39

Claim 8 is obvious in view of Vock, Smith, and Onari ............................40

Claim 10 is obvious in view of Vock, Smith, and Onari ..........................44

Claim 11 is obvious in view of Vock, Smith, and Onari.......................44

Claim 12 is obvious in view of Vock, Smith, and Onari.......................45

Claim 15 is obvious in view of Vock, Smith, and Onari.......................45

Claim 16 is obvious in view of Vock, Smith, and Onari.......................45

Claim 5 is obvious in view of Vock, Smith, Onari, and Root ...................46

Claim 13 is obvious in view of Vock, Smith, Onari, and Root ................48

Claim 6 is obvious in view of Vock, Smith, Onari, and Browne .............49

Claim 14 is obvious in view of Vock, Smith, Onari, and Browne ...........51

Overview of Shum ....................................................................................52

Claim 1 is obvious in view of Shum, Nikolic, and Root ..........................55

Claim 9 is obvious in view of Shum, Nikolic, and Root ..........................66

VIII. Conclusion ...................................................................................................69

(Patent Owner) and is exclusively licensed to SportBrain Holdings, LLC

July 12, 2016

July 12, 2016

June 23, 2016

June 23, 2016

June 20, 2016

June 20, 2016

June 20, 2016

May 30, 2016

May 30, 2016

May 19, 2016

May 19, 2016

May 15, 2016

May 15, 2016

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April 18, 2016

April 18, 2016

April 10, 2016

April 10, 2016

April 25, 2014

April 25, 2014

April 25, 2014

Service Information, Email, Hand Delivery, and Postal

and [email protected]. Petitioner can be reached at Wilmer, Cutler,

CERTIFICATION OF GROUNDS FOR STANDING

OVERVIEW OF CHALLENGE AND RELIEF REQUESTED

claims 116 of the 002 patent.

Prior Art Patents and Printed Publications