Philips North America LLC

Patent Trials and Appeals Board

Oct 4, 2021

IPR2020-00783 (P.T.A.B. Oct. 4, 2021)

Trials@uspto.gov Paper 34
571-272-7822 Entered: October 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

FITBIT LLC,
Petitioner,

v.

PHILIPS NORTH AMERICA LLC,
Patent Owner.
____________

IPR2020-007831
Patent No. 7,088,233 B2
____________

Before STACEY G. WHITE, MICHELLE N. WORMMEESTER,
and NORMAN H. BEAMER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Claims Unpatentable
35 U.S.C. § 318(a)

1 Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd., filed a
petition in IPR2020-00910 and have been joined as petitioner in this
proceeding.
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I. INTRODUCTION
In response to a Petition filed by Fitbit, Inc. (“Petitioner”), now Fitbit
LLC, we instituted inter partes review of claims 1, 7–10, 13–16, 22, and 24–
26 of U.S. Patent No. 7,088,233 B2 (“the ’233 patent”). Paper 1 (“Pet.”);
Paper 12 (“Dec.”); Paper 33. Philips North America LLC (“Patent Owner”)
filed a Response to the Petition, Petitioner filed a Reply, and Patent Owner
filed a Sur-Reply. Paper 17 (“PO Resp.”); Paper 22 (“Reply”); Paper 24
(“Sur-Reply”).
An oral hearing took place on July 29, 2021. The Hearing Transcript
(“Tr.”) is included in the record as Paper 32. After considering the parties’
arguments and supporting evidence, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 1, 7–10, 13,
15, 16, 22, and 24–26 are unpatentable. Claim 14 has not been proven to be
unpatentable.
II. BACKGROUND
A. The ’233 Patent
The ’233 patent, titled “Personal Medical Device Communication
System and Method,” was filed on June 7, 2002, issued on August 8, 2006,
and recites various continuation-in-part and continuation applications as
related. Ex. 1001, codes (54), (22), (45), (63), (60).2 The patent also states
that it is related to “[p]rovisional application No. 60/135,862, filed on May

2 The ’233 patent states that it is a “[c]ontinuation-in-part of application No.
09/956,474, filed on Sep. 19, 2001, which is a continuation of application
No. 09/384, 165, filed on Aug. 27, 1999, now Pat. No. 6,356,192,
application No. 10/165,624, which is a continuation-in-part of application
No. 10/112,669, filed on Mar. 28, 2002, and a continuation-in-part of
application No. PCT/US01/18734, filed on Jun. 8, 2001.” Id. at code (63).
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25, 1999, provisional application No. 60/105,493, filed on Oct. 23, 1998,
and provisional application No. 60/279,401, filed on Mar. 28, 2001.” Id. at
code (60); see Exs. 1013–1015.
Petitioner assumes for purposes of its challenge that the earliest
effective filing date for all but claims 13, 24, and 25 of the ’233 patent is the
October 23, 1998, filing date of application No. 60/105,493. Pet. 3. For
claims 24 and 25, Petitioner argues that the earliest effective filing date is
the May 25, 1999, filing date of application No. 60/135,862. Id. at 3, 19–20
(citing Ex. 1002 ¶¶ 45–46). For claim 13, Petitioner argues that the earliest
effective filing date is the March 28, 2001, filing date of application No.
60/279,401. Id. at 3–4, 20 (citing Paradiso Decl. ¶¶ 45, 47). Patent Owner
does not contest these assertions for purposes of this proceeding. PO Resp.
6–7. This Decision adopts Petitioner’s unopposed positions on priority
dates.
The ’233 patent describes a “personal and/or institutional health and
wellness communications system, which may be used for a variety of
emergency and non-emergency situations using two-way communication
devices and a bi-directional communication network.” Id. at code (57).
Figure 5 of the ’233 patent is reproduced below.
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Figure 5 is a network diagram showing communications with various system
components. Id. at 2:47–48. Figure 5 shows Personal Medical Device 100,
which may be implanted, or carried on the person, of Victim V. Id. at
11:49–50. For example, Personal Medical Device 100 could be a
pacemaker. As another example, Personal Medical Device 100 could have
one or more sensor inputs connected to external or embedded “detectors
140” (not shown on Figure 5) that:
may be any sensor of bodily or physiological parameters such
as, but not limited to: temperature, motion, respiration, blood
oxygen content, electrocardiogram (ECG), electroencepha-
logram (EEG), and other measurements.
Id. at 3:27–33.
Figure 5 shows that Personal Medical Device 100 may communicate
with Medical Device Interface 600 (elsewhere numbered “200”), which in
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turn can communicate via network 400 with other agents or devices that
would be involved in addressing the medical problem or emergency
involving Victim V. Id. at Fig. 5, 3:12–15. One such device is a central
communications base station which in turn can communicate with personal
medical devices or a central monitoring station that can initiate emergency
dispatch services, for example. Id. at Fig. 1, 8:40–63, 10:14–17.
The ’233 patent discloses that Personal Medical Device 100 includes a
power module, such as a battery, a memory, and a processor, and may
include connections to the above-mentioned sensors, a user interface module
with a display and other user input/output devices, and a short range wireless
communications module. Id. at Figs. 2, 3, 3:18–33, 3:50–4:10. Personal
Medical Device 100 can also include a GPS (Global Positioning System)
receiver to enable determining the location of the victim. Id. at 12:63–13:8.
In addition, Personal Medical Device 100 can include power management
circuitry to save battery life by powering off the communications module
when not needed. Id. at 14:15–60.
The short range wireless communications module of Personal Medical
Device 10 can communicate with Medical Device Interface 600 and the
central communications base station, which also may include short range
wireless communications modules. Id. at Fig. 4A, 4:14–21, 7:55–57, 8:41–
46. One mode of short range wireless communication uses the Bluetooth
standard. Id. at 4:49–60. The ’233 patent “impos[es]” a “meaning” on the
phrase “short range wireless networks” “to include premises and facility
based wireless networks and not to describe long-range networks such as
cellular telephone networks used to communicate over long-distances.” Id.
at 5:61–65.
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The ’233 patent further provides for security arrangements to restrict
the exchange of information to authorized agents. Id. at 13:24–14:14.
Exemplary arrangements include the use of passwords, and various
encryption techniques such as security keys and public/private key
exchange. Id. at 8:12–15, 13:43–65.
In sum, the ’233 patent states that a purpose of providing
communications between the personal medical device and other agents or
devices is:
to provide health care professionals with access to information
for remote diagnostic capabilities; to provide notification of
acute conditions possibly requiring immediate assistance,
transportation to a medical center, or remote treatment action; to
provide a location information of mobile persons for caregivers;
to notify responsible parties of the occurrence of a medical
condition; and to provide remote intervention assistance by
caregivers through verbal or visual interaction.
Id. at 2:11–22.
B. Illustrative Claim
Independent claim 1 of the ’233 patent is the only challenged
independent claim and is illustrative of the challenged claims, and is
reproduced below.
1. A bi-directional wireless communication system
comprising:
(a) a first personal device, the first personal device
further comprising:
(i) a processor;
(ii) a memory;
(iii) a power supply;
(iv) at least one detector input; and
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(v) a short-range bi-directional wireless
communications module;
(b) a second device communicating with the first
device, the second device having a short-range bi-
directional wireless communications module
compatible with the short-range bi-directional
wireless communications module of the first device;
and
(c) a security mechanism governing information
transmitted between the first personal device and the
second device.
Ex. 1001, 14:62–15:12. Comparing claim 1 to Figure 5 of the ’233 patent
and its accompanying description, we understand Personal Medical
Device 100 to be an example of the claimed first personal device, and
Medical Device Interface 600 to be an example of the claimed second
device.
C. References
Petitioner relies on the following references (Pet. 2–3):
 Jacobsen et al., U.S. Patent No. 6,198,394. Exhibit 1005
(“Jacobsen”).
 Say et al., U.S. Patent No. 6,175,752. Exhibit 1006 (“Say”).
 Quy, U.S. Patent No. 6,602,191. Exhibit 1007 (“Quy”).
 Geva, U.S. Patent No. 6,366,871. Exhibit 1008 (“Geva”).
 Reber et al., U.S. Patent No. 5,961,451. Exhibit 1020 (“Reber”).
 Gabai et al., U.S. Patent No. 6,160,986. Exhibit 1040 (“Gabai”).
Petitioner also relies on the declaration of Dr. Joseph Paradiso. Ex. 1002
(“Paradiso Decl.”).
Patent Owner relies on the declaration of Dr. Thomas L. Martin.
Ex. 2026 (“Martin Decl.”).
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D. Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1, 7–10, 13–16, 22,
and 24–26 of the ’233 patent on the following grounds (Pet. 2–3)3:
E. Real Parties in Interest
Petitioner identifies Fitbit LLC as the real party in interest. Paper 33.
Petitioner states that Fitbit LLC is a subsidiary of Google LLC, which is a
subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.
Id. Patent Owner identifies itself as the real party in interest. Paper 5, 1.
F. Related Proceedings
The parties identify the Philips North America LLC v. Fitbit, Inc.,
No. 1:19-cv-11586 (D. Mass.) (“the Fitbit case”) and Philips North America
LLC v. Garmin International, Inc. et al., Case No. 2:19-cv-06301-AB-KS,

3 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102 and 103 that became effective after the filing of the
application for the ’233 patent. Therefore, we apply the pre-AIA versions of
these sections.
Claims Challenged 35 U.S.C. § References
1, 7–10, 14 102 Jacobsen
1, 7–10, 14 103(a) Say
1, 7–10, 14 103(a) Jacobsen, Say
13 103(a) Jacobsen, Say, Quy
24, 25 103(a) Jacobsen, Say, Geva
26 103(a) Jacobsen, Say, Reber
15, 16, 22 103(a) Say, Gabai
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(C.D. Cal.) (“the Garmin case”) as related proceedings. Pet. 1; Paper 5, 1.
Both patent litigations involve the ’233 patent. Id.
III. ANALYSIS
A. Legal Standards
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). “The identical invention must be shown in as
complete detail as is contained in the . . . claim.” Richardson v. Suzuki
Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “These elements must be
arranged as in the claim under review, but this is not an ‘ipsissimis verbis’
test.” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted).
If the prior art reference does not expressly set forth a
particular element of the claim, that reference still may anticipate
if that element is “inherent” in its disclosure. . . . “Inherency,
however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
Inherency requires that “the allegedly inherent characteristic necessarily
flows from the teachings of the applied prior art.” Ex parte Levy, 17
USPQ2d 1461, 1464 (BPAI 1990) (emphasis in original).
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, “the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
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question of obviousness is resolved on the basis of underlying factual
determinations, including “the scope and content of the prior art”;
“differences between the prior art and the claims at issue”; and “the level of
ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966). Additionally, secondary considerations, such as “commercial
success, long felt but unsolved needs, failure of others, etc., might be utilized
to give light to the circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of obviousness or nonobviousness,
these inquiries may have relevancy.” Graham, 383 U.S. at 17–18.
A patent claim “is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art.” KSR,
550 U.S. at 418. Rather, an obviousness determination requires finding
“both ‘that a skilled artisan would have been motivated to combine the
teachings of the prior art references to achieve the claimed invention, and
that the skilled artisan would have had a reasonable expectation of success in
doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
(for an obviousness analysis, “it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements [in the way the claimed] new invention does”).
“Although the KSR test is flexible, the Board ‘must still be careful not to
allow hindsight reconstruction of references . . . without any explanation as
to how or why the references would be combined to produce the claimed
invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
2016) (citation omitted).
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Further, an assertion of obviousness “cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
articulation[] of motivation to combine”; “instead, the finding must be
supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
burden of proving obviousness, a petitioner cannot employ mere conclusory
statements. The petitioner must instead articulate specific reasoning, based
on evidence of record, to support the legal conclusion of obviousness.”).
The motivation to combine must be “accompanied by a reasonable
expectation of achieving what is claimed in the patent-at-issue.” Intelligent
Bio-Sys, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016). “The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Id.
B. Level of Ordinary Skill in the Art
Petitioner relies on its expert to contend:
At the time of the alleged inventions a person of ordinary
skill in the art (“POSITA”) would have had at least a B.S. in
computer science, electrical engineering, or an equivalent, and
at least two years of experience in the relevant field, i.e.,
wireless communications. More education can substitute for
practical experience and vice versa.
Pet. 5; Paradiso Decl. ¶ 15.
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Patent Owner relies on its expert’s testimony in the Fitbit case:
[A] person of ordinary skill in the art of the patented inventions
as of the earliest claimed priority date on the face of each
patent, is an individual with a.) at least a bachelor’s degree in
electrical engineering, computer engineering, or computer
science and b.) some experience with activity and/or health
monitoring technologies, or the equivalent thereof . . . [and]
would also have experience with security in the context of
wireless communications.
PO Resp. 14 (citing Ex. 2007 ¶ 11; Martin Decl. ¶¶ 20–21).
Although the respective positions are very similar and our analysis
would be the same under either Patent Owner’s or Petitioner’s definition of
the ordinarily skilled artisan, from our review of the record, we find Patent
Owner’s more specific articulation of the relevant experience is appropriate
and consistent with the disclosure of the ’233 patent and the prior art of
record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent
Owner’s description.
C. Claim Construction
The Petition was accorded a filing date of April 8, 2020. Paper 3, 1.
In an inter partes review for a petition filed on or after November 13, 2018,
a claim “shall be construed using the same claim construction standard that
would be used to construe the claim in a civil action under
35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). We apply the claim
construction standard from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
(Fed. Cir. 2005) (en banc).
Under that standard, claim terms are generally given their ordinary
and customary meaning, as would be understood by one with ordinary skill
in the art in the context of the specification, the prosecution history, other
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claims, and even extrinsic evidence including expert and inventor testimony,
dictionaries and learned treatises, although extrinsic evidence is less
significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually,
the specification is dispositive, and it is the single best guide to the meaning
of a disputed term. Id. at 1315.
“Importantly, the person of ordinary skill in the art is deemed to read
the claim term not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire patent, including the
specification.” Id. at 1313. “In determining the meaning of the disputed
claim limitation, we look principally to the intrinsic evidence of record,
examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17). However, in construing the claims, care should be
taken to avoid improperly importing a limitation from the specification into
the claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 797–98
(Fed. Cir. 2019) (“[U]se of the phrase ‘present invention’ or ‘this invention’
is not always . . . limiting, such as where . . . other portions of the intrinsic
evidence do not support applying the limitation to the entire patent.”
(citations omitted)). An inventor may provide a meaning for a term that is
different from its ordinary meaning by defining the term in the specification
with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
1475, 1480 (Fed. Cir. 1994).
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Claim terms need only be construed to the extent necessary to resolve
the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017).4
1. security mechanism governing information transmitted between the first
personal device and the second device
Claim 1 requires “a security mechanism governing information
transmitted between the first personal device and the second device.”
Ex. 1001, 15:10–12. Consistent with our Decision to Institute, in which we
declined to construe this requirement, neither party proposes a construction
beyond its plain meaning. Dec. 15; Pet. 20–21; Reply 1; Sur-Reply 2;
Martin Decl. ¶ 39. We note that the courts in the Fitbit and Garmin cases
also held that this requirement did not require construction and would be
given its plain and ordinary meaning in those proceedings. Ex. 1081, 26;
Ex. 2023, 15.
Nonetheless, as elaborated in Sections III.D.2 and III.E.2 below, in
considering whether the references relied on to anticipate or render obvious
the challenged claims, the parties interpret the plain language of this claim
requirement differently. As described above, the ’233 patent provides for
security arrangements to restrict the exchange of information to authorized
agents, including the use of passwords, and/or various encryption techniques
such as security keys and public/private key exchange. Ex. 1001, 8:11–22,

4 In the context of claim construction, Patent Owner refers to our
construction of “wireless communication” set forth in the Decision to
Institute (Dec. 13), and discusses the claims 24 and 25 requirement of a
“location determination module.” PO Resp. 12–14. Neither party raises any
actual issues that require us to construe these terms in this Decision, and
therefore we do not revisit construction of “wireless communication,” or
consider that of “location determination module.”
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13:24–14:14. Also, claims 2–5 of the ’233 patent variously require
encryption, “authorization” (e.g., passwords), keys, and the like as the
security mechanisms of claim 1. Id. at 15:13–21. Petitioner relies on these
disclosures to maintain that the use of encryption or passwords are examples
of security mechanisms governing transmission of information between
devices in accord with the claims. Pet. 37, 59–60; Reply 1–2.
Patent Owner argues that Petitioner, in the guise of applying the plain
meaning of this claim requirement, “effectively render[s] the term [i.e.,
‘security’] completely meaningless.” PO Resp. 8. Patent owner emphasizes
that the required security mechanism is not any type of security mechanism,
but rather one which governs transmitted information, and, based on that
language, variously asserts: that the security mechanism “establish[es]
authorization for a user of a device to access certain types of data over a
preexisting channel”; that “not all of the forms of ‘security’ generally
described in the specification would govern information transmitted between
a first device and a second device”; that encryption “may protect
information, but it does not govern or control its transmission”; that
“encryption of the contents of the signal and using it to govern access by a
particular device is different from encryption of signals on an established
network”; that the system provides “‘multiple levels of prioritization,
authentication of a person (task, step, process or order), and
confirmation via interrogation of person, device, or related monitor’”; that
“security is required for authorizing a person’s access to device 100 over
the network — not simply authentication of devices across a network”; that
information must be governed not by disabling devices or preventing the
transmission of information, but rather by applying a security mechanism
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that authorizes access to information transmitted between the devices”; that
“the governing of information transmitted relates to the ability of one
networked device over another to have access or authorization to
information”; that “simply providing access to a device does not govern
information transmitted between two devices”; that “device-to-device
encryption focused on establishing secure communications links . . . has no
security mechanism to govern information transmitted”; and that encryption
of information in “one direction” does not disclose “use of encryption over
information transmitted between the claimed first device and second-device
over a bidirectional communications channel.” PO Resp. 8, 10, 11, 19, 20,
21, 23, 27, 39, 40.
Patent Owner’s elaboration on the plain meaning of “security
mechanism governing information transmitted between the first personal
device and the second device” relies heavily on Figure 5 of the ’233 patent,
which refers to different levels of access to communications between the
victim and a bystander versus a dispatcher, and states that the bystander
“should not be allowed [a higher] level of access, even though the bystander
B’s personal wireless device 600 may be acting as an intermediary in
communication from the personal device 100 to the dispatcher D.”
PO Resp. 3, 10, 20, 28; Ex. 1001, Fig. 5, 13:30–41. In particular, Patent
Owner argues that some types of encryption of transmitted information are
not suitable to provide such different access, compared to security
mechanisms that provide “a certain level of access or authorization to
information transmitted.” PO Resp. 10–11. On the other hand, Patent
Owner states that “neither Patent Owner nor [its expert] have advocated for
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a construction of the term that requires multiple levels of authorization.”
Sur-Reply 10.
As discussed further below, Petitioner challenges Patent Owner’s
various assertions concerning the plain meaning of “security mechanism
governing information transmitted,” including Patent Owner’s distinguishing
“‘encryption of the contents of the signal’ from ‘encryption of signals,’” and
Patent Owner’s reliance on Figure 5 of the ’233 patent, arguing that Patent
Owner is improperly attempting to limit the scope of the claims to
exemplary embodiments. E.g., Reply 4.
As elaborated in our discussion below of Petitioner’s anticipation and
obviousness challenges, we are not persuaded by Patent Owner’s arguments
based on its characterizations of the plain meaning of “security mechanism
governing information transmitted between the first personal device and the
second device.” The ’233 patent explicitly discloses that the use of
passwords or encryption can be used to secure information transmitted
between devices. Ex. 1001, 8:12–22, 13:25–67. The use of passwords or
security keys certainly provides a form of “governing” of information
transmitted between devices. We note that the courts in the Fitbit and
Garmin cases have concluded likewise:
[Patent Owner’s expert] provides minimal explanation for — and
cites to no evidence in support of — his opinion that encryption
‘does not govern or control [the] transmission [of information]’
. . . [and] that opinion appears to conflict with the specification
and claims.
Ex. 1081, 25.
[Patent Owner’s expert’s] conclusory opinion should not be
afforded any weight.
Ex. 2023, 14.
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We conclude that it is unnecessary to provide an explicit construction
of the phrase at issue, and do not agree with Patent Owner that techniques
such as the use of passwords or encryption fall outside of the scope of
claim 1.
2. means for signaling the bi-directional communications module to
transition from the powered-down state to the powered-up state
Claim 26 of the ’233 patent requires “a means for signaling the bi-
directional communications module to transition from the powered-down
state to the powered-up state.” Ex. 1001, 16:18–20. Petitioner proposes to
construe this portion of the claim pursuant to 35 U.S.C. § 112 ¶ 6, including
specifying the disclosed structure corresponding to the recited function as
“components capable of providing a magnetic, mechanical, sound or
ultrasound, infrared, or radio frequency signal, and structural equivalents
thereof.” Pet. 21 (citing Ex. 1001, 14:15–60, 16:16–30; Paradiso Decl.
¶¶ 49–50). Petitioner, however, also states that “[t]he ’233 patent explains
that the ‘means for signaling’ can be ‘a mechanical signal, such as throwing
a switch or applying pressure to a pad.’” Pet. 83; see Ex. 1001, 14:35–36.
Therefore, we are not persuaded that Petitioner’s proposed articulation of the
corresponding structure is correct.
In our Decision to Institute, we stated that it is sufficient for present
purposes to note that the disclosed structure that performs the function
recited in claim 26 includes a switch that turns the bi-directional
communications module on and off. Dec. 12. Patent Owner agrees that
such structure is encompassed by the “means for signaling. . .” of claim 26.
PO Resp. 12. We reiterate for purposes of this Decision that it is sufficient
to note that the disclosed structure includes a switch as described.
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3. data input/output port
Claim 1 requires the first personal device and the second device to
each have a “short-range bi-directional wireless communications module.”
Ex. 1001, 15:3–9. Claim 14 depends from claim 1, and additionally
requires:
[T]he first personal device further comprises a data input/output
port, the second device further comprises a data input/output
port, and wherein the second device communicates with the first
personal device using the data input/output ports.
Id. at 15:42–46.
In our Decision to Institute (Dec. 38–39), we noted that the ’233
patent explicitly differentiates between local area wireless communication
and communication via data ports, as illustrated in Figures 4A and 4C, and
further explained in the specification as follows:
Optionally, [the personal medical device] has
connections to data input/output ports 160. Data I/O ports 160
may include, but are not limited to: serial, parallel, USB, etc.
. . . .
Optionally, [the personal medical device] includes a
wireless communications module . . . . In one embodiment the
wireless communications module includes systems and
standards for Local Area Wireless 330.
. . . .
FIG. 4A depicts one embodiment of the present system.
[The personal medical device] communicates to Personal
Wireless Device (PWD) 500 with local area wireless (LAW)
330.
. . . .
FIG. 4C depicts another embodiment of the present
system. [The personal medical device] communicates through
data port 160 to Medical Device Interface (MDI) 600.
Ex. 1001, Figs. 4A, 4C, 3:47–49, 3:54–57, 4:14–16, 4:25–27.
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The ’233 patent further discloses that the LAW 330 described above
includes the claimed short-range bi-directional wireless communications
module, and explains that this term is meant to “include premises and
facility based wireless networks.” Ex. 1001, 5:57–65. Even though wireless
communications modules necessarily have inputs and outputs, we
preliminarily concluded, based on these disclosures, that the data
input/output ports of claim 14 had to be separate from the “short-range bi-
directional wireless communications module” of claim 1 — otherwise the
requirement of data input/output ports in claim 14 would be superfluous.
Dec. 38–39. See Mformation Techs., Inc. v. Research in Motion Ltd., 764
F.3d 1392, 1399 (Fed. Cir. 2014) (favoring a construction that does not
render another limitation “superfluous”).
Petitioner points out that there is no example disclosed in the ’233
patent that embodies claim 14 — i.e., no example in which two devices
communicate with each other, both using a local area wireless LAW 330
module and a Data I/O port 160. Reply 7. Therefore, argues Petitioner,
claim 14 should not be construed to cover subject matter not disclosed in the
’233 patent. Reply 9. However, as both Petitioner and Patent Owner point
out, the ’233 patent discloses that both the personal medical device PMD
100 shown in Figure 2 and the medical device interface MDI 600 shown in
Figure 4C can include both a wireless communication module 300 and data
I/O ports 160, which provides support for claim 14, notwithstanding that the
specific connections of components required by claim 14 are not explicitly
illustrated. Reply 7–8; Sur-Reply 10–11; Ex. 1001, Fig. 2, 3:47–49, 54–55.
Moreover, Petitioner admits that the example of Figure 3A, which
uses wireless communication modules 300, “does not include a data I/O port
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like claim 14.” Reply 8 (emphasis added). This admission contradicts
Petitioner’s argument that “wireless communications module” and “data
input/output port” are two terms that refer to the same structure. Reply 9
(citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333
n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they
connote different meanings, not that they necessarily refer to two different
structures”)).
Accordingly, we maintain our preliminary conclusion as expressed in
the Institution Decision that the data input/output ports of claim 14 are
separate from the “short-range bi-directional wireless communications
module[s]” of claim 1.
D. Ground 1: Anticipation of Claims 1, 7–10, and 14 by Jacobsen
Petitioner challenges claims 1, 7–10, and 14 as anticipated under pre-
AIA 35 U.S.C. § 102 by Jacobsen. Pet. 22–44.
1. Jacobsen
Jacobsen, titled “System For Remote Monitoring Of Personnel,” was
filed December 5, 1996, and issued March 6, 2001. Ex. 1005, codes (54),
(22), (45). Because Jacobsen was filed before the presumed earliest possible
priority date for any challenged claim of the ’233 patent (October 23, 1998),
we consider this reference to be prior art under pre-AIA 35 U.S.C. § 102(e).
Jacobsen discloses a system for remotely monitoring personnel status
of, for example, a soldier, including sensors disposed on the soldier that
determine physiological status, and which can communicate with a “soldier
unit” that processes information from the sensor. Ex. 1005, Abstr. Figure 1
is reproduced below.
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Figure 1 depicts a soldier with wrist sensor/display unit 18 which
communicates with an “executive controller” in soldier unit 50, disposed
within harness 56 that is worn by the soldier. Ex. 1005, 5:66–6:2, 6:42–48.
Figure 3 of Jacobsen is reproduced below.

Figure 3 shows wrist sensor/display unit 18 with display screen 204, sensor
220 to measure blood pressure, and sensor 222 for determining oxygen
saturation. Id. at 9:21–22, 9:34–39. Other sensors that can be provided on
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wrist sensor/display unit 18 include a sensor to measure body temperature.
Id. at 6:21–37. The physiological data from the sensors is communicated
from wrist sensor/display unit 18 to soldier unit 50 via communications
mechanism 224. Id. at 6:45–49, 9:41–45. In turn, soldier unit 50 can
communicate with a remote monitoring unit, such as a medic or command
unit. Id. at 6:52–57.
Figure 4A of Jacobsen is reproduced below.

Figure 4A depicts the circuits for wrist sensor/display unit 18 and soldier
unit 50.5 Ex. 1005, 10:54–56. Wrist sensor/display unit 18 includes Sensors
220 and 222, Controller 226, Power Management 188, Battery Pack 184,
Display 204, and WU BLAN (wireless body-LAN) transmitter and receiver

5 The component numbered 14 is incorrectly labelled “wrist sensor/display
unit” — it should be labelled “integrated sensor unit.” Ex. 1005, 10:54–56.
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168. The wireless body-LAN includes an antenna and is part of a “body
local area network” that wirelessly communicates with soldier unit 50,
which has a corresponding wireless body-LAN 168. Id. at 8:65–9:2, 11:5–
14. Jacobsen discloses that “all units [such as sensor/display unit 18] may
be equipped with a removable, nonvolatile memory module.” Id. at 5:7–9.
Jacobsen includes a provision for a global positioning system used for
geolocation of the soldier (which in the illustrative embodiment, is included
in soldier unit 50). Ex. 1005, 7:24–26. Jacobsen also provides for a security
mechanism, to ensure that none of the devices may be used against the
soldier if captured by the enemy, requiring:
[T]he entry of a password or some other code. If the wrong
password is entered for more than one attempt, the device will
automatically disable itself.
Id. at 15:5–10.
2. Independent Claim 1
The preamble of claim 1 requires, “A bi-directional wireless
communication system.”6 Ex. 1001, 14:62–63. Petitioner relies on Jacobsen
Figure 1 and accompanying description, which disclose sensor/display
unit 18 and soldier unit 50 engaged in bi-directional wireless
communication. Pet. 23 (citing Paradiso Decl. ¶ 87[1p]; Ex. 1005, Fig. 1,
5:66–7:55, 9:20–10:53).

6 Petitioner assumes the preamble is limiting (Pet. 22), and Patent Owner
does not address the issue. Because Petitioner has shown that the recitation
in the preamble is satisfied by the prior art, there is no need to determine
whether the preamble is limiting. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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The first limitation of claim 1 requires, “a first personal device, the
first personal device further comprising: (i) a processor; (ii) a memory; (iii) a
power supply; (iv) at least one detector input; and (v) a short-range bi-
directional wireless communications module.” Ex. 1001, 14:64–15:4.
Petitioner identifies sensor/display unit 18 as the first personal device, the
controller 226 as the required processor, the “removable, nonvolatile
memory module” as the required memory, battery pack 298 as the required
power supply, the connection to sensor 220 as the required detector input,
and wireless body-LAN 168 as the required short-range bi-directional
wireless communications module. Pet. 24–33 (citing Paradiso Decl.
¶ 86[1a]– [1f]; Ex. 1005, Figs. 1, 3, 4A, 3:27–33, 5:7–9, 5:31–39, 6:45–51,
8:28–63, 8:66–67, 9:20–61, 10:54–11:27, 11:40–45, 11:62–63, 17:1–14,
17:66–18:3).
The second limitation of claim 1 requires:
a second device communicating with the first device, the
second device having a short-range bi-directional wireless
communications module compatible with the short-range bi-
directional wireless communications module of the first
device . . .
Ex. 1001, 15:5–9. Petitioner identifies soldier unit 50 as the second device,
and wireless body-LAN 168 within that unit as the short-range bi-directional
wireless communications module compatible with the short-range bi-
directional wireless communications module of the first device (i.e.,
sensor/display unit 18). Pet. 33–36 (citing Paradiso Decl. ¶ 86[1g]; Ex.
1005, Fig. 4A, 5:35–39, 6:45–57, 9:42–47, 9:50–65, 11:1–27).
The third limitation of claim 1 requires, “a security mechanism
governing information transmitted between the first personal device and the
second device.” Ex. 1001, 15:10–12. Petitioner relies on Jacobsen’s
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disclosure that wrist sensor/display unit 18 operates only when users enter
the correct password:
[E]ach device may contain a self-disabling means, such as
software which requires the entry of a password or some other
code. If the wrong password is entered for more than one
attempt, the device will automatically disable itself.
Pet. 36–38 (citing Paradiso Decl. ¶ 87[1h]; Ex. 1005, 15:5–10).
Patent Owner argues that such a password mechanism is not a
“security mechanism governing information transmitted between [the
devices]” because it simply disables the wrist sensor/display unit 18 if the
wrong password is entered, but it “in no way would govern information
transmitted between the wrist/sensor unit and the soldier unit 50 as required
by claim 1.” PO Resp. 20. Focusing on the word “transmitted,” Patent
Owner argues that a security mechanism that disables a device prevents
transmission of information, whereas the claim requires that information
actually be transmitted. Id. at 21; Sur-Reply 11. Patent Owner argues that
Petitioner’s position would mean that the security mechanism of claim 1
could include a switch that turns the device off, or even a hammer that could
be used to destroy the device. PO Resp. 22–23. Put another way, Patent
Owner argues that “Jacobsen’s self-disabling means is focused on the device
itself and not the transmission of information by short-range communication
modules between a first personal device and a second device.” Id. at 23.
Patent Owner also points out that Jacobsen itself states that the use of a
password “will not be critical” for the soldier units. Id. at 24 (citing Ex.
1005, 15:5–15). In any event, argues Patent Owner, “simply providing
access to a device does not govern information transmitted between two
devices.” Id. at 27.
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Petitioner argues that Patent Owner improperly narrows the meaning
of the plain language of “security mechanism governing information
transmitted . . .” by attempting to import features of Figure 5 and
accompanying description of the ’233 patent into the claim. Reply 11.
Petitioner disputes Patent Owner’s argument differentiating between device
access and access to information, given that the claim language specifies that
the security mechanism governs information transmitted between devices,
and claim 3 states that the security mechanism “employs authorization by
the first personal device.” Id. at 11–12. Petitioner argues that the plain
meaning of “a security mechanism governing information transmitted
between the first personal device and the second device” encompasses
Jacobsen’s password software, which leads to device disablement, given that
an unauthorized user (e.g., an enemy combatant) who entered multiple
incorrect passwords would disable Jacobsen’s wrist sensor/display unit,
preventing the user from accessing information available through it. Id. at
13. Petitioner also challenges Patent Owner’s reliance on the word
“transmitted,” in which Patent Owner argues that preventing transmission of
information does not satisfy the claim. Id. at 13. Instead, argues Petitioner,
the specification describes security methods that would prevent transmission
of information: “security keys” “held by a central agency” or needed to
“release information,” strategies for “authorization and authentication,”
including “biometrics,” and “request[s] for access to a responsible third
party.” Id. (citing Ex. 1001, 13:50–56, 14:7–8). In addition, argues
Petitioner, Jacobsen disables the device only if an incorrect password is
entered twice — otherwise transmission of information is authorized. Id.
at 15. Regarding Patent Owner’s argument that Jacobsen states that use of a
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password is not critical for soldier units, Petitioner points out that Jacobsen
nonetheless discloses that “each device may contain a self-disabling means,”
i.e., use of a password. Id. at 16 (citing Ex. 1001, 15:5–10).
We agree with Petitioner and are not persuaded by Patent Owner’s
arguments. As discussed above in Section III.C.1, the claim language
should not be interpreted so narrowly as to exclude the use of passwords to
control the transmission of information between the devices, particularly
given that the ’233 patent explicitly describes such use of passwords. Ex.
1001, 8:11–22. The password system of Jacobsen allows the transmission of
information between devices if the correct password is entered, and
disallows transmission if an incorrect password is entered (twice). Ex. 1005,
15:5–10. Based on our review of the complete record, we are persuaded that
this satisfies the claim 1 requirement of “a security mechanism governing
information transmitted between the first personal device and the second
device.” None of Patent Owner’s attempts to narrow the plain meaning of
this requirement convince us otherwise.
Accordingly, having considered the record, we determine that
Petitioner has proved by a preponderance of the evidence that claim 1 is
anticipated by Jacobsen.
3. Dependent Claims 7–10
Claim 7 depends from claim 1, and further requires “a detector
connected to the at least one detector input.” Ex. 1001, 15:24–25. Petitioner
relies on sensors 220 and 222 of wrist sensor/display unit 18 as disclosing
this requirement. Pet. 38–40 (citing Paradiso Decl. ¶ 88; Ex. 1005, 15:5–
10).
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Claim 8 depends from claim 7, and further requires that “the detector
senses body or physiological parameters.” Ex. 1001, 15:26–27. Petitioner
relies on the fact that sensors 220 and 222 measure blood pressure and
oxygen saturation. Pet. 40–41 (citing Paradiso Decl. ¶ 89; Ex. 1005,
Fig. 4A, 9:37–41).
Claim 9 depends from claim 8, and further requires “the body or
physiological parameters are selected from the group consisting of
temperature, motion, respiration, blood oxygen content, and
electroencephalogram.” Ex. 1001, 15:28–31. Petitioner relies on the fact
that sensor 222 measures oxygen saturation. Pet. 41 (citing Paradiso Decl.
¶ 90; Ex. 1005, 9:33–40).
Claim 10 depends from claim 1, and further requires “the first
personal device further comprises a user interface module.” Ex. 1001,
15:32–33. Petitioner relies on display screen 204 and control buttons 208
and 212 of wrist sensor/display unit 18. Pet. 41–43 (citing Paradiso Decl.
¶ 91; Ex. 1005, Figs. 3, 4A, 9:21–33).
Patent Owner raises no arguments, other than those directed to
claim 1, with respect to these dependent claims. On review of the record, we
determine that Petitioner has proved by a preponderance of the evidence that
claims 7–10 are anticipated by Jacobsen.
4. Dependent Claim 14
Claim 14 depends from claim 1, and further requires:
[T]he first personal device further comprises a data input/output
port, the second device further comprises a data input/output
port, and wherein the second device communicates with the first
personal device using the data input/output ports.
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Ex. 1001, 15:42–46. Petitioner relies on the wireless communication
between the body-LAN 168 of wrist sensor/display unit 18 and the
corresponding body-LAN 168 of soldier unit 50, characterizing the inputs
and outputs of these components as the required data input/output ports. Pet.
43–44 (citing Paradiso Decl. ¶ 92; Ex. 1005, Fig. 4A, 6:45-57, 11:14–27).
As discussed above in Section III.C.3, the data input/output ports of
claim 14 are separate from the “short-range bi-directional wireless
communications module[s]” of claim 1. As Patent Owner points out,
Petitioner is relying on the same wireless communication component (the
body-LAN 168) as disclosing the wireless bi-directional communications
modules of claim 1 and the data input and output port of claim 14. PO Resp.
31. Petitioner does not point to anything in Jacobsen that discloses a data
input/output port that is separate from the body-LAN 168. Accordingly, we
determine that Petitioner has not proved by a preponderance of the evidence
that claim 14 is anticipated by Jacobsen.
E. Ground 2: Obviousness of Claims 1, 7–10, and 14
Over Say
Petitioner challenges claims 1, 7–10, and 14 as obvious under pre-
AIA 35 U.S.C. § 103 over Say. Pet. 45–66.
1. Say
Say, titled “Analyte Monitoring Device And Methods Of Use,” was
filed April 30, 1998 and issued January 16, 2001. Ex. 1006, codes (54),
(22), (45). Because Say was filed before the presumed earliest possible
priority date for any challenged claim of the ’233 patent (Oct. 23, 1998), for
the purposes of this Decision, we consider this reference to be prior art under
pre-AIA 35 U.S.C. § 102(e).
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Say discloses an “analyte monitor” that includes a sensor placed on
the skin, a sensor control unit in conductive contact with the sensor which
includes a transmitter for transmitting data from the sensor to a display unit,
which displays the level of an analyte. Id. at Abstr. For example, the device
can monitor the level of glucose, lactate, or oxygen in individuals as part of
their health maintenance. Id. at 1:5–15, 5:25–28, 15:50–51, 16:57–62.
Figure 1 is reproduced below.

Figure 1 is a block diagram that depicts sensor 42, sensor control unit 44 and
display units 46 and 48. Id. at 6:52–66. Sensor 42 may be implanted into
the patient, and is coupled to sensor control unit 44, which collects signals
from sensor 42 and transmits them to a display unit, such as display unit 46
or 48. Id. at 6:54–66. Figure 18B is reproduced below.
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Figure 18B is a block diagram of sensor control unit 44, depicting, inter alia,
sensor inputs 42 and 42ˊ applied to sensor circuit 97, temperature probe 66
applied to temperature probe circuit 99, power supply 95, processing circuit
109, data storage 102, and transmitter and receiver 98 and 99. Id. at 36:41–
67, 37:26–35. The sensor control unit 44 optionally includes “an auditory or
visual indicator that calibration data is needed” or other information
provided to a patient. Id. at 44:8–19. Transmitter 98 and receiver 99 can
wirelessly communicate with display units 46 or 48 via receivers 150 and
transmitters 160 in those units. Id. at Fig. 22, 48:6–11, 48:49–52.
Information transmitted between sensor control unit and the display units
may be encrypted to eliminate false signals. Id. at 49:40–46.
2. Independent Claim 1
Petitioner relies on Figure 1 of Say as depicting a bi-directional
wireless communication system as required by the preamble of claim 1 (as
discussed above, we need not determine whether the preamble is limiting).
Pet. 45–46 (citing Paradiso Decl. ¶ 94[1p]; Ex. 1006, Fig. 1, 3:63–65, 6:52–
7:12).
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Petitioner cites sensor control unit 44 for the required first personal
device, including processing circuit 109 for the processor, data storage 102
for the memory, power supply 95 for the power supply, sensor inputs 42 or
42ˊ for the detector input, and transmitter 98 and receiver 99 for the short-
range bi-directional wireless communications module. Pet. 46–56 (citing
Paradiso Decl. ¶ 94[1a]–[1f]; Ex. 1006, Figs. 1, 15, 17, 18B, 19A–F, and
accompanying description).
Petitioner cites the display units 46 or 48 for the required second
device. Pet. 56–59 (citing Paradiso Decl. ¶ 94[1g]; Ex. 1006, Fig. 22, 4:53–
54, 43:21–35, 48:4–17, 48:49–49:14, 50:32–51, 52:44–65). Because
transmitter 160 and receiver 150 are depicted as separate modules, Petitioner
anticipates a possible argument that those components are not a “bi-
directional wireless communications module” as required by the claim, and
argues that nonetheless this disclosure in Say would have taught or
suggested a bi-directional module to one of ordinary skill in the art. Pet. 57–
59 (citing Paradiso Decl. ¶ 94[1g]). Patent Owner does not raise this
argument, and from our review of the record we determine that Petitioner
has articulated sufficient reasoning with rational underpinning in support of
this obviousness argument, demonstrating that a person of ordinary skill in
the art would have been motivated to implement such a modification
because configuring transmitter and receiver circuitry together as a
transceiver was well-known and would have involved combining known
prior art elements (receivers/transmitters) according to known methods
(known use of transceivers) to yield predictable results (a component to send
and receive data, as described by Say).
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For the security mechanism requirement of claim 1, Petitioner relies
on the disclosure in Say of the option of encrypting the information
transmitted between sensor control unit and the display units, in which the
sensor control unit transmits encrypted data and the receiver/display unit 46,
48 contains a key to decipher the encrypted data signal. Pet. 59–60 (citing
Paradiso Decl. ¶ 94[1h]; Ex. 1006, 49:38–67).7
Patent Owner argues that Say’s disclosed use of encryption does not
teach a security mechanism that governs information transmitted between
devices. PO Resp. 36–41. Patent Owner points out that, after the
receiver/display unit 46, 48 receives the data transmitted from sensor control
unit 44, it decrypts the encrypted data signal and “determines when false
signals or ‘crosstalk’ signals are received by evaluation of the signal after it
has been deciphered.” Id. at 36 (citing Ex. 1006, 49:43–46). Based on this,
Patent Owner argues that the encryption of Say does not govern information
transmitted between devices but “is instead solely focused on establishing a
communications scheme that avoids crosstalk, regardless of the information
that may be transmitted using that scheme.” Id. at 36–37 (citing Martin
Decl. ¶ 91). Patent Owner argues that there is no connection between the
encryption and the information itself, and no access or authorization for one
device as distinguished from that of another device. Id. at 37. Patent Owner
further argues that the encryption of Say is similar to encrypting public
website transmissions over a network, or the encryption used in Bluetooth,
where the information is unsecured at the receiving end, unlike the example

7 Petitioner alternatively relies on a provision in Say for transmitting a
unique code to identify the sensor control unit. Pet. 60 (citing Paradiso
Decl. ¶ 94[1h]; Ex. 1006, 49:15-37). It is not necessary for this Decision to
consider that alternative.
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of Figure 5 of the ’233 patent, where information is inaccessible by
unauthorized entities. Id. at 37–39 (citing Martin Decl. ¶¶ 92–95). In
addition, Patent Owner argues that Say’s use of encryption does not govern
information transmitted between devices, because Say only discloses
encrypting transmissions from the sensor control unit to the receiver/display
unit. Id. at 40–41 (citing Martin Decl. ¶¶ 96–98).
Petitioner responds that the ’233 patent contemplates “standard
encryption algorithms” that prevent an “unsophisticated interceptor to
interpret the data,” and is not limited to encryption specifically connected to
data being transmitted or the ability to distinguish between devices. Reply
17–18 (citing Ex. 1001, claim 2, 13:43–46). Petitioner also argues that the
plain language of the claims does not require bi-directional communication.
Id. at 20.
We agree with Petitioner and are not persuaded by Patent Owner’s
arguments. As discussed above in Section II.A, the ’233 patent specifically
provides for encryption techniques such as security keys and public/private
key exchange. Ex. 1001, 13:24–14:14. Also, claim 2 of the ’233 patent
specifically requires encryption for the required security mechanism. Id. at
15:13–14. The encryption system of Say allows the transmitted data to be
decrypted only by the receiver/display unit that has the correct encryption
key. Ex. 1006, 49:42–43. Although Say uses the encryption to eliminate
crosstalk, the fact remains that the encryption controls the transmission of
information by limiting the use of the information to devices that have the
correct key. We are persuaded that this satisfies the claim 1 requirement of
“a security mechanism governing information transmitted between the first
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personal device and the second device.” None of Patent Owner’s attempts to
narrow the plain meaning of this requirement convince us otherwise.
Other than arguing that Say does not teach the claimed security
mechanism, Patent Owner does not have other arguments directed to
Petitioner’s challenge of claim 1 based on Say. Accordingly, having
considered the record, we determine that Petitioner has proved by a
preponderance of the evidence that claim 1 would have been obvious over
Say.
3. Dependent Claims 7–10, and 14
For dependent claim 7, Petitioner relies on the fact that sensor 42 is
coupled to sensor control unit 44 via conductive contacts. Pet. 60–61(citing
Paradiso Decl. ¶ 95; Ex. 1006, Fig. 1, 2:13–61, 3:63–65).
For dependent claims 8 and 9, Petitioner relies on the sensors that
measure body temperature and blood oxygen content. Pet. 61–63 (citing
Paradiso Decl. ¶¶ 96–97; Ex. 1006, Figs. 6, 8, 11, and accompanying
description).
For dependent claim 10, Petitioner relies on the provisions for sensor
control unit 44 to communicate information to the patient via auditory or
visual indicators, and for user input. Pet. 64–65 (citing Paradiso Decl. ¶ 98;
Ex. 1006, 6:52–7:12, 43:45–57, 44:8–19).
For dependent claim 14, Petitioner relies on the inputs and outputs of
the wireless transmitters and receivers of sensor control unit 44 and the
display units. Pet. 65–66 (citing Paradiso Decl. ¶ 99).
Other than arguing that Say does not teach the claim 1 security
mechanism, Patent Owner does not have any specific arguments refuting
Petitioner’s Ground 2 challenge to dependent claims 7–10. Accordingly, we
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determine that Petitioner has proved by a preponderance of the evidence that
claims 7–10 would have been obvious over Say.
However, for the reasons set forth in Section D.4III.C.3 above,
Petitioner’s reliance on the inputs and outputs of the wireless
communications modules cannot support claim 14’s requirement of data
input/output ports. Therefore, we determine that Petitioner has not proved
by a preponderance of the evidence that claim 14 would have been obvious
over Say.
F. Ground 3: Obviousness of Claims 1, 7–10, and 14 Over Jacobsen and
Say
Petitioner challenges claims 1, 7–10, and 14 as obvious over the
combination of Jacobsen and Say. Pet. 66–71. Petitioner proposes this
combination as an alternative to relying on Jacobsen alone, in the event that
the disclosure of the use of passwords in Jacobsen is determined to not
disclose the security mechanism limitation of claim 1. Id. at 66. Petitioner
submits evidence that, given the disclosures of Jacobsen and Say as
discussed above, and the knowledge of one of ordinary skill in the pertinent
art, that person would have been motivated to configure Jacobsen’s security
features implemented in its system to include mechanisms that use
encryption to govern information transmitted between wrist sensor/display
unit 18 and soldier unit 50, similar to the mechanisms disclosed by Say. Pet.
67–70 (citing Paradiso Decl. ¶¶ 104–110).
Because we have determined that Petitioner has proved by a
preponderance of the evidence that claims 1 and 7–10 are anticipated by
Jacobsen, we do not consider this alternative argument as to those claims.
Also, as described in Sections III.D.4 and III.E.3 above, we have determined
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that Petitioner has not proved by a preponderance of the evidence that
Jacobsen anticipates claim 14, or that Say renders claim 14 obvious. For the
same reasons, we conclude that Petitioner has failed to prove that claim 14
would have been obvious over the combination of Jacobsen and Say.
G. Grounds 4–6: Obviousness of Claim 13 Over Jacobsen, Say, and Quy;
Obviousness of Claims 24 and 25 Over Jacobsen, Say, and Geva;
Obviousness of Claim 26 Over Jacobsen, Say, and Reber
Petitioner characterizes Grounds 4–6 as relying on the combination of
Jacobsen and Say, together with additional references: Quy, Geva, or Reber,
respectively. Pet. 71–91. However, our review of the detailed basis for
Petitioner’s challenges under Grounds 4–6 reveals some bare references to
the Say reference but no actual reliance on its contents, whether taken alone
or in some combination with the other references. As discussed in Section
III.F above, it is unnecessary to consider the combination of Jacobsen and
Say in connection with the requirements of claim 1 — it is sufficient to
consider the disclosures of Jacobsen alone. For each ground, some aspect of
a “tertiary” reference is asserted to be incorporated into a Jacobsen system.
Therefore, for our analyses of Grounds 4–6, we consider Petitioner’s actual
arguments based only on Jacobsen in combination with Quy, Geva, or
Reber, as applicable.
Claim 13 depends from claim 1, and further requires “the short-range
wireless communications further comprises BLUETOOTH technology.”
Ex. 1001, 15:39–41. For Ground 4, Petitioner argues that it would have
been obvious to implement that requirement in Jacobsen based on the
disclosure of Bluetooth technology in Quy, given that Bluetooth is type of
short-range communications scheme such as generally disclosed in Jacobsen
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as the means of communication between wrist sensor/display unit 18 and
soldier unit 50. Pet. 71–75 (citing Paradiso Decl. ¶ 113). Quy discloses a
“wireless health-monitoring apparatus” that includes a “health monitoring
device” that includes a physiologic sensor that transmits data via Bluetooth
to a “wireless web device.” Ex. 1007, Fig. 2, 2:55–56, 3:3–4, 4:1–4, 6:26–
30, 6:44–45, 7:1–30, 12:40–47.
Claim 24 depends from claim 1, and further requires “the first
personal device further comprises a location determination module that
determines the geographical location of the first personal device,” and claim
25 depends from claim 24, and further requires “the location determination
module further comprises a GPS receiver.” Ex. 1001, 16:10–15. For
Ground 5, Petitioner argues that it would have been obvious to implement
these requirements in wrist sensor/display unit 18 of Jacobsen based on the
disclosure of GPS technology in Geva, and given that Jacobsen itself
discloses the use of GPS in soldier unit 50. Pet. 75–82 (citing Ex. 1005,
Figs. 1, 4, 7:24–39, 9:58–10:3, 18:8–15; Paradiso Decl. ¶ 115). Geva
discloses a “personal ambulatory cellular health monitor 12” which contains
physiological data sensors and also includes a “personal location subsystem”
that uses GPS. Ex. 1008, Figs. 1, 2C, 5:25–63, 6:51–63.
Claim 26 depends from claim 1, and further requires “the bi-
directional communications module has a powered-down state and a
powered-up state, and further comprising a means for signaling the bi-
directional communications module to transition from the powered-down
state to the powered-up state.” Ex. 1001, 16:16–20. For Ground 6,
Petitioner argues that it would have been obvious to implement this
requirement in wrist sensor/display unit 18 of Jacobsen based on the
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disclosure of a power button in Reber, given that the ’233 patent explains
that an example of the means for signaling can be the throwing of a switch.
Pet. 82–90 (citing Ex. 1001, 14:33–35; Paradiso Decl. ¶ 118). Reber
discloses a “noninvasive apparatus” with a “biosensor,” a communication
interface, which may comprise a “radio frequency transceiver,” a power
source, and a power button, which power button causes the power source to
selectively power various components of the apparatus, including a radio
frequency transceiver in the communication module. Ex. 1020, Fig. 1, 2:20–
5:3, 4:19–30, 4:56–63.
For each of Grounds 4–6, Petitioner offers testimony of its expert Dr.
Paradiso, providing articulated reasoning with rational underpinning to the
effect that one of ordinary skill would have been motivated to incorporate
into Jacobsen the relevant technology disclosed in the additional references
(i.e., Bluetooth in Quy; GPS in Geva; a power button in Reber), given that
Jacobsen and the other references involve analogous biometric monitoring or
biological sampling technology, that in each case the combination would
have involved combining well known prior art elements using known
techniques, the benefits of the technology in improving the functionality of
Jacobsen would have been recognized, and the combination would have
required only routine design considerations yielding foreseeable results with
an expectation of success. Pet. 72–75, 77–81, 85–90 (citing Paradiso Decl.
¶¶ 113, 115, 116, 118).
For Ground 4, Patent Owner argues that the combination with Quy
would not have been motivated because, as of the applicable priority date of
claim 13 (March 28, 2001), Bluetooth required a significant amount of
power to operate. PO Resp. 47 (citing Martin Decl. ¶¶ 117–118); Sur-Reply
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20–21. In response, Petitioner submits evidence that Bluetooth was a known
comparatively lower-power standard that at the time had methods for
conserving power, and was a likely choice for short-range communications
in portable systems like Jacobsen. Reply 24 (citing Paradiso Decl. ¶ 113;
Ex. 1007, 7:17–30; Ex. 1079, 5:20–32; Ex. 1080, 7:64–8:6).
For Ground 5, Patent Owner argues that the combination with Geva
would not have been motivated because: (i) Jacobsen already includes GPS
in soldier unit 50; (ii) the GPS in Geva also is positioned on the body of the
subject (as opposed to the wrist); and (iii) as of the applicable priority date
of claims 24 and 25 (May 25, 1999), GPS receivers were relatively big and
bulky and therefore unsuited for a wrist unit. PO Resp. 49–51 (citing Martin
Decl. ¶¶ 123–126); Sur-Reply 21–22. In response, Petitioner argues Patent
Owner’s assertions are conclusory and lack explanation, and cites evidence
that it was known to include GPS receivers in devices similarly-sized to
Jacobsen’s wrist unit. Reply 25–26 (citing Paradiso Decl. ¶ 115; Ex. 1078,
Figs. 1–2, 6, 2:49–52, 5:9–24, 6:56–7:6).
For Ground 6, Patent Owner argues that the combination with Reber
would not have been motivated because the power button of Reber merely
powers the entire device on and off, as opposed to transitioning a bi-
directional communications module between two different powered states,
as required by claim 26. PO Resp. 53–55 (citing Martin Decl. ¶¶ 128–133);
Sur-Reply 22–23. In response, Petitioner argues that the disclosure in Reber
that the power button “selectively powers” system components sufficiently
suggests the combination, and that in any event the power control over the
entire system also controls the power of the individual components in accord
with the claim requirement. Reply 26–27.
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From our review of the record, including the testimony of Petitioner’s
expert Dr. Paradiso, we are persuaded that Petitioner has articulated
sufficient reasoning with rational underpinning to support the reliance on the
combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and
Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary
references demonstrates that the particular features disclosed (Bluetooth,
GPS, and a power button) were well known and readily incorporated into a
Jacobson-type system, and that one of ordinary skill in the art would have
been motivated to do so with a reasonable expectation of success. Patent
Owner’s arguments are unpersuasive, not sufficiently taking into account
that the test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the
relevant issue is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as
Petitioner points out, the fact that an asserted combination introduces
“simultaneous advantages and disadvantages [] does not necessarily obviate
motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006).
Accordingly, we are persuaded that Petitioner has proved by a
preponderance of the evidence that claim 13 would have been obvious over
Jacobsen and Quy, that claims 24 and 25 would have been obvious over
Jacobsen and Geva, and that claim 26 would have been obvious over
Jacobsen and Reber.
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H. Ground 7: Obviousness of Claims 15, 16, and 22 Over Say and Gabai
Claim 15 depends from claim 1, and further requires “a central
communications base station communicating with the first personal device
using short-range wireless communications;” claim 16 depends from claim
15, and further requires “the short-range wireless communications is
selected from the group consisting of HomeRFTM, BLUETOOTH, and
wireless LAN;” and claim 22 depends from claim 15, and further requires
“the central communications base station further comprises a connection to
the Internet.” Ex. 1001, 15:47–52, 16:4–6.
Petitioner relies on the combination of Say and Gabai, and argues that
it would have been obvious to implement the requirements of claims 15, 16,
and 22 in the system of Say based on the disclosure in Gabai of a base
communication unit that wirelessly communicates with a control device.
Pet. 91–99 (citing Paradiso Decl. ¶¶ 120–122). Gabai discloses an
interactive doll-like toy comprising a control device and sensors and input
devices, in which the control device incudes a radio transceiver and antenna
that allow it to engage in bi-directional wireless communications with a
radio transceiver and antenna of a base communication unit, and which base
unit can in turn communicate with a computer that provides an internet
connection. Ex. 1040, Figs. 1A, 2, 5–7, 7:16–24, 9:22–59, 10:23–43, 11:8–
20, 11:65–12:18.
Petitioner offers testimony of its expert Dr. Paradiso, providing
articulated reasoning with rational underpinning to the effect that one of
ordinary skill in the art would have been motivated to incorporate into
Jacobsen the relevant technology disclosed Gabai, given that Say discloses
provisions for long-range communication connections such as paging
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capabilities and remote communication with a doctor’s office, and that the
combination would have involved combining well known prior art elements
using known techniques, the benefits of the technology in improving the
functionality of Jacobsen would have been recognized, and the combination
would have required only routine design considerations yielding foreseeable
results with an expectation of success. Pet. 94–97 (citing Ex. 1006, 47:57–
49:14; Paradiso Decl. ¶¶ 120–122).
For this ground, Patent Owner argues that Petitioner fails to explain
why one of ordinary skill in the art would have been motivated to add an
additional communications channel to Say to communicate with a base
station, and argues that one of ordinary skill would not have looked to
children’s toys for potential improvements to the Say system. Pet. 94–97
(citing Ex. 1006, 47:57–49:14; Paradiso Decl. ¶¶ 120–122); Sur-Reply 23.
In response, Petitioner argues that Say provides motivation to allow
its sensor control unit to communicate longer distances using another
communications link, and that the evidence shows the known benefits an
Internet connection would have provided portable medical systems using
base stations. Reply 27–28 (citing Paradiso Decl. ¶ 120). Petitioner further
argues that the teachings of Gabai are not limited to toys and Gabai’s
communication features are similar to Say’s, and one of ordinary skill in the
art would have thus considered Gabai’s teachings when implementing Say’s
system. Id.
Like for Grounds 4–6, we are persuaded that Petitioner has articulated
sufficient reasoning with rational underpinning to support the reliance on the
combination of Say and Gabai. Although Gabai is directed to an interactive
toy, its disclosure relating to bi-directional wireless communications with a
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base communication unit is pertinent art— satisfying the criterion that “[a]
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor’s endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.” In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)).
Accordingly, we are persuaded that Petitioner has proved by a
preponderance of the evidence that claims 15, 16, and 22 would have been
obvious over Say and Gabai.
IV. CONCLUSION8
For the reasons above, Petitioner has shown by a preponderance of the
evidence that claims 1, 7–10, 13, 15, 16, 22, and 24–26 of the ’233 patent
are unpatentable, and claim 14 of the ’233 patent is not shown unpatentable,
as summarized in the following table.
Claims 35 U.S.C. § References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 7–10, 14 102 Jacobsen 1, 7–10 14
1, 7–10, 14 103(a) Say 1, 7–10 14
1, 7–10, 14 103(a) Jacobsen,
Say
14

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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Claims 35 U.S.C. § References/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
13 103(a) Jacobsen, Say, Quy 13

24, 25 103(a) Jacobsen, Say, Geva 24, 25

26 103(a) Jacobsen, Say, Reber 26

15, 16, 22 103(a) Say, Gabai 15, 16, 22
Overall
Outcome
1, 7–10, 13,
15, 16, 22,
24–26
14

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, claims 1,
7–10, 13, 15, 16, 22, and 24–26 of U.S. Patent No. 7,088,233 B2 are held to
be unpatentable;
FURTHER ORDERED that, based on a preponderance of the
evidence, claim 14 of U.S. Patent No. 7,088,233 B2 is held to be not
unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:
Naveen Modi
Yar Chaikovsky
Joseph Palys
David Okano
Jennifer Bailey
Adam Seitz
naveenmodi@paulhastings.com
yarchaikovsky@paulhastings.com
josephpalys@paulhastings.com
davidokano@paulhastings.com
jennifer.bailey@eriseip.com
adam.seitz@eriseip.com

PATENT OWNER:

George Beck
Eley Thompson
Ruben Rodrigues
gbeck@foley.com
ethompson@foley.com
rrodrigues@foley.com