Under Armour, Inc.v.adidas AG

Patent Trial and Appeal Board

Sep 30, 2015

10759289 (P.T.A.B. Sep. 30, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Date: September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNDER ARMOUR, INC.,
Petitioner,

v.

ADIDAS AG,
Patent Owner.

Case IPR2015-00694
Patent 7,292,867 B2

Before JENNIFER S. BISK, MICHAEL J. FITZPATRICK, and
JUSTIN BUSCH, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION
Denying Request for Rehearing
37 C.F.R. § 42.71

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Patent 7,292,867 B2

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I. INTRODUCTION
Petitioner, Under Armour, Inc., filed a Petition to institute an
inter partes review of various claims of U.S. Patent No. 7,292,867 B2 (“the
’867 patent”) pursuant to 35 U.S.C. § 311(a). Paper 1 (“Pet.”). We entered
a Decision Denying Institution of Inter Partes Review. Paper 9 (“Decision”
or “Dec.”).
Petitioner has now filed a Request for Rehearing of that Decision.
Paper 10, (“Request” or “Reh’g Req.”). The Request seeks rehearing of the
portion of our Decision denying institution on the fourth and fifth grounds of
unpatentability asserted in the Petition, namely the following:
claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24 as anticipated by Benefon
(Ex. 1006)
1
; and
claim 17 as obvious over Benefon and eTrex (Ex. 1010)
2
.
Reh’g Req. 1.
“When rehearing a decision on petition, a panel will review the
decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
showing a decision should be modified lies with the party challenging the
decision[,]” which party “must specifically identify all matters the party
believes the Board misapprehended or overlooked, and the place where each
matter was previously addressed in a motion, an opposition, or a reply.”
37 C.F.R. § 42.71(d).
The Request for Rehearing is denied.

1
BENEFON ESC!, Owner’s Manual (2001).
2
eTrex Summit Personal Navigator, Owner’s Manual and
Reference Guide, GARMIN Corporation (Feb. 2001).
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II. ANALYSIS
The Petition asserted that claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24
were anticipated by Benefon and that claim 17 would have been obvious
over Benefon in view of eTrex. Pet. 8.
Independent claim 1 requires that the processing unit “outputs said
plurality of waypoints within the route and at least a portion of said athletic
performance information [including athletic performance information
indicative of velocity] to said wireless communication network during
traversal of the route via said wireless wide-area network transceiver.”
Independent claim 16 is directed to a computer readable medium and
contains a limitation corresponding to the just quoted limitation of claim 1.
To meet these limitations, the Petition argued “the disclosure in
Benefon 2001 that position/tracking updates utilize ‘Mobile Phone
Telematics Protocol’ or ‘MPTP’ confirms that speed is contained within
those updates,”
3
and “[o]ne of ordinary skill in the art would understand that
the content of a position/tracking message was defined by the protocol used
(i.e., MPTP) and the data accommodated by that protocol.” Pet. 40 (citing
Ex. 1004 ¶ 96).
The evidence cited to support the inherency position—Ex. 1004
¶ 96—is declaration testimony by Shawn Burke, Ph.D. In that paragraph,

3
Petitioner’s use of the word “confirms” is a reference to a purported
express disclosure of these limitations by Benefon, of which we were not
persuaded. See Dec. 12 (“This [Benefon] excerpt does not disclose
transmission of speed or direction data. It discloses storing such data, and
notes that the stored speed and direction data can be updated as new position
data is received. Ex. 1006, 140.”).
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Dr. Burke testified: “This protocol [i.e., MPTP] was known in the art at the
time the 867 Patent was filed, see J. Hjelm, Creating Location Services for
the Wireless Web (available March 19, 2002[]) (“Hjelm”) [Ex. 1011, 4–5],
and was structured so that position updates always included the speed
and heading of the sending unit. [Id. at 7] (table 10.2).” Ex. 1004 ¶ 96
(Dr. Burke’s emphasis).
We reviewed the evidence Dr. Burke identified as underlying his
opinion, i.e., table 10.2 on page 7 of Hjelm, and we stated the following:
Table 10.2 is labeled “Position and Status
Reporting Message.” Ex. 1011, 7 (table 10.2). It
mentions, among other things, “Speed” and
“Direction,” but under each of those entries, table
10.2 states “Can be blank if not available.” Id.
Thus, not only does Dr. Burke fail to explain how
table 10.2 purportedly evidences that speed and
direction data are “always” included in a Benefon
position update, table 10.2 suggests that the
opposite is true.
Dec. 14.
In its Request for Rehearing, Petitioner does not contest our finding
that Hjelm table 10.2 fails to support Dr. Burke’s opinion that, using MPTP,
“position updates always include the speed.” Ex. 1004 ¶ 96. Instead,
Petitioner creates a new legal theory, stating:
As a prior art publication, it was not necessary for
Petitioner to demonstrate that the Benefon
publication discloses that every MPTP position
message always includes speed data. See
Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
780 F.3d 1376, 1383 (Fed. Cir. 2015) (“Though it
is true that there is no evidence in Grab of actual
performance of combining the ruthenium binder
and PVD coatings, this is not required. Rather,
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anticipation only requires that those suggestions be
enabled to one of skill in the art.”) (quotations and
citations omitted); Bristol-Myers Squibb Co. v. Ben
Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir.
2001) (“[A]nticipation does not require actual
performance of suggestions in a disclosure.
Rather, anticipation only requires that those
suggestions be enabling to one of skill in the art.”).
In accordance with this precedent, Petitioner was
only required to show that the Benefon publication
discloses a mobile phone that is capable of
transmitting speed data over a wireless network.
Reh’g Req. 2.
Thus, Petitioner suggests that, even though Benefon does not
explicitly disclose the limitation at issue, it is not required to necessarily
function in accordance with the claims it allegedly anticipates, but instead,
need simply be capable of functioning in such a way. We could not have
overlooked or misapprehended this new argument, which was not raised in
the Petition. For that reason alone the Request for Rehearing is denied.
Nonetheless, we address this argument and the case law cited by
Petitioner for the first time in its Request for Rehearing. Neither case
supports Petitioner’s novel anticipation position. In fact, Petitioner’s
reliance on the cases is troubling.
In Kennametal, the issue was not whether a limitation not expressly
disclosed in an anticipatory reference was inherently present. Indeed, the
Court of Appeals noted that “all the limitations of Kennametal’s claim are
specifically disclosed in Grab [the anticipatory reference].” Kennametal,
780 F.3d at 1382. The issue in Kennametal was whether a specific
combination of those limitations would have been “immediately
envisage[d]” by a person of ordinary skill in the art. Id. at 1383; see also id.
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at 1382 (“Because all the limitations of Kennametal’s claim are specifically
disclosed in Grab, the question for the purposes of anticipation is ‘whether
the number of categories and components’ disclosed in Grab is so large that
the combination of ruthenium and PVD coatings ‘would not be immediately
apparent to one of ordinary skill in the art.’”).
Likewise in Bristol-Myers Squibb, the issue was not whether a
limitation not expressly disclosed in an anticipatory reference was inherently
present. The issue was whether it was sufficient, for anticipation purposes,
for the anticipatory reference to merely teach a step limitation as opposed to
providing a description of the step as actually having been performed.
Bristol-Myers Squibb, 246 F.3d 1368, 1378–79. The Court of Appeals held
that teaching without doing is sufficient, stating the following:
We also conclude that the district court did not err
in granting summary judgment of invalidity on the
basis of anticipation of claims 1, 2, 5 and 8 of the
’537 patent, which are similar to the ’803 claims
but include the additional limitation of
“premedicating said patient with a medicament
that reduces or eliminates hypersensitivity
reaction.” Bristol correctly asserts that Kris’s
suggestion of premedication is primarily directed
to patients receiving higher doses who experienced
hypersensitivity reactions, and that Kris did not
actually employ premedication. Nevertheless, Kris
did not confine his pretreatment suggestion only to
patients given higher doses; rather, he stated that
“hypersensitivity reactions constitute a severe and
unpredictable treatment-limiting toxicity for the
present cremophor-containing formulation of taxol
given on this schedule,” referring to the dosage
schedule of his entire study. Kris at 607. He then
stated that “[f]urther studies are needed to see if
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pretreatment regimens . . . will permit the safe
administration of this compound.” Id.
Furthermore, although he did not actually
premedicate the patients himself, anticipation does
not require actual performance of suggestions in a
disclosure. Rather, anticipation only requires that
those suggestions be enabling to one of skill in the
art.
Bristol-Myers Squibb, 246 F3d. at 1378–79.
It should have been readily apparent that neither of these cases is
applicable to the facts here.
II. CONCLUSION
Petitioner has not carried its burden of demonstrating that the Board’s
Decision should be modified. See 37 C.F.R. § 42.71(d).

III. ORDER
Petitioner’s Request for Rehearing is DENIED.

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Petitioner:

Brian Ferguson
Brian.ferguson@weil.com

Anish Desai
Anish.desai@weil.com

Patent Owner:

Mitchell Stockwell
mstockwell@kilpatricktownsend.com

Wab Kadaba
wkadaba@kilpatricktownsend.com