Under Armour Inc.v.adidas AG

Patent Trial and Appeal Board

Aug 3, 2015

12963307 (P.T.A.B. Aug. 3, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Date: August 3, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNDER ARMOUR, INC.,
Petitioner,

v.

ADIDAS AG,
Patent Owner.

Case IPR2015-00696
Patent 8,068,858 B2

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

BISK, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner, Under Armour, Inc., filed a Petition to institute an inter
partes review of claims 1, 3, 8, 11, 13, and 18 of U.S. Patent No. 8,068,858
B2 (“the ’858 patent”). Paper 1, 2 (“Pet.”). Patent Owner, adidas AG, filed
a Preliminary Response pursuant to 35 U.S.C. § 313. Paper 6 (“Prelim.
Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the
Petition and the Preliminary Response, and for the reasons explained below,
we determine that the information presented does not show a reasonable
likelihood that Petitioner would prevail with respect to any claim. See 35
U.S.C. § 314(a). Accordingly, we deny the Petition to institute an inter
partes review.
A. Related Matters
Patent Owner has asserted the ’858 patent along with additional
patents, including related U.S. Patent No. 7,292,867 B2 and related U.S.
Patent No. 7,805,149 B2, against Petitioner in adidas AG, et. al. v. Under
Armour, Inc. and MapMyFitness, Inc., Case No. 14-130-GMS (D. Del.).
Pet. 1; Paper 5, 1. Petitioner has filed petitions to institute inter partes
reviews of those related patents. See Paper 5, 1 (citing IPR2015-00694;
IPR2015-00695).

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B. The Asserted Grounds
Petitioner identifies the following as asserted grounds of
unpatentability:
References Basis Claims Challenged
Satava (Ex. 1002)1 § 102(b)2 1, 3, 8, 11, 13, and 18
Wadell (Ex. 1003)3 § 102(b) 1, 3, 8, 11, 13, and 18
Smith (Ex. 1004)4 § 102(a) and (b) 1, 3, 8, 11, 13, and 18
Pet. 7–8.
C. The ’858 Patent
The ’858 patent describes methods and products that take advantage
of location-aware electronic devices to facilitate the “routing, scheduling,
and real-time monitoring of outdoor activities, such as human fitness
activities.” Ex. 1001, 1:20–24. Figure 1 of the ’858 patent is reproduced
below.

1 R. Satava, et. al., The Physiologic Cipher at Altitude: Telemedicine and
Real-Time Monitoring of Climbers on Mount Everest, Telemedicine Journal
and e-Health, Vol. 6, No. 3 (2000).
2 The Leahy-Smith America Invents Act (“AIA”), Pub.L. No. 112–29, took
effect on March 16, 2013. Because the application from which the ’867
patent issued was filed before that date, our citations to Title 35 are to its
pre-AIA version.
3 PCT Application WO 01/00281 A2, published Jan. 4, 2001.
4 U.S. Patent Application 2002/0198612 A1, published Dec. 26, 2002.
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Figure 1 shows athlete 14 running with portable fitness device 12 on
her back. Ex. 1001, 3:42–45.5 GPS satellites 20 emit GPS signals 22, which
allow the PFD to continuously determine its position, velocity, and bearing.
Id. at 3:48–52. A wireless wide area network is provided by cellular
telephone towers 30 with antennae 34 and base station systems (BSS) 32.

5 The ’858 patent uses “portable training device” interchangeably with
“portable fitness device.” See, e.g., Ex. 1001, 4:21–23. For simplicity, we
consistently use “portable fitness device” or the acronym “PFD.”
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Id. at 3:53–60 (only one tower and one BSS are shown in Figure 1). The
base station systems are in communication with the Internet. Id. at 3:64–4:2.
The ’858 patent describes a second user receiving location and
performance data from PFD 12 via a wide-area wireless network while
athlete 14 is engaged in physical activity. Id. at 2:4–21. The second user’s
client computer system can display athlete 14’s performance data and an
indication of athlete 14’s location with respect to a route path based on the
received location data. Id. Figure 5B of the ’858 patent is reproduced
below.

Figure 5B shows an exemplary visual interface, including route map
442 and marker 450a showing athlete 14’s current location with respect to
route path 446. Ex. 1001, 3:26–29, 16:17–23.
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D. The Challenged Claims
Petitioner challenges claims 1, 3, 8, 11, 13, and 18. Pet. 2. Claims 1
and 11 are independent. Claim 1 is illustrative and reproduced below:
1. A method for execution by a server computer
system of providing information about a first user engaged in a
physical activity with a portable fitness device, the method
comprising:
receiving first user location data from the portable fitness
device via a wide-area wireless network while the first user is
engaged in the physical activity;
receiving first user performance data from the portable
fitness device via a wide-area wireless network while the first
user is engaged in the physical activity;
determining the first user’s location with respect to a
route path based on the received first user location data; and
initiating a visual display on a remotely located second
user’s client computer system while the first user is engaged in
the physical activity,
wherein the visual display includes performance related
content that is based on the first user performance data, and
wherein the visual display further includes an indication
of the first user’s location with respect to the route path.
Ex. 1001, 17:20–39.
II. ANALYSIS
A. Claim Construction
“A claim in an unexpired patent shall be given its broadest reasonable
construction in light of the specification of the patent in which it appears.”
37 C.F.R. § 42.100(b). Pursuant to that standard, the claim language should
be read in light of the specification, as it would be interpreted by one of
ordinary skill in the art. In re Suitco Surface, Inc., 603 F.3d 1255, 1260
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(Fed. Cir. 2010). Thus, we generally give claim terms their ordinary and
customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that
the term would have to a person of ordinary skill in the art in question.”)
(internal quotation marks omitted).
The parties propose express constructions for several terms, two of
which we discuss below. Pet. 9–11; Prelim. Resp. 5–11. Before construing
these terms, however, we address claims 13 and 18, which, on their face,
depend from claim 10, reciting “[t]he computer program product of claim
10. . . .” Ex. 1001, 18:64–67, 20:16–17. Because claim 10 recites “[t]he
method of claim 1,” Petitioner notes that this dependency appears to be an
error. Pet. 7, n.1. We agree. For purposes of this decision, we construe
claims 13 and 18 to depend from claim 11, which claims “[a] computer
program product.” Ex. 1001, 18:28.
1. “wireless wide-area network” (claims 1 and 11)
Petitioner asserts that the broadest reasonable construction of
“wireless wide-area network” is “a network that extends beyond the
immediate vicinity of a user or room.” Pet. 9. Patent Owner proposes that
the broadest reasonable interpretation of this term is “any wireless network
other than a local area network (LAN).” Prelim. Resp. 5.
Both parties acknowledge that the ’858 patent does not expressly
define the term “wireless wide-area network,” but it does describe a wide
area network as a cellular network. Pet. 9 (citing Ex. 1001, 3:53–4:2);
Prelim. Resp. 7 (citing Ex. 1001, 4:22–26, 3:53–55, 5:10–13). Although
Petitioner concedes that there is “no precise delineation in the art between a
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‘wide area’ network and a ‘local area’ network,’” Petitioner asserts that there
is “agreement regarding extreme ends of the spectrum.” Pet. 9 (citing Ex.
1005 ¶ 31). In fact, both parties appear to agree that a wide-area network is
generally any network that is not merely local in area. Pet. 9; Prelim. Resp.
5–7. According to Petitioner, the proper construction “excludes only those
wireless networks that are clearly local area, such as those that are limited in
range to the immediate vicinity of a user or room.” Pet 9. Petitioner does
not explain further the restriction “the immediate vicinity of a user or room.”
Id. Patent Owner argues that this restriction, in fact, increases, rather than
reduces, the ambiguity of the term because “there is no clear meaning of
how far removed the immediate vicinity may be from the user.” Prelim.
Resp. 5–6.
We are not persuaded that the restriction “beyond the immediate
vicinity of a user or room” is an appropriate or helpful addition to the
construction of the term “wireless wide-area network.” Instead, for purposes
of this decision, we construe “wireless wide-area network” to be “a wireless
network that is not merely local in area.”
2. “with respect to a route path” (claims 1 and 11)
Petitioner asserts that the broadest reasonable construction of “with
respect to a route path” is “in relation to a predetermined path.” Pet. 10.
Petitioner points to the ’858 patent’s description of Figure 5B, which
describes “route map 442 and a marker 450a showing the athlete’s current
location with respect to a route path 446.” Id. (quoting Ex. 1001, 16:17–
30). Petitioner asserts that Figure 5B “plainly shows the ‘route path 446’ to
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be a predetermined path’” and the athlete’s location, 450a, depicts where the
athlete is currently located on that path. Id. at 11 (citing Ex. 1005 ¶ 32).
Patent Owner does not propose an alternative construction for this
term, but states in a footnote that “Patent Owner does not agree that this is
the correct construction.” Prelim. Resp. 16, n.3. For purposes of this
decision, we adopt Petitioner’s proposed construction of “with respect to a
route path” as “in relation to a predetermined path.”
B. Anticipation by Satava
Petitioner asserts that claims 1, 3, 8, 11, 13, and 18 were anticipated
by Satava under 35 U.S.C. § 102(b). Pet. 7.
Satava discusses the monitoring of three climbers wearing vital-signs
monitoring systems while climbing through the Khumbu Icefall on Mount
Everest. Ex. 1002, Abs. The climbers used a system called “the vital-signs
monitoring (VSM) system of Fitsense, Inc.,” which included position
tracking using a Global Positional Satellite (GPS) system and a “[w]earable,
wireless communication system with radio frequency (RF) transmission.”
Id. at 3. Data from the VSM systems was transmitted to a laptop at Everest
Base Camp and then retransmitted to Yale University over the Internet. Id.
at Abs. Figure 4 of Satava is reproduced below.
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Figure 4, above, shows the interface for viewing the data sent from the
climbers’ VSM systems. Id. at 7. “On the left is the terrain map of Mount
Everest with the overlay of the climbers’ position, and on the right are the
individual climber’s vital signs.” Id. at 5. “The inset in the lower left corner
is a reference graphic representation of the vertical ascent usually taken to
the summit with the numbers representing the locations of the four camps.”
Id. at 7.
Independent claims 1 and 11 require “wherein the visual display
further includes an indication of the first user’s location with respect to the
route path.” As discussed above, Petitioner asserts, and we agree, for
purposes of this decision, that this requires a display of the athlete’s location
in relation to a predetermined path. Petitioner asserts that this limitation is
disclosed by Satava because Figure 4 “not only displayed ‘the trail and
location of an individual climber’—i.e., the path traced by the route the
climbers actually took—it also displayed, in the inset, a ‘reference graphic
representation of the vertical ascent usually taken to the summit.’” Pet. 16.
Thus, we understand that Petitioner equates the map showing the vertical
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ascent usually taken to the summit with the predetermined path of the
limitation at issue. Petitioner does not make clear, however, how the trail
and position of the individual climber, shown in the main map area of the
display relates to the vertical ascent usually taken to the summit. Petitioner
simply concludes that “Satava’s display of both the climbers’ current
position and their expected future positions accordingly discloses
determining user location with respect to a route path.” Id. (citing Ex. 1005
¶ 46). This conclusion is not sufficient for several reasons. First, the
limitation does not require simply determining user location with respect to
a route path, but indicating the user’s location with respect to the route path.
Second, it is not clear from Figure 4, or any other disclosure in Satava to
which Petitioner has directed us, how the main map and the inset map relate
to one another. Thus, it is not apparent, simply by looking at Figure 4, what
relation the location of a climber on one map would have to the other map.
Petitioner proffers testimony from Dr. Paradiso on this issue. Ex.
1005 ¶¶ 44–46. This testimony, however, suffers from the same deficiencies
as Petitioner’s argument. Specifically, Dr. Paradiso states that “one of
ordinary skill in the art would understand that, in generating this graphical
user interface, the base camp laptop determined the climbers’ location ‘in
relation to a predetermined path.’” Id. ¶ 46 (emphasis added). This
statement, however, does not shed any light on whether the display indicates
the user’s location in relation to a predetermined path, as required by the
claims. More importantly, Dr. Paradiso does not address whether one of
ordinary skill, looking at Figure 4, would find an indication of a climber’s
location in relation to the vertical ascent usually taken to the summit
contained in the inset map.
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Under these circumstances, we are not persuaded that Petitioner has
shown a reasonable likelihood of prevailing in its assertion that claims 1, 3,
8, 11, 13, and 18 were anticipated by Satava.
C. Anticipation by Wadell
Petitioner asserts that claims 1, 3, 8, 11, 13, and 18 were anticipated
by Wadell under 35 U.S.C. § 102(b). Pet. 7.
Wadell describes a system for monitoring the performance of a
participant in a sporting or recreational activity using a “player-mounted
device.” Ex. 1003, 3. Wadell’s device collects data from sensors and other
devices and wirelessly transmits this data, either raw or processed, to another
device, which may be connected to the Internet. Id. at 4–6. According to
Wadell, one embodiment of the system includes a display for displaying the
performance information in substantially real-time. Id. at 6.
Independent claims 1 and 11 require “wherein the visual display
further includes an indication of the first user’s location with respect to the
route path.” As discussed above, Petitioner asserts, and we agree, for
purposes of this decision, that this requires a display of the athlete’s location
in relation to a predetermined path.
Petitioner does not cite any disclosure of Wadell meeting this
limitation. Instead, Petitioner argues that this limitation is disclosed by
Wadell based on Wadell’s disclosure of (1) collecting performance data
related to the player’s location such as “position on a course,” and (2) any
collected information can be visually displayed “in the form of an Internet
webpage.” Pet. 27–28. From these disclosures, Petitioner concludes that
“one of ordinary skill in the art would understand Wadell to disclose
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initiation of a visual display—including both performance and position
information—on a remotely located user’s computer, with the display also
indicating the user’s location with respect to a route path.” Id. at 28 (citing
Ex. 100[5] ¶ 70). Petitioner does not point to any portion of Wadell that
discloses, either expressly or inherently, displaying a player’s location in
relation to a predetermined path.
We are, therefore, not persuaded that Petitioner has shown a
reasonable likelihood of prevailing in its assertion that claims 1, 3, 8, 11, 13,
and 18 were anticipated by Wadell.
D. Anticipation by Smith
Petitioner asserts that claims 1, 3, 8, 11, 13, and 18 were anticipated
by Smith under 35 U.S.C. § 102(a) and (b). Pet. 8.
Smith describes real time monitoring of competitors in a sporting
event, each carrying a “position locating device” with “a miniature radio
frequency transmitter” and a GPS board. Ex. 1004, Abs., ¶ 43. According
to Smith, “[t]he transmission system for real time transmission is preferably
a radio frequency transmission unit 9, miniaturized to reduce weight and
power consumption.” Id. ¶ 30. Further, Smith states that “[t]he purpose of
the transmission equipment is to transmit the GPS location data from unit 7
to a receiving station 8 located nearby for subsequent data processing and
presentation.” Id.
Independent claims 1 and 11 require receiving location and
performance data “from the portable fitness device via a wide-area wireless
network.” As discussed above, for purposes of this decision, we have
construed a “wide-area wireless network” to be a wireless network that is
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not merely local in area. Petitioner asserts that this limitation is disclosed by
Smith because the system transmits data using the radio frequency unit to
the radio frequency interface. Pet. 33–34 (citing Ex. 1004 ¶¶ 43, 44; Ex.
1005 ¶¶ 81–82). Petitioner does not explain how this radio frequency
transmission qualifies as “via a wide-area wireless network.” Particularly in
light of Smith’s explicit statement that the receiving statement is “located
nearby” the transmitting unit (Ex. 1004 ¶ 30), we are not persuaded that
Petitioner has shown that Smith discloses receiving data “via a wide-area
wireless network” as required by the claims.
Accordingly, we are not persuaded that Petitioner has shown a
reasonable likelihood of prevailing in its assertion that claims 1, 3, 8, 11, 13,
and 18 were anticipated by Smith.
III. CONCLUSION
The Petition fails to show there is a reasonable likelihood that
Petitioner would prevail with respect to at least one of the claims challenged
in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
IV. ORDER
Accordingly, the Petition is denied, and no trial is instituted.
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Petitioner:

Brian Ferguson
Anish Desai
Weil, Gotshal & Manges LLP
brian.ferguson@weil.com
anish.desai@weil.com

Patent Owner:

Mitchell G. Stockwell
Wab P. Kadaba
Kilpatrick Townsend & Stockton LLP
mstockwell@kilpatricktownsend.com
wkadaba@kilpatricktownsend.com