Under Armour,Inc.v.adidas AGDownload PDFPatent Trial and Appeal BoardSep 30, 201511857862 (P.T.A.B. Sep. 30, 2015) Copy Citation 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 IPR2015-00695 Patent 7,805,149 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 IPR2015-00695 Patent 7,805,149 B2 2 II. INTRODUCTION Petitioner, Under Armour, Inc., filed a Petition to institute an inter partes review of various claims of U.S. Patent No. 7,805,149 B2 (“the ’149 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 fifth and sixth grounds of unpatentability asserted in the Petition, namely the following: claims 1, 9, 10, 11, 12, 18, 20, 21, and 23 as anticipated by Benefon (Ex. 1006) 1 ; and claim 13 as obvious over Benefon and DeLorme (Ex. 1008). 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 U.S. Patent No. 6,321,158 B1, issued Nov. 20, 2001. IPR2015-00695 Patent 7,805,149 B2 3 III. ANALYSIS The Petition asserted that claims 1, 9, 10, 11, 12, 18, 20, 21, and 23 were anticipated by Benefon and that claim 13 would have been obvious over Benefon in view of DeLorme. Pet. 7. Independent claim 1 requires that the processing unit be “capable of outputting at least some of the data describing the waypoints and at least some of the athletic performance to said wireless communication network via said wireless wide-area network transmitter.” Independent claim 10 similarly requires “second instructions capable of causing the mobile phone to automatically transmit at least some of the data describing the waypoints and at least some of the athletic performance information to a remote recording device via a wireless wide-area communication network.” 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. 40–41 (citing Ex. 1004 ¶ 93). 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. 14 (“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.”). IPR2015-00695 Patent 7,805,149 B2 4 The evidence cited to support the inherency position—Ex. 1004 ¶ 93—is declaration testimony by Shawn Burke, Ph.D. In that paragraph, Dr. Burke testified: “This protocol [i.e., MPTP] was known in the art at the time the 149 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 ¶ 93 (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. 16. 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 ¶ 93. Instead, Petitioner argues—for the first time—that Benefon discloses the limitations in question because it discloses the capability of outputting/transmitting speed and direction data because MPTP messages include a dedicated field for them, and that is all the claims require, further arguing the following: IPR2015-00695 Patent 7,805,149 B2 5 The claims at issue expressly define the claimed apparatus by capability. See 149 Patent at Claim 1 (claiming a phone “capable of outputting” waypoints and performance information); id. at Claim 11 (claiming a computer program product “capable of causing” a phone to transmit waypoints and performance information). Reh’g Req. 2. The Request does not identify where this argument was previously raised; it was not previously raised. Thus, we could not have overlooked or misapprehended it. Further, a petition for an inter partes review must identify “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). The Petition did not include the claim construction that Petitioner is now proposing via its Request for Rehearing. Nor did the unpatentability arguments contained in the Petition implicitly raise such a construction. Finally, Petitioner’s reliance, in its Request for Rehearing, on Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1383 (Fed. Cir. 2015) and Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) is misplaced. See Reh’g Req. 12. In Kennametal, 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 Kennemetal 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. 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 IPR2015-00695 Patent 7,805,149 B2 6 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.’”). In Bristol-Myers Squibb, the issue was whether it was sufficient, for anticipation purposes, for the prior art 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 the step without actually performing the step was sufficient to meet the claim in question. Id. at 1378–79. Benefon does not describe sending speed data in position updates, nor does it teach that it could be done. Bristol-Myers Squibb does not support Petitioner’s new position on Rehearing. IV. 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). V. ORDER Petitioner’s Request for Rehearing is DENIED. IPR2015-00695 Patent 7,805,149 B2 7 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 Copy with citationCopy as parenthetical citation