Nintendo of America Inc.v.iLife Technologies, Inc.

Patent Trial and Appeal Board

Apr 28, 2016

10331958 (P.T.A.B. Apr. 28, 2016)

Trials@uspto.gov Paper No. 40
571-272-7822 Entered: April 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NINTENDO OF AMERICA, INC. and NINTENDO CO., LTD.,
Petitioner,

v.

iLIFE TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2015-00109
Patent 6,864,796 B2
____________

Before JACQUELINE WRIGHT BONILLA, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

IPR2015-00109
Patent 6,864,796 B2

2
I. INTRODUCTION
Nintendo of America, Inc. and Nintendo Co., Ltd. (collectively,
“Petitioner”) filed a Corrected Petition (Paper 4, “Pet.”), requesting
institution of an inter partes review of claims 1–3, 9–12, and 18–20 of
U.S. Patent No. 6,864,796 B2 (Ex. 1001, “the ’796 patent”). iLife
Technologies, Inc. (“Patent Owner”) timely filed a Preliminary Response
(Paper 9, “Prelim. Resp.”). Upon considering these submissions, we
instituted inter partes review of claims 1–3, 9–12, and 18–20 of the ’796
patent. Paper 12 (“Dec. on Inst.”).
After institution, Patent Owner filed a Response (Paper 14, “PO
Resp.”), and Petitioner filed a Reply (Paper 21, “Reply”). Petitioner
proffered a Declaration of Gregory Francis Welch, Ph.D. (Ex. 1002, “Welch
Declaration”) with its Petition and a Reply Declaration of Gregory Francis
Welch, Ph.D. (Ex. 1010, “Welch Reply Declaration”) with its Reply. Patent
Owner proffered Declarations of Dr. Robert H. Sturges (Ex. 2006), Michael
L. Lehrman (Ex. 2007), Michael D. Halleck (Ex. 2008), Michael E. Halleck
(Ex. 2009), Alan Owens (Ex. 2010), Edward L. Massman (Ex. 2011), Don
James (Ex. 2012), and Greg Younger (Ex. 2013) with its Response. Also,
deposition transcripts were filed for Dr. Sturges (Ex. 1009) and Dr. Welch
(Ex. 2039).
Patent Owner moves to exclude portions of the Reply Declaration.
Paper 20. Petitioner filed a Response (Paper 33) to the motion, and Patent
Owner filed a Reply (Paper 37).
Patent Owner also filed a notice regarding new arguments and belated
support (Paper 30), to which Petitioner filed a response (Paper 34). Patent
IPR2015-00109
Patent 6,864,796 B2

3
Owner further filed a Motion for Observations (Paper 31), and Petitioner
filed a response (Paper 35) to the motion.
A combined oral hearing in this proceeding and Cases IPR2015-
00105, IPR2015-00106, IPR2015-00112, IPR2015-00113, and IPR2015-
00115 was held on January 27, 2016; a transcript of the hearing is included
in the record (Paper 39, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has not shown by a
preponderance of the evidence that claims 1–3, 9–12, and 18–20 of the ’796
patent are unpatentable. We also dismiss as moot Patent Owner’s motion to
exclude.
A. Ground of Unpatentability at Issue
We instituted inter partes review on the sole ground that, under
35 U.S.C. § 103, claims 1–3, 9–12, and 18–20 are unpatentable over
Yasushi, JP H10-295649 (published Nov. 10, 1998) (Ex. 1003, “Yasushi”).
B. Related Proceedings
The parties indicate that district court cases involving the ’796 patent
include iLife Technologies, Inc. v. Nintendo of America Inc., No. 3:13-cv-
04987 (N.D. Tex.), as well as other cases involving other defendants
including iLife Technologies Inc. v. AliphCom, No. 3:14-cv-03345 (N.D.
Cal.); iLife Technologies Inc. v. Body Media, Inc., No. 2:2014-cv-00990
(W.D. Pa.); and iLife Technologies Inc. v. Fitbit, Inc., No. 3:2014-cv-03338
(N.D. Cal.). Pet. 1; Paper 7, 1.
IPR2015-00109
Patent 6,864,796 B2

4
Upon considering other Petitions filed by the same Petitioner on the
same day, we also instituted inter partes reviews of claims in related U.S.
Patent Nos. 6,307,481 B1 (Case IPR2015-00105), 6,703,939 B2 (IPR2015-
00106), 7,095,331 B2 (Case IPR2015-00112), 7,145,461 B2 (Case IPR2015-
00113), and 7,479,890 B2 (Case IPR2015-00115).
C. The ’796 Patent (Ex. 1001)
The ’796 patent relates to systems, and methods of operation thereof,
for evaluating movement of a body relative to an environment, such as falls,
irregular movement, inactivity, etc. Ex. 1001, 1:24–28, 2:35–50. The ’796
patent indicates that prior art methods fail to discern normal, acceptable, or
unacceptable changes in levels of body activity. Id. at 1:53–58. The
specification acknowledges that “accelerometers that measure both static
and dynamic acceleration are known,” but states that “their primary use has
heretofore been substantially confined to applications directed to measuring
one or the other, but not both.” Id. at 2:1–4.
The specification distinguishes between “static acceleration, or
gravity,” which is “a gauge of position,” versus “dynamic acceleration (i.e.,
vibration, body movement, and the like).” Id. at 1:65–2:1. The system of
the ’796 patent includes a sensor associated with the body that operates to
repeatedly sense dynamic and static accelerative phenomena of the body. Id.
at 2:53–55. The sensor “senses one or more absolute values, changes in
value, or some combination of the same” and may be “a plural-axis sensor”
that “generates an output signal to the processor indicative of measurements
of both dynamic and static acceleration of the body in plural axes.” Id. at
2:64–3:5, 5:46–52. In one embodiment, the sensor generates voltage signals
that include “an ac voltage component proportional to G forces (i.e.,
IPR2015-00109
Patent 6,864,796 B2

5
dynamic acceleration component related to vibrations of sensor layer 31),”
as well as “a dc voltage component proportional to an angle relative to earth
(i.e., static acceleration component related to gravity).” Id. at 6:20–27.
The system further includes a processor that processes “sensed
accelerative phenomena as a function of at least one accelerative event
characteristic” to determine whether evaluated body movement is within
“environmental tolerance.” Id. at 2:56–60, 6:54–59. The ’796 patent
defines “accelerative events” as “occurrences of change in velocity of the
body (or acceleration), whether in magnitude, direction or both.” Id. at
5:20–24. The ’796 patent states that an accelerative event characteristic
“will largely be defined by the specific application.” Id. at 9:42–47. The
specification also states that the “relevant environment may be statically or
dynamically represented” and the “sophistication of any such representation
may be as complex or as uncomplicated as needed by a given application.”
Id. at 3:15–18.
The processor “generates state indicia relative the environment of
interest, and determines whether the evaluated body movement is within
tolerance in the context of that environment.” Id. at 9:48–51. The ’796
patent describes that “‘tolerance’ would . . . be very different for a monitored
body of an elderly person . . . , a toddler, a box in a freight car, a container of
combustible gas, etc.” Id. at 9:51–54.
Figure 4 of the ’796 patent is reproduced below.
IPR2015-00109
Patent 6,864,796 B2

6

Figure 4 depicts an operational flow diagram of exemplary method 400 of
programming processor 47 in accordance with a fall detection application of
the principles of the ’796 patent. Id. at 8:17–21. Step 405 involves
generating a request for sampling measurements, either in response to an
executing operations program or upon initiation by a user. Id. at 8:31–35.
Sensor 25 senses x and y acceleration values and outputs measurement
signals that are filtered in step 410 to reduce the probability that an out-of-
tolerance abnormal movement will be determined incorrectly in response to
a single sharp impact. Id. at 8:36–44. Step 415 involves processor 47 using
the outputs from sensor 25 to determine a last stable position of the body.
Id. at 8:46–48. In Step 420, processor 47 uses ac voltage components of
each output from sensor 25 to check against a G force threshold value to see
if the threshold is exceeded, and thus, qualifies as a potential fall. Id. at
8:65–9:1. In Step 425, processor 47 determines a fall by testing a post-
impact stream of samples against a tolerance. Id. at 9:8–11. In Step 430, a
change of body position greater than 45° or more from the last stable
position may lead to classification of the event as a debilitating fall. Id. at
9:17–21.
In Step 435, processor 47 adds the absolute values of the x and y last
stable positions and then determines whether the body is lying down if the
IPR2015-00109
Patent 6,864,796 B2

7
added value exceeds a value corresponding to 90° plus or minus 25%, after
setting the last stable position. Id. at 9:26–30. In Step 440, any impact that
exceeds a G force threshold is treated as a debilitating fall. Id. at 9:31–34.
“Exemplary processor 47 is programmed to distinguish between normal and
abnormal accelerative events (e.g., walking, sitting, lying down, etc. versus
tripping, falling down, etc.), and, when an abnormal event is identified,
indicates whether the abnormal event is tolerable, or within tolerance.” Id.
at 12:12–17.
The ’796 patent has 20 claims, of which claims 1–3, 9–12, and 18–20
are being challenged. Claims 1 and 10 are independent and reproduced
below:
1. A system within a communications device capable
of evaluating movement of a body relative to an environment,
said system comprising:
a sensor, associable with said body, that senses dynamic
and static accelerative phenomena of said body, and
a processor, associated with said sensor, that processes
said sensed dynamic and static accelerative phenomena as a
function of at least one accelerative event characteristic to
thereby determine whether said evaluated body movement is
within environmental tolerance
wherein said processor generates tolerance indicia in
response to said determination; and
wherein said communication device transmits said
tolerance indicia.

10. A method for operating a system within a
communications device, wherein said system is capable of
evaluating movement of a body relative to an environment,
wherein said system comprises a sensor, associable with said
body, that senses dynamic and static accelerative phenomena of
said body, and
IPR2015-00109
Patent 6,864,796 B2

8
a processor, associated with said sensor, that processes
said sensed dynamic and static accelerative phenomena as a
function of at least one accelerative event characteristic to
thereby determine whether said evaluated body movement is
within environmental tolerance, wherein said method comprises
the steps of:
generating tolerance indicia in said processor in response
to said determination of whether said evaluated body movement
is within said environmental tolerance; and
transmitting said tolerance indicia through said
communications device.

II. CLAIM CONSTRUCTION
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (2016). There is a presumption that a claim term carries its
ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002); In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). A patentee may rebut this presumption,
however, by acting as his own lexicographer, providing a definition of the
term in the specification with “reasonable clarity, deliberateness, and
precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
IPR2015-00109
Patent 6,864,796 B2

9
In the Decision on Institution, we interpreted various claim terms of
the ’796 patent as follows:
Term Interpretation
“dynamic accelerative
phenomena”
“acceleration indicating vibration or
movement”
“static accelerative
phenomena”
“acceleration indicating position of the
body relative to the earth”

“within environmental
tolerance”
“acceptable based on criteria including a
specified value given the environment for
which body movement is being
evaluated”

“tolerance indicia”
“information indicating whether
evaluated body movement is within
environmental tolerance”

Dec. on Inst. 8–13.
Patent Owner states that “for purposes of this Response, the
preliminary claim constructions from the Board’s Decision to institute trial
(Paper 12) are used.” PO Resp. 25. Petitioner also does not present
arguments disputing these preliminary claim constructions in its Reply.
Based on our review of the complete record, we do not perceive any reason
or evidence that now compels any deviation from these interpretations.
In addition to the terms construed above, we address the construction
of “processor” and “communications device.”
A. “processor”(claims 1 and 10)
The specification of the ’796 patent defines “processor” to mean “any
device, system or part thereof that controls at least one operation, such a
device may be implemented in hardware, firmware or software, or some
suitable combination of at least two of the same.” Ex. 1001, 4:34–38.
IPR2015-00109
Patent 6,864,796 B2

10
Petitioner cited the same definition for its proposed construction of
“processor” (Pet. 5 (citing Ex. 1001, 4:34–38)), and Patent Owner states that
it uses the same definition (PO Resp. 26). We adopt that claim construction
here.
B. “communications device” (claims 1 and 10)
In arguing that Patent Owner fails to show that the challenged claims
are entitled to an earlier priority date, Petitioner contends that Patent Owner
“has ignored the proper claim construction dictated by the express definition
of ‘communication device’ in the ’796 specification.” Reply 1. Petitioner
asserts that “the [’]796 patent expressly defines ‘communication device . . .
broadly to include, without limitation, cellular telephones, personal digital
assistants, hand held computers, laptops, computers, wireless Internet access
devices, and other similar types of communications equipment.’” Id. (citing
Ex. 1001, 2:46–50).
Petitioner also presents arguments based on the prosecution history of
the ’796 patent, which issued from application 10/331,958, which, in turn, is
a continuation of application 09/727,974 (“the parent application”), filed on
November 30, 2000. Ex. 1001, 1:6–8. The parent application is a
continuation-in-part of application 09/396,991 (“the grandparent
application”), filed on September 15, 1999. Ex. 1001, 1:8–10.
Petitioner asserts that a “system comprising an acceleration sensor
‘within a communications device’ is the only new subject matter added . . .
by the [continuation-in-part] application . . . which is the parent of the [’]796
patent” and that the parent application “added Fig. 9 to introduce an
acceleration sensor ‘within a communications device’.” Reply 3 (citing Ex.
1010, App. 1). Petitioner argues that, although the grandparent application
IPR2015-00109
Patent 6,864,796 B2

11
“does disclose the acceleration sensor within a device 11 that includes a one-
way ‘RF transmitter’ for communicating with receiver unit 103,” its Figures
1, 2, and 6–8 do not show acceleration sensor 25 within remote receiver
units/mobile devices 103, which can receive signals. Reply 4–6 (citing Ex.
1007, 34:11–20, 37:20–38:1, 42:18–21, 58:10–12). Petitioner, thus,
contends that the express definition of “communication device” does not
encompass, cover, or contemplate a one-way RF transmitter device and that
“[a]ll of the devices listed in the express definition include two-way
communication capabilities.” Id. at 6–7.
We authorized Patent Owner to file a sur-reply addressing the
construction of the term “communication device” in this proceeding. Paper
25 (Order). In its sur-reply, Patent Owner argues that the “claims only
require the communication device to transmit data, not receive it” and “[n]o
claims require the communication device to receive information.” Paper 26,
1.
Patent Owner also argues that the ’796 patent “never states two-way
communication is required” and defines “communication device” broadly
with non-limiting examples. Id. (citing Ex. 1001, 2:46–50). Patent Owner
asserts limiting claims to specific examples or importing the examples into a
construction would be improper. Id. at 1–2 (citing Dealertrack, Inc. v.
Huber, 674 F.3d 1315, 1321–22 (Fed. Cir. 2012); Joovy LLC v. Target
Corp., 437 F. App’x 932, 936 (Fed. Cir. 2011)). Patent Owner further
contends that “[e]xemplary embodiments confirm ‘one-way’ communication
is sufficient” and that the “broadest reasonable construction of a
communication device must cover a ‘distributed device’ with wirelessly
IPR2015-00109
Patent 6,864,796 B2

12
associated components.” Id. at 2–3 (citing Ex. 1001, 7:1–11, 7:28–32,
10:25–50, Figs. 1, 2, 6, 7; Ex. 2038, 2–3).
Turning first to the express language of independent claims 1 and 10,
claim 1 recites a “system within a communications device capable of
evaluating movement of a body relative to an environment . . . wherein said
communication1 device transmits said tolerance indicia,” and claim 10
recites a “method for operating a system within a communications device . .
. wherein said method comprises the steps of . . . transmitting said tolerance
indicia through said communications device.” We, thus, agree with Patent
Owner that claims 1 and 10 only require the “communications device” to
transmit tolerance indicia.
The ’796 patent also states that the “term ‘communication device’ is
defined broadly to include, without limitation, cellular telephones, personal
digital assistants, hand held computers, laptops, computers, wireless Internet
access devices, and other similar types of communications equipment.” Ex.
1001, 2:46–50. Because of the qualifiers “broadly,” “without limitation,”
and “other similar types of communications equipment,” we do not find that
the ’796 patent’s purported definition of “communication device” limits the

1 Unlike claim 10, claim 1 recites “said communication device,” not “said
communications device,” which would then refer to the “communications
device” previously recited in the preamble of claim 1. It appears to be a
drafting error, and the parties provide arguments that are not dependent on
any difference between “communications device” and “communication
device.” See Reply 1 (“PO has ignored the proper claim construction
dictated by the express definition of ‘communication device’ in the ’796
specification”), 3 (“the ’796 specification includes an express definition for
the claimed term ‘communications device’”); Paper 26, 1 (“[t]here are two
main disputes regarding construction of ‘communication device’”).
IPR2015-00109
Patent 6,864,796 B2

13
claim’s recitation of “communications device” to the purported definition’s
listed, exemplary communications equipment. See also Ex. 2039, 205:18–
21 (Petitioner’s declarant stating that “[t]hese are just examples that
illustrate, that are concrete examples, that tell you the sort of space the
broad, in quotes, space that we’re talking about”), 207:15–18 (Petitioner’s
declarant stating that “those examples are painting a picture of a space of
communications devices that the inventors intended to encompass by that
statement” and “[a]t least that’s the way I think a person of ordinary skill
would read it”).
The definition of “communication device” was not included in the
disclosure of the ’796 patent’s grandparent application (see Prelim. Resp.
14); however, Petitioner does not persuade us that the added definition was
intended to exclude embodiments already described in the ’796 patent’s
grandparent application. Both the ’796 patent and its grandparent
application describe that an “[e]xemplary indicating means 41 [is] . . .
operable to . . . communicate such state, or tolerance, indicia to a monitoring
controller,” that “[i]ndicating means 41 may take any number of forms,” and
that “in system 11 of the present embodiment, stage 41 is an RF transmitter.”
Ex. 1001, 7:1–7; Ex. 1007, 43:14–20. Both the’796 patent and its
grandparent application describe an indicating means 41 as being an RF
transmitter and operable to communicate, which indicates that a device with
an RF transmitter would be a communications device. The ’796 patent’s
description of indicating means 41 as an RF transmitter and operable to
communicate also indicates that “communications device” should not be
limited to two-way communication devices.
IPR2015-00109
Patent 6,864,796 B2

14
Moreover, the grandparent application states that “[s]ystem 11 may be
implemented using any suitably arranged computer or other processing
system including micro, personal, mini, mainframe or super computers, as
well as network combinations of two or more of the same.” Ex. 1007,
44:12–15. The list includes systems that are similar to, at least, the
“laptops” and “computers” listed in the definition of “communication
device.” Ex. 1001, 2:46–50.
The Welch Reply Declaration also cites to an “Appellants’ Brief
Under 37 C.F.R. § 1.192” in the file history of the ’796 patent’s parent
application, wherein Appellants stated that the “communications device is
capable of sending messages to the processor and receiving messages from
the processor” in a required “Summary of Invention.” Ex. 1010, 64 (citing
Ex. 1006, 152). Petitioner, however, does not explain how this statement
can be deemed a clear disavowal of claim scope with regard to the term
“communications device.” Nor does Petitioner show that this statement was
made by Appellants to distinguish over prior art, when the issues being
addressed at the time concerned a double patenting rejection, failure to
provide Primary Examiner approval of a rejection, and the finality of a
rejection (see Ex. 1006, 153). The Appellants’ Brief also states that
“amended Claims 1–24 claim a ‘communications device’ comprising a
‘sensor and processor’ to evaluate body movement” and that “Appellants
recognize that a ‘communications device’ comprising a ‘sensor and
processor’ to evaluate body movement may be subject to an obviousness-
type double patenting rejection in view of United States Patent No.
6,307,481 B1.” Ex. 1006, 157. The patent cited by Appellants is the patent
that issued from the grandparent application. Ex. 1001, 1:6–10.
IPR2015-00109
Patent 6,864,796 B2

15
Therefore, for the preceding reasons, Petitioner does not persuade us
that the definition of “communication device” excludes devices with only an
RF transmitter and includes only devices with two-way communication.
Based on the full record before us and for the purposes of this Decision, we
determine that the term “communications device” includes devices with an
RF transmitter and devices with two-way communication. See Reply 1–2,
6–7. Also, for the purposes of this Decision, we do not need to further
interpret “communication device” or any other claim term.

III. CHALLENGE BASED ON YASUSHI
To prevail in its challenge of claims 1–3, 9–12, and 18–20 as
unpatentable over Yasushi, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
A. Priority Date
The ’796 patent issued from an application, which is a continuation of
application 09/727,974 (“the parent application”), filed on November 30,
2000 and issued as U.S. Patent No. 6,501,386. Ex. 1001, 1:6–8. The parent
application is a continuation-in-part of application 09/396,991 (“the
grandparent application”), filed on September 15, 1999 and issued as U.S.
Patent No. 6,307,481, which Petitioner challenges in IPR2015-00105. Ex.
1001, 1:8–10.
Petitioner argues that “claims 1 and 10 of the [’]796 patent both recite
the feature of providing the sensor system ‘within a communication device’”
and “[t]his feature was first disclosed by Applicant in the ’386 application
filed November 30, 2000, in which the Applicant added Fig. 9 and the
associated communications device description to the specification.” Pet. 9
IPR2015-00109
Patent 6,864,796 B2

16
(citing Ex. 1001, claims 1, 10; Ex. 1006). Petitioner, thus, argues that “the
earliest priority date to which the claims of the ’796 patent are entitled is
November 30, 2000.” Id. (citing Ex. 1008). Petitioner also states that
Yasushi “was published on November 10, 1998” and “Yasushi is prior art
under §102(b) to claims 1–3, 9–12 and 18–20 of the ’796 patent.” Id. at 10.
In the Decision on Institution, we determined that Patent Owner
showed that claims 1 and 10 are supported by the written description of the
grandparent application filed on September 15, 1999, because both the ’796
patent and the grandparent application describe a “system within a
communications device” and a “method for operating a system within a
communications device,” as recited by these claims. Dec. on Inst. 17–18
(citing Ex. 1001, 7:5–11, Figs. 1, 2; Ex. 1007 at 43, 68).
We considered Yasushi prior art under § 102(a)2 for purposes of the
Decision on Institution because Yasushi’s November 10, 1998, publication
date indicates that Yasushi’s portable accident monitoring device 1 was
described in a printed publication in a foreign country before September 15,
1999—the earliest priority date of the ’796 patent. Id. at 18. In our
Decision on Institution, we stated that “[a]t this stage of the proceeding, the
Board has not made a final determination with respect to . . . any underlying
factual and legal issues.” Id. at 24.
By presenting evidence and argument for antedating Yasushi, Patent
Owner appears to rely on the preliminary determination in the Decision on
Institution, and does not provide further evidence or argument showing why

2 Applications filed before March 16, 2013 are governed by pre-AIA
35 U.S.C. §§ 102 and 103. See Manual of Patent Examining Procedure
§ 2159.01.
IPR2015-00109
Patent 6,864,796 B2

17
the challenged claims are supported by the written description of the priority
application so as to be entitled to a priority date of at least September 15,
1999. See, e.g., PO Resp. 1.
In order to receive benefit of the filing date of an application
previously filed in the United States, the subsequent application for patent
must be for an invention disclosed in the manner provided in 35 U.S.C.
§ 112, first paragraph. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78; see
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (discussing
requirements of claiming benefit of priority date of earlier application under
35 U.S.C. § 120).3 To satisfy 35 U.S.C. §112, first paragraph, the written
description must convey with reasonable clarity to those skilled in the art
that the inventor was in possession of the claimed invention. Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). One shows
“possession” of the invention by describing the invention using such
descriptive means as words, structures, figures, diagrams, formulas, etc. that
fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997). The issue of whether the written

3 The subsequent application must also be filed before the patenting or
abandonment of or termination of proceedings on the first application or on
an application similarly entitled to the benefit of the filing date of the
previously filed application and contain or be amended to contain a specific
reference to the previously filed application. 35 U.S.C. § 120; see also
37 C.F.R. § 1.78. In this case, the application that matured into the ’796
patent was filed on December 30, 2002, which is before the patenting of the
parent application on December 31, 2002, which was similarly entitled to the
benefit of the filing date of the grandparent application. Ex. 1001, 1; Ex.
1007, 8. The application that matured into the ’796 patent contained a
specific reference to the grandparent application. Ex. 1006, 38.
IPR2015-00109
Patent 6,864,796 B2

18
description requirement has been satisfied is a question of fact. Wang Labs.,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).
We determine whether Patent Owner has provided sufficient evidence
to support that the written description requirement has been satisfied with
respect to the recitation of a “communications device” in the grandparent
application filed on September 15, 1999. In its arguments regarding the
construction of “communications device,” Patent Owner contends that the
’796 patent “expressly describes distributed communication devices in
which the processor and sensor are wirelessly associated,” that “the sensor
unit necessarily communicates information wirelessly to the processor unit,”
and that system 11 shown in Figures 1 and 2 “uses an RF transmitter to
communicate tolerance indicia to a monitoring controller 103 (Figs. 6 and
7), which contains a retransmission unit 125 incorporating communication
means, such as digital cellular technology, an RF transmitter, or internet
appliance.” Paper 26, 2–3 (citing Ex. 1001, 7:28–32, 10:25–50). The cited
descriptions of the ’796 patent are also found in the grandparent application.
See Ex. 1007, 44:15–19, 52:10–53:8.
Petitioner replies that Yasushi is prior art under § 102(b) and Patent
Owner cannot swear behind Yasushi. Reply 2. Petitioner contends that the
“only communication capability disclosed in the device containing the
acceleration sensor 25 in the [grandparent] application is a one way, RF
transmitter,” that “[t]here is no disclosure in the [grandparent] application of
the acceleration sensor 25 being located within any of the ‘communication
devices’ listed in the express definition,” and that there is “no support in the
[grandparent] application for the challenged claims.” Id. at 1–2 (citing Ex.
1007, 43:17–44:1, 68). Petitioner argues that a “system comprising an
IPR2015-00109
Patent 6,864,796 B2

19
acceleration sensor ‘within a communications device’ is the only new
subject matter added . . . by the CIP application . . . which is the parent of
the [’]796 patent” and that the parent application “added Fig. 9 to introduce
an acceleration sensor ‘within a communications device’.” Id. at 3.
Petitioner also argues that Patent Owner cites Figure 8, which shows a
mobile station 103, that is different from sensing device 11 of Figures 1 and
2 that contains acceleration sensor 25 and that there is no disclosure of
acceleration sensor 25 being within mobile station 103. Reply 4 (citing Ex.
1007, 37:20–38:1, 42:18–21). Petitioner further asserts that the
communication between processor 117 and monitoring controller 805 “has
nothing to do with the communications capability of the device 11 of Figs. 1
and 2 containing sensor 25.” Id. at 5 (citing Prelim. Resp. 13; Ex. 1007,
34:11–20, 58:10–12).
The grandparent application to which Patent Owner asserts priority
describes that “[s]ystem 11 includes circuit boards 13 and 15 . . . associated
with a housing (generally designated 17),” that “[h]ousing 17 may comprise
. . . halves 19 and 21 that encase boards 13 and 15,” and that “[s]ystem 11
includes a processor . . . and a sensor 25.” Ex. 1007, 39:10–12, 39:16–19,
40:4–5; see also Ex. 1001, 5:25–28, 5:32–36, 5:45–46. Figure 2 illustrates
system 11, “which includes processing circuitry 39, indicating means 41, . . .
along with sensor 25” and shows sensor 25 on board 15 within housing 17.
Ex. 1007, 42:18–21; see also Ex. 1001, 6:48–51. The grandparent
application also describes that an “[e]xemplary indicating means 41 . . . [is]
operable to . . . communicate such state, or tolerance, indicia to a monitoring
controller,” that “[i]ndicating means 41 may take any number of forms,” and
that “in system 11 of the present embodiment, stage 41 is an RF transmitter.”
IPR2015-00109
Patent 6,864,796 B2

20
Ex. 1007, 43:14–20. Based on these descriptions of system 11 with an RF
transmitter, we find that the grandparent application provides adequate
written description support for the “communications device” recited by the
challenged claims.
Petitioner further contends that “in view of the express definition of
‘communication device’, the disclosure of an RF transmitter is clearly not
sufficient to provide written description support for the challenged claims as
properly construed” because the express definition of “communication
device” does not encompass a one-way RF transmitter, that “[a]ll of the
devices listed in the express definition include two-way communication
capabilities,” and that “there is no written description support in the
[grandparent] application for placing acceleration sensor 25 within these or
any of the other communication devices listed in the express definition.”
Reply 5–7 (citing Ex. 1001, 2:46–50). Petitioner additionally asserts that
Patent Owner admitted that communication capabilities beyond a wireless
transmitter is not supported by the grandparent application and that the
“communication device” has two-way communication capability which is
not provided by an RF transmitter. Reply 8 (citing Prelim. Resp. 14).
For the reasons described above, we determine that the term
“communications device” does not exclude devices with only an RF
transmitter, and thus, Petitioner’s arguments based on such a construction
that excludes devices with an only an RF transmitter are unpersuasive. We
also do not agree that “there is no written description support” in the
grandparent application for sensor 25 being in other communication devices.
The grandparent application describes that “[s]ystem 11 may be
implemented using any suitably arranged computer or other processing
IPR2015-00109
Patent 6,864,796 B2

21
system including micro, personal, mini . . . as well as network combinations
of two or more of the same” and that “in one advantageous embodiment,
sensor 25 and processor 47 are not co-located, but rather associated
wirelessly.” Ex. 1007, 44:12–17; see also Ex. 1001, 7:24–30. In a
distributed system according to an embodiment, the grandparent application
states that “[m]obile stations 103, and 811 to 814, may be any suitable
cellular devices, including conventional cellular telephones, PCS handset
devices, portable computers, metering devices, transceivers, and the like
(including, for instance, remote receiver unit 103).” Ex. 1007, 52:12–16,
54:6–10; see also Ex. 1001, 10:29–31, 11:8–12. Based on these disclosures,
we find that the grandparent application provides adequate written
description support for system 11 and remote receiver unit 103 being a
“communications device” as recited by the challenged claims. See also Ex.
2006 ¶ 109 (Patent Owner’s declarant citing the same portions and stating
that “[b]y operating as a mobile station in a wireless communications
system, the distributed device formed by the combination of the sensor
system 11 and the remote receiver unit 103 is a communications device”).
We also find that the listed, exemplary devices provide adequate
written description support for a communications device being a range of
devices such as, “cellular devices, including conventional cellular
telephones, PCS handset devices, portable computers, metering devices,
transceivers, and the like.” Ex. 1007, 54:6–10. Dependent claims 2, 3, 10,
and 11, which require the communications device to comprise one of a
cordless telephone, a cellular telephone, a personal digital assistant, a hand
held computer, a laptop computer, and a wireless Internet access device,
IPR2015-00109
Patent 6,864,796 B2

22
thus, have adequate written description support in the grandparent
application.
Accordingly, we determine that claims 1–3, 9–12, and 18–20 are
entitled to a priority date of September 15, 1999, the filing date of the
grandparent application.
B. Antedating Yasushi
Patent Owner bears the burden to establish the facts necessary to
overcome Yasushi’s publication date.4 See In re Facius, 408 F.2d 1396,
1403–04 (CCPA 1969) (holding, in a prosecution context, that an earlier
filed reference was prima facie available as prior art and placing the burden
on the party claiming prior invention to overcome that reference). Patent
Owner may meet its burden by providing evidence that the publication date
of the reference is not “before the invention thereof by the applicant for [a]
patent,” 35 U.S.C. § 102(a), that is, antedating Yasushi.
Yasushi was published on November 10, 1998. As described above,
claims 1–3, 9–12, and 18–20 of the ’796 patent are entitled to a priority date
of September 15, 1999. Thus, Yasushi is available as prior art against these
claims under 35 U.S.C § 102(a) unless Patent Owner establishes (i) a
reduction to practice before November 10, 1998, or (ii) conception before
November 10, 1998, followed by a diligent reduction to practice. Purdue
Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed.
Cir. 2001) (“To antedate . . . an invention, a party must show either an

4 Even though Patent Owner bears the burden of production in antedating a
reference, the burden of persuasion to prove unpatentability of the
challenged claims remains with Petitioner. See 35 U.S.C. § 316(e).
IPR2015-00109
Patent 6,864,796 B2

23
earlier reduction to practice, or an earlier conception followed by a diligent
reduction to practice.”) (emphasis added) (citation omitted).
Reduction to practice is a question of law predicated on subsidiary
factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002).
To establish an actual reduction to practice, the inventor must prove that:
(1) an embodiment of the invention was constructed that meets all the
limitations of the claims at issue; and (2) the inventor appreciated that the
invention would work for its intended purpose. Cooper v. Goldfarb, 154
F.3d 1321, 1327 (Fed. Cir. 1998). The invention does not have to be at a
commercially satisfactory stage of development for an actual reduction to
practice, but must have been sufficiently tested to demonstrate that it will
work for its intended purpose. See, e.g., Scott v. Finney, 34 F.3d 1058, 1062
(Fed. Cir. 1994) (citing numerous cases wherein the character of the testing
necessary to support an actual reduction to practice varied with the
complexity of the invention and the problem it solved).
It is well settled that an inventor’s testimony alone is insufficient to
establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1170 (Fed. Cir. 2006). Instead, the party seeking to prove an
actual reduction to practice must proffer evidence corroborating that
testimony. Id. “Sufficiency of corroboration is determined by using a ‘rule
of reason’ analysis, under which all pertinent evidence is examined when
determining the credibility of an inventor’s testimony.” Id. (citation
omitted). Corroboration may be testimony of a witness, other than the
inventor, to the actual reduction to practice, or it may consist of evidence of
surrounding facts and circumstances independent of information received
from the inventor. Id.
IPR2015-00109
Patent 6,864,796 B2

24
Patent Owner proffers declarations from the listed inventors of the
’796 patent (Exs. 2007–2011), who also are listed inventors of the parent
application and, except for Mr. Massman, are listed inventors of the
grandparent application.5 Patent Owner also proffers the Declarations of
Don James (Ex. 2012) and Greg Younger (Ex. 2013), who are identified as
corroborating witnesses. Patent Owner further provides several supporting
exhibits (Exs. 2015–2035).
The inventor and witness declarations support a finding that the
inventors constructed a working prototype of the fall detection device and
tested it on human subjects in August 1998. Ex. 2007 ¶¶ 17–18 (stating that
“the first prototype did include the same Analog Devices ADXL202
accelerometer, Texas Instruments MSP430PM microprocessor, and RF
transmitter” and the “first prototype was actually tested on human subjects at
HWI in August 1998”); Ex. 2008 ¶ 15; Ex. 2009 ¶ 15; Ex. 2010 ¶ 15; Ex.
2012 ¶ 19 (corroborating witness stating that the “first prototype was
actually tested on human subjects at HWI in August 1998” and the
“prototype used a dual-axis accelerometer to measure the person’s
movement and orientation, as well as a microprocessor with code configured
to process the sensed static and dynamic acceleration to determine if the user
had experienced a real fall”); Ex. 2013 ¶ 19. The inventors constructed a
working prototype on a solderless breadboard instead of a printed circuit
board, but included the same accelerometer, microprocessor, and RF

5 Patent Owner states that “[a]ll the inventors filed certificates of correction
. . . , reflecting that Michael L. Lehrman, Alan R. Owens, Michael D.
Halleck, and Michael E. Halleck were all co-inventors of all the iLife
Patents.” PO Resp. 19.
IPR2015-00109
Patent 6,864,796 B2

25
transmitter as later designs. Ex. 2007 ¶ 17; Ex. 2008 ¶ 18; Ex. 2009 ¶ 18;
Ex. 2010 ¶ 18; Ex. 2012 ¶ 18; Ex. 2013 ¶ 18. As stated by inventors, and
corroborated by other witnesses, the
prototype used a dual-axis accelerometer to measure the
person’s movement and orientation, as well as a microprocessor
with code configured to process the sensed static and dynamic
acceleration to determine if the user had experienced a real fall
as opposed to normal daily activities such as walking, sitting,
standing, or lying down.
Ex. 2007 ¶ 18; Ex. 2008 ¶ 19; Ex. 2009 ¶ 19; Ex. 2010 ¶ 19; Ex. 2012 ¶ 19;
Ex. 2013 ¶ 19. The inventor and witness declarations further support the
finding that the inventors tested the prototype in August 1998, and based on
success in that testing, formal engineering drawings were prepared for
production release. Ex. 2007 ¶¶ 18, 20–21; Ex. 2008 ¶¶ 21–22; Ex. 2009
¶¶ 21–22; Ex. 2010 ¶¶ 21–22; Ex. 2012 ¶¶ 21–22; Ex. 2013 ¶¶ 21–22.
Inventor and corroborating witness declarations support a finding that
the inventors prepared formal engineering drawings (Ex. 2031) that included
a printed circuit board layout. Ex. 2007 ¶ 21 (citing Ex. 2030 (“Drawing
Number Assignment Log”)); Ex. 2008 ¶ 22; Ex. 2009 ¶ 22; Ex. 2012 ¶ 22.
The inventors assembled additional field prototypes constructed of printed
circuit boards, loaded them with code, and tested them by late September
1998. Ex. 2007 ¶¶ 26, 30; Ex. 2008 ¶ 30; Ex. 2009 ¶ 30; Ex. 2010 ¶ 19; Ex.
2012 ¶ 19; Ex. 2013 ¶ 19. The inventors also built a prototype with the
particular printed circuit board corresponding to drawing IAF680R1 on or
around September 23, 1998. Ex. 2008 ¶ 28 (citing Ex. 2032); Ex. 2009 ¶ 28
(citing Ex. 2032); Ex. 2012 ¶ 28 (citing Ex. 2032); Ex. 2013 ¶ 28 (citing Ex.
2032). The inventors also created a new layout IAF683R1 on September 23,
1998. Ex. 2008 ¶ 29 (citing Ex. 2030); Ex. 2012 ¶ 29 (citing Ex. 2030); Ex.
IPR2015-00109
Patent 6,864,796 B2

26
2013 ¶ 29 (citing Ex. 2030). The prototypes “performed as expected and
were suitable for their intended purpose of movement evaluation and fall
detection when tested in August and September of 1998.” Ex. 2007 ¶ 30;
Ex. 2009 ¶ 28; Ex. 2012 ¶ 28; Ex. 2013 ¶ 28.
Accordingly, Patent Owner has provided declarations from the
inventors and corroborating witnesses supporting a finding that the inventors
designed, made, and tested fall detection systems embodying the subject
claims of the patent at issue in August and September of 1998. PO Resp. 2–
13, 31–32 (citing Exs. 2007–2013). Patent Owner has also provided
contemporaneous notes and records from this time period supporting a
finding that the inventors actually reduced to practice a first working
embodiment in August 1998. Id. (citing Exs. 2015–2035). Patent Owner
provides additional evidence that the inventors created a second generation
embodiment with the same basic elements and component parts as the first
embodiment on or about September 23, 1998. Id. at 13–17 (citing Ex. 2007
¶ 26; Exs. 2008–2010, 2012–2013 ¶¶ 27–30; Exs. 2018, 2030, 2032), 34
(citing Ex. 2007 ¶¶ 26, 28; Exs. 2008–2010, 2012–2013 ¶¶ 28, 34).
Patent Owner’s evidence also supports a finding that the first working
embodiment “was an intelligent personal emergency response system
(‘iPERS’) capable of monitoring the movements of an elderly person and
automatically detecting real falls as opposed to normal daily activity.” Id. at
32 (citing Exs. 2007–2010, 2012–2013 ¶ 4); see also id. at 10 (stating “[a]ll
witnesses agree that the device worked for its intended purpose of
distinguishing real falls from normal activities”). This corresponds to the
claimed system “capable of evaluating movement of a body relative to an
environment.” Ex. 1001, 13:49–48, 14:21–22.
IPR2015-00109
Patent 6,864,796 B2

27
Patent Owner’s evidence supports a finding that the inventors created
a working embodiment that used a dual-axis accelerometer to measure the
person’s movement and orientation. PO Resp. 32 (citing Ex. 2007 ¶ 19;
Exs. 2008–2010, 2012–2013 ¶ 20); see also id. at 4 (citing Ex. 2016), 10–11.
Patent Owner’s evidence supports a finding that the working embodiment
was “configured to process the sensed static and dynamic acceleration.” Id.
at 32 (citing 2007 ¶ 19; Exs. 2008–2010, 2012–2013 ¶ 20). This
corresponds to the claimed “sensor, associable with said body, that senses
dynamic and static accelerative phenomena of said body.” Ex. 1001, 13:51–
52, 14:23–25.
Patent Owner’s evidence (Ex. 2007 ¶ 19; Exs. 2008–2010, 2012–2013
¶ 20; Ex. 2019 at 1–2) supports a finding that the working embodiment used
“a microprocessor with code configured to process the sensed static and
dynamic acceleration to determine if the user had experienced a real fall as
opposed to normal daily activities.” PO Resp. 32 (citing Ex. 2007 ¶ 19; Ex.
2008–2010, 2012–2013 ¶ 20); see also id. at 9. This corresponds to the
claimed “processor, associated with said sensor, that processes said sensed
dynamic and static accelerative phenomena as a function of at least one
accelerative event characteristic.” Ex. 1001, 13:53–56, 14:26–29. Patent
Owner’s evidence supports a finding that the inventors programmed a
working embodiment
to measure both static and dynamic acceleration forces to
evaluate changes in the wearer’s movement and orientation to
determine if the person had fallen based on observed dynamic
accelerative forces indicating a hard impact of at least 3Gs
coupled with a change in static accelerative forces of at least 45
degrees within a specified timeframe.
IPR2015-00109
Patent 6,864,796 B2

28
PO Resp. 32–33 (citing Ex. 2007 ¶ 27; Exs. 2008–2010, 2012–2013 ¶ 24)
see also id. at 3 (citing Ex. 2016), 10 (citing Ex. 2007 ¶ 19; Exs. 2008–2010,
2012–2013 ¶ 20). This corresponds to the phrase “to thereby determine
whether said evaluated body movement is within environmental tolerance.”
Ex. 1001, 13:56–57, 14:29–30.
Patent Owner’s evidence supports a finding that the working
embodiment “communicated information indicating whether the evaluated
body was within tolerance to a base station for remote monitoring.” PO
Resp. 33 (citing Ex. 2007 ¶ 30; Exs. 2008–2010, 2012–2013 ¶ 34); id. at 12
(stating that the “system used both static and dynamic acceleration outputs
from an ADXL202 dual-axis accelerometer to detect that a person wearing
the sensor had fallen down, with such information then being used to
activate an automatic telephone dialing module to call for help” and citing
Ex. 2019, 1; Ex. 2007 ¶ 23; Exs. 2008–2010, 2012–2013 ¶ 24); Ex. 2019, 1
(stating that the fall detector “detect[s] that a person wearing such a sensor
has fallen down and this information can be used to activate an automatic
telephone dialing module so as to alert others to the plight of the fallen
individual”). This corresponds to the phrases “wherein said processor
generates tolerance indicia in response to said determination; and wherein
said communication device transmits said tolerance indicia” and “generating
tolerance indicia in said processor in response to said determination of
whether said evaluated body movement is within environmental tolerance;
and transmitting said tolerance indicia through said communications
device.” Ex. 1001, 13:58–61, 14:32–36. The evidence also supports a
finding that the inventors actually reduced to practice a system “wherein said
communications device transmits said tolerance indicia to a monitoring
IPR2015-00109
Patent 6,864,796 B2

29
controller,” as recited by dependent claim 9, and “the step of: transmitting
said tolerance indicia from said communications device to a monitoring
controller,” as recited by dependent claim 18.
Dependent claims 19 and 20 recite the steps of “generating in said
processor state indicia while processing said sensed accelerative phenomena,
which represents a state of said body within said environment over time; and
transmitting said state indicia through said communication device” and
“generating in said processor an output signal that is indicative of
measurements of both static and dynamic acceleration of said body in plural
axes; and transmitting said output signal through said communications
device.” Patent Owner’s evidence that the working embodiment was
programmed to measure both static and dynamic acceleration
forces to evaluate changes in the wearer’s movement and
orientation to determine if the person had fallen based on
observed dynamic accelerative forces indicating a hard impact
of at least 3Gs coupled with a change in static accelerative
forces of at least 45 degrees within a specified timeframe
and that it “communicated information indicating whether the evaluated
body was within tolerance to a base station for remote monitoring”
corresponds to the recitations of dependent claims 19 and 20. PO Resp. 32–
33.
The filed declarations with associated exhibits sufficiently evidence
that the inventors conceived and reduced to practice a physical construct of
the invention, as well as engaged in testing of the invention in a manner that
demonstrated that it worked for its intended purpose by September 1998.
Ex. 2007 ¶¶ 17–21; Ex. 2008 ¶¶ 18–22; Ex. 2009 ¶¶ 18–22; Ex. 2010 ¶¶ 18–
22; Ex. 2012 ¶¶ 18–22; Ex. 2013 ¶¶ 18–22. Accordingly, Patent Owner has
presented sufficient evidence to support that the inventors actually reduced
IPR2015-00109
Patent 6,864,796 B2

30
to practice embodiments of claims 1–3, 9–12, and 18–20 by September
1998, which is before the first publication of Yasushi on November 10,
1998. The full record indicates that Petitioner does not present adequate
argument or evidence to challenge the sufficiency of the testimony and
evidence submitted by Patent Owner that demonstrates an actual reduction
to practice prior to November 10, 1998. See Reply 10–11 (Petitioner
arguing that its construction of “communications device” disqualifies the RF
transmitter of Patent Owner’s reduction to practice evidence); see also Tr.
140:9–13 (Patent Owner’s counsel stating “there is substantial
uncontroverted, well corroborated evidence in the record, uncontroverted by
the Petitioner, that establish that iLife conceived and reduced to practice the
invention before the publication date of Yasushi, November 10, 1998”).
Thus, we determine that Yasushi does not qualify as prior art to the ’796
patent.
Because Yasushi is not prior art as to claims 1–3, 9–12, and 18–20,
Petitioner has failed to demonstrate, by a preponderance of the evidence, that
claims 1–3, 9–12, and 18–20 would have been obvious over Yasushi under
35 U.S.C. § 103(a).

IV. MOTION TO EXCLUDE
Patent Owner filed a motion “to exclude portions of Exhibit 1010, the
Reply Declaration of Gregory Francis Welch, Ph.D.” Paper 29, 1. In
particular, Patent Owner argues that paragraphs 7, 8, and 13–35 and
Appendix 1 “make new claim construction arguments about what is required
to satisfy the ‘communications device’ limitation in the context of claims 1
and 10 of the [’]796 Patent.” Id. Patent Owner also argues that paragraphs
IPR2015-00109
Patent 6,864,796 B2

31
37–41 “make new claim construction arguments about what is required to
‘process’ sensed static and dynamic accelerative phenomena in the context
of claims 1 and 10 of the ’796 [p]atent.” Id. at 3.
Petitioner responds that Patent Owner “fails to identify any applicable
Federal Rules of Evidence for excluding Mr. Welch’s testimony” and that
such a motion should not be used to argue that a reply contains new
arguments. Paper 33, 1–2. Patent Owner replies that “[b]ecause Petitioners
should have raised these constructions in their Petition, supporting evidence
submitted with the Reply should be excluded.” Paper 37, 2.
We do not rely on any of paragraphs 7, 8, 13–35, and 37–41 and
Appendix 1 of the Welch Reply Declaration. These portions are cited only
to indicate where Petitioner finds support for its arguments. We, thus,
dismiss as moot Patent Owner’s motion to exclude.

V. NOTICE REGARDING NEW ARGUMENTS AND BELATED
SUPPORT
Patent Owner filed a “Notice Regarding New Arguments and Belated
Support.” Paper 30. Patent Owner contends that “[p]ages 1–12 of
Petitioners’ Reply include new arguments regarding what elements are
required to constitute a ‘communication device’ under the [’]796 patent” and
Patent Owner “had no opportunity to respond or address in its Response or
responsive evidence.” Id. at 1.
Petitioner filed a response (Paper 34) to Patent Owner’s Notice, in
which Petitioner asserts that pages 1–12 of the Reply “are directly
responsive to [Patent Owner’s] assertions that Yasushi allegedly ‘does not
qualify as prior art and cannot be used to invalidate the [’]796 [p]atent’” (id.
IPR2015-00109
Patent 6,864,796 B2

32
at 1) (citing PO Resp. 1–19, 31–34; Prelim. Resp. 12–14; Ex. 2006 ¶¶ 108–
115).
We agree with Petitioner that pages 1–12 of the Reply are responsive
to arguments presented by Patent Owner in the cited briefs and paragraphs
of the Declaration of Dr. Sturges (Ex. 2006), wherein Patent Owner asserted
that Yasushi does not qualify as prior art. Also, to the extent it can be
deemed new arguments, we were “persuaded that additional briefing of the
identified claim construction issues by Patent Owner will be helpful to the
panel in rendering its Final Written Decisions.” Paper 25, 2 (Order
authorizing Patent Owner to file a sur-reply addressing the construction of
the term “communications device”). Patent Owner, thus, had an opportunity
to respond via a sur-reply, which Patent Owner filed (Paper 26). Moreover,
as discussed above, we are not persuaded by Petitioner’s arguments at pages
1–12 of its Reply.

VI. CONCLUSION
For the foregoing reasons, based on the full record before us, we
determine that Petitioner has not demonstrated, by a preponderance of the
evidence, that, under 35 U.S.C. § 103, claims 1–3, 9–12, and 18–20 of the
’796 patent are unpatentable over Yasushi.

IPR2015-00109
Patent 6,864,796 B2

33
VII. ORDER
For the reasons given, it is:
ORDERED that claims 1–3, 9–12, and 18–20 of U.S. Patent
No. 6,864,796 B2 have not been shown, by a preponderance of the evidence,
to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
is dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written
Decision, the parties to the proceeding seeking judicial review of the
decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2.

PETITIONER:
Joseph S. Presta
Robert W. Faris
NIXON & VANDERHYE P.C.
jsp@nixonvan.com
rfaris@nixonvan.com

PATENT OWNER:
Daniel E. Venglarik
David M. Doyle
MUNCK, WILSON, MANDALA, LLP
dvenglarik@munckwilson.com
ddoyle@munckwilson.com