Under Armour, Inc.v.adidas AG

Patent Trial and Appeal Board

Jul 16, 2015

10759289 (P.T.A.B. Jul. 16, 2015)

Trials@uspto.gov Paper 9
571-272-7822 Date: July 16, 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 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, 9, 10, 12, 14–18, 23, and 24 of U.S. Patent No.
7,292,867 B2 (“the ’867 patent”) pursuant to 35 U.S.C. § 311(a). Paper 1,
“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.
A. Related Matters
Patent Owner has asserted the ’867 patent along with additional
patents, including related U.S. Patent No. 7,805,149 B2 and related U.S.
Patent No. 8,068,858 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, 2. Petitioner has filed petitions to institute inter partes
reviews of those related patents. See Paper 5, 2 (citing IPR2015-00695;
IPR2015-00696).
B. The Asserted Grounds
Petitioner identifies the following as asserted grounds of
unpatentability:

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References Basis Claims Challenged
Gardner (Ex. 1005)
1
§ 102(e)
2
1, 9, 10, 12, 14, 15, 16, 23,
and 24
Gardner and Satava
(Ex. 1007)
3

§ 103(a) 1, 9, 10, 12, 14, 15, 16, 23,
and 24
Gardner and Seiple
(Ex. 1009)
4

§ 103(a) 17
Benefon (Ex. 1006)
5
§ 102(b) 1, 3, 9, 10, 12, 15, 16, 18,
23, and 24
Benefon and eTrex
(Ex. 1010)
6

§103(a) 17
Pet. 7–8.
C. The ’867 Patent
The ’867 patent describes “a portable fitness device including a global
positioning system (GPS) receiver that receives GPS signals, a wireless
wide-area network transmitter supporting communication over-the-air to a
wireless communication network, and a processing unit coupled to the GPS

1
U.S. Patent No. 7,454,002 B1, filed Jan. 8, 2001 and issued Nov. 18, 2008.
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
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).
4
U.S. Patent No. 6,032,108, issued Feb. 29, 2000.
5
BENEFON ESC!, Owner’s Manual, Benefon Oyj (2001).
6
eTrex Summit Personal Navigator, Owner’s Manual and
Reference Guide, GARMIN Corporation (Feb. 2001).
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receiver and the wireless wide-area network transmitter.” Ex. 1001, 1:66–
2:4. Figure 1 of the ’867 patent is reproduced below.

Figure 1 shows athlete 14 running with portable fitness device 12 on
her back. Ex. 1001, 3:29–32.
7
GPS satellites 20 emit GPS signals 22, which
allow the PFD to continuously determine its position, velocity, and bearing.
Id. at 3:34–39. A wireless wide area network is provided by cellular
telephone towers 30 with antennae 34 and base station systems (BSS) 32.
Id. at 3:40–52 (only one tower and one BSS are shown in Figure 1). The
base station systems are in communication with the Internet. Id. at 3:52–57.

7
The ’867 patent uses “portable training device” interchangeably with
“portable fitness device.” See, e.g., Ex. 1001, 6:44–45. For simplicity, we
consistently use “portable fitness device” or the acronym “PFD.”
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The ’867 patent describes utilizing this hardware such that a PFD’s
GPS receiver can receive GPS signals having time-stamped waypoints, the
PFD’s processor can determine athletic performance information (API) and
route information from the waypoint data, and the PFD’s transmitter can
output API and route information over the wireless wide area network
during a fitness activity. Id. at 2:5–12.
D. The Challenged Claims
Petitioner challenges claims 1, 3, 9, 10, 12, 14–18, 23, and 24. Pet. 2.
Claims 1 and 16 are independent. Claim 1 is illustrative and reproduced
below:
1. A portable fitness device, comprising:
a mobile phone including:
a global positioning system (GPS) receiver;
a wireless wide-area network transceiver supporting bi-
directional voice communication over-the-air with a wireless
communication network; and
a processing unit coupled to the GPS receiver and the
wireless wide-area network transceiver, wherein the processing
unit receives from said GPS receiver data describing a plurality
of waypoints within a route of a fitness activity, determines
athletic performance information at multiple of the plurality of
waypoints, said athletic performance information including
athletic performance information indicative of velocity and at
least some of said athletic performance information being
determined from the waypoints, and outputs said plurality of
waypoints within the route and at least a portion of said athletic
performance information to said wireless communication
network during traversal of the route via said wireless wide-
area network transceiver.
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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
(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).
Petitioner proposes express constructions for four terms, three of
which we discuss below.
8
Pet. 10–11. Patent Owner does not propose any
express constructions.
1. “waypoints” (claim 1) and “time-stamped waypoints” (claim 16)
Petitioner proposes that “waypoint” be construed as a geographic
point that can be specified in two-dimensions, via latitude and longitude, or
in three dimensions, via latitude, longitude, and elevation. Pet. 10.
Petitioner proposes that “time-stamped waypoint” be construed as a
waypoint that includes time along with two-dimensional or three-

8
The fourth term is “differential athletic performance information,” which
appears in dependent claim 12. Our denying institution on claim 12 is based
on our denying institution on claim 1, from which claim 12 depends. Hence,
it is unnecessary to construe this term.
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dimensional coordinates. Id. To support these constructions, Petitioner
relies on declaration testimony of Dr. Shawne Burke and also the
specification of the ’867 patent. Id. (citing Ex. 1004 ¶ 38; Ex. 1001, 4:56–
58, 7:20–22). The cited specification excerpts fully support Petitioner’s
construction, and Patent Owner does not dispute them. We adopt them for
purposes of this decision.
2. “athletic performance information” (claims 1 and 16)
Petitioner proposes that API be construed as “any data regarding a
person’s traversal of a route (e.g., elapsed distance, elapsed time, pace,
distance to go, heart rate, etc.).” Pet. 10 (citing Ex. 1001, 4:64–67;
Ex. 1004, ¶ 39). The cited specification excerpt indeed lists the same
examples, which must be encompassed within the meaning of API. On this
record, however, we need not, and do not, construe the outer bounds of API
as including any data regarding a person’s traversal of a route.
B. Anticipation by Gardner
Petitioner asserts that claims 1, 9, 10, 12, 14, 15, 16, 23, and 24 were
anticipated by Gardner under 35 U.S.C. § 102(e). Pet. 7.
Gardner discloses personal data capture device 10 that “may be used
by a person engaged in fitness activity.” Ex. 1005, 3:61–67.
9
In one
embodiment, the “personal data capturing functionality is provided by
incorporating components of the personal data capture device into a device

9
Gardner uses “portable sports appliance (PSA)” interchangeably with
“personal data capture device.” See, e.g., Ex. 1005, 3:54–55, 3:66–67. For
simplicity, we consistently use “personal data capture device.”
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150 which may be a wireless communication device,” which, in turn, may be
“a cellular phone.” Id. at 8:12–17, 9:7–9. “[T]he device 150 may include a
GPS signal receiver 230” and “further includes a microprocessor 110 which
is coupled to a memory 116 and a software program 282.” Id. at 8:18–19,
8:29–31.
Independent claim 1 requires that the processing unit “determines
athletic performance information at multiple of the plurality of waypoints,
said athletic performance information including athletic performance
information indicative of velocity.” Independent claim 16 similarly requires
a computer readable medium with “instructions that cause said mobile phone
. . . to determine athletic performance information at multiple of the plurality
of waypoints, said athletic performance information including athletic
performance information indicative of velocity.”
Petitioner does not cite any disclosure from Gardner expressly
meeting these limitations. Instead, Petitioner relies on Dr. Burke’s
testimony to assert their inherent disclosure,
10
stating the following:
Velocity, average speed and distance, however, are
not contained within GPS signals, and therefore,
one of ordinary skill in the art would understand
that velocity, average speed and distance disclosed
in Gardner are necessarily determined by the

10
For a reference to anticipate, “when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.”
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991).
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microprocessor using the data describing
waypoints obtained from the GPS receiver.
Pet. 14 (citing Ex. 1004 ¶¶ 53–55) (emphasis added); see also Pet. 23 (claim
16 analysis relying on claim 1 analysis).
Dr. Burke concedes that, according to the reference itself and in
contrast to his own opinion, the GPS signals that are received by Gardner’s
GPS receiver 230 “may include three-dimensional positional information
and velocity of the user when the user is walking or running, or is engaged in
some other relevant activity.” Ex. 1004 ¶ 53 (quoting Ex. 1005, 6:13–16)
(emphasis added). Thus, on its face, Gardner states that velocity data may
be part of the received GPS signals, and, thus, it would not be necessary to
determine velocity locally by microprocessor 110 or any other part of the
Gardner personal data capture device.
Nonetheless, Dr. Burke testifies that “GPS signals — i.e., the signals
received from GPS satellites — do not contain velocity” and concludes that
“[o]ne of ordinary skill in the art would thus understand Gardner’s
disclosure of signals containing ‘velocity’ as a reference to velocity data
produced by calculations that were necessarily made via a processor of the
receiving device.” Ex. 1004 ¶¶ 53–54. Dr. Burke, however, does not
provide any evidence to support his premise that GPS signals inherently lack
velocity data. See id.; see also id. at ¶¶ 14–18. On that issue, it is his word
alone against the face of the reference.
Under these circumstances, there is not a reasonable likelihood of
Petitioner prevailing in showing claims 1, 9, 10, 12, 14, 15, 16, 23, and 24
were anticipated by Gardner.
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C. Obviousness over Gardner and Satava
Petitioner asserts that claims 1, 9, 10, 12, 14, 15, 16, 23, and 24 would
have been obvious over Gardner and Satava. Pet. 8. For this ground,
Petitioner does not apply Satava in an attempt to cure the deficiency in the
prior ground. Pet. 27–29. Instead, Petitioner incorporates certain teachings
from Satava into Gardner in order to meet other limitations of claims 1 and
16, which are not directed to determining API (including API indicative of
velocity) but rather to outputting/transmitting API from the PFD/mobile
phone to a wireless network. Id. Thus, for the same reasons as stated above
for the prior ground, there is not a reasonable likelihood of Petitioner
prevailing in showing claims 1, 9, 10, 12, 14, 15, 16, 23, and 24 would have
been obvious over Gardner and Satava.
D. Obviousness over Gardner and Seiple
Petitioner asserts that claim 17, which depends from independent
claim 16, would have been obvious over Gardner and Seiple. Pet. 8. For
this ground, Petitioner does not apply Seiple in an attempt to cure the
deficiency (discussed above) of Gardner not teaching a computer readable
medium with “instructions that cause said mobile phone . . . to determine
athletic performance information at multiple of the plurality of waypoints,
said athletic performance information including athletic performance
information indicative of velocity,” as required by independent claim 16.
Pet. 33–35. Instead, Petitioner incorporates certain teachings from Seiple
into Gardner in order to meet the limitation added by claim 17, which is not
directed to determining API (including API indicative of velocity), but rather
to receiving and utilizing elevation data. Id. Thus, for the same reasons
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regarding anticipation of claim 16 by Gardner, there is not a reasonable
likelihood of Petitioner prevailing in showing claim 17 would have been
obvious over Gardner and Seiple.
E. Anticipation by Benefon
Petitioner asserts that claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24
were anticipated by Benefon. Pet. 8.
Benefon discloses a mobile phone that includes a GPS receiver. The
GPS receiver “receives signals from up to twelve satellites at once, and
using this information calculates your position and tracks your movement on
Earth, and also sets your phone’s clock on time.” Ex. 1006, 14. Benefon
also discloses “Friend Find features” that allow multiple Benefon phones to
transmit data to one another over a wireless network. Id. at 140.
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 to said wireless communication network during
traversal of the route via said wireless wide-area network transceiver.”
Independent claim 16 similarly requires a computer readable medium with
“instructions that cause said mobile phone to automatically transmit the
plurality of waypoints within the route and at least a portion of said athletic
performance information to a remote recording device via a wireless wide-
area communication network.”
Petitioner relies on “Friend Find features” of Benefon to meet these
limitations. Pet. 39–40. The “Friend Find features” involve transmission of
position data. See Ex. 1006, 140 (“Position updates: A phone can update its
position information in another phone by sending a position update.”).
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Position data is not API per Petitioner’s proposed construction of API,
which we adopt above. Petitioner, however, asserts that the data transmitted
from one Benefon phone to another also includes direction and speed. Pet.
39 (citing Ex. 1006, 140). In particular, Petitioner relies on the following
excerpt from Benefon:
“The basic principle of the Friend Find functions is
storing the positions of other Benefon ESC!
phones in a Benefon ESC!, along with other
information such as speed and direction of
movement. This information can later be updated
by position updates.”
Pet. 39 (quoting Ex. 1006, 140) (emphasis added by Petitioner). This
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.
Petitioner argues that Benefon nonetheless teaches transmission of
speed data because:
(1) the Benefon phone used Mobile Phone Telematics Protocol
(MPTP) (Pet. 40 (citing Ex. 1006, 16));
(2) one of skill in the art would have understood that the content of
a Benefon position update was defined by the protocol used
(i.e., MPTP) and the data accommodated by that protocol (Pet.
40 (citing Ex. 1004 ¶ 96)); and
(3) MPTP accommodates sending speed in a position update (Pet.
40 (citing Ex. 1006, 140; Ex. 1011, 4–5)).
For Benefon to anticipate, despite being “silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse
to extrinsic evidence.” See Continental Can Co. v. Monsanto Co., 948 F.2d
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1264, 1268 (Fed. Cir. 1991). Here, Petitioner’s reliance on declaration
testimony and a second reference, Hjelm,
11
does not show “that the missing
descriptive matter is necessarily present in the thing described in [Benefon],
and that it would be so recognized by persons of ordinary skill.” See
Continental Can, 948 F.2d at 1268.
In the cited declaration testimony, Dr. Burke states that MPTP “was
known in the art at the time the 867 Patent was filed, see [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.
Although he cites table 10.2 on page 7 of Hjelm, Dr. Burke does not explain
how the table purportedly supports his opinion that MPTP position updates
always include speed and heading data. Nor is it self-evident from the cited
evidence, Hjelm’s table 10.2, which is reproduced below:

11
Johan Hjelm, Profession Developer’s Guide Creating Location Services
for the Wireless Web, John Wiley & Sons, Inc., 297–300 (2002) (excerpt)
(Ex. 1011).
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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.
For the foregoing reasons, there is not a reasonable likelihood of
Petitioner prevailing in showing claims 1, 3, 9, 10, 12, 15, 16, 18, 23, and 24
were anticipated by Benefon.
F. Obviousness over Benefon and eTrex
Petitioner asserts that claim 17, which depends from independent
claim 16, would have been obvious over Benefon and eTrex. Pet. 8. In this
ground, Petitioner does not apply eTrex in an attempt to cure the deficiency
(discussed above) of Benefon not teaching a computer readable medium
with “instructions that cause said mobile phone to automatically transmit the
plurality of waypoints within the route and at least a portion of said athletic
performance information to a remote recording device via a wireless wide-
area communication network,” as required by independent claim 16.
Pet. 49–50. Instead, Petitioner incorporates certain teachings from eTrex
into Benefon in order to meet the limitation added by claim 17, which is
directed not to transmitting API but rather to receiving and utilizing
elevation data. Id. Thus, for the same reasons regarding anticipation of
claim 16 by Benefon, there is not a reasonable likelihood of Petitioner
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prevailing in showing claim 17 would have been obvious over Benefon and
eTrex.
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
brian.ferguson@weil.com

Anish Desai
anish.desai@weil.com

Patent Owner:

Mitchell Stockwell
mstockwell@kilpatricktownsend.com

Wab Kadaba
wkadaba@kilpatricktownsend.com