Under Armour Inc v. adidas AG

1. Case Identification

• Patent #: 8,579,767
• Filed: February 5, 2015
• Petitioner(s): Under Armour, Inc. and MapMyFitness, Inc.
• Patent Owner(s): adidas AG
• Challenged Claims: 1, 2, 6-16

2. Patent Overview

• Title: Method of Monitoring Performance During Physical Activity
• Brief Description: The ’767 patent describes a method for monitoring an individual's performance during a physical activity using a single, integrated portable device. The method involves obtaining position points via a satellite positioning system, processing those points to determine performance information (e.g., speed), conveying that information to the user, and transmitting it to a remote device using a wireless wide-area network transceiver.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1, 2, and 11 - Claims are anticipated by Newell under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Newell (Patent 6,466,232).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Newell disclosed a wearable computer system that performed every step of the method in claim 1. Newell’s system used GPS sensors to obtain position points, a processor to calculate performance data like speed from those points (“Model of User Condition”), an output device (visual display or earpiece) to convey the information, and a wireless wide-area network (e.g., cellular) to transmit the data to a remote computer. For dependent claims, Newell taught calculating speed (claim 2) and storing position points, performance data, and associated times together in memory (claim 11), as shown in its "Model of User Condition" table.

Ground 2: Obviousness of Claims 6, 7, 12, and 13 - Claims are obvious over Newell in view of Garmin.

• Prior Art Relied Upon: Newell (Patent 6,466,232) and Garmin (GPS II Plus Owner's Manual and Reference, a 1998 printed publication).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that while Newell taught the core method of claim 1, it did not explicitly disclose displaying the user's current position on a map (claims 6 and 7) or receiving and storing personal annotations (claims 12 and 13). Garmin, a manual for a commercially available GPS device, explicitly taught these missing elements. Garmin disclosed displaying a user's real-time position on a map page and allowing users to "mark" waypoints with custom names and symbols, which constitutes receiving and storing personal annotations.
  • Motivation to Combine: A POSITA would combine Garmin's features into Newell's system to improve a similar device using a known technique. Newell's system, which monitored a user's condition and environment, would benefit from map displays and annotation. Further, Newell expressly taught using the same type of "GPS and differential GPS devices" described in Garmin, making the systems technologically compatible and suggesting the combination.
  • Expectation of Success: A POSITA would have an expectation of success because combining portable computing with GPS mapping and annotation was a well-known technique in commercial use by the patent's priority date.

Ground 3: Anticipation of Claims 1, 2, 6, and 8 - Claims are anticipated by Gardner under 35 U.S.C. §102(e).

• Prior Art Relied Upon: Gardner (Patent 7,454,002).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Gardner, which was not before the examiner during prosecution, disclosed a "portable sports appliance" (PSA) that anticipated the challenged claims. The PSA integrated a GPS receiver, a PDA, and a wireless communication device (cellular phone). It obtained position points during activity, used a microprocessor to determine performance information like "average speed" (claim 2), conveyed this information to the user via a display (claim 6) or an audio output like an earphone (claim 8), and transmitted the data over a wide-area network to a server.

Ground 4: Obviousness of Claims 7, 12, and 13 - Claims are obvious over Gardner in view of DeLorme.

• Prior Art Relied Upon: Gardner (Patent 7,454,002) and DeLorme (Patent 6,321,158).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that like Newell, Gardner did not expressly teach displaying the user's location on a map (claim 7) or receiving and storing personal annotations (claims 12 and 13). DeLorme, which disclosed an "Integrated Routing/Mapping Information System" (IRMIS) for a PDA with a GPS receiver, supplied these missing elements. DeLorme taught plotting a user's current location on a map and allowing the user to annotate locations with text, voice, or predefined "Marks."
  • Motivation to Combine: A POSITA would combine DeLorme's mapping and annotation system with Gardner's PSA to improve it with well-known techniques. Both systems were portable, used GPS, and were designed for presenting position information. Gardner itself mentioned displaying "map overlays," and DeLorme expressly taught its IRMIS was for use with a PDA, the same type of device integrated into Gardner's PSA.
  • Expectation of Success: Success was expected because both systems used compatible, commercially available technologies (PDAs and GPS), and the combination represented the integration of known features into a similar device.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including:

  • Newell in view of Boyden (Patent 5,680,465) to add wireless headphones for audio output (claims 8-10).
  • Newell in view of Nokia (a cellular phone manual) to add standard cellular functions like receiving calls and messages (claims 14-16).
  • Gardner in view of DeLorme, Boyden, Root (Patent 6,013,007), and Nokia to add similar mapping, annotation, wireless audio, music playback, and cellular communication features to the Gardner system.

4. Key Claim Construction Positions

• Position Points (claims 1, 11-12): Petitioner contended that a POSITA would have understood this term to mean "geographic points on the Earth, such as latitude and longitude." This construction was asserted to be consistent with its ordinary meaning in the context of the patent and necessary for mapping the term to the GPS coordinate data disclosed in the prior art.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, and 6-16 of Patent 8,579,767 as unpatentable.