Wahoo Fitness LLC v. BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES

1. Case Identification

• Case #: IPR No. Unassigned
• Patent #: 6,434,212
• Filed: December 5, 2017
• Petitioner(s): Wahoo Fitness LLC.
• Patent Owner(s): Blackbird Tech LLC.
• Challenged Claims: 2, 5, and 6

2. Patent Overview

• Title: Pedometer
• Brief Description: The ’212 patent discloses a pedometer system designed to provide improved accuracy in distance calculation. The system calculates a user's actual stride length based on their relative stride rate, using this dynamic stride length to determine the distance traveled.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 2 and 5 under §102 over Amano

• Prior Art Relied Upon: Amano (Patent 6,241,684).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Amano, which was not considered during the original prosecution, teaches every limitation of claims 2 and 5. Amano discloses an "exercise workout support device" comprising a "body motion detector" (step counter), a "pulse detector" (heart rate monitor), and a CPU (data processor). Critically, Amano’s CPU performs the same data processing as the challenged claims: it calculates a stride length that varies with the stride rate (termed "pitch") and uses this to determine distance traveled. This functionality is achieved by generating and storing a table of "stride correction coefficients" based on user calibration data collected at various stride rates, which directly corresponds to the claimed "plurality of calibrations."
  • Key Aspects: Petitioner contended that Amano's disclosure of incorporating the device into any object worn on the body (such as a band) anticipates the claimed mounting locations (leg, waist, chest), as these are common and convenient locations for such bands.

Ground 2: Obviousness of Claims 2 and 5 under §103 over Amano

• Prior Art Relied Upon: Amano (Patent 6,241,684).
• Core Argument for this Ground:
  • Prior Art Mapping: As an alternative to anticipation, Petitioner argued that if any single embodiment in Amano does not disclose all limitations, the claims are obvious over Amano's combined teachings. For example, if the primary embodiment is considered to have a non-releasable strap, Amano elsewhere discloses a "freely detachable" wristband. Similarly, if the primary embodiment is seen as wrist-mounted, Amano’s teaching that sensors can be placed anywhere on the body or incorporated into various objects (e.g., a belt) would make it obvious to place the step counter on the chest, waist, or leg.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to combine Amano's different disclosed variations because they exist within the same field of endeavor (exercise science) and address the same goal (accurately calculating exercise parameters). Amano itself stated that "a variety of modifications...are included within the scope of the present invention," explicitly motivating a POSITA to combine features like a detachable strap with the core processing functions to create a more desirable and user-friendly product.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success, as combining these features (e.g., moving a sensor to a different body part or using a detachable strap) involves applying known design choices to yield predictable results, such as improved convenience and functionality.

Ground 3: Obviousness of Claim 6 under §103 over Kato in view of Amano

• Prior Art Relied Upon: Kato (Patent 5,033,013) and Amano (Patent 6,241,684).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Kato discloses most elements of claim 6, including a pedometer with a step detector, a radio frequency transmitter, a wireless receiver, and a processor that calculates distance based on a stride length that varies with stride rate. However, Petitioner argued Kato fails to explicitly teach two key aspects: (1) a receiver that is "mountable on a user body portion" (Kato's is handheld), and (2) a processor that "derive[s] an actual stride length from a range of stride lengths calculated from a range of corresponding stride rates" (Kato uses a predetermined empirical formula, not user-specific calibration data). Amano was argued to supply these missing elements, as it teaches a wrist-mountable device and the exact data processing method of deriving stride length from a plurality of user-specific calibration samples.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Kato and Amano to improve the accuracy and convenience of Kato’s device. Amano’s method of using personalized calibration data is more accurate than Kato’s generic formula. Modifying Kato’s handheld receiver to be mountable, as taught by Amano, is a known technique to improve user convenience. Both patents address the identical problem of variable stride length, making the combination logical.
  • Expectation of Success (for §103 grounds): The combination would predictably result in an improved pedometer that is more accurate (by using Amano’s processing) and more convenient (by using Amano’s mountable form factor), as it involves the application of known solutions to a known problem.

4. Key Claim Construction Positions

• "a step counter" (claims 2, 5, and 6): The construction of this term was presented as a key issue.
  • Petitioner’s Proposed Construction: "a device mounted to the chest, waist, or leg [that] counts the number of steps a user takes."
  • Rationale: Petitioner argued that the ’212 patent specification repeatedly and explicitly describes the invention as comprising a step counter mounted on the chest, waist, or leg, while disparaging wrist-mounted counters as "known to be inaccurate." This, Petitioner contended, constitutes a disclaimer of broader scope.
  • Patent Owner's Position (from co-pending litigation): "a device that collects data to generate step count."
  • Petitioner's Argument: Petitioner argued that the claims are unpatentable even under its own narrower construction. Since the prior art includes chest, waist, and leg mounted counters, the Board should find the claims invalid regardless of which construction it adopts.

5. Arguments Regarding Discretionary Denial

• The petition noted that the ’212 patent was the subject of several co-pending district court litigations and other IPR petitions filed by different parties (Garmin, TomTom, Fitbit).
• Petitioner highlighted that a prior IPR filed by Garmin (IPR2017-01058) was settled and terminated. Crucially, Petitioner asserted that the "prior art relied upon in this petition is different from the prior art asserted in Garmin’s petition," implicitly arguing against a discretionary denial under §325(d).

6. Relief Requested

• Petitioner requested that the Board institute an inter partes review of claims 2, 5, and 6 of the ’212 patent and find them unpatentable.