Fitbit Inc v. Immersion Corp

1. Case Identification

• Case #: IPR2018-00591
• Patent #: 8,351,299
• Filed: February 7, 2018
• Petitioner(s): Fitbit, Inc.
• Patent Owner(s): Immersion Corporation
• Challenged Claims: 13-16, 18, 20, and 22

2. Patent Overview

• Title: Apparatus And Method For Providing Condition-Based Vibrotactile Feedback
• Brief Description: The ’299 patent discloses systems for providing haptic notifications based on the occurrence of certain conditions, such as the expiration of a timer, the sensing of motion, or both. The technology purports to solve shortcomings of conventional alarms that may be insufficient to alert a user when motion-based conditions are met, particularly in noisy environments or when discretion is needed. Embodiments described include a toothbrush with a monitoring mechanism, an exercise strap, and a watch.

3. Grounds for Unpatentability

Ground 1: Claims 14-16 and 18 are obvious over Kahn in view of Diaz.

• Prior Art Relied Upon: Kahn (Patent 7,647,196) and Diaz (Patent 6,727,419).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kahn, which discloses a wearable "Human Activity Monitoring Device," teaches the core apparatus of independent claim 14. Kahn's device includes an inertial sensor that provides an output, a processing device that accumulates counts (steps) from the sensor output, and a vibrotactile feedback element that provides "tactile feedback (e.g., a vibration...)" when a speed threshold is met. To the extent Kahn only implicitly teaches a periodic timer, Petitioner asserted that Diaz explicitly discloses this element. Diaz teaches a wristwatch "pulsating metronome" that provides tactile vibrations at "regular timed intervals" to help an athlete maintain a predetermined pace. The combination was therefore argued to teach all limitations of claim 14. Dependent claims 15 and 16 (requiring an adjustable and user-selectable timer) were allegedly taught by Diaz's use of buttons for "increasing and decreasing the tempo." Dependent claim 18 (sensor comprises an accelerometer) was argued to be taught by Kahn's explicit mention of accelerometers as a type of inertial sensor.
  • Motivation to Combine: A POSITA would combine the references because both are directed to wearable electronic devices for athletes. Petitioner argued it would have been an obvious improvement to enhance Kahn's general-purpose activity tracker, which can notify a user when a single time period has elapsed, with the specific periodic pacing functionality of Diaz. This combination would provide users with more granular, real-time feedback during exercise, a clear benefit for the target market.
  • Expectation of Success: The combination was asserted to be predictable and straightforward. Both references describe well-known components like sensors, processors, and vibration motors within a similar wristwatch-style form factor, making their integration a matter of routine engineering.

Ground 2: Claims 13, 20, and 22 are obvious over O'Connor.

• Prior Art Relied Upon: O'Connor (Application # 2004/0145493).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended O'Connor, which discloses a body-worn "Activity Monitoring Device" to prevent blood clots in airplane passengers by monitoring inactivity, teaches all elements of independent claim 20. O'Connor describes a housing containing both a motion sensor and a timer. The device provides a "silent vibrating alert" based on the two distinct scenarios recited in the claim. Petitioner pointed to O’Connor’s disclosed logic (e.g., in its flowcharts), where after a 56-minute period of inactivity, the timer expires and triggers "three distinct buzzes." Conversely, if a user performs a target exercise (e.g., "180 taps") before the timer expires, the motion sensor's threshold is met, triggering a different haptic output ("one long buzz") to signal success. This logic was argued to directly map to the claim's requirement for providing a haptic output based on whether the sensor output or timer output is received first. Dependent claim 13 (adding a processing device) and 22 (sensor is an accelerometer) were argued to be disclosed by O'Connor's "controller" or "microprocessor" and its general disclosure of a "motion sensor," which a POSITA would readily implement as an accelerometer for a portable device.

Ground 3: Claims 14-16 and 18 are obvious over O'Connor in view of Becker.

• Prior Art Relied Upon: O'Connor (Application # 2004/0145493) and Becker (Patent 5,861,797).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented an alternative basis for the unpatentability of the same claims challenged in Ground 1. Petitioner argued that O'Connor's activity monitor provides the basic apparatus, including a motion sensor and a timer that provides an alert upon the expiration of a single countdown. Becker, which discloses a wristwatch "reminder device" for individuals with ADHD, was asserted to supply the explicit teaching of a periodic timer that provides "inconspicuous reminders... by means of a periodic tactile alarm" at predetermined, repeating intervals (e.g., every 3, 5, or 10 minutes). The combination of O'Connor's motion-and-time-based alert system with Becker's periodic tactile reminder functionality was argued to render claim 14 obvious. Petitioner further argued that under the Patent Owner's own infringement contentions in parallel litigation, an "hourly activity goal" was interpreted as a "periodic timer output," suggesting O'Connor's resetting alarm would also render the limitation obvious.
  • Motivation to Combine: A POSITA would combine O'Connor and Becker because both relate to body-mounted medical tracking devices and address the same problem: visual and audible alarms on personal devices are disruptive. A POSITA seeking to improve O'Connor's simple countdown timer would have been motivated to look to analogous art like Becker to implement a more functional periodic reminder system. This would better address the core problem in O'Connor of ensuring users move regularly over extended periods.
  • Expectation of Success: The combination was argued to be predictable, as it involved implementing a known type of periodic alert from Becker into a similar wearable device from O'Connor to achieve the known and desired benefit of regular, non-disruptive reminders.

4. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 13-16, 18, 20, and 22 of the ’299 patent as unpatentable.