PTAB

IPR2019-00509

Unified Patents Inc v. Impact Sports Technologies Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Monitoring Device with a Pedometer
  • Brief Description: The ’197 patent describes a system for monitoring a user's health. The system includes a monitoring device worn on the arm that uses an optical sensor to generate a heart rate signal and an accelerometer to provide pedometer functionality, with data transmitted wirelessly to a receiving device.

3. Grounds for Unpatentability

Ground 1: Claims 1-5 are obvious over Rulkov in view of Yamazaki.

  • Prior Art Relied Upon: Rulkov (Patent 7,468,036) and Yamazaki (Patent 7,008,350).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Rulkov, which shares a common original assignee with the ’197 patent, discloses nearly every limitation of the challenged claims. Rulkov teaches an arm-worn monitoring device with an optical sensor for generating real-time vital signs (heart rate), an accelerometer to provide information on distance traveled, a processor, a powering source, a short-range wireless transceiver, and a receiving device with a display. Rulkov also discloses the specific types of optical sensors (light-to-voltage/frequency) and LED wavelengths recited in the alternative limitations of claim 1. Petitioner contended that to the extent Rulkov’s disclosure of using an accelerometer for “distance traveled” does not explicitly teach a “pedometer function,” Yamazaki provides this teaching. Yamazaki discloses a pedometer that uses an accelerometer to count steps, a common and well-understood function.
    • Motivation to Combine: Petitioner asserted a POSITA would combine Yamazaki’s explicit pedometer function with Rulkov’s vital sign monitoring system to provide a user with more comprehensive health data. It was a known industry trend to integrate multiple sensors to track both physiological metrics (like heart rate) and physical activity (like steps). This combination would have been a predictable way to enhance the functionality of Rulkov’s device to meet known user demands.
    • Expectation of Success: A POSITA would have had a high expectation of success, as integrating a standard accelerometer-based pedometer function into a wearable health monitor was a common, well-understood design choice involving known techniques to achieve predictable results.

Ground 2: Claims 1-5 are obvious over Nazarian in view of Bady.

  • Prior Art Relied Upon: Nazarian (Application # 2006/0084879) and Bady (Patent 7,892,178).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Nazarian discloses the core elements of the claimed invention, including a watch-like pulse rate monitor worn on the arm that uses an optical sensor and an accelerometer to provide a step count. To the extent Nazarian does not expressly disclose the specific alternative optical sensor configurations of claim 1, Petitioner asserted these were disclosed by Bady. Bady, which is also from the same original assignee as the ’197 patent and Rulkov, provides nearly identical disclosures for the various optical sensors, including light-to-voltage and light-to-frequency photodetectors and specific LED wavelengths. Bady also explicitly teaches a receiving device (e.g., game console with a display) and various short-range wireless protocols (Bluetooth, WiFi), which would have been obvious implementations for Nazarian's system.
    • Motivation to Combine: A POSITA seeking to build the system described in Nazarian would have been motivated to look to a reference like Bady for specific, commercially available components and implementation details. Bady teaches how to apply the monitoring technology to various settings (e.g., interactive video games) and discloses the use of specific optical sensors and wireless protocols. Incorporating Bady’s teachings would provide Nazarian’s system with greater flexibility and enhanced networking capability, which were known and desirable benefits.
    • Expectation of Success: Success would have been expected, as the combination involves substituting known, commercially available optical sensors into a standard monitoring device architecture and using conventional wireless technology to transmit data, all of which were well within the skill of a POSITA.

  • Additional Grounds: Petitioner asserted additional obviousness challenges against claims 2, 3, and 5 by adding Vogel (Application # 2010/0241018) to the primary combinations. Vogel was cited primarily for its teachings on monitoring an infant's vital signs and using a base station to relay data from a wearable sensor, which Petitioner argued were obvious additions to the systems of Rulkov/Yamazaki and Nazarian/Bady to achieve known benefits.

4. Key Claim Construction Positions

  • "First Surface" and "Second Surface": Petitioner argued that independent claim 1 recites a monitoring device having a "first surface" and a "second surface" without further definition. As the specification never uses these exact terms, Petitioner proposed that a POSITA would understand them by reference to the specification’s explicit disclosure of an "interior surface" (in contact with the user's skin) and an "exterior surface" (facing away from the user). This construction was asserted to be consistent with the figures and written description.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-5 of the ’197 patent as unpatentable under 35 U.S.C. §103.