Unified Patents, Inc. v. Impact Sports Technologies, Inc.

1. Case Identification

• Case #: IPR2019-00509
• Patent #: 8,460,197
• Filed: December 31, 2018
• Petitioner(s): Unified Patents Inc.
• Patent Owner(s): Health Watch, LLC
• Challenged Claims: 1-5

2. Patent Overview

• Title: Monitoring Device with a Pedometer
• Brief Description: The ’197 patent describes a wearable monitoring device, worn on a user's arm, that integrates an optical sensor to generate a real-time heart rate signal with an accelerometer to provide pedometer functionality. The system also includes components for processing, powering, and wirelessly transmitting the collected data to a separate receiving device for display.

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 asserted that Rulkov discloses all elements of the claimed system except for an explicit pedometer function based on accelerometer signals. Rulkov teaches a wearable arm monitor with an optical sensor for real-time vital signs, an accelerometer to provide "information on the distance traveled," a processor, a power source, and a short-range wireless transceiver for sending data to a receiving device with a display. The five alternative optical sensor configurations recited in claim 1 [1.8a-e] are also taught by Rulkov, which discloses the same specific photodetectors and overlapping wavelength ranges. To the extent Rulkov’s teaching of determining "distance traveled" does not explicitly disclose a pedometer function, Yamazaki was argued to supply this element by teaching a pedometer that uses an accelerometer to count steps.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would have been motivated to combine the references to add a well-known feature (pedometer step counting) to a known device (a health monitor). A POSITA would combine Yamazaki's method of calculating steps from accelerometer data with Rulkov’s system as a simple and predictable way to implement Rulkov's stated goal of determining distance traveled, thereby providing a more comprehensive view of a user's fitness.
  • Expectation of Success: Combining a standard accelerometer-based pedometer function (Yamazaki) with a wearable health monitor that already contains an accelerometer (Rulkov) would have been a straightforward integration of known technologies to achieve a predictable and desirable result.

Ground 2: Claims 2, 3, and 5 are obvious over Rulkov and Yamazaki in view of Vogel.

• Prior Art Relied Upon: Rulkov (Patent 7,468,036), Yamazaki (Patent 7,008,350), and Vogel (Application # 2010/0241018).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground 1 to address specific dependent claims. To the extent the base combination does not explicitly teach monitoring an "infant" (claim 2) or using a "base station" (claim 5), Vogel was argued to supply these features. Vogel explicitly discloses a baby monitoring system that uses an optical sensor to measure an infant's heart rate from a remote location. Vogel also teaches using a base station to receive data from the sensor and transmit it to a receiving device (e.g., a parent's cellphone), which helps conserve the wearable sensor's battery life.
  • Motivation to Combine: A POSITA would have been motivated to adapt the general-purpose monitoring system of Rulkov/Yamazaki for the specific, well-established application of infant monitoring as taught by Vogel. Incorporating Vogel's use of a base station would be a logical modification to improve the system's networking capabilities and battery life, which are known concerns for infant-worn devices.

Ground 3: 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 and Bady provide an alternative basis for the unpatentability of all challenged claims. Nazarian discloses a watch-like pulse rate monitor worn on the arm that uses an accelerometer for a step counter/pedometer function. To the extent Nazarian lacks detail on certain features, Bady (which shares a common original assignee with Rulkov and the ’197 patent) was argued to provide them. Bady discloses a nearly identical monitoring system, including the same alternative optical sensors, wireless protocols, and use of a receiving device with a display, all in the context of an interactive video game system.
  • Motivation to Combine: A POSA would have found it obvious to implement the general system disclosed in Nazarian using the specific, commercially available components and detailed configurations taught in Bady. Bady’s teachings on receiving devices, short-range wireless protocols, and specific optical sensors would be seen as obvious design choices to enhance the functionality and flexibility of Nazarian’s device.
  • Expectation of Success: Given the high degree of similarity between the systems and their shared technological underpinnings, a POSITA would have had a high expectation of success in combining their features to produce the claimed invention.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 2, 3, and 5 based on the combination of Nazarian, Bady, and Vogel, relying on similar arguments as in Ground 2 for the incremental contributions of Vogel.

4. Key Claim Construction Positions

• Petitioner argued that the terms "first surface" and "second surface" in independent claim 1, which are not explicitly defined, should be construed in light of the specification's only discussion of device surfaces. The specification describes the monitoring device as having an "exterior surface" and an "interior surface." Therefore, Petitioner contended a POSA would understand "first surface" and "second surface" to mean the outward-facing and skin-contacting surfaces of the device, respectively. This construction is important for mapping the prior art, which describes similar wearable devices with interior and exterior surfaces.

5. Relief Requested

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