PTAB

IPR2020-00754

Garmin Intl Inc v. Koninklijke Philips NV

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Activity monitor
  • Brief Description: The ’228 patent discloses an activity monitor designed to reduce power consumption. The system uses a measurement unit with multiple motion sensors and a processor to monitor and process sensor signals discontinuously, for example, by alternating between an active monitoring mode and a low-power standby mode.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-11 under 35 U.S.C. §102 over Cunningham

  • Prior Art Relied Upon: Cunningham (Patent 6,077,236)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cunningham, which describes an implantable cardiac contractility monitor, discloses every limitation of the challenged claims. Cunningham’s device comprises a measurement unit (catheter tip with three transducers), a processor (master control unit), and a memory unit. To conserve power for implantability, the processor operates discontinuously by activating the transducers for only a brief period (e.g., 100 microseconds) within a much longer sampling cycle (e.g., 3000 microseconds). Petitioner contended this meets the "discontinuously in time" limitation. Further, Cunningham allegedly teaches monitoring the sensor signals "in turn" by activating the three transducers sequentially in distinct, non-overlapping time intervals. Dependent claims relating to standby modes were argued to be met by Cunningham’s two operational states (“SENSORS” and “PACING/SENSING”), where monitoring only occurs in the SENSORS state.

Ground 2: Obviousness of Claims 1-11 under 35 U.S.C. §103 over Cunningham in view of Swedlow

  • Prior Art Relied Upon: Cunningham (Patent 6,077,236) and Swedlow (Patent 5,924,979)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner presented this ground as an alternative, asserting that if Cunningham alone was found not to teach certain limitations, particularly the standby mode, the combination with Swedlow would render the claims obvious. Cunningham provided the base activity monitor with discontinuous and "in turn" monitoring. Swedlow, which was not considered during prosecution, explicitly taught a method for conserving power in a medical diagnostic device by using a "sleep mode" where the processor and other circuitry are put into a lower power state.
    • Motivation to Combine: A POSITA would combine Swedlow’s well-known sleep/standby mode techniques with Cunningham’s activity monitor to achieve the predictable goal of reducing power consumption and extending battery life. Swedlow expressly described importing sleep mode techniques into medical devices for this purpose, providing a clear motivation.
    • Expectation of Success: Petitioner argued that implementing a sleep mode was a common and well-understood technique in various fields. A POSITA would have had a high expectation of success in applying this known power-saving method to the device in Cunningham to achieve a predictable improvement in battery performance.

Ground 3: Obviousness of Claims 1-11 under 35 U.S.C. §103 over Pacesetter ’963 in view of Swedlow

  • Prior Art Relied Upon: Pacesetter ’963 (Patent 6,002,963) and Swedlow (Patent 5,924,979)
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Pacesetter ’963, which relates to a multi-axial sensor for an implantable medical device, taught a system with a plurality of motion sensors and a processor. Critically, Pacesetter ’963 explicitly disclosed that motion measurements from each transducer are taken in "non-overlapping periods of time so that the motion measurements from each transducer are time division multiplexed," directly teaching the "in turn" monitoring limitation. While Pacesetter ’963 did not expressly teach discontinuous operation via a sleep mode, Swedlow supplied this missing element by teaching the use of sleep/standby modes to conserve power in medical devices.
    • Motivation to Combine: A POSITA would combine the teachings of Pacesetter ’963 and Swedlow for the same reason as in Ground 2: to conserve power. The motivation to extend the battery life of an implantable device like that in Pacesetter ’963 would have led a POSITA to incorporate the known sleep mode techniques described in Swedlow.
    • Expectation of Success: The combination involved applying a standard power-saving technique to a known sensor system, which Petitioner asserted was a routine and predictable design choice for a POSITA.

4. Key Claim Construction Positions

  • “discontinuously in time”: Petitioner argued this term should be construed to mean "not continuous in time," comprising interruptions, pauses, or breaks in monitoring and processing. This construction was based on the specification’s description of switching between a monitoring mode and a standby/sleep mode and was consistent with positions taken by the Patent Owner during the original prosecution.
  • “in turn”: Petitioner contended this was the critical limitation added during prosecution to secure allowance. Based on the prosecution history, Petitioner argued the term requires monitoring sensor signals "one after the other," encompassing sequentially ordered, non-overlapping monitoring, such as time-division monitoring of the sensors.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-11 of the ’228 patent as unpatentable.