Unified Patents LLC v. Fat STAtz LLC

1. Case Identification

• Case #: IPR2020-01665
• Patent #: 9,757,066
• Filed: October 1, 2020
• Petitioner(s): Unified Patents, LLC
• Patent Owner(s): Fat Statz, LLC
• Challenged Claims: 1-4 and 11

2. Patent Overview

• Title: Behavioral Management System
• Brief Description: The ’066 patent describes a behavioral management system that collects physical and behavioral data from users via biometric hardware. The data is stored in a networked database, allowing users to interact with a high-feedback interface to compare their performance metrics against an actively updated and filterable dataset of other users.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tagliabue - Claims 1-4 and 11 are obvious over Tagliabue.

• Prior Art Relied Upon: Tagliabue (Application # 2008/0200312).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tagliabue, which discloses a fitness management system for collecting and displaying athletic information for comparison, teaches every limitation of the challenged claims. Tagliabue discloses a behavioral management system with biometric hardware (e.g., pedometer, heart rate monitor) that generates user data and transmits it over a network to a central location for storage and configuration. This system allows users to set goals, track progress, and compare their performance against other users, including by filtering comparison groups by demographics like gender and age. Petitioner asserted that although Tagliabue does not explicitly label its remote storage component a "database," it was common knowledge for a POSITA that a database is a standard means for compiling data in such contexts, making this implementation obvious.
  • Motivation to Combine (for §103 grounds): Not applicable (single reference ground). Petitioner argued that a POSITA would have been motivated to use a database to implement Tagliabue’s storage functions to achieve predictable results in data compilation and comparison, a well-known technique for a known purpose.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success in using a database for Tagliabue’s system, as databases were a well-known and standard technology for storing and retrieving user data in networked applications.

Ground 2: Obviousness over Tagliabue and Huhtala - Claims 1-4 and 11 are obvious over Tagliabue in view of Huhtala.

• Prior Art Relied Upon: Tagliabue (Application # 2008/0200312) and Huhtala (Application # 2008/0109158).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that to the extent Tagliabue alone does not render the claims obvious, Huhtala explicitly supplies the teaching of using a database. Huhtala describes a real-time performance comparison system that uses a "user workout database" to store biometric and workout data received from multiple users over a network. This database is used to generate comparative statistics for users in near-real-time. The combination of Tagliabue’s user interface and comparison features with Huhtala’s explicit database architecture for storing and processing similar athletic data was argued to teach all limitations of the challenged claims.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Tagliabue with Huhtala to improve Tagliabue’s system. Since Tagliabue contemplates storing and retrieving user data but does not detail the specific storage hardware, a POSITA would look to analogous art like Huhtala for known techniques. Huhtala expressly provides a database structure to provide "easily locatable, properly formatted route and workout data," which would be a predictable solution to implement the data storage and comparison functions of Tagliabue.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in this combination because it involved applying a known data storage technique (Huhtala's database) to a similar system (Tagliabue's fitness platform) to achieve the predictable result of efficient data management and comparison.

Ground 3: Obviousness over Tagliabue, Huhtala, and Stivoric - Claims 1-4 and 11 are obvious over Tagliabue and Huhtala, in further view of Stivoric.

• Prior Art Relied Upon: Tagliabue (Application # 2008/0200312), Huhtala (Application # 2008/0109158), and Stivoric (Application # 2008/0275309).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground argued that if the claims are interpreted to require tracking specific behavioral metrics beyond athletic performance (e.g., login frequency, mood, energy level), Stivoric provides this missing element. Stivoric discloses a health monitoring system that tracks a user's behavioral data, including a "Health Index" that displays statistics like "the total number of days the user has logged in" and tracks expression data such as a user's "energy level" and "motivation." Adding Stivoric’s teachings on tracking these specific behavioral metrics to the combined system of Tagliabue and Huhtala would satisfy all claim limitations.
  • Motivation to Combine (for §103 grounds): A POSITA seeking to improve user engagement and motivation in Tagliabue's system would be motivated to incorporate Stivoric's teachings. Tracking metrics like login frequency and user motivation would allow developers to identify features that effectively motivate users and to incentivize more frequent engagement. This would predictably benefit Tagliabue’s system, one of whose stated goals is to increase user motivation.
  • Expectation of Success (for §103 grounds): A POSITA would have expected success because adding a software feature to track login activity—a well-known concept—would not negatively impact other aspects of Tagliabue’s system and would yield predictable benefits in understanding user engagement.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Tagliabue in view of LeBoeuf (Application # 2008/0146892), which also teaches using a database for health data, and combinations with Stivoric as the secondary reference. These grounds relied on similar rationales for combining the references.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §325(d). It was contended that the core prior art references of Tagliabue, Huhtala, and LeBoeuf were never cited or considered during the prosecution of the ’066 patent or its parent applications. While Stivoric was cited during prosecution of a grandparent application, it was never substantively discussed, applied to the claims, or considered in any combination, and thus the Examiner did not have the benefit of the arguments presented in the petition.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-4 and 11 of the ’066 patent as unpatentable under §103.