Published 08/31/2020 by CIONCA IP Team
On August 6, 2020, the United States Court of Appeals for the Federal Circuit made decision in Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC. In August 2017, Fitbit, Inc. (“Fitbit”) filed a petition to initiate inter partes review against U.S. Patent No. 6,434,212 (“the ‘212 patent”) owned by Blackbird Tech LLC, DBA Blackbird Technologies (“Blackbird”), asserting that claims 2, 5, and 6 (“the claims”) were unpatentable as obvious over U.S. Patent No. 6,241,684 (“Amano”) in view of U.S. Patent No. 5,033,013 (“Kato”). In December 2017, Wahoo Fitness LLC (“Wahoo”) also filed a petition to initiate inter partes review of the claims relying on the same grounds as Fitbit. Subsequently, the Patent Trial and Appeal Board (“the Board”) instituted the requested inter partes reviews and consolidated the proceedings. The ‘212 patent generally describes and claims a device that counts a user’s steps and, based on the number and rate of the steps, provides the user with information like distance traveled and speed. Upon review in March 2019, the Board found that Fitbit failed to demonstrate that claims 2 and 5 were unpatentable as obvious but determined that Fitbit had proven claim 6 unpatentable as obvious over a combination of Kato and Amano. Blackbird timely appealed the Board’s decision to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”). The Federal Circuit affirms the Board’s determination.
Naturally, the Federal Circuit performed an analysis of all the Board’s final determinations, as described below:
1. Prior Art Teachings. In the appeal before the Federal Circuit, Blackbird argues that the Board erred in its obviousness conclusions that Kato discloses a key limitation in claim 6. The limitation in questions is “a data processor programmed to calculate a distance traveled by multiplying a number of steps counted by a stride length.” Accordingly, the Federal Circuit reviewed the Board’s finding as to Kato’s teachings and what they would have suggested to a person of ordinary skill in the art.
Kato discloses a processing means that uses a user’s stride length, along with the user’s “pitch,” to determine the user’s speed. The “pitch” as defined by Kato is the number of steps per selected time unit, i.e., the user’s step rate. A detector notifies the processing means each time the user’s foot contacts the ground, such that the processing means can obtain the user’s pitch. Kato explains that obtaining the user’s pitch allows the processing means to then calculate the user’s stride length, or “stride” as Kato defines it. Such a step is expressed in Kato by the equation SP = ST × PI, where SP is the speed, ST is the stride, and PI is the pitch per unit of time. Kato also discloses that the distance traveled by the user can be obtained by multiplying the calculated speed (SP) by a given period of time. From such disclosure, a simple equation can be derived to calculate the distance traveled: D = ST × PI × T, where T is the period of time.
Based on such teachings in Kato, the Federal Circuit agrees with the Board’s finding that a person of ordinary skill in the art would interpret the prior art as teaching a “data processor programmed to calculate a distance traveled by multiplying a number of steps counted by a stride length,” as set forth in claim 6. As can be concluded from the above equations, the time-dependency of the pitch (PI) cancels out with the period of time (T), such that the distance traveled is simply D = ST × steps, as claimed in claim 6.
2. Level of Ordinary Skill in the Art. In the appeal before the Federal Circuit, Blackbird argues that the Board failed to explain why a person of ordinary skill in the art would have expressed pitch (PI) as “steps/time” to thus cancel out any time variables when calculating distance. Blackbird argues that the Board worked backward with knowledge of the claimed invention to modify the Kato reference as needed to reject claim 6. However, the Board’s conclusion of unpatentability did not rely on a modification of Kato’s equation, but on a finding that a person of ordinary skill in the art would interpret Kato’s equation as teaching claim 6’s limitation. In this case, the Board determined that a person of ordinary skill would be an engineer with either a master’s degree or multiple years of experience in the field. As such, the Board could readily conclude that such an engineer would be able to take the elementary process steps of unit cancellation given Kato’s teachings.
For the reasons above, the Federal Circuit affirms the Board’s determination pertaining to the obviousness of claim 6’s data processor limitation over Kato. The Federal Circuit concludes that the Board had a sufficient basis to determine that a person of ordinary skill in the art would have interpreted Kato’s method for calculating distance traveled to be identical to claim 6’s limitation
It is important to realize and understand the implications of the decision made in Blackbird Tech LLC, DBA Blackbird Technologies, v. Fitbit, Inc., Wahoo Fitness LLC. As evidenced by the outcome, there are numerous considerations to be made when dealing with the question of obviousness. The question of obviousness not only involves the literal teachings of the prior art, but also the conclusions and interpretations that can be drawn from those teachings. The level of skill of a person of ordinary skill in the art, though such a phrase can be vague, must also be established in any obviousness inquiry. As evidenced in this case, the level of skill established provides a basis from which conclusions about prior art teachings can be drawn to support an obviousness rejection. As described above, the prior art method relied upon in Kato would have clearly suggested the claim limitation on appeal to an engineer having multiple years of work experience. As such, the examiner/Board/Federal Circuit need not explain why such a person of ordinary skill would have taken specific steps or made certain modifications. Rather, the prior art teachings are interpreted through the eyes of the person of ordinary skill, and thus the conclusions that that person would draw as a whole need only be explained.
Full Blackbird Tech LLC, DBA Blackbird Technologies v. Fitbit, Inc., Wahoo Fitness LLC decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1879.OPINION.8-6-2020_1632064.pdf
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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