Philips North America LLC

Patent Trials and Appeals Board

Oct 30, 2020

IPR2020-00909 (P.T.A.B. Oct. 30, 2020)

Trials@uspto.gov Paper 9
571.272.7822 Date: October 30, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GARMIN INTERNATIONAL, INC., GARMIN USA, INC.,
AND GARMIN LTD.,
Petitioner,

v.

PHILIPS NORTH AMERICA LLC,
Patent Owner.
____________

IPR2020-00909
Patent 6,976,958 B2
____________

Before PATRICK R. SCANLON, FRANCES L. IPPOLITO, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
Denying Motion for Joinder
35 U.S.C. § 315(c); 37 C.F.R. § 42.122

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I. INTRODUCTION
Petitioner filed a Petition (“Pet.”) requesting inter partes review of
claims 15–17 (the “Challenged Claims”) of U.S. Patent No. 6,976,958 B2
(Ex. 1001, “the ’958 patent”). Pet. 1. Petitioner filed a Motion for Joinder
under 35 U.S.C. § 315(c), seeking to join IPR2020-00782. Paper 3 (“Mot.”).
Patent Owner Philips North America LLC filed a Preliminary Response to
the Petition (Paper 8, “Prelim. Resp.”) and a statutory disclaimer disclaiming
the challenged claims 15–17 (Exhibit 2001).
We have jurisdiction under 35 U.S.C. § 314. See also 37 C.F.R.
§ 42.4(a) (permitting the Board to render institution decisions on behalf of
the Director).
To institute an inter partes review, we must determine whether the
information presented in the Petition shows “a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we do not
institute an inter partes review.
A. Related Matters
Petitioner identifies the ’958 patent, related U.S. Patent 8,277,377
(“the ’377 patent”), U.S. Patent No. 7,088,233 (“the ’233 patent”), and U.S.
Patent No. 6,013,007 (“the ’007 patent”) as being currently asserted in
Philips North America LLC v. Fitbit, Inc., No. 1:19-cv-11586-IT (D. Mass.,
July 22, 2019). Pet. 1; Paper 6, 1. Patent Owner adds that the ’958, ’377,
’233, and ’007 patents, as well as U.S. Patent Nos. 9,314,192 and 9,801,542,
are at issue in Philips North America LLC v. Garmin International, Inc. et
al., Case No. 2:19-cv-06301-AB-KS (C.D. Cal., June 8, 2020). Paper 6, 1.
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Petitioner has filed a petition for inter partes review challenging
claims of the ’233 patent (IPR2020-00910). Pet. 1; Paper 6, 2
Separately, Fitbit, Inc. has filed petitions for inter partes review
challenging claims of the ’233 patent (IPR2020-00783), the ’958 patent
(IPR2020-00782), and the ’377 patent (IPR2020-00828). See Pet. 2; Paper
6, 1–2; Mot. 1.

B. The ’958 Patent
The ’958 patent, titled “Method and Apparatus for Health and Disease
Management Combining Patient Data Monitoring with Wireless Internet
Connectivity,” issued Dec. 20, 2005, with 17 claims. Ex. 1001, code (54),
(45), 15:23–18:31. Figure 1 is reproduced below.

Figure 1 depicts general wireless health-monitoring system 10 (“WHMA”)
as described in the ’958 patent. Ex. 1001, 5:9–11. Referring to Figure 1, the
’958 teaches WHMA 10 is a system for monitoring health data from a
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patient or subject 38. Id. at 6:36–38. WHMA 10 is wirelessly linked to
wireless connection point of presence (“POP”) 19. Id. at 6:38–41. POP 19
includes base station antenna 15 that is coupled to server 17, which in turn is
connected to Internet 21. Id. at 6:40–42. The ’958 patent further teaches
that WHMA 10 includes health monitoring device (“HMD”) 11, which may
contain physiologic sensor 24 or manual system 36 for input of physiologic
data via a connection 34. Id. at 6:47–55.
C. Challenged Claims
As indicated above, Patent Owner disclaimed claims 15–17 of the
’958 patent, which correspond to all of the Challenged Claims. See Prelim.
Resp. 1–2; Ex. 2001; Ex. 1001, 17:19–18:31; Pet. 1. For illustrative
purposes, disclaimed claim 16 is provided below:
16. A internet-enabled wireless web device for monitoring
health, the internet-enabled wireless web device connected in
wireless communication with a server running an application,
comprising:
an internet-enabled wireless web device with a removable
memory device and running an application, the application
functioning to accept inputs from a first communications port
and a second communications port, the first communications port
including a generic input/output port and the second
communications port including a wireless link to a network, the
generic input/output port for receipt of a health parameter from a
health monitoring device or visual data from a digital camera, the
health parameter or visual data corresponding to a patient’s
disease state or condition;
wherein in the event of an interruption of the wireless
connection between the internet-enabled wireless web device
and the server, the internet-enabled wireless web device is
configured to store the health parameter or visual data in a
memory or on the removable memory device.
Ex. 1001, 18:3–24.
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II. ANALYSIS
A. Statutory Disclaimer
Patent Owner has filed a statutory disclaimer of claims 15, 16, and 17
of the ’958 patent. Ex. 2001; see Prelim. Resp. 1. Petitioner has not
challenged the disclaimer in any manner.
Pursuant to 37 C.F.R. § 42.107(e), “[t]he patent owner may file a
statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with
§ 1.321(a) of this chapter, disclaiming one or more claims in the patent. No
inter partes review will be instituted based on disclaimed claims.” A
disclaimer under 35 U.S.C. § 253(a) shall be recorded in the Office, and is
“considered as part of the original patent.” See 35 U.S.C. § 253(a).
A disclaimer of one or more claims, to be recorded in the Patent
Office, must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term
being disclaimed. A disclaimer which is not a disclaimer of a
complete claim or claims, or term will be refused recordation;
(3) State the present extent of patentee’s ownership interest in the
patent; and
(4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d).
37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
1379, 1382 (Fed. Cir. 1998) (holding that a § 253 disclaimer is immediately
“recorded” on the date that the Office receives a disclaimer meeting
requirements of 37 C.F.R. § 1.321(a)).
Based on our review of Exhibit 2001 and Office records (that is, the
USPTO Patent Application Information Retrieval (PAIR) database
containing the image file wrapper and other information for the ’958 patent),
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we conclude that a disclaimer of claims 15–17 of the ’958 patent has been
recorded in the Office under 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a).
Exhibit 2001 includes the electronic signature of Elias Schilowitz, Senior IP
Counsel of the Patentee, Philips North America LLC. See Ex. 2001; see
also Paper 3, 1. Exhibit 2001 identifies the ’958 patent, indicates that claims
15–17 are disclaimed, and states that Patentee Philips North America LLC
has 100 percent ownership of the ’958 patent. See Ex. 2001. The image file
wrapper in PAIR includes a fee worksheet and receipt for the requisite fee
filed with the statutory disclaimer on August 10, 2020. See Ex. 3001.
Because Patent Owner filed a statutory disclaimer in compliance with
35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming all the challenged
claims of the ’958 patent, no inter partes review is instituted in this
proceeding. See 37 C.F.R. § 42.107(e); Gen. Elec. Co. v. United Techs.
Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential).
B. Denial of Motion for Joinder
In the Motion for Joinder, Petitioner requests that we institute inter
partes review and that we join Petitioner as a party to the inter partes review
requested in IPR2020-00782. Mot. 1. The Petition and supportive filings
are all substantively identical to those filed in IPR2020-00909, which
challenge claims 15, 16, and 17 of the ’958 patent.
As discussed above, because Patent Owner filed a statutory disclaimer
in compliance with 35 U.S.C. § 253(a) and 37 C.F.R. § 1.321(a) disclaiming
all the challenged claims of the ’958 patent, no inter partes review is
instituted in this proceeding. Moreover, for the same reason, the Board has
denied institution in IPR2020-00782. Accordingly, there is no ongoing inter
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partes review in IPR2020-00782 to which the instant Petitioner could be
joined. Therefore, pursuant to § 315(c), we deny the Motion for Joinder.

III. CONCLUSION
For the reasons above, we do not institute an inter partes review and
deny the motion for joinder.
IV. ORDER
After due consideration of the record before us, it is:
ORDERED that no inter partes review is instituted for any claim
challenged by Petitioner; and
FURTHER ORDERED that Petitioner’s Motion for Joinder is denied.
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For PETITIONER:

Jennifer C. Bailey
Adam P. Seitz
ERISE IP, P.A.
Jennifer.Bailey@eriseip.com
Adam.Seitz@eriseip.com
PTAB@eriseip.com

For PATENT OWNER:

George C. Beck
Eley O. Thompson
FOLEY & LARDNER LLP
GBeck@foley.com
EThompson@foley.com