Polar Electro Oy v. Suunto Oy et al
Filing
498
MEMORANDUM DECISION AND ORDER-denied as moot 435 Motion for Summary Judgment ; denied as moot 436 Motion for Summary Judgment ; granting in part and denying in part as moot 439 Motion for Summary Judgment ; denied as moot [4 75] Motion to Exclude; re 435 MOTION for Summary Judgment and Memorandum in Support on Validity, 436 Redacted MOTION for Summary Judgment and Memorandum in Support on Infringement, 439 Redacted MOTION for Summary Judgme nt and Memorandum in Support on Non-Infringement and Invalidity of US Patent No. 6,537,227, 475 MOTION to Exclude FIRSTBEATS TECHNICAL EXPERT, THOMAS BLACKADAR and Memorandum in Support POLAR ELECTRO OY'S MOTION TO EXCLUDE FIRSTBEAT'S TECHNICAL EXPERT, THOMAS BLACKADAR. See Memorandum Decision and Order for details. Signed by Judge Clark Waddoups on 4/4/24. (jrj)
IN THE UNITED STATES DISTRICT COURT
DISTRICT OF UTAH
MEMORANDUM DECISION
AND ORDER
POLAR ELECTRO OY,
Plaintiff,
v.
SUUNTO OY, AMER SPORTS WINTER &
OUTDOOR d/b/a/ SUUNTO USA, and
FIRSTBEAT TECHNOLOGIES OY,
Case No. 1:17-cv-0139 CW
Judge Clark Waddoups
Defendants.
INTRODUCTION
U.S. Patent No. 6,537,227 (hereinafter, “the ‘227 Patent”) has been challenged through
three re-examinations. Over that course, some claims were confirmed, others were cancelled, and
new claims were added and found patentable. Now, Plaintiff Polar Electro Oy (“Polar”) moves
for summary judgment on the grounds that the ‘227 Patent is valid and that Defendant Firstbeat
Technologies Oy (“Firstbeat”) has infringed Polar’s patent. In turn, Firstbeat moves for summary
judgment on the grounds that its Sports products do not infringe the ‘227 Patent; the ‘227 Patent
is invalid because it pertains to a non-patentable subject area; and the patent has other statutory
infirmities. Firstbeat offers expert testimony from Thomas Blackadar to support part of its
assertions. Polar moves to exclude such testimony on the ground that Mr. Blackadar is not an
expert. Polar offers its own experts to support its summary judgment motions and its assertion
that Mr. Blackadar’s opinions fail.
The parties submitted comprehensive briefing on the issues. Ultimately, however, the court
reaches only one issue because the issue is dispositive. The court concludes the claims at issue
under the ‘227 Patent are invalid because they comprise an abstract idea. Summary judgment is
granted in favor of Firstbeat.
FACTUAL BACKGROUND
1.
Polar asserts Firstbeat has infringed Claims 5, 15, 21, and 43 of the ‘227 Patent. 1
See Polar’s Amended Final Infringement Claim Chart, at 3–50 (ECF No. 313-1). 2 Claim 5 is an
independent methods claim and Claim 21 is an independent apparatus claim. Claims 15 and 43
depend from Claim 5.
2.
According to the ‘227 Patent, “[t]he object of the invention is to provide an
improved method and equipment implementing the method for assessing energy consumption
during exercise.” ‘227 Patent, Col. 1, Lines 49–51 (ECF No. 205-1).
3.
“For 200 hundred years, scientists have sought to measure energy expenditure.”
Declaration of Dr. James A. Levine, M.D., PhD., ¶ 26 (ECF No. 456-3) (hereinafter “Levine Decl.
II”).
4.
“Sports and exercise increase the heart muscle mass and the capability of the system
to supply oxygen to the body.” ‘227 Patent, Col. 1, Lines 23–25. In turn, “[t]he heart’s capability
to pump oxygenated blood into the body improves, and consequently by one contraction, i.e. beat,
Polar asserted that Firstbeat also infringed Claim 18, but Polar subsequently filed an unopposed
Notice of Withdrawal (ECF No. 485) of that claim, so Claim 18 is no longer at issue.
1
When the court cites to a page in the record, the citation is to the ECF page numbering at the
top of the page and not to page numbering elsewhere on the document.
2
2
the heart is able to pump a larger amount of blood in the body, whereby the beat rate can be lower
than that of an unfit person.” Id. Col. 1, Lines 25–29. These principles govern a person’s energy
consumption.
5.
Prior art for heart rate monitors have assessed energy consumption “on the basis of
the heart rate and the person’s weight, gender and age, for instance.” Id. Col. 1, Lines 37–39.
6.
According to the ‘227 Patent’s specification, however, prior art did “not take into
account that a fit person performs a larger amount of work at a given heart rate level than an unfit
person, whereby the amount of energy consumed by the fit person is larger than that of the unfit
person.” Id. Col. 1, Lines 42–45.
7.
Polar’s expert Dr. James A. Levine, M.D., Ph.D. has opined that the ‘227 Patent
“involves a determination/input of maximum heart rate and maximum oxygen consumption and
uses this information to assess and determine energy expenditure.” Levine Decl. II, ¶ 2 (ECF No.
456-3). Dr. Levine asserts this is “an unusual approach” for “personalizing a heart rate monitor .
. . to assess a person’s energy consumption during exercise.” Id. ¶¶ 2–3.
8.
The “relationship between heart rate and energy expenditure” varies “from one
person to the next,” resulting in “substantial inter-individual variance.” Declaration of James A.
Levine, ¶ 4 (ECF No. 157) (hereinafter “Levine Decl. I”). Factors such as emotions and hormone
levels may affect “[a] person’s heart rate,” and other factors such as age and illness may impact
the relationship between a person’s heart rate and “volume of blood pumped per beat.” Id. ¶¶ 4.1,
4.3.
9.
The inter-individual variance impedes the accuracy of heart rate monitors to
estimate a person’s energy consumption. “[T]he precision of heart rate for predicting energy
3
consumption,” however, “can be improved by using individual calibration of the heart rate monitor
for every person being measured.” Levine Decl. I, ¶ 7 (ECF No. 157).
10.
Regression equations allow for such “individualization,” thereby increasing the
accuracy of heart rate monitors to determine energy consumption. Id. ¶ 8. The individualization
also has been referred to by Dr. Levine as the personalization phase. Levine Decl. II, ¶ 70 (ECF
No. 456-3).
11.
According to Dr. Levine, the ‘227 Patent contains a “unique method” for “defining
an individual calibration curve for each user whereby maximum heart rate, resting heart rate and
potentially intermediate values are used to define an individual calibration curve.” Levine Decl.
I, ¶ 9 (ECF No. 157). The calibration curve is combined with “physiological variables,” thereby
allowing energy consumption to be calculated by a portable device as the device receives
“continuous heart rates values.” Id.
12.
Assessment of a person’s energy consumption occurs during the “use” phase. At
least two calculating parameters have to be present: “the heart rate parameter and the energy
consumption reference value.” Second Reexamination Certificate, Col. 1, Lines 42–45 (ECF No.
205-7). The use phase also depends on “the maximum value of energy consumption and a lower
value of energy consumption, wherein the person’s energy consumption is substantially linear
dependent on the heart rate parameter between the maximum value of energy consumption and the
lower value of energy consumption.” Id. Col. 1, Lines 46–52.
13.
According to Dr. Levine, the ‘227 Patent advanced the technology. Levine Decl.
I, ¶ 10 (ECF No. 157); Levine Decl. II, ¶ 67 (ECF No. 456-3). Both of Dr. Levine’s declarations
focus on the personalization or individualization phase as being a technological advancement.
4
14.
The ‘227 Patent has a priority date of March 7, 2000. See ‘227 Patent, Foreign
Application Priority Data, at 1 (ECF No. 205-1); First Reexam File History, at 41 (ECF No. 2056) (stating “[t]he ‘227 patent claims priority to Finnish Application No. 000522, filed March 7,
2000”).
15.
“In the Year 2000, the idea of using heart rate to predict[] oxygen or energy
consumption had been published.” Levine Decl. I, ¶ 10 (ECF No. 157). Additionally, in that same
year, “portable electronic devices for measuring heart rate in free-living people and the use of
portable computers to analyze and store heart rate data had been published.” Id. Moreover, in the
Year 2000, “[t]he concept of individual calibration of a physiological device had been published.”
Id. ¶ 11. Thus, the ‘227 Patent’s alleged advancement goes to “the method used for individual
calibration.” See id. (opining Polar’s method “was unique at the time”).
16.
Dr. Levine asserts “the scientists behind the ‘227 Patent had the idea to individually
calibrate the heart rate monitor for each person using it—personalization—and specifically how it
should be calibrated.” Levine Decl. II, ¶ 37 (ECF No. 456-3). In particular, Dr. Levine reports
that “The Personalized Heart Rate Monitor and Method in the ‘227 Patent looks at a person’s heart
rate at maximum exertion to represent the maximum energy consumption, or what is also referred
to as VO2max (the maximum amount of oxygen a person uses during exercise; this is also called
maximal oxygen consumption or maximal oxygen uptake).” Id.
17.
Dr. Levine further asserts, “VO2max is an important aspect of The Personalized
Heart Rate Monitor and Method described in the ‘227 Patent.” Levine Decl. II, ¶ 38. Specifically,
“[w]hen a person is at maximum physical performance, their heart rate is maximum, and their
oxygen consumption is maximum, which is referred to as VO2max. When a person is at rest, the
5
heart rate is lowest, and their oxygen consumption is lowest.” Id.
18.
Thus, according to Dr. Levine, the ‘227 Patent “exploit[s] the idea that a person’s
maximum physical performance corresponds uniquely to the person’s maximum oxygen
consumption, VO2max, and maximal heart rate,” which “was not an obvious approach to using
heart rate to assess energy expenditure. In fact, it was an oddball approach.” Levine Decl. II, ¶
40 (ECF No. 456-3) (emphasis added).
Claim at Time of Application
19.
When the application for the ‘227 Patent was filed, Claim 1 read as follows:
A method for assessing a person’s energy consumption during
exercise, which method measures the person’s heart rate
information during exercise,
provides an assessment of the person’s energy consumption by
means of at least two calculating parameters, one of which is a heart
rate parameter during exercise measured from the person’s heart rate
information, wherein an energy consumption reference value is used
as one calculating parameter,
the reference value being obtained by using one or more
performance parameters describing the person’s physical
performance.
‘227 Patent File History, at 94 (ECF No. 205-5) (line breaks inserted). The claim did not mention
oxygen, and the concepts of VO2max, maximum heart rate, and maximum energy expenditure
were not stated in the claim.
20.
The Patent and Trademark Office (“PTO”) rejected the claim as being “anticipated
by Richardson et al, U.S. Patent No. 5,976,083,” because Richardson “discloses a personal fitness
monitoring device and method for assessing the fitness of an individual as the individual
exercises.” Id. at 29. Moreover, the Richardson patent “discloses the computation of fitness by
6
computing the user’s maximum heart rate, then a linear regression is fitted to the time series of
heart rate and energy expenditure points. Using this regression, the value of energy expenditure
associated with the user’s maximum heart rate is computed.” Id. at 29–30. Under Richardson,
that “value [was] the user’s estimated maximum aerobic energy expenditure, which is taken as the
user’s aerobic fitness value.” Id. at 30.
21.
Polar did not rebut the PTO’s conclusions. ‘227 Patent File History, at 24 (ECF
No. 205-5). Instead, Polar rewrote all the claims in its application. Id. at 17, 24. Claim 1 was
changed to read as follows:
A method for assessing a person’s energy consumption during
exercise, the method comprising the steps of:
measuring the person’s heart rate information during exercise, the
heart rate information including a heart rate parameter;
obtaining an energy consumption reference value from one or more
performance parameters that describe the person’s physical
performance with at least one of the performance parameters being
oxygen uptake;
assessing the person’s energy consumption by means of a plurality
of calculating parameters including at least the heart rate parameter
and the energy consumption reference value.
Id. at 17; ‘227 Patent, Col. 10, Lines 37–49 (ECF No. 205-1). The amended Claim 1 required
oxygen uptake to be “one of the performance parameters used to obtain an energy consumption
value.” First Reexam File History, at 67 (ECF No. 205-6) (reviewing history of patent during
initial prosecution). The amended Claim 1 did not require VO2max, maximum heart rate, or
maximum energy expenditure.
22.
The PTO accepted the changes and issued a Notice of Allowability. ‘227 Patent
File History, at 16 (ECF No. 205-5). The ‘227 Patent issued on March 25, 2003. ‘227 Patent, at
7
1 (ECF No. 205-1).
First Ex Parte Reexamination
23.
About nine years later, Firstbeat requested an ex parte reexamination of the ‘227
Patent, which the PTO granted on or about October 25, 2012. First Reexam File History, at 64–
66 (ECF No. 205-6). The reexam resulted in Claims 1 and 16 being cancelled; Claims 2–15 and
17–31 being amended; and Claims 32–42 being added. Id. at 6. The first Reexamination
Certificate issued on June 4, 2013. Id. at 1.
24.
Polar had to combine Claim 1 with dependent Claim 5, such that Claim 5 became
the independent methods claim at issue in this case. Claim 5, following the first reexamination
reads as follows, with bracketed language deleted from Claim 5 and italicized language added
from Claim 1 to Claim 5:
A method [as claimed in claim 1] for assessing a person’s energy
consumption during exercise, the method comprising the steps of:
measuring the person’s heart rate information during exercise, the
heart rate information including a heart rate parameter;
obtaining an energy consumption reference value from one or more
performance parameters that describe the person’s physical
performance with at least one of the performance parameters being
oxygen uptake;
assessing the person’s energy consumption by means of a plurality
of calculating parameters including at least the heart rate
parameter and the energy consumption reference value, wherein the
plurality of calculating parameters include at least a maximum value
of energy consumption and a lower value of energy consumption,
wherein the person’s energy consumption on the heart rate
parameter is substantially linear dependent between the maximum
value of energy consumption and the lower value of energy
consumption.
First Reexamination Certificate, Col. 1, Lines 36–55 (ECF No. 205-6).
8
25.
The amended Claim 5 did not require VO2max or maximum heart rate, but as of
June 4, 2013, the independent claim required maximum energy expenditure, which previously was
only a dependent claim limitation.
26.
The PTO granted the first request for a reexamination, in part, due to Lubell et al.,
U.S. Patent No. 4,566,461, issued on January 28, 1986. The Lubell “invention relates to health
and fitness monitors.” Lubell Patent, Col. 1, Lines 4–5. Lubell reported, “[r]ecently, the capacity
of the subject’s cardiovascular system to bring oxygen to the body tissues has been determined to
be perhaps the most meaningful index of aerobic fitness,” which “fitness index is commonly
referred to as the maximal oxygen uptake, or VO2max.” Id. Col. 1, Lines 42–45, 48–49.
27.
Lubell reported the “fitness index VO2max is higher,” generally, “the greater the
level of fitness is for a given individual.” Lubell Patent, Col. 1, Lines 49–51. Additionally, “[a]s
a general proposition, this fitness index declines with age, and, for the same fitness level, is slightly
lower for women than for men.” Id. Col. 1, Lines 58–60. Lubell also reported, “[t]he application
of maximal oxygen uptake VO2max as an index of fitness, is discussed, e.g., in Astrand and others
. . . in the Journal of Physiology, November 1963.” Id. Col. 1, Lines 61–64.
28.
Lubell improved on prior art that “require[d] manual entry of resting heart rate,
minimum exercise heart rate, maximum exercise heart rate, and a previously-calculated fitness
index or maximal oyxgen [sic] uptake level VO2max,” by changing a device’s programming to
“measur[e] the subject’s fitness automatically.” Lubell Patent, Col. 2, Lines 26–34. Its objective
was to “automatically calculate an appropriate fitness parameter (e.g., maximal oxygen uptake
level or VO2max) by automatically pacing the subject through a straightforward training protocol”
that was portable. Id. Col. 2, Lines 48–51, 62–64.
9
29.
The Lubell patent also is relevant to the issue here because the data entry for the
heart rate monitor was based on “selected data peculiar to the subject, . . . and also displaying one
or more fitness parameters calculated on the basis of the entered selected data and the detected
heart beats of the subject.” Lubell Patent, Col. 3, Lines 3–7. The fitness parameters had to “include
at least the maximal oxygen uptake VO2max as a fitness index,” id., Col. 3, Lines 19–21, which
Lubell taught how to implement. Id. Col. 3, Lines 23–57.
30.
Lubell’s protocol “continuously measures the heart rate” until the subject reaches
maximal heart rate, whereupon VO2max is determined and “displayed as the calculated fitness
index.” Lubell Patent, Col. 3, Lines 41–56. That calculated fitness is then “used to monitor the
aerobic training of the subject.” Id. Col. 3, Lines 56–57.
31.
Lubell noted that “the correlation between actual VO2max values and the values
calculated using data from the submaximal exercise stress tolerance test is extremely good,” which
correlation was depicted on a table. Lubell Patent, Col. 9, Lines 42–56. Lubell further noted “[a]
well-established linear relationship exists between the percent of VO2max required for a given
workload, and the heart rate achieved at that [workload].” Id. Col. 10, Lines 8–11.
32.
In Lubell’s method claim, a person’s heartbeat is detected, “selected data peculiar
to the said subject” is inputted pertaining to physiological parameters, and “VO2max is calculated
as a fitness index,” based in part on the time it takes for the subject’s heart rate to reach maximum
level. Id. Col. 16, Lines 19–52.
33.
The PTO concluded that Lubell teaches:
[A] health fitness monitor for monitoring aerobic exercise training.
The monitor automatically calculates a fitness parameter for a
subject by monitoring heart rate during an exercise stress test
protocol. At the point of maximum heart rate, the subject’s maximal
10
oxygen uptake capacity is calculated and is displayed as a fitness
parament. During exercise, the submaximal oxygen uptake is
calculated at regular intervals using the individual’s heart rate and
this parameter can be used to calculate caloric consumption . . .
during training for the particular subject . . . Hence Lubell measures
heart rate during exercise, obtains an energy consumption reference
value that comprises oxygen uptake, and assesses the person’s
energy consumption value by calculating calorie expenditure in
accordance with Claim 1.
First Reexam File History, at 53 (ECF No. 205-6).
34.
The PTO further concluded that Lubell “discloses the plurality of calculating
parameters include at least one of: a maximum heart rate corresponding to the person’s maximum
performance . . . ; a lower heart rate lower than the maximum heart rate . . . ; and an intermediate
heart rate which is between the maximum heart rate and the lower heart rate . . . . First Reexam
File History, at 54 (noting teachings of the Lubell Patent, but addressing Claim 11 of the ‘227
Patent as it existed during the first reexamination).
35.
As to energy consumption, however, Firstbeat admitted and the PTO concurred that
Lubell did “not explicitly disclose” the following:
the plurality of calculating parameters include a lower value of
energy consumption; and
wherein the person’s energy consumption on the heart rate
parameter is substantially linear dependent between the maximum
value of energy consumption and the lower value of energy
consumption.
First Reexam File History, at 60, 122.
36.
The limitations in Paragraph 35 above pertain to the “use” phase of Claim 5 and
not to the “personalization” phase of that Claim. According to Dr. Levine, the inventive concept
that advanced the technology pertains to “an oddball approach to personalizing a heart rate
11
monitor, specifically to assess a person’s energy consumption during exercise.” Levine Decl. II,
¶ 2 (ECF No. 456-3) (emphasis added).
Second Ex Parte Reexamination
37.
On January 29, 2014, Firstbeat filed a second request for ex parte reexamination,
which the PTO granted on or about March 18, 2014. Third Reexam File History, at 152 (ECF No.
205-8).
The PTO concluded on or about June 13, 2014, that Claims 5, 15, and 21 were
unpatentable over prior art. Id.
38.
During the second reexamination, Jimenez et al., U.S. Patent No. 4,367,752, issued
on January 11, 1983, was considered along with three other references. According to the PTO,
“Jimenez disclose[d] all the claimed method steps of independent claim 5 and structure of claim
21 to assess a person’s energy consumption during exercise.” Second Reexam File History, at 50,
83 (ECF No. 205-7); Third Reexam File History, at 155 (ECF No. 205-8).
39.
The ‘227 Patent, however, survived invalidity because “[e]ach of the independent
claims” was amended to require further limitations. Second Reexam File History, at 7 (ECF No.
205-7). Claim 5, following the second reexamination reads as follows, with bracketed language
deleted from Claim 5 and the italicized language added to survive invalidity:
A method for assessing a person’s energy consumption during
exercise, the method comprising [the steps of]:
measuring the person’s heart rate information during exercise, the
heart rate information including a heart rate parameter;
obtaining an energy consumption reference value from one or more
performance parameters that describe the person’s physical
performance with at least one of the performance parameters being
a maximal oxygen uptake, the energy consumption reference value
being a maximum value of energy consumption associated with the
person, the maximum value of energy consumption representing a
12
value of energy consumption that is associated with the person and
corresponds to a maximum heart rate associated with the person;
assessing the person’s energy consumption by means of a plurality
of calculating parameters including at least the heart rate parameter
and the energy consumption reference value, wherein the plurality
of calculating parameters include at least [a] the maximum value of
energy consumption and a lower value of energy consumption,
wherein the person’s energy consumption is substantially linear
dependent on the heart rate parameter [is substantially linear
dependent] between the maximum value of energy consumption and
the lower value of energy consumption.
Second Reexamination Certificate, Col. 1, Lines 26–53 (ECF No. 205-7).
40.
The second Reexamination Certificate issued on October 2, 2014, approximately
fourteen and a half years after the ‘227 Patent’s priority date of March 7, 2000. Id. at 1; ‘227
Patent, at 1 (ECF No. 205-1) (stating “Foreign Application Priority Data”).
Through the
amendment, VO2max and maximum heart rate became limitations for the first time, and it is the
language from the second reexamination that Dr. Levine relies upon for his declarations.
41.
During the second reexamination, Claim 43 was added, which depends from Claim
5. Second Reexamination Certificate, Col. 4, Lines 5–7 (ECF No. 205-7).
42.
During a third ex parte reexamination, Claims 5, 15, 21, and 43 were confirmed,
with no further modifications. Third Reexam File History, at 5 (ECF No. 205-8).
Statements about Maximum Oxygen Uptake in Prior Art
43.
As stated above, Firstbeat proffered Lubell, Jimenez, and other publications when
challenging the ‘227 Patent on novelty and obviousness grounds before the PTO.
44.
Jimenez disclosed that one object of that invention was “to provide a portable
apparatus which can be worn” during exercise that measured heart rate, distance, speed, “and, upon
completion of 12 minutes of maximum activity, his fitness based on maximum oxygen uptake.”
13
Jimenez Patent, Col. 5, Lines 23–31.
45.
Jimenez further stated, “there is a roughly linear relationship between oxygen
uptake and heart rate during exercise for a particular subject,” and noted that “[t]he roughly linear
relationship has a slope that changes with the physical fitness of the subject.” Id. Col. 20, Lines
45–49.” Similar to the ‘227 Patent, Jimenez stated physical fitness mattered “because a physically
fit person is able to transport the same amount of oxygen at a lower heart rate than an unfit person.”
Id. Col. 20, Lines 49–51. “The hypothesis for the caloric consumption equations employed in the
[Jimenez] invention relie[d] upon” these “known phenomena.” Id. Col. 20, Lines 42–44.
46.
Another prior art cited by Firstbeat was Maruo et al., U.S. Patent No. 5,853,351,
issued on December 29, 1998. Figure 2 of Maruo is similar to Figure 1 of the ‘227 Patent to show
a linear relationship between heart rate and aerobic capacity, including when maximum heart rate
and maximum aerobic capacity is reached. Cf ‘227 Patent, Figure 1 (ECF No. 205-1) (charting
energy consumption and heart rate) with Maruo Patent, Figure 2 (charting aerobic capacity and
heart rate).
47.
Maruo included regression formulas that represented “[t]he maximum heart rate,”
and stated, “[t]o be exact, the maximum heart rate is defined as a heart rate corresponding to a
maximal oxygen uptake (VO2max) taken in the body per 1 kg of the body weight and per 1 minute.”
Maruo Patent, Col. 1, Line 40–51.
48.
Maruo further provided a formula showing how maximum oxygen uptake could be
converted to maximum aerobic capacity. See id. Col. 3, Lines 36–44; Col. 10, Lines 30–33.
49.
Maruo defined “maximum aerobic capacity . . . as maximum workload
corresponding to a maximum heart rate (HRmax) of the individual user.” Id. Col. 2, Line 67 to Col.
14
3, Lines 1–2; see also id. Col. 13, Lines 65–67 to Col. 14, Line 1.
50.
Firstbeat further cited to the work done by Kenneth H. Cooper that was published
in the Journal of the American Medical Association, Vol 203, No 3, at 135–38 (Jan. 15, 1968)
entitled A Means of Assessing Maximal Oxygen Intake (hereinafter “Cooper”). Cooper reported
that oxygen consumption is “the most objective method by which one can determine the physical
fitness of an individual as reflected by his cardiovascular system.” Cooper, at 2 (ECF No. 43825).
51.
Cooper developed a 12-minute field test, at submaximal exertion, to evaluate
whether the field test could be substituted in place of determining VO2max in a laboratory. See
id. at 3–4 (ECF No. 438-25) (describing test and validating procedures). After testing 115 subjects
both in a laboratory and in the field, Cooper demonstrated the field test could “provide a good
assessment of maximal oxygen consumption,” with some variability based on the motivation of
the test subject. Id. at 4.
Moreover, the publication reported that Cooper found a linear
“correlation between maximal oxygen consumption and [the] 12-minute walk-run performance in
normal males.” Id. at 3 (emphasis added).
52.
Those who were able to travel the greatest distance in the 12-minute test also were
those with the highest VO2max. Cooper, Correlation Graph, at 3 (ECF No. 438-25). Additionally,
Cooper included two tables to show how distance traveled by a subject during the 12-minute test
predicted maximum oxygen consumption and that person’s fitness level. Cooper, Table 1 Predicted Maximal Oxygen Consumption on the Basis of 12-Minute Performance, at 4 (ECF No.
438-25); Cooper, Table 2 – Levels of Cardiovascular Fitness Based on 12-Minute Performance
and Maximal Oxygen Consumption, at 4 (ECF No. 438-25). Thus, the test provided an “indicator
15
of cardiovascular fitness.” Id. at 2.
Dependent Claims 15 and 43 and Independent Claim 21 of the ‘227 Patent
53.
To the method in Claim 5, Claim 15 adds that when measuring the heart rate, it is
measured with a heart rate monitor and includes the step of “displaying the assessment on the
display of the heart rate monitor.” First Reexamination Certificate, Col. 2, Lines 17–23 (ECF No.
205-6).
54.
Claim 43 provides “[a] method as claimed in claim 5, wherein the plurality of
calculating parameters includes the maximum heart rate associated with the person.” Second
Reexamination Certificate, Col. 4, Lines 5–7 (ECF No. 205-7).
55.
Independent Claim 21 is an apparatus that implements the method of Claim 5. It
contains “a measuring means for measuring a person’s heart rate,” and “a calculating unit for
calculating an assessment of the person’s energy consumption during exercise,” along with “a
presenting means for presenting the formed assessment of the person’s energy consumption.”
Second Reexamination Certificate, Col. 2, Lines 24–26, 40–41 (ECF No. 205-7). Much of the
remaining language is the same as Claim 5. Claim 21 reads as follows, with bracketed language
deleted from Claim 21 and the italicized language added to survive invalidity:
A heart rate measuring arrangement comprising:
a measuring means for measuring a person’s heart rate;
a calculating unit for calculating an assessment of the person’s
energy consumption during exercise from a plurality of calculating
parameters, the plurality of calculating parameters including the
heart rate and an energy consumption reference value, the energy
consumption reference value being obtained from one or more
performance parameters that describe the person’s physical
performance with at least one of the performance parameters being
a maximal oxygen uptake, the energy consumption reference value
16
being a maximum value of energy consumption associated with the
person, the maximum value of energy consumption representing a
value of energy consumption that is associated with the person and
corresponds to a maximum heart rate associated with the person;
and
a presenting means for presenting the formed assessment of the
person’s energy consumption, wherein the plurality of calculating
parameters include at least [a] the maximum value of energy
consumption and a lower value of energy consumption, wherein the
person's energy consumption is substantially linear dependent on
the heart rate parameter [is substantially linear dependent] between
the maximum value of energy consumption and the lower value of
energy consumption.
Second Reexamination Certificate, Col. 2, Lines 23–48 (ECF No. 205-7).
ANALYSIS
I.
‘227 PATENT CLAIMS AT ISSUE
As discussed above, the ‘227 Patent has gone through three ex parte reexaminations. An
“ex parte reexamination is a curative proceeding meant to correct or eliminate erroneously granted
patents.” Fresenius USA, Inc. v. Baxter Intern., Inc., 721 F.3d 1330, 1338 (Fed. Cir. 2013)
(citations omitted).
This means “[t]he reexamination statute [has] authorized the PTO to
reconsider patents of doubtful validity, and to cancel defectively examined and therefore
erroneously granted patents.” Id. (quotations, citations, and alteration omitted). If a claim is
invalid, it is cancelled under the reexamination statute. Id. at 1339. “Even if the claim is amended
during reexamination to render the claim valid, no suit can be maintained for the period prior to
the validating amendment,” and enforcement is limited to the “reissued claims.” Id.
Although this decision pertains to section 101, the above is still applicable to inform that
only the latest amended versions of Claims 5, 15, and 21 are applicable when determining if they
17
contain an inventive concept. For Claim 15, the applicable version is that stated in the first
Reexamination Certificate issued on June 4, 2013. For Claims 5 and 21, the applicable versions
are those stated in the second Reexamination Certificate issued on October 2, 2014. Claim 43 also
was added at that time.
II.
STANDARD OF REVIEW
By statute, a patent is “presumed valid,” and “[e]ach claim of a patent (whether in
independent, dependent, or multiple dependent form) shall be presumed valid independently of the
validity of other claims; dependent or multiple dependent claims shall be presumed valid even
though dependent upon an invalid claim.” 35 U.S.C. § 282(a). “This presumption reflects the fact
that the Patent and Trademark Office has already examined whether the patent satisfies the
prerequisites for issuance of a patent, including § 101.” Cellspin Soft. Inc. v. Fitbit, Inc., 927 F.3d
1306, 1319 (Fed. Cir. 2019) (quotations and citation omitted). Congress also has placed “[t]he
burden of establishing invalidity of a patent or any claim thereof . . . on the party asserting such
invalidity.” 35 U.S.C. § 282(a). Moreover, in Microsoft Corp. v. i4i Limited Partnership, 564
U.S. 91, 95 (2011), the United States Supreme Court held that “the party asserting such invalidity,”
must prove the “invalidity defense . . . by clear and convincing evidence.”
Because Firstbeat is challenging the validity of Polar’s ‘227 Patent, Firstbeat bears the
burden of proving the claims at issue are invalid by clear and convincing evidence. The ‘227
Patent has fifty claims. See Third Reexamination Certificate, Col. 1, Lines 15–18 (ECF No. 2058). Only four of the claims are at issue in this case. Since each claim in a patent is presumed valid
independent of the validity of other claims, Firstbeat’s obligation extends only to those claims at
issue and not to proving the ‘227 Patent is invalid as a whole.
18
III.
SECTION 101 CHALLENGE
Firstbeat asserts the ‘227 Patent claims at issue are invalid because they claim an abstract
idea and fail to contain an inventive concept. “Section 101 of title 35 defines patent-eligible
subject matter.” Intell. Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1312 (Fed. Cir. 2016).
The statute states, “[w]hoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Although
the subject area is broad, “[f]or over 150 years, the Supreme Court has recognized an implicit
exception to these broad categories encompassing laws of nature, natural phenomena, and abstract
ideas, which are not patentable.” Intell. Ventures I LLC, 838 F.3d at 1312 (quotations, citations,
and alterations omitted). To do otherwise would preempt or impede innovation rather than
promote it. Alice Corp. Pty. Ltd., v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quotations and
citations omitted); see also Bilski v. Kappos, 561 U.S. 593, 602 (2010) (stating “[t]he concepts
covered by these exceptions are part of the storehouse of knowledge of all men . . . free to all men
and reserved exclusively to none”) (quotations and citation omitted) (alteration in original)).
The exception to patentability is easily stated, but application is not. The Federal Circuit
“as well as the Supreme Court, has long grappled with the exception that laws of nature, natural
phenomena, and abstract ideas are not patentable.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1334 (Fed. Cir. 2016) (quotations, citations, and alteration omitted). In the cases of Mayo and
Alice, the United States Supreme Court provided “‘a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.’” Alice Corp. Pty. Ltd., v. CLS Bank Int’l, 573 U.S. at 217; see
19
also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). The framework is
a two-step process.
A.
Alice Step One
i.
Patent Ineligible Subject Matter
Under the Alice “step one, a court must determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Intell. Ventures I LLC, 838 F.3d at 1313 (quotations
and citation omitted). “‘Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of scientific and
technological work.’” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1374 (Fed. Cir. 2016)
(quoting Gottschalk, 409 U.S. at 67). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Id. (quotations and citation omitted).
As to what constitutes an “abstract idea,” the Supreme Court has not “delimited the precise
contours of [the] category.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (quotations, citation, and alteration omitted). What
is known is that “fundamental practices long prevalent are abstract ideas.” Intell. Ventures I LLC,
838 F.3d at 1314 (quotations, citation, and alteration omitted). Mental processes are considered
abstract for the following reasons:
[m]ethods which can be performed entirely in the human mind are
unpatentable not because there is anything wrong with claiming
mental method steps as part of a process containing non-mental
steps, but rather because computational methods which can be
performed entirely in the human mind are the types of methods that
embody the basic tools of scientific and technological work that are
free to all men and reserved exclusively to none.
20
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (emphasis in
original) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)) (other citation omitted). Mental
processes do not have to be done exclusively with one’s mind. It is permissible for a “pencil and
paper” to be involved where the method is performed by hand. See id. at 1147. If basic tools are
applied when working with pencil and paper it does not change a concept from being abstract. See
Int’l Business Machines Corp. v. Zillow Group Inc., 50 F.4th 1371, 1377 (Fed. Cir. 2022) (listing
a map, knife or scissors, and transparent overlay as part of tools allowing one to perform an abstract
method by hand).
“The first stage of the Alice inquiry” also “looks at the focus of the claims,” or “their
character as a whole.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(quotations and citations omitted).
In this case, Polar contends the ‘227 Patent involves
“personalizing the energy consumption estimation by developing and then using a special energy
consumption reference value based on a user’s fitness, and specifically the user’s maximal oxygen
uptake (VO2max).” Polar’s Opp’n to S. Jdmt. Mot., at 24 (ECF No. 458). With the stated purpose
of the patent in mind, the court now addresses Firstbeat’s contention that the claims at issue fall
under the abstract idea category.
ii.
Claim 5 Is an Abstract Idea
In SAP America, Inc., 898 F.3d at 1165, 1167, the Court addressed the focus of the patent
at issue, where it involved a plurality of items from which an analysis was performed. The Court
stated the focus was “on selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis.” Id. at 1167. The Court concluded it was
“all abstract.” Id. It noted that “[i]nformation as such is an intangible, hence abstract, and
21
collecting information, including when limited to particular content (which does not change its
character as information), is within the realm of abstract ideas.” Id. (quotations, citation, and
alteration omitted). Likewise, “analyzing information by mathematical algorithms, without more,”
also is abstract. Id. (quotations, citations, and alteration omitted).
Here, the first element of Claim 5 requires measuring a person’s heart rate information
during exercise and including a heart rate parameter. Neither the claim nor the specification limit
how “measuring” is to occur or what the heart rate parameter must be. Measuring and including
a heart rate parameter can be accomplished simply by taking someone’s pulse while they are
walking in place and counting the beats per minute while looking at the second hand on a watch.
The focus of the first element is on gathering information.
The second element of Claim 5 involves obtaining an energy consumption reference value
from one or more performance parameters, with at least one of the performance parameters being
maximal oxygen uptake, otherwise known as VO2max. Although the ‘227 Patent allows for
multiple performance parameters, Claim 5 requires no more than VO2max. VO2max is a
fundamental concept when assessing energy consumption and has been utilized for decades to
determine fitness. 3 Consequently, formulas and tables exist where one can obtain a person’s
estimated VO2max. See e.g., Maruo Patent, Col. 10, Lines 20–23 (predicting “maximum oxygen
Firstbeat has referenced an article by Howley et al., Criteria for Maximal Oxygen Uptake:
Review and Commentary, Medicine and Science in Sports and Exercise, at 1292–1301 (1995).
The article states that “[m]aximal aerobic power (VO2max) is one of the most common
measurements made in exercise physiology laboratories. It is generally accepted as the best
measure of the functional limit of the cardiovascular system . . . and is commonly interpreted as
an index of cardiorespiratory fitness.” Id. at 1292. The article further states, “because VO2max
describes such a basic physiological characteristic, it has become a common descriptive variable
much like height, weight, and age.” Id. (emphasis added).
3
22
uptake” based on certain variables); Cooper, at 4 (ECF No. 438-25) (providing tables for predicted
maximum oxygen uptake and fitness). Neither the claim nor the specification preclude one from
simply utilizing formulas and tables to obtain the required information. 4 Consequently, this part
of the second element merely pertains to gathering or collecting information.
Besides “obtaining” an energy consumption reference value from VO2max, the remainder
of second element states, “the energy consumption reference value being a maximum value of
energy consumption associated with the person, the maximum value of energy consumption
representing a value of energy consumption that is associated with the person and corresponds to
a maximum heart rate associated with the person.” Second Reexamination Certificate, Col. 1,
Lines 36–41 (ECF No. 205-7). Thus, the energy consumption reference value is defined as the
maximum value of energy consumption associated with a person and corresponds to that person’s
maximum heart rate.
Dr. Levine attested that “[w]hen a person is at maximum physical
performance, their heart rate is maximum, and their oxygen consumption is maximum.” Levine
Decl. II, ¶ 38 (ECF No. 456-3).
Applying that to the second element, the energy consumption reference value reflects a
known correlation, namely, when a person is at VO2max (the required performance parameter),
that person’s heart rate is at maximum, that person’s physical performance is a maximum, and
thus, that person’s energy consumption is at maximum. Id. ¶¶ 37–38; see also ‘227 Patent, Col.
3, Lines 24–30 (ECF No. 205-1) (remarking that “known physiological formulae” make it
During Claim Construction, the court concluded the term “maximal oxygen uptake” should not
include “the limitations of ‘measured’ and ‘breathing gases.’” Polar Electro Oy v. Suunto Oy, No.
1:17-CV-0139, 2019 WL 6791353, at *5, 8 (D. Utah Dec. 12, 2019). Instead, the court construed
the term to mean “An objectively determined maximum oxygen consumption associated with a
person during the person’s physical performance at maximum heart rate.”
4
23
“possible to calculate the energy consumption reference value corresponding to the maximum
value of the performance parameter”). Accordingly, the limitations added during the second
reexamination appear duplicative of the requirement to obtain an energy consumption reference
value from VO2max, where nothing is added because when one factor is at maximum, so are the
other factors as a product of nature. Moreover, while the units of measurements may change
through known formulas, their character remains as information.
Specifying that the maximum energy consumption and maximum heart rate must be
associated with a person also does not remove the claim from being abstract. Again, these units
of measurement are interchangeable with VO2max. Obtaining VO2max from a formula or table
that reports VO2max based on gender or age, see Lubell Patent, Col. 1, Lines 50–60 (reporting
VO2max levels based on fitness, and stating “[a]s a general proposition, this fitness index [of
VO2max] declines with age, and, for the same fitness level, is slightly lower for women than for
men”), or distance traveled by a person in a 12-minute field test, can satisfy the requirement that
it be “associated with a person.” Neither Claim 5 nor the specification states that being “associated
with a person” requires something other than obtaining the VO2max from a generalized table or
known formulas or obtaining maximum heart rate from a known formula. Consequently, the latter
part of the second element also pertains to gathering or collecting information.
The third element of Claim 5 involves assessing a persons’ energy consumption using at
least the heart rate parameter and the energy consumption reference value. Additionally, there
needs to be a substantial linear relation between the heart rate parameter and the maximum and
lower values of energy consumption. Firstbeat contends the third element can be performed with
a pencil and paper, and nothing within the element requires use of a computer. The court agrees.
24
In Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016), the case
involved claims that did “not call for any form of computer implementation of the claimed
methods.” Instead, the claims were “so broad as to read on an individual performing the claimed
steps mentally or with pencil and paper.” Id. The same is true here. Nothing in the third element
of Claim 5, or in any of the other elements, requires use of a computer. With the exception of
using a watch to help determine a person’s heartrate, the steps can be performed mentally or with
pencil and paper using known formulas and relationships.
iii.
CardioNet
Polar asserts that Claim 5 cannot be reduced simply to measuring, obtaining, and assessing
because the ‘227 Patent asserts it provides an improved method for determining a person’s energy
consumption. Polar cites to CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020)
for support. CardioNet involved cardiac monitoring technology “for detecting and distinguishing
atrial fibrillation and atrial flutter from other various forms of cardiac arrythmia.” Id. at 1362. The
patent uses known R-waves, along with some known correlations. Id. at 1362–63. Nevertheless,
the Federal Circuit concluded the patent was directed to allowable subject matter.
In doing so, the Federal Circuit recognized that “at some level all inventions embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Id. at 1367
(quotations, citations, and alterations omitted). The CardioNet patent did not just claim an
improvement, however. Through testing, it showed “a positive predictivity in excess of 96%”
based on the method used. Id. at 1366. When looking at the claims, the Federal Circuit concluded
the claims were “directed to technological improvements.” Id. at 1369. The claims did not
“merely computerize pre-existing techniques.” Id. at 1370. Instead, the claims “achieve[d]
25
speedier, more accurate, and clinically significant detection of two specific medical conditions out
of a host of possible heart conditions.” Id. Accordingly, the Court rejected the district court’s
finding that “doctors long used the claimed diagnostic processes,” and that the processes could be
performed “mentally or manually.” Id. at 1370–71. The Court therefore concluded its analysis at
Alice step one and did not reach Alice step two because the patent was not directed to an abstract
idea. Id. at 1371.
In this case, Polar and its expert assert Claim 5’s personalization phase develops an
individualized calibration curve to better predict a person’s energy consumption based on that
person’s fitness level. Yet, unlike the method in CardioNet, the elements of Claim 5 do not require
use of a computer to implement, and there were no tests or studies to show how the method in
Claim 5 improved the prediction of a person’s energy consumption. Because the method in Claim
5 can be reduced to collecting information about a heart rate, obtaining an energy consumption
reference value from known formulae or tables, and applying that individualized calibration
through a pencil and paper, the court concludes this case is distinguishable from CardioNet and
that Claim 5 is directed to an abstract idea.
B.
Alice Step Two
At Alice step two, a court “must examine the elements of the claim to determine whether
it contains an inventive concept sufficient to transform the claimed abstract idea or law of nature
into a patent-eligible application.” Genetic Techs. Ltd., 818 F.3d at 1376 (quotations, citations,
and alteration omitted). “The question is whether the claims do significantly more than simply
describe a natural relation.” Id. (quotations, citation, and alterations omitted). Under Alice, “a
claim directed to” an unpatentable subject area cannot survive based “on the novelty of” the
26
concept; “instead, the application must provide something inventive, beyond mere wellunderstood, routine, conventional activity.” Id. (quotations and citations omitted). Whether
something is well-understood or routine is a question of fact, and it “goes beyond what was simply
known in the prior art.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368–69 (Fed. Cir. 2018). The
court now turns to Dr. Levine’s declarations to determine if an issue of fact exists.
i.
Dr. Levine’s Declarations
Polar’s expert Dr. Levine declared that he could not “find a single scientific publication
that uses VO2max to determine free-living energy expenditure,” and “VO2max was not used to
personalize a heart rate monitor before the ‘227 Patent.” Levine Decl. II, ¶ 50 (ECF No. 456-3).
Dr. Levine further declared, “[i]nterestingly, this Court substantiated my research.” Id. ¶ 51. He
then quoted a passage from a prior decision of this court to support his declaration. Id. Given that
the ‘227 Patent survived the second reexamination by adding VO2max as a claim limitation, one
would expect that VO2max was not expressly stated in prior art to calibrate a heart rate monitor.
The passage that Dr. Levine quoted, however, is a statement made by the PTO, not this court. See
Polar Electro Oy v. Suunto Oy, No. 1:17-CV-0139, 2019 WL 6791353, at *6 (D. Utah Dec. 12,
2019). Consequently, this court did not “substantiate” Dr. Levine’s research, nor has this court
engaged in a section 102 or 103 analysis.
Second, Dr. Levine further declared the ‘227 Patent involves an “oddball” approach to
determining energy expenditure, which was not well-understood or routine when invented. Levine
Decl. II, ¶¶ 52–53 (ECF No. 456-3). According to Dr. Levine, “[t]he claimed invention takes a
value for VO2max and works backwards from there and does not depend upon the source of the
VO2max. It is used in this weird way.” Id. ¶ 52. Notably, however, the court is not doing a
27
novelty or obviousness analysis. An invention can be novel or “oddball” and still be unpatentable.
SAP Am., Inc., 898 F.3d at 1163 (finding a patent abstract after it survived reexamination). Instead,
the court’s section 101 analysis focuses on whether Claim 5 supports an advancement in
technology to transform an abstract idea into an inventive concept.
Dr. Levine provides significant detail about the challenges of determining energy
expenditure and how the field of technology seeks more accurate measurements outside of a
laboratory. When addressing the inventive concept of the ‘227 Patent, however, Dr. Levine paints
with a wide brush of generality. One of his most specific statements is the one quoted above where
“the claimed invention takes a value for VO2max and works backwards from there and does not
depend upon the source of the VO2max.” Levine Decl. II, ¶ 52 (ECF No. 456-3). Dr. Levine does
not explain why this concept advanced technology to predict energy consumption more accurately,
particularly when individual calibration of heart rate monitors was already known.
The specification for the ‘227 Patent states prior art had a disadvantage because their
methods did “not take into account that a fit person performs a larger amount of work at a given
heart rate level than an unfit person.” ‘227 Patent, Col. 1, Lines 41–46 (ECF No. 205-1). Yet,
Lubell took into account that the fitness index of VO2max is higher the greater the level of a
person’s fitness, and the patent utilized maximum heart rate and maximum oxygen uptake to
calculate a fitness parameter. Lubell Patent, Col. 1, Lines 49–51, 61–64. Jimenez also took into
account that “a physically fit person is able to transport the same amount of oxygen at a lower
heart rate than an unfit person,” and utilized such “known phenomena” when developing the
patent’s caloric consumption equations. Jimenez Patent, Col. 20, Lines 42–44, 49–51. Thus, while
28
the ‘227 Patent’s specification stated prior art did not take into account a person’s fitness, the prior
art offered by Firstbeat tells a different story.
Additionally, it is important to note the relationship between maximum oxygen uptake,
maximum heart rate, and maximum energy expenditure. As stated in Maruo, “the maximum heart
rate is defined as a heart rate corresponding to a maximal oxygen uptake (VO2max),” with known
conversion formulas. Maruo Patent, Col. 1, Lines 40–51. Dr. Levine further reported that “when
a person is at maximum physical performance, their heart rate is maximum, and their oxygen
consumption is maximum, which is referred to as VO2max.” Levine Decl. II, ¶ 38 (ECF No. 4563).
Consequently, when the PTO concluded that Richardson used maximum heart rate to
determine the value of the user’s estimated maximum aerobic energy expenditure, one could
interchange maximum heart rate with VO2max. This calls into question what technological
advancement the ‘227 Patent made when VO2max can be interchanged, and when it has not only
been a prominent factor in prior art, but consists of a basic physiological characteristic that is a
common descriptive variable when determining fitness.
If the ‘227 Patent were the technological advancement Polar contends it to be, one would
expect Dr. Levine to declare in detail why it is inventive and more accurate in determining energy
consumption. In other words, one would expect detail similar to what Dr. Levine provided when
discussing the background of energy expenditure. He did not do so. Instead, he largely quoted
language from the specification that is repetitive of the language in Claim 5, without connecting
how the quotations showed a technological advancement. He also quoted means for obtaining
maximum oxygen uptake that are not required by Claim 5, such as by obtaining VO2max via
breathing gases or neural networks. Id. ¶ 61.
29
This is similar to the expert statements in Move, Inc. v. Real Estate Alliance Ltd., 721 F.
App’x 950 (Fed. Cir. 2018). In that case, the Federal Circuit concluded the claims were directed
to abstract ideas, and it therefore proceeded to an Alice step two analysis. Id. at 955–56. The
Court reviewed “the individual claim limitations [and] their ordered combination,” and a
declaration from the patentee’s expert. Id. at 957. The expert’s declaration stated the following:
It was considered neither routine nor conventional in the mid-1980s
for a computer-displayed map to be able to zoom to display a higher
level of detail in the sense of displaying information that wasn’t
present at the lower level of detail at all, and this zooming step
cannot be performed by a human.
Id. The Court noted that the expert failed to provide additional rationale beyond the conclusory
statements.
Id.
Consequently, the bald assertions did “not satisfy the inventive concept
requirement.” Id. The Court further stated “[w]here the claim language does not provide any
specific showing of what is inventive about the limitation in question or about the technology used
to generate and process it,” the Court has “concluded that the claims do not satisfy Alice’s second
step.” Id. (quotations, citations, and alteration omitted).
Based on the above, the court concludes Dr. Levine’s declarations fail to show why the
‘227 Patent is a technological advancement so as to transform abstract ideas into an inventive
concept.
ii.
Polar’s Ordered Combination Contention
Polar contends that when the relevant claim elements are analyzed as a combination, they
“satisfy step two of the Alice analysis.” Mem. in Opp’n to S. Jdmt., at 43 (ECF No. 458).
According to Polar, “[t]his particular solution leads to a personalized and a more accurate
assessment of energy consumption that depends upon the unconventional ordered steps of
30
obtaining an energy consumption reference value prior to assessing the person’s energy
consumption using the person’s measured heart rate.” Id.
In SAP America., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163–64 (Fed. Cir. 2018), the
patent was directed at improving financial forecasting so risk and rewards could be better assessed.
“[T]he patent propose[d] a technique that utilizes resampled statistical methods for the analysis of
financial data.” Id. at 1164 (quotations and citation omitted). Although it contained limitations
on the particular methods used, the Federal Circuit concluded “those features simply provide
further narrowing of what are still mathematical operations. They add nothing outside of the
abstract realm.” Id. at 1169.
Here, the ‘227 Patent collects information about a person’s heart rate information and then,
like SAP America, it uses known correlations and formulas to carry out the elements. Individual
calibration of heart rate monitors was already known in 2000. Measuring a person’s heart rate
through any mechanism, setting a heart rate parameter without limitation on what it must be, and
then obtaining an energy consumption reference value from the VO2max performance parameter
without limiting how VO2max is obtained, show steps that read broadly. VO2max does not have
to be obtained through breathing gases, like other prior art. It does not have to be obtained by the
particular subject performing a fitness test correlated to maximum oxygen consumption. It simply
can be obtained from a formula or table. Accordingly, it is not apparent why the ‘227 Patent
provides a more accurate calibration curve, thereby advancing the technology.
The ‘227 Patent was not valid at the time it issued, and it has been in search of an inventive
concept since that time. Because Claim 5’s ordered combination fails to show an inventive concept
sufficient to transform abstract ideas and known correlations under laws of nature, the court
31
concludes Claim 5 is directed to an unpatentable subject matter. Accordingly, Claim 5 is invalid
under section 101.
C.
Representative Claim and Invalidity of Claims 15, 21, and 43
As stated above, the claims at issue in this case are Claims 5, 15, 21, and 43. Firstbeat
centered its argument on Claim 5 as a representative claim “to demonstrate that each of the
Asserted Claims are directed to the abstract idea of assessing a person’s energy consumption
during exercise.” Mot. for S. Jdmt. on Invalidity, at 25 (ECF No. 441). It did so “[g]iven the
similarity of the method and apparatus claims.” Id. Polar disputes that Claim 5 is a representative
claim and asserts that the calculating unit in Claim 21 is not a generic computer because it
“performs specific, inventive functions.” Polar’s Mem. in Opp’n to Mot. for S. Jdmt., at 6–7, 15
(ECF No. 458). It does not appear that Polar addressed whether Claim 5 is representative of Claims
15 or 43.
“When addressing the patent eligibility of multiple asserted claims, the Court may
designate a representative claim or claims where the parties are unable to reach an agreement.” eNumerate Sols., Inc. v. United States, 149 Fed. Cl. 563, 574 (2020) (citing Berkheimer, 881 F.3d
at 1365). In Berkheimer, the Federal Circuit stated, “[c]ourts may treat a claim as representative
in certain situations, such as if the patentee does not present any meaningful argument for the
distinctive significance of any claim limitations not found in the representative claim or if the
parties agree to treat a claim as representative.” Berkheimer, 881 F.3d at 1365 (citations omitted).
Because Polar did not dispute that Claim 5 is representative of Claims 15 and 43, the court
concludes Claim 5 is representative of those two claims.
32
As to Claim 21, in Accenture Global Services, GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1341 (Fed. Cir. 2013), the Federal Circuit recognized “that system claims that closely
track method claims and are grounded by the same meaningful limitations will generally rise and
fall together.” Id. (citation omitted). In that case, “the method and system claims were so closely
related that the system claim essentially implemented the process of the method claim on a general
purpose computer.” Id. (citation omitted). The same is true in this case.
Although Claim 21 has “a measuring means for measuring a person’s heart rate,” and “a
calculating unit for calculating an assessment of the person’s energy consumption during
exercise,” along with “a presenting means for presenting the formed assessment of the person’s
energy consumption,” those limitations do not change that Claim 21 essentially implements the
method of Claim 5 on a general purpose computer. Claim 21 does not disclose an advancement
to the computer itself or to the display or to the means for measuring a person’s heart rate. Instead,
it merely uses those limitations generically to implement Claim 5’s method. Accordingly, the
court concludes that Claim 5 also is representative of Claim 21, and that Claims 15, 21, and 43 are
invalid under section 101.
CONCLUSION
For the reasons stated above, the court concludes Claims 5, 15, 21, and 43 of the ‘227
Patent are invalid under section 101. Because that conclusion is dispositive, the court does not
reach the parties’ other contentions. Accordingly, the court rules on the pending motions as
follows:
1.
Firstbeat’s Motion for Summary Judgment on Non-Infringement and Invalidity
(ECF No. 439) is granted in part and denied as moot in part. The court grants
33
Firstbeat’s motion on the ground that Claims 5, 15, 21, and 43 of the ‘227 Patent
are invalid under section 101 and denies as moot the remainder of the motion.
2.
Polar’s Motion for Summary Judgment on Validity (ECF No. 435) is denied as
moot.
3.
Polar’s Motion for Summary Judgment on Infringement (ECF No. 436) is denied
as moot.
4.
Polar’s Motion to Exclude Firstbeat’s Technical Expert Thomas Blackadar (ECF
No. 475) is denied as moot.
DATED this 4th day of April, 2024.
BY THE COURT:
__________________
Clark Waddoups
United States District Judge
34
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