UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00289
`PATENT 8,872,646
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00289
`PATENT 8,872,646
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`IPR2018-00289
`U.S. Patent 8,872,646
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`Table of Contents
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`B.
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`C.
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`INTRODUCTION.................................................................................. 1
`THE ’646 PATENT ............................................................................... 1
`THE PETITION FAILS TO PROVE OBVIOSNESS ............................ 2
`A.
`The Petition fails to resolve the level of ordinary skill in
`the art ........................................................................................... 3
`Claim construction ....................................................................... 5
`1.
`“glitch” ............................................................................... 5
`2.
`“a change in dominant axis” ............................................... 8
`3.
`“logic to” limitations .......................................................... 8
`No obviousness for “determine/verifying whether the
`motion data includes one or more glitches” and
`“remov[ing] the one or more glitches from the motion
`data” (claims 1, 13, and 20) .......................................................... 9
`1.
`Petitioner fails to prove that McMahan’s “error”
`maps onto the claimed “one or more glitches”.................... 9
`Petitioner fails to prove that McMahan’s
`“modify” teaching maps onto the claimed
`“remov[ing] the one or more glitches from the
`motion data” ..................................................................... 12
`Petitioner fails to explain why it would have been
`obvious to a person of ordinary skill in the art to
`combine McMahan as proposed ....................................... 15
`The proof of obviousness for dependent claims 3, 5−11,
`and 14−18 .................................................................................. 18
`CONCLUSION .................................................................................... 18
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`2.
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`3.
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`D.
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`I.
`II.
`III.
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`IV.
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`ii
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`IPR2018-00289
`U.S. Patent 8,872,646
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Response to Petition IPR2018-00289 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 8,872,646 (“the ’646 patent” or “EX1001”) filed by
`Apple, Inc. (“Petitioner”). The instant Petition should be denied in its entirety for the
`reasons set forth herein.
`II. THE ’646 PATENT
`The ’646 patent is titled “Method and System For Waking Up A Device Due
`To Motion.” The ʼ646 patent issued October 28, 2014, from U.S. Patent Application
`No. 12/247,950 filed October 8, 2008.
`The ’646 patent observes that battery life has become increasingly important
`for mobile devices, particularly given that the more applications a mobile device has,
`the faster the battery of the mobile device depletes. It thus could be difficult to
`balance maximum battery life with an optimal user experience. EX1001, 1:12−20.
`The ’646 Patent teaches an innovative solution to determine whether a measured
`device motion is sufficient enough to warrant waking up a mobile device from an
`idle, battery-saving state to an active state. See, e.g., id., Abstract; 1:24−25; 1:56−63.
`According to a particular embodiment, when a device enters an idle state using
`a low-power mode, it nevertheless maintains sufficient power to monitor at least one
`sensor. Id., 2:10−27. This design may help ensure that when the device is picked up
`to be used by a user, the device can automatically transition from the idle state to an
`active state. By initiating the transition from the idle state to the active state without
`requiring user input, the user experience may be enhanced. Id., 2:34−41.
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`1
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`IPR2018-00289
`U.S. Patent 8,872,646
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`The patent uses the word “glitch” to refer to actual motion data deemed to not
`fit the signature of human motion indicative of someone preparing to interface with
`a device. See, e.g., EX1001 at Abstract; 1:59−63; 2:35−51; 4:61−5:2. While a
`“glitch” is within the operational range of the sensor, it does not warrant waking up
`the device from an idle state to an active state. Id. The ’646 patent provides multiple
`examples of events that may cause such a “glitch” measurement, such as “a mere
`jostle or bump” (4:62; see also 1:63), “the table on which the device is resting is
`shaken” (2:46−47), “the purse is jostled” (2:47), “a little jostle of a desk or table on
`which the device is laying” (4:63−64), “a heavy step nearby” (4:64), etc.
`Motion data determined to be a “glitch” does not warrant waking up the device
`from an idle state to an active state. Id. at 4:61−66. In contrast, motion data
`determined to correspond to other movement (e.g., as a result of a device being
`picked up by a user intending to user the device) may warrant automatically awaking
`the device from an idle state to an active state. See, e.g., id. at Abstract; 4:66−5:2.
`Power usage may be reduced by designing the device to automatically evaluate
`whether motion data is or is not associated with a user preparing to intentionally
`engage with the device. See, e.g., id., Abstract; 2:46−51.
`III. THE PETITION FAILS TO PROVE OBVIOSNESS
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§ 42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges:
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`2
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`Ground
`1
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`IPR2018-00289
`U.S. Patent 8,872,646
`Reference(s)
`Pasolini1, Goldman2, McMahan3, and Mizell4
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`Claims
`1, 3, 5−7, 9−11,
`13−15, 17, and 20
`8, 16, and 18
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`2
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`Pasolini, Goldman, McMahan, Mizell, and Park5
`A. The Petition fails to resolve the level of ordinary skill in the art
`To prevail on its theory of obviousness, Petitioner has the burden to prove that
`“the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103. Consistent with that statutory framework, and as
`reiterated by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S.
`398 (2007) (“KSR”), the factual inquiries for determining obviousness under 35
`U.S.C. § 103 are enunciated in Graham v. John Deere Co., 383 U.S. 1 (1966) as
`follows:
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`(A) Determining the scope and content of the prior art;
`(B) Ascertaining the differences between the claimed invention and
`the prior art; and
`(C) Resolving the level of ordinary skill in the pertinent art.
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` 1
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` EX1003, U.S. Patent No. 7,409,291
`2 EX1004, Goldman, “Using the LIS3L02AQ Accelerometer”
`3 EX1005, U.S. Patent No. 7,204,123
`4 EX1007, David Mizell, “Using Gravity to Estimate Accelerometer Orientation”
`5 EX1014, U.S. Patent No. 7,028,220
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`See also MPEP § 2141 (quoting the same). Rule 42.22(a)(2) states that the petition
`itself must contain a “full statement of the reasons for the relief requested, including
`a detailed explanation of the significance of the evidence . . . .”
`The Petition does not set forth the requisite analysis necessary to prove
`obviousness at least because (among other deficiencies) it fails to provide or
`expressly rely upon any definition for the level of ordinary skill in the pertinent art.6
`Further, the Petition fails to explain how its analysis conforms to that required
`perspective (i.e., a perspective that the Petition itself fails to define).
`This deficiency is not something that can be cured after filing a Petition or
`through incorporation by reference. Further, the Federal Circuit has repeatedly
`admonished the Board against adopting arguments not raised in the Petition itself.
`See, e.g., Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027
`(Fed. Cir. 2017) (citing In re Magnum Oil Tools Int’l, Ltd, 829 F.3d 1364, 1377,
`1380 (Fed. Cir. 2016) and SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
`1351 (Fed. Cir. 2016)). This is true even where the argument “‘could have been
`included in a properly-drafted petition.’” Rovalma, 856 F.3d at 1027 (quoting and
`discussing Magnum Oil, 928 F.3d at 1377).
`
`
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` While the Petition makes certain citations to the declaration of Dr. Paradiso
`(EX1002), the Petition provides no citation to, and does not expressly purport to
`rely upon, any alleged definition for a person of ordinary skill in the art in that
`declaration. Moreover, “[a] brief must make all arguments accessible to the judges,
`rather than ask them to play archeologist with the record.” DeSilva v. DiLeonardi,
`181 F.3d 865, 866-67 (Fed. Cir. 1999), accord, Ariosa Diagnostics v. Verinata
`Health, Inc., IPR 2013-00276, Paper No. 43 (quoting the same).
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`B. Claim construction
`The Petition injects several claim construction disputes that highlight multiple
`deficiencies of the Petition and hence warrant resolution here. The disputes largely
`center on the term “glitch” and the limitations in which that term appears. The Board
`need not construe the other terms identified in the Petition to resolve the dispute
`between the parties.
`“glitch”
`1.
`The Petition seeks to construe “glitch” as follows: “a ‘glitch’ includes a datum
`that is outside of an acceptable range.” Pet. 7. As alleged support for its construction,
`Petitioner relies exclusively on the following description of a particular embodiment
`in the ’646 patent:
`
`In one embodiment, a glitch is a datum that indicates a motion
`outside an acceptable range. For example, it is extremely
`unlikely that a device would go from idle (e.g., no motion) to
`moving at an acceleration of 64 feet per second squared
`(equivalent to 2 g).
`Id. (citing EX1001, 6:36−40). Petitioner’s construction is inconsistent in several
`respects with the cited passage. Additional inconsistencies arise when one considers
`the remainder of the intrinsic evidence, including the claim language itself.
`Resolution of this dispute is warranted here because Petitioner applies an improper
`construction for “glitch” when relying on McMahan to allegedly cure the conceded
`deficiencies of the remainder of the cited references.7
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` As described further below, McMahan’s “error” is an impossible value that does
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`U.S. Patent 8,872,646
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`First, Petitioner’s definition for “glitch” removes the above-described aspect
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`that it “indicates a motion” and that it is the actual motion itself “that is outside of
`an acceptable range.” EX1001, 6:36−40. The Petition provides no argument,
`evidence, or explanation for why a “glitch” as claimed refers to any type of datum,
`including that which does not indicate actual motion. Further, Petitioner’s
`construction fails to comprehend that the phrase “outside of an acceptable range”
`(in the above-cited description) refers to a range of motion that, although accurately
`determined, does not warrant waking up the device from an idle state to an active
`state. Id. Petitioner’s construction is plainly inconsistent with the only intrinsic
`evidence upon which it purportedly relies.
`The remainder of the specification consistently and repeatedly uses the word
`“glitch” to refer to actual motion data deemed to not fit the signature of human
`motion indicative of someone preparing to interface with a device. See, e.g., EX1001
`at Abstract; 1:59−63; 2:35−51; 4:61−5:2. While a “glitch” is within the operational
`range of the sensor, it does not warrant waking up the device from an idle state to
`an active state. Id.
`The ’646 patent provides multiple examples of motion that, although
`accurately measured, may be deemed a “glitch.” For example, the speciation
`discloses that a “glitch” may result from “a mere jostle or bump” of the device (4:62;
`see also 1:63), “the table on which the device is resting is shaken” (2:46−47), “the
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`not indicate a motion and, for at least this reason, does not map onto the “glitch”
`term. Pet. 31 (citing EX1005, 4:26−30).
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`purse is jostled” that contains the device (2:47), “a little jostle of a desk or table on
`which the device is laying” (4:63−64), “a heavy step nearby” (4:64), etc. In every
`example provided, the ’646 patent describes the “glitch” as indicating actual motion
`that the system is designed to monitor in evaluating whether such motion warrants
`waking up the device. See, e.g., EX1001 at Abstract; 1:59−63; 2:35−51; 4:61−5:2.
`Petitioner’s attempt to disconnect “glitch” from the thematic description that
`it “indicates a motion” (6:36−40) is also inconsistent with the claim language itself.
`Claim 1 recites “receiving motion data from a motion sensor in a device, the motion
`sensor sensing motion along three axes; [and] verifying whether the motion data
`includes one or more glitches and removing the one or more glitches from the
`motion data[.]” There can be no question that the recited “one or more glitches”
`must be part of the “motion data” recited in the antecedent “receiving” step.
`Independent claims 13 and 20 similarly confirm that each of the “one or more
`glitches” is part of the measured “motion data.”
`Second, Petitioner’s construction that “a ‘glitch’ includes a datum that is
`outside of an acceptable range” is decidedly different from the sole description
`Petitioner relies upon: “in one embodiment, a glitch is a datum that indicates a
`motion outside an acceptable range.” Compare Pet. 7 with EX1001, 6:36−38.
`Petition offers no argument, evidence, or explanation for why a “glitch” should be
`defined in terms of what it purportedly includes (an unreasonably broadening
`construction), as opposed to what it is.
`The claim language itself further refutes Petitioner’s attempted rewrite. The
`“verifying” and “determine” limitations do not consider whether a “glitch” includes
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`U.S. Patent 8,872,646
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`datum outside an acceptable range. Rather, the claim language unambiguously
`recites “verifying whether the motion data includes one or more glitches.” As
`detailed below, Petitioner seeks to depart from the intrinsic evidence and the claim
`language to advance its theory asserting distinguishable teachings of McMahan.
`“a change in dominant axis”
`2.
`No party offers a construction for “a change in dominant axis,” as recited in
`claims 1, 13, and 20. The Petition does, however, argue that the scope of this term,
`as recited in all independent claims, must include what is recited only in dependent
`claim 7: “wherein the change in the dominant axis comprises a change in
`acceleration along the dominant axis.” The Board need not determine whether the
`recitation in claim 7 (which depends from claim 1) dictates the scope of the other
`independent claims 13 and 20, in order to resolve the dispute between the parties.
`“logic to” limitations
`3.
`The Board observed in its Institution Decision that
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`Here, neither party asserts § 112, ¶ 6 should apply or offers any
`evidence to overcome the presumption against doing so. See PO
`Prelim. Resp. 6–13 (asserting that the “logic to” claim terms are
`not governed by 35 U.S.C. § 112(6)); Pet. 8–16 (offering
`alternative claim constructions under § 112, ¶ 6, but only “to the
`extent Patent Owner overcomes the presumption against
`construction under 35 U.S.C. 112, sixth paragraph”). Thus, we
`decline to adopt a construction under § 112, ¶ 6 at this stage of
`the proceeding.
`Paper 7 at 9. Patent Owner submits that, for purposes of this proceeding, the “logic
`to” limitations are straightforward and require no construction beyond the claim
`language itself.
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`IPR2018-00289
`U.S. Patent 8,872,646
`C. No obviousness for “determine/verifying whether the motion data
`includes one or more glitches” and “remov[ing] the one or more
`glitches from the motion data” (claims 1, 13, and 20)
`The Petition should be denied in its entirety is failing to establish obviousness
`for “determine/verifying whether the motion data includes one or more glitches” and
`“remov[ing] the one or more glitches from the motion data,” as recited in
`independent claims 1, 13, and 20 (and hence all challenged claims).8 The Petition
`relies exclusively on McMahan for all limitations reciting the “glitch” term. Pet.
`30−31. The cited portions of McMahan are distinguishable from the claim language
`for each one of the several fully-dispositive reasons that follow.
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`1.
`
`Petitioner fails to prove that McMahan’s “error” maps onto
`the claimed “one or more glitches”
`the
`to
`in McMahan
`First, Petitioner
`incorrectly maps
`the “error”
`distinguishable “glitch” disclosed and claimed in the ’646 patent. McMahan defines
`its “error” as a value that is impossible and not an accurate reflection of motion
`because it is outside what the sensor is designed to monitor. This definition is
`reflected, for example, in the following quotation from McMahan that Petitioner
`offers as alleged support for its mapping: “[w]hen the output of sensor 102 is not
`within the expected range of its normal operation, it is presumed that the output is
`an error. This means that the output of the sensor is not an accurate reflection of the
`
`
`
` Petitioner’s challenge of independent claim 13 relies on identical arguments
`presented in challenging claim 1. Compare Pet. 30−31 with Pet. 49−50. Similarly,
`Petitioner’s challenge of independent claim 20 relies exclusively on its challenge
`of claim 13. See Pet. 60. Accordingly, the deficiencies of the challenge against
`claim 1 taint the entire Petition.
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`U.S. Patent 8,872,646
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`stimulus that the sensor is designed to monitor.” Pet. 31 (citing EX1005, 4:26−30)
`(emphasis added).
`The “error” in McMahan bears no resemblance to the “glitch” disclosed and
`claimed in the ’646 patent. As detailed above in addressing claim construction
`(§III.B.1), the ’646 patent consistently and repeatedly uses the word “glitch” to refer
`to actual motion data deemed to not fit the signature of human motion indicative of
`someone preparing to interface with a device. See, e.g., EX1001 at Abstract;
`1:59−63; 2:35−51; 4:61−5:2. While a “glitch” is within the operational range of the
`sensor, it does not warrant waking up the device from an idle state to an active state.
`Id.
`
`The ’646 patent provides multiple examples of events that may cause such a
`“glitch” measurement, such as “a mere jostle or bump” (4:62; see also 1:63), “the
`table on which the device is resting is shaken” (2:46−47), “the purse is jostled”
`(2:47), “a little jostle of a desk or table on which the device is laying” (4:63−64), “a
`heavy step nearby” (4:64), etc. Unlike the “error” in McMahan, each example
`“glitch” described in the ’646 patent indicates actual motion (generally characterized
`as “a mere jostle or bump”) that the device is designed to monitor, though such
`motion does not warrant waking up the device. See, e.g., EX1001 at Abstract;
`1:59−63; 2:35−51; 4:61−5:2.
`This understanding of the term “glitch” is reflected in the claim language
`itself. The claim language recites “determine/verifying whether the motion data
`includes one or more glitches.” In claim 1, the recitation “the motion data” derives
`its antecedent basis from the limitation “receiving motion data from a motion sensor
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`in a device.” Independent claim 13 derives its antecedent basis for the same “motion
`data” term from the recitation “a motion sensor to sense motion along three axes and
`generate motion data.” Independent claim 20 is similar to claim 13. This explicit
`context in the claim language reflects the disclosure in the specification that a
`“glitch” refers to and is part of the actual motion data that the motion sensor
`measures, unlike the “error” in McMahan.
`This understanding is also reflected in the sole passage of the ’646 patent that
`the Petition considers when offering a definition for the “glitch” term. The Petition
`focuses exclusively on the following quotation describing a particular embodiment:
`“[i]n one embodiment, a glitch is a datum that indicates a motion outside an
`acceptable range. For example, it is extremely unlikely that a device would go from
`idle (e.g., no motion) to moving at an acceleration of 64 feet per second squared
`(equivalent to 2 g).” Pet. 7 (citing EX1001, 6:36−40). Petitioner then concludes that
`“a ‘glitch’ includes a datum that is outside of an acceptable range.” Id. It is telling
`that Petitioner seeks to construe “glitch” in a manner that removes the explicit
`description that it “is a datum that indicates a motion.” Evidently Petitioner
`recognized that McMahan describes its “error” as an impossible value that does not
`indicate a motion. Pet. 31 (citing EX1005, 4:26−30). But claim construction is not
`an exercise of redrafting claim language to fit an untenable theory.
`A review of the cross-examination transcript of Petitioner’s declarant, Dr.
`Paradiso, reveals that he erroneously conflated the “glitch” term of the ’646 patent
`with the distinguishable concept of “distortion” that affects the accuracy of a
`measurement.
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`If you look, in general, using accelerometers, any kind of
`distortion of the data is going to affect the accuracy. … When
`you use a device, if there’s distortion in the device, you have
`difficulty with the accuracy. And a POSITA would be aware of
`glitches because we saw them, you know, we encountered them.
`The early accelerometers were even worse. And we would
`always put in a glitch detector because these glitches would
`affect the accuracy adversely.
`Exhibit 2002, Certified Transcript of Josh A. Paradiso, PH.D. (“EX2002”) at
`19:25−20:21. Dr. Paradiso’s conflation of the “glitch” term and the distinguishable
`concept of distortion is inconsistent with the intrinsic evidence and undermines both
`his credibility and his conclusion of obviousness.
`The example “glitches” described in the ’646 patent are not correctly
`characterized as distortions or inaccurate measurements, as Dr. Paradiso suggests.
`Rather, as explained above (in §II.B.1), the ’656 patent uses the term “glitch” to refer
`to actual motion data deemed to not fit the signature of human motion indicative of
`someone preparing to interface with a device. See, e.g., EX1001 at Abstract;
`1:59−63; 2:35−51; 4:61−5:2.
`Petitioner’s incorrect and unproven mapping of McMahan’s “error” onto the
`claimed “one or more glitches” provides a fully-dispositive and independent basis
`to deny the Petition in its entirety.
`
`2.
`
`Petitioner fails to prove that McMahan’s “modify” teaching
`maps onto the claimed “remov[ing] the one or more glitches
`from the motion data”
`Second, the Petition fails to prove its mapping of certain portions of
`McMahan addressing modifying an “error” onto “remov[ing] the one or more
`glitches from the motion data,” as recited in each challenged claim. Petitioner’s
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`theory fails at the outset because, as described above (in §III.C.1), the “error”
`described in McMahan is an impossible value that is never included as part of the
`motion data. Thus, the “error” described in McMahan (1) is not a “glitch” as claimed
`(see §III.C.1) and (2) cannot be removed from “the motion data” if it was never part
`of “the motion data” in the first place.
`The “remov[ing]” claim limitations must be understood in light of their
`recited context. As detailed above (in §§ III.B.1 and III.C.1), each “remov[ing]”
`limitation (of claims 1, 13, and 20) derives antecedent basis for the term “the motion
`data” from a respective limitation in which that term is introduced. It follows that
`each “remov[ing]” limitation refers to a sample of “motion data” that must already
`exist. That the first recited instance of “motion data” refers to more than one data
`point is made evident by the recitation of “remov[ing] one or more glitches from the
`motion data.” Thus, the claim language unambiguously requires that (1) the “motion
`data” must exist as a collective whole prior to the “remov[ing],” (2) the “one or more
`glitches” (if any) are each included as part of that “motion data,” and (3) certain
`“motion data” must remain (e.g., data determined/verified to not be a “glitch”)
`because “the one or more glitches” are removed from “the motion data.”
`This plain reading of the claim language reveals additional defects in the
`mapping applied in the Petition. The Petition focuses exclusively on certain
`disclosure in McMahan addressing modifying an “error” and, as alleged support,
`relies solely on two citations (EX1005, 4:26−30 and 4:35−38) and unexplained
`annotations to Figure 3. Pet. 30−31. The declaration attached to the Petition is
`unavailing because it merely offers the same unexplained annotations to Figure 3 of
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`McMahan, accompanied with the same conclusory statements and quotations
`verbatim. Notably absent from the Petition is any cognizable explanation for why
`the disclosed “modify” block 308 in McMahan allegedly maps onto the “remove”
`and “removing” claim limitations. It does not.
`
`The “modify” block 308 refers to processing an erroneous output which, due
`to its impossible value, is never included as part of anything that can be considered
`motion data (and thus it cannot be removed from such data). Indeed, McMahan
`teaches away from inclusion of an “error” within motion data and, by extension,
`also teaches away from subsequent removal of that “error” from motion data. For
`example, McMahan states (in a passage connecting the disjointed portions Petitioner
`cites) that “[i]f the error is allowed to propagate to the electronic circuit 106, the
`operation of electronic circuit 106 is likely to be compromised since the error may
`be magnified when relied on in further operations by electronic circuit 106.”
`EX1005, 4:31−34. In other words, the “error” in McMahan, by intended design, is
`not passed on and never included as part of anything that can be considered motion
`data.
`In its Institution Decision, the Board argues on behalf of Petitioner that
`
`McMahan teaches “[w]hen an output data set is modified or replaced, it no longer
`includes the original input.” Paper 7 at 12; cf. Rovalma, 856 F.3d at 1027 (reiterating
`that the PTAB may not adopt arguments on behalf of a petitioner that are not raised
`in the petition itself) (citations omitted). The Petition does not advance (and has
`therefore waived) the argument that McMahan teaches “an output data set is
`modified or replaced.” Perhaps Petitioner recognized that McMahan processes
`
`14
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`IPR2018-00289
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`sensor output individually and, to avoid comprising the system, does not pass on
`any value determined to be an “error.” Modifying a single “error” (i.e., not a
`“glitch”) before the modification is purportedly included within a so-called “data
`set” (a couplet that does not appear in McMahan or the Petition) is distinguishable
`from “remov[ing] the one or more glitches from the motion data,” as recited in all
`challenged claims.
`For the foregoing additional reasons, Petitioner has failed to prove that
`McMahan’s “error” modification maps onto the recitation “remov[ing] the one or
`more glitches from the motion data.” This provides yet another a fully-dispositive
`and independent basis to deny the Petition in its entirety.
`
`3.
`
`Petitioner fails to explain why it would have been obvious to
`a person of ordinary skill in the art to combine McMahan as
`proposed
`Third, the Petition fails to provide a cognizable basis for why a person of
`ordinary skill the art (who the Petition fails to define) would have been motivated
`to combine the cited portion of McMahan with the three other references identified
`in the Petition. Petitioner first argues that “a POSITA would have also recognized
`the desirability of removing accelerometer signal errors in order to have more
`reliable accelerometer data, as evidenced by McMahan.” Pet. 26. But McMahan
`does not even purport to address “more reliable accelerometer data.” Indeed, no
`form of the word “reliable” appears anywhere in the McMahan disclosure.
`As discussed above (in §§III.C.1−2), the cited portion of McMahan teaches
`passing on a made-up (i.e., not reliable) value when an “error” occurs. This made-
`
`15
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`IPR2018-00289
`U.S. Patent 8,872,646
`
`up value serves the express purpose of not allowing the “error” “to propagate to the
`electronic circuit 106” and thereby likely compromise the system “because the error
`may be magnified when relied on in further operations by electronic circuit.”9 The
`Petition fails to prove (or even attempt to argue) that the electronic-circuitry
`concerns detailed in McMahan are present in the other cited references, much less
`their proposed combination, such that those references are all compatible with and
`would have the same articulated benefits of this particular aspect of the McMahan
`design.
`Petitioner also fails to prove its allegation that combining the cited portion of
`McMahan “would have allowed the accelerometer of the Pasolini and Goldman
`combination to be a more ‘accurate reflection of the stimulus that the sensor is
`designed to monitor.’” Pet. 26 (citing EX1005, 4:29−30). The alleged accuracy
`enhancement described in the cited portion of McMahan is expressly “based on a
`sensor with two crystal oscillator beams.” EX1005, 4:1−43. The Petition offers no
`argument or evidence to conclude that this sensor-specific technique could be
`applied to the entirely different accelerometers of either Pasolini or Goldman, let
`alone to the so-called and merely hypothetical “accelerometer of the Pasolini and
`Goldman combination.” Pet. 26.
`
`
`
` EX1005, 4:31−34; see also id. at 4:39-43 (By enhancing the output from sensor
`102 during anomalous events in this manner, enhancement circuit 104 improves
`the performance of electronic system 106 by reducing the impact of incorrect
`readings from sensor 102 on the operation of electronic system 106.”) (emphasis
`added).
`
` 9
`
`16
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`IPR2018-00289
`U.S. Patent 8,872,646
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`In the case of In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir.
`2008), the Federal Circuit affirmed a finding of non-obviousness because the alleged
`problem that ostensibly prompted the combination had not been recognized in the
`art itself. Here, the Petition offers no evidence to support the proposition that either
`Pasolini and Goldman (let alone their combination) relies upon a sensor subject to
`the same highly-specific “error” problem identified in McMahan. Because those
`references do not recognize the same “error” problem, a person of ordinary skill in
`the art would not have been motivated to apply the problem-specific technique in
`McMahan.
`Petitioner mischaracterizes the cited teachings of McMahan in suggesting
`“McMahan’s technique would have been easily implementable using coding, as
`taught by Goldman.” Id. The cited technique in McMahan requires “using the data
`from the good crystal, e.g., the crystal with the value within the normal operating
`range.” EX1005, 4:17−19; see also Pet. 26 (citing EX1005, 4:29−30). That
`technique is not a solution implemented entirely in “coding,” but rather it is
`explicitly based on a specific sensor design.
`Further, Petitioner’s declarant admitted during cross-examination that the
`referenced “coding” allegedly taught by Goldman is wholly unrelated to the so-
`called McMahan technique. EX2002 at 38:1−12.10 Goldman admittedly is
`
`
`
`10 The declaration attached to the Petition is also unavailing because it merely repeats,
`literally verbatim, the same unsupported statements addressed above. Compare
`Pet. 26 with EX1010 ¶ 82.
`
`17
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`IPR2018-00289
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`referenced merely for the (irrelevant) propositio
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