Paradiso Decl.
`
`Inter Partes Review of U.S. 8,872,646
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`52959.48
`
`27683
`
`In re patent of Kahn, et al.
`
`U.S. Patent No. 8,872,646
`
`
`Issued: October 28, 2014
`
`
`Title: Method and System for
`Waking a Device Due to Motion
`
`
`
`
`
`§ Petition for Inter Partes Review
`§
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`§ Attorney Docket No.:
`§
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`§ Customer No.:
`§
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`§ Real Party in Interest: Apple Inc.
`§
`
`§
`
`§
`
`§
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`§
`
`
`
`
`
`Declaration of Joseph A. Paradiso, PhD
`under 37 C.F.R. § 1.68
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`APPL-1010 / Page 1 of 89
`Apple v. Uniloc
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`Paradiso Decl.
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`Inter Partes Review of U.S. 8,872,646
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 3
`LEVEL OF ORDINARY SKILL IN THE ART ....................................................... 9
`III. RELEVANT LEGAL STANDARDS ...........................................................10
`A. Anticipation ............................................................................................11
`B. Obviousness ...........................................................................................11
`IV. BACKGROUND OF ACCELEROMETERS ...............................................13
`V.
`THE ’646 PATENT .......................................................................................14
`A. Overview of the ’646 Patent ..................................................................14
`1. Alleged Problem .............................................................................14
`2. Summary of Alleged Invention of the ’646 Patent ........................15
`B. Prosecution History of the ’646 Patent ..................................................16
`VI. BROADEST REASONABLE INTERPRETATION ...................................20
`A. “glitch” ...................................................................................................21
`B. “a change in the dominant axis” ............................................................21
`C. “dominant axis logic to determine an idle sample value for a dominant
`axis of the mobile device based on the motion data” ............................22
`D. “dominant axis logic … to compare a difference between a current
`sample value along the dominant axis determined based on the motion
`of the device and the idle sample value of the dominant axis against a
`threshold value” .....................................................................................23
`E. “computation logic to determine whether the motion caused a change in
`the dominant axis” .................................................................................25
`“power logic to wake up the device when the motion of the device
`indicates a change in the dominant axis of the device” .........................26
`
`F.
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`Inter Partes Review of U.S. 8,872,646
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`VII.
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`G. “power logic to move the device from the inactive state to an active
`state upon detection of a change in the dominant axis which is the axis
`experiencing the largest effect of gravity” ............................................27
`H. “long average logic to calculate an average of accelerations over a
`sample period” .......................................................................................28
`“device state logic to restore the device a last active state” ..................29
`I.
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....30
`A. Challenge #1: Claims 1, 3, 5-7, 9-11, 13-15, 17, and 20 are
`unpatentable under 35 U.S.C § 103 over Pasolini in view of Goldman,
`McMahan, and Mizell ............................................................................30
`1. Summary of Pasolini ......................................................................31
`2. Summary of Goldman ....................................................................34
`3. Reasons to combine Pasolini and Goldman ...................................36
`4. Summary of McMahan ..................................................................40
`5. Reasons to combine McMahan with Pasolini and Goldman .........41
`6. Summary of Mizell ........................................................................42
`7. Reasons to combine Mizell with Pasolini and Goldman ...............42
`8. Detailed Analysis ...........................................................................43
`B. Challenge #2: Claims 8, 16, and 18 are unpatentable under 35 U.S.C
`§103 over Pasolini in view of Goldman, McMahan, Mizell, and Park .82
`1. Summary of Park ............................................................................82
`2. Reasons to Combine Park with Pasolini and Goldman .................83
`3. Detailed Analysis ...........................................................................83
`VIII. CONCLUSION ..............................................................................................86
`
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`Paradiso Decl.
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`Inter Partes Review of U.S. 8,872,646
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`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
`
`of the Inter Partes Review of U.S. Patent No. 8,872,646 (“the ’646 patent”) to
`
`Kahn, et al.
`
`2.
`
`I am being compensated for my work in this matter at the rate of
`
`$500/hour. I am also being reimbursed for reasonable and customary expenses
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`associated with my work and testimony in this investigation. My compensation is
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`not contingent on the outcome of this matter or the specifics of my testimony.
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`3.
`
`I have been asked to provide my opinions regarding whether claims 1,
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`3, 5-11, 13-18, and 20 of the ’646 patent are unpatentable, either because they are
`
`anticipated or would have been obvious to a person having ordinary skill in the art
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`(“POSITA”) at the time of the alleged invention, in light of the prior art. It is my
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`opinion that all of the limitations of claims 1, 3, 5-11, 13-18, and 20 would have
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`been obvious to a POSITA.
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`4.
`
`In the preparation of this declaration, I have studied:
`
`a)
`
`b)
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`The ’646 patent, Exhibit 1001 (APPL-1001);
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`The prosecution history of the ’646 patent, Exhibit 1002 APPL-
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`1002);
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`1
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`c)
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`U.S. Patent No. 7,409,291 to Pasolini et al. (“Pasolini”),
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`Exhibit 1003 (APPL-1003).
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`d)
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`Using the LIS3L02AQ Accelerometer, Ron Goldman, Sun
`
`Microsystems Inc. Dated February 23, 2007. (“Goldman”),
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`Exhibit 1004 (APPL-1004);
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`e) U.S. Patent No. 7,204,123 to McMahan et al. (“McMahan”),
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`Exhibit 1005 (APPL-1005);
`
`f)
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`U.S. Patent Publication No. 2006/0161377 to Rakkola et al.
`
`(“Rakkola”), Exhibit 1006 (APPL-1006);
`
`g)
`
`Using Gravity to Estimate Accelerometer Orientation,” David
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`Mizell, Proceedings of the Seventh IEEE International
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`Symposium on Wearable Computers (ISWC ’03) 2003.
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`(“Mizell”), Exhibit 1007 (APPL-1007);
`
`h)
`
`Dictionary of Scientific and Technical Terms, McGraw-Hill
`
`(“McGraw-Hill”), 1994, Exhibit 1009 (APPL-1009);
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`i)
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`Merriam-Webster’s Collegiate Dictionary, 10th Ed., Merriam-
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`Webster, Inc., 2002, Exhibit 1013 (APPL-1013);
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`j)
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`U.S. Patent No. 7,028,220 to Park et al. (“Park”), Exhibit 1014
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`(APPL-1014).
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`2
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`5.
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`In forming the opinions expressed below, I have considered:
`
`a)
`
`The documents listed above, and
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`b) My own knowledge and experience based upon my work in the
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`field of wireless communications, as described below.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`6. My complete qualifications and professional experience are described
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`in my Curriculum Vitae, a copy of which can be found in APPL-1011. The
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`following is a brief summary of my relevant qualifications and professional
`
`experience.
`
`7.
`
`As shown in my curriculum vitae, I have devoted my career to various
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`fields of physical, electrical, and computer science with more than two decades
`
`focused on embedding sensing, including wearable and wireless sensors. I have 20
`
`years of experience in wearable devices and computing, during which I invented
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`and fielded many types of wearable activity tracking devices that utilized a variety
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`of power management and wakeup protocols.
`
`8.
`
`I am the Alexander W. Dreyfoos (1954) Professor in Media Arts and
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`Sciences at the Massachusetts Institute of Technology (MIT), where I direct the
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`Responsive Environments Group, which explores how sensor networks augment
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`and mediate human experience, interaction and perception. I also have served as
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`3
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`co-director of the Things That Think Consortium, a group of MIT Media Lab
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`researchers and industrial partners focused on the future of embedded computation
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`and sensing, and am now serving as our Associate Department Head.
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`9.
`
`I received my B.S. in electrical engineering and physics summa cum
`
`laude from Tufts University in 1977 and my Ph.D. in physics from MIT in 1981.
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`From 1981 to 1984, I did post-doctoral research at the Swiss Federal Institute of
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`Technology (ETH) in Zurich, working on sensor technology for high-energy
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`particle physics. From 1984-1994, I was a physicist at the Draper Laboratory in
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`Cambridge, Massachusetts, where, as a member of the NASA Systems and
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`Advanced Sensors and Signal Processing Directorates, my research included
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`spacecraft control systems and sensor technology for both sonar systems and high-
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`energy physics. I also worked at Draper Lab as an undergraduate (1974-1978) on
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`software for advanced strategic inertial measurement units and guidance systems.
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`From 1992-1994, I directed the development of precision alignment sensors for the
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`GEM muon detector at the Superconducting Supercollider, and worked on design
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`of particle detectors at the CERN Large Hadron Collider (LHC).
`
`10.
`
`I joined the MIT Media Lab in 1994. The MIT Media Lab was
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`founded in 1985 to actively promote a unique, anti-disciplinary culture that focuses
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`on research projects joining different technological and academic fields. As
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`
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`described further below, researchers at the MIT Media Lab have pioneered areas
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`such as wearable computing, tangible interfaces, and affective computing.
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`Examples of products or platforms spun off Media Lab research include electronic
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`ink readers such as the Amazon Kindle and Barnes & Noble Nook, the popular
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`video game Guitar Hero, the MPEG-4 structured audio format, the first bionic
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`lower-leg system for amputees, wireless mesh networks developed by Nortel, and
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`the Mercury RFID Reader, commercialized by spin-off ThingMagic. Today, the
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`Lab is supported by more than 70 sponsors/members, comprising some of the
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`world’s leading corporations and representing the fields of electronics,
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`entertainment, fashion, health care, greeting cards, and telecommunications, among
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`others. Faculty members, research staff, and students at the Lab work in more than
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`25 research groups on more than 350 projects that range from digital approaches
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`for treating neurological disorders, to a stackable, electric car for sustainable cities,
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`to advancing imaging technologies that can see around corners.
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`11. Upon joining the Media Lab, I focused on developing new sensing
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`modalities for human-computer interaction, then by 1997 evolved my research into
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`wearable wireless sensing and distributed sensor networks. This work anticipated
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`and influenced transformative products and industries that have blossomed in
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`recent years. For example, the sensor-laden wireless shoe I developed for
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`interactive dance in 1997 is recognized as a watershed in the field of wearable
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`wireless sensing and was an inspiration for the Nike+, one of the very first activity
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`trackers and the first commercial product to integrate dynamic music with
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`monitored exercise. My team went on to pioneer clinical gait analysis with
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`wearable wireless sensors in collaboration with the Massachusetts General
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`Hospital (MGH) in 2002, and then broke new ground in sports medicine with
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`another MGH collaboration that developed an ultra-wide-range wireless inertial
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`measurement unit system for evaluating professional baseball pitchers in 2007. My
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`team and I have also been leaders on wearable sensing for Human-Computer
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`Interfaces, over the past decade fielding, for example, wristbands to measure finger
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`position, wristbands to enable pointing interaction and control of heating and
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`lighting, and even a wireless touchpad mounted on a fingernail.
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`12. Leading to over 300 publications, 17 issued patents, and a string of
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`awards in the Pervasive Computing, Human Computer Interaction, and sensor
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`network communities, my research has become the basis for widely established
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`curricula. Many of these publications are directed to wearables. I have also advised
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`over 55 graduate (MS and PhD) theses for students who have done their work in
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`my research group, and served as a reader for roughly 100 MS and PhD students in
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`other groups and at other universities. Some of my own students have gone on to
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`prominence in their own careers that have involved wearables—for example, Dr.
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`Nan-Wei Gong (PhD 2013) was the R&D lead of Project Jacquard (integrating
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`electronics and textiles) at Google ATAP before becoming founder and CEO of
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`her own companies with a wearable focus ‘Circular2’ and ‘Figure8', and Dr. Stacy
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`Morris Bamberg (PhD 2004) became a tenured professor at the University of Utah
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`doing wearable gait analysis, then started a company in this space (Veristride). I
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`have given over 280 invited talks, panel appearances, and seminars worldwide,
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`recently keynoting on topics relating to ubiquitous sensing and the Internet of
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`Things (IoT) for prestigious venues ranging from the Sensors Expo (the main
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`industrial sensors conference) to the World Economic Forum. I am frequently
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`asked to address industrial groups on wearables and IoT, and often engage with the
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`Media Lab’s extensive list of industrial partners in strategizing these areas.
`
`13.
`
`I belong to and participate in various professional organizations. I am
`
`a senior member of the IEEE (Institute of Electrical and Electronics Engineers),
`
`and also belong to the ACM (Association for Computer Machinery). I also belong
`
`to the APS American Physical Society (the major professional society in physics),
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`and am a senior member in the AIAA (the American Institute of Aeronautics and
`
`Astronautics). Within the IEEE, I belong to the Signal Processing Society, the
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`Controls Society, and the Computer Society. As detailed in my CV, I have served
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`
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`on many Technical Program Committees (TPCs, which solicit, review, and select
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`papers for academic conferences) and journal editorial boards, plus have organized
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`academic conferences in areas such as wireless sensor networks, wearable
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`computing and wearable sensing, human-computer interfaces, ubiquitous
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`computing, etc.
`
`14. One of the themes of my research has been on low-power embedded
`
`systems and energy harvesting. I have written several well-regarded papers on
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`these topics that well predate the ‘646 patent – for example, the review article that
`
`I wrote for IEEE Pervasive Computing in 2005, ‘Energy Scavenging for Mobile
`
`and Wireless Electronics’ has become their most popular article and is widely
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`cited. My work on smart wakeup systems (e.g., as described in my papers such as
`
`‘A Framework for the Automated Generation of Power-Efficient Classifiers for
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`Embedded Sensor Nodes’ and ‘CargoNet: A Low-Cost MicroPower Sensor Node
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`Exploiting Quasi-Passive Wakeup for Adaptive Asynchronous Monitoring of
`
`Exceptional Events,’ both presented at SenSys 2007), are of relevance here. There
`
`is likewise nothing novel in 646’s treatment of ‘glitch detection’ – this was
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`common practice at the time, as for example outlined in the ‘Outliers’ section
`
`starting on page 102 in my alumna Stacy Morris’ publically-available 2004 PhD
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`thesis ‘A Shoe-Integrated Sensor System for Wireless Gait Analysis and Real-
`
`Time Therapeutic Feedback’.
`
`
`
` LEVEL OF ORDINARY SKILL IN THE ART
`
`15.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`16.
`
`I am familiar with accelerometers (including those found in portable
`
`devices such as mobile phones). I am also aware of the state of the art at the time
`
`the application resulting in the ‘646 patent was filed. I have been informed by
`
`Apple’s counsel that the earliest alleged priority date for the ’646 patent is October
`
`8, 2008. Based on the technologies disclosed in the ’646 patent, I believe that a
`
`person of ordinary skill in the art (“POSITA”) would include someone who had,
`
`at the priority date of the ’646 patent, (i) a Bachelor’s degree in Electrical
`
`Engineering, Computer Engineering, Computer Science, or equivalent training,
`
`as well as at least three years of technical experience in the field of computer
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`systems and accelerometers; or (ii) in the alternative, someone who had a
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`Master’s degree in Electrical Engineering, Computer Engineering, Computer
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`Science, or equivalent training. Lack of work experience can be remedied by
`
`additional education, and vice versa. Such academic and industry experience
`
`would be necessary to appreciate what was obvious and/or anticipated in the
`
`industry and what a POSITA would have thought and understood at the time.
`
`Based on this criteria, as of the relevant time frame for the ’646 patent, I
`
`possessed at least such experience and knowledge of a POSITA, as well as
`
`trained many of them by then, hence am qualified to opine on the ’646 patent.
`
`17. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of October 8,
`
`2008. Unless otherwise stated, when I provide my understanding and analysis
`
`below, it is consistent with the level of a POSITA prior to the priority date of the
`
`’646 patent.
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`III. RELEVANT LEGAL STANDARDS
`I understand that prior art to the ’646 patent includes patents and
`18.
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’646 patent. For purposes of this Declaration, I have been
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`asked to apply October 8, 2008, the filing date of the Application, as the priority
`
`date.
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`19.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’646 Patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`20.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`I have been informed by counsel that a patent claim is unpatentable as
`21.
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation, and the
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`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`I have been informed that a claimed invention is unpatentable under
`22.
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`23.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
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`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`IV. BACKGROUND OF ACCELEROMETERS
`24. Modern day compact commercial accelerometers are typically small
`
`micro electro-mechanical systems (MEMS) that may be fabricated into an
`
`integrated circuit. (See Rakkola, [0004]). A common type of accelerometer is a
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`triaxial accelerometer that measures acceleration along three different orthogonal
`
`axes. A triaxial accelerometer at rest will measure acceleration due to the force of
`
`gravity along at least one axis. A triaxial accelerometer in motion will measure
`
`both acceleration due to the force of gravity and acceleration due to any movement
`
`being experienced by the accelerometer. (See Pasolini, 3:4-7). However, for many
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`applications it is desirable to distinguish between static acceleration (due to the
`
`force of gravity) and dynamic acceleration (due to motion).
`
`25. Various techniques for distinguishing between static acceleration and
`
`dynamic acceleration were used and known to persons of ordinary skill in the art
`
`before the filing of the ’646 patent. For example, Pasolini uses low pass filters to
`
`create a representation of gravity along each axis. The signals from the low pass
`
`filters, which represent gravity, can then be subtracted from the current
`
`acceleration values measured by the accelerometer. (See Pasolini, 4:38-50). Thus,
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`the result of such subtraction is representative of the dynamic acceleration.
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`Goldman describes a system that samples the accelerometer while at rest to obtain
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`a rest value. Then, Goldman’s system uses that value for comparison with the
`
`currently measured acceleration. (See Goldman, p. 2).
`
`V. THE ’646 PATENT
`A. Overview of the ’646 Patent
`26. The ’646 patent relates to a method and system for waking a device
`
`from an idle state in response to detecting motion. Specifically, the ’646 patent
`
`describes a device that goes into an idle mode after a period of inactivity. The
`
`device also has a motion sensor to detect motion. In response to detecting motion,
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`the device will wake from such idle states.
`
`Alleged Problem
`
`1.
`27. According to the background section of the ’646 patent: “Continuous
`
`improvements have allowed the users to enjoy many features and possible uses
`
`from a single mobile device.” (‘646 Specification, 1:14-16). The specification
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`continues: “However, generally, the more applications a mobile device has, the
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`faster the battery of the mobile device depletes. (‘646 Specification, 1:16-17). As is
`
`well known to POSITAs, electronic devices typically enter a low power state after
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`a period of inactivity to conserve power. However, it is desirable for the device to
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`quickly get back into an operable state when the user is ready to use the device.
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`“Therefore, it can be difficult to maximize battery life and provide a great user
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`experience at the same time.” (‘646 Specification, 1:17-18).
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`Summary of Alleged Invention of the ’646 Patent
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`2.
`28. The ’646 patent relates to a method and system for waking a device
`
`from a low power state in response to detecting motion. Specifically, the ’646
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`patent describes a device that goes into a low power state after a period of
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`inactivity. The device also has a motion sensor to detect motion. In response to
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`detecting motion, the device will “wake” from the low power state.
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`29. More specifically, the claimed invention uses a motion sensor to
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`collect a sample value while the device is at rest. This sample value is referred to
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`as the “idle sample value.”1 The claimed invention also wakes the device from idle
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`mode when it is determined that the device experiences motion along a “dominant
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`axis.” The claims define the dominant axis as the axis most affected by gravity.
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`However, use of the term “dominant axis” brings a superficial aura of complexity
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`to the claims because any triaxial system has an axis that is more aligned with
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`gravity than the others at a given time. It is noted that the claims do not require
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`determining which of three axes is the dominant axis. Moreover, during
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`
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`1 Claim 1 only recites that the idle sample value is obtained. No use for the idle
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`sample value is recited in the independent claims.
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`Paradiso Decl.
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`Inter Partes Review of U.S. 8,872,646
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`prosecution of the ’646 patent, the Examiner was not persuaded by the Applicant’s
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`patentability arguments for the dominant axis.
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`Prosecution History of the ’646 Patent
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`B.
`30. The ’646 patent issued on October 28, 2014 from U.S Patent
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`Application No. 12/247,950 filed October 8, 2008.
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`31. The Office issued the first Action on May 12, 2011. (See ‘646
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`Prosecution History, 106). In that Action, the claims were rejected under 35 U.S.C.
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`112, second paragraph, for indefiniteness. Specifically, the terms “long average”
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`and “dominant axis” were deemed indefinite. Additionally, independent claim 1
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`was rejected under 35 U.S.C. 102 as being anticipated by Rakkola (U.S.
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`2006/0161377), and independent claims 25 and 33 were rejected under 35 U.S.C.
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`103 as being rendered obvious by Rakkola and Mattice (U.S. 2007/0259716). In
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`response to the first Action, the Applicant argued that the term “dominant axis”
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`was defined in the specification as “the axis most impacted by gravity” and
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`therefore was not indefinite. (See ‘646 Prosecution History, 149). Additionally, the
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`Applicant argued that the term “long average” was defined in the specification as
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`“averaging of a plurality of acceleration measurements over the sample period”
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`and therefore was not indefinite. (See ‘646 Prosecution History, 148). The
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`Paradiso Decl.
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`Inter Partes Review of U.S. 8,872,646
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`Applicant also challenged the anticipation and obvious rejections for the
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`independent claims without amendments. Specifically, Applicant argued that:
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`The reference levels are calculated in this way for each of the three
`axes, assuming that a triaxial accelerometer is used. (Rakkola,
`paragraph 19). Rakkola concludes "The reference levels are set
`without regard to device orientation of the direction of gravity, and so
`setting of
`these reference
`levels is greatly streamlined, with
`corresponding reduction of power requirements." (Rakkola, paragraph
`20). Therefore, Rakkola specifically teaches away from "determining
`an idle sample value for a dominant axis of a device," since no such
`calculation is needed.
`(‘646 Prosecution History, at pp. 149-50).
`32. Similar arguments were made regularly throughout prosecution but
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`were never persuasive to the Office.
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`33. The Office issued a second Action on October 20, 2011 that
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`maintained the rejections of the first Action. (See ‘646 Prosecution History, 175).
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`Specifically, the Action stated that the Applicant’s arguments relied on features
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`from the specification that were not found within the claims. In response to the
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`second Office Action, the Applicant then amended the claims to define the
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`dominant axis as the axis with the largest effect from gravity, as well as some other
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`amendments related to motion data, and made arguments similar to those made in
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`the response to the first Office Action. (See ‘646 Prosecution History, 214).
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`17
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`APPL-1010 / Page 20 of 89
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`Paradiso Decl.
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`Inter Partes Review of U.S. 8,872,646
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`34. The Office then issued a third Action on January 26, 2012. (See ‘646
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`Prosecution History, 230). The Action maintained the 112 rejection for the term
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`“long average” but removed the rejection for the term “dominant axis” in light of
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`Applicant’s amendments. The third Action also added U.S. Patent No. 7,987,070
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`(“Kahn”) to the combination of Rakkola and Mattice for the 103 rejection. In
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`response to the third Action, the Applicant noted that Kahn was commonly owned
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`by the Applicant and excluded as prior art under 35 U.S.C. 103(c). (See ‘646
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`Prosecution History, 265).
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`35. The Office issued a fourth Action on June 21, 2012. (See ‘646
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`Prosecution History, 280). The Office made indefiniteness rejections under 35
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`U.S.C. 112 related to the terms “long average” as indefinite and the term “axis
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`most affected by gravity” as both indefinite and lacking written description.
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`Furthermore, the Action rejected all independent claims using Rakkola and Mattice
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`without Kahn. In response to the fourth Action, Applicant made nominal
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`amendments and made similar arguments to those made previously. (See ‘646
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`Prosecution History, 318).
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`36. The Office issued a fifth Action on November 6, 2012. (See ‘646
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`Prosecution History, 363). The Office kept the indefiniteness rejection for the term
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`“long average” but did not maintain the rejection for the term “axis most affected
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`Paradiso Decl.
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`Inter Partes Review of U.S. 8,872,646
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`by gravity.” The Office was not persuaded by Applicant’s arguments regarding the
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`103 rejection and thus the 103 rejection was maintained. In response to this
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`rejection, the Applicant made nominal amendments and maintained arguments
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`against the combination of Rakkola and Mattice. (See ‘646 Prosecution History,
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`402).
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`37. The Office issued a sixth Action on February 26, 2013. (See ‘646
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`Prosecution History, 412). The Office maintained the 112 rejection and the 103
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`rejection. In response, the Applicant made nominal amendments and maintained
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`similar arguments against the combination of Rakkola and Mattice. The Applicant
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`also further defined the term “long average” to address the 112 rejection. (See ‘646
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`Prosecution History, 485).
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`38. The Office issued a seventh Action on June 5, 2013 that maintained
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`the 103 rejection with Rakkola and Mattice. (See ‘646 Prosecution History, 495).
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`In response, the Applicant amended claim 1 to include the phrase “determining
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`whether the motion caused a change in the dominant axis” and made similar
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`amendments to the other independent claims. (See ‘646 Prosecution History, 988).
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`39. After receiving Applicant’s response, there wa