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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`_____________________
`
`
`Case IPR2018-00387
`Patent No. 7,653,508
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`_____________________
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`PETITIONER’S REPLY
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`I.
`II.
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`V.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Pasolini was not applied to the claims of the ’508 patent during
`prosecution. ...................................................................................................... 1
`III. The term “dominant axis” is properly construed to include the
`axis most influenced by gravity. ...................................................................... 3
`A.
`Petitioner’s proposed construction is supported by the
`specification. .......................................................................................... 3
`Petitioner’s construction is inclusive rather than exclusive.
` ............................................................................................................... 4
`IV. Fabio’s validation interval teaches a “cadence window” as
`claimed. ............................................................................................................ 6
`A.
`Patent Owner’s
`arguments
`are
`based
`on
`a
`mischaracterization of Fabio’s validation interval. ............................... 6
`Patent Owner’s arguments based on
`its
`incorrect
`understanding of Fabio fail. ................................................................10
`Patent Owner’s extraneous characterizations of Fabio’s
`validation interval do not sufficiently refute the analysis in
`the Petition. ..........................................................................................12
`Patent Owner’s expert, Mr. Easttom, does not support the
`arguments in the Response. .................................................................15
`Fabio teaches the claim limitations related to the cadence
`window...........................................................................................................16
`A.
`Fabio’s first counting procedure is analogous to the
`claimed non-active mode. ...................................................................16
`Fabio switches counting procedures after validating and
`counting a number of steps. .................................................................18
`Fabio’s device counts steps when acceleration is detected
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`B.
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`B.
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`C.
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`D.
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`B.
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`C.
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`i
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`within the validation interval...............................................................20
`VI. Pasolini teaches the limitations related to a “dominant axis.” ......................21
`A.
`Pasolini teaches “assigning a dominant axis.” ....................................21
`B.
`Pasolini teaches “updating the dominant axis.” ..................................23
`C.
`Pasolini teaches counting steps by monitoring periodic
`human motions along the dominant axis. ............................................25
`Patent Owner’s expert’s statements contradict the record. .................26
`D.
`VII. The dependent claims are obvious.................................................................27
`VIII. Conclusion .....................................................................................................28
`IX. Certificate of Word Count .............................................................................29
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`ii
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`
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`Ex.1001
`Ex.1002
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`Ex.1003
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`Ex.1004
`Ex.1005
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`Ex.1006
`Ex.1007
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`Ex.1008
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`Ex.1009
`Ex.1010
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`Ex.1011
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`Ex.1012
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`PETITIONER’S UPDATED EXHIBIT LIST
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`
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`January 2, 2019
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`U.S. Patent No. 7,653,508
`Prosecution History of U.S. Patent No. 7,653,508
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`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
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`Curriculum Vitae of Joe Paradiso
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
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`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
`Reserved
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`Reserved
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`Reserved
`Reserved
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`Reserved
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`Prosecution History of U.S. Patent No. 8,712,723
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`iii
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`
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`Introduction
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`I.
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`The Petition and supporting evidence provide detailed reasons why Pasolini
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`alone or in combination with Fabio renders the challenged claims of the ’508
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`patent obvious. Patent Owner’s arguments all fail because they rely on irrelevant
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`mischaracterizations of the prosecution history of a related case (see Response,
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`pp.3-4), incorrectly argue that the proposed claim constructions are overly narrow
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`(see Response, pp.4-10), and mischaracterize both Fabio’s teachings regarding its
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`validation interval (see Response, pp.1-21) and Pasolini’s teachings regarding
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`using a 3-axis accelerometer and determining the axis most influenced by gravity
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`(see Response, pp.21-29). Petitioner shows below how Patent Owner’s arguments
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`are both incorrect and unsupported, and should thus be rejected.
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`II.
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`Pasolini was not applied to the claims of the ’508 patent during
`prosecution.
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`The Petition challenges the claims of the ’508 patent using either Pasolini
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`alone or Pasolini in combination with Fabio. Pasolini was applied by the Examiner
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`during prosecution of U.S. Patent No. 8,712,723 (“the ’723 patent”), a descendant
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`of the ’508 patent, but Pasolini was never applied to the claims of the ’508 patent.
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`Further, even references considered during prosecution are not necessarily
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`disqualified from inter partes review proceedings. See, e.g., Praxair Distribution,
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`Inc. v. INO Therapeutics LLC, IPR2015-00889, Paper 14, at 10 (PTAB Sept. 22,
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`2015) (“[a]bsent a showing of ‘substantially the same ... arguments’ … and
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`1
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`considering that Petitioner includes additional evidence not considered by the
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`examiner in the underlying prosecution ... Patent Owner does not show that the
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`inter partes review ... would be improper.”).
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`Nevertheless, Patent Owner misleadingly argues that it “successfully
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`distinguished Pasolini … from the claims that ultimately issued, including on the
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`basis of certain claim limitations that also are cited in the ’508 patent.” Response,
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`p.3. This argument fails for two reasons. First, as mentioned above, the Examiner
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`never considered Pasolini during prosecution of the ’508 patent. Second, the
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`Petition does not rely on Pasolini to teach limitations related to a “cadence
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`window,” the reason the Examiner allowed the claims in the ’723 patent over
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`Pasolini alone.
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`In fact, during prosecution of the ’723 patent, the Applicant amended the
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`claims to add several “cadence window” limitations to specifically overcome the
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`Pasolini reference. See Ex.1012, pp.138-41. The Applicant also argued only that
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`“Pasolini does not teach or suggest the use of cadence windows.” Id., p.142. This
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`contradicts Patent Owner’s assertion that: “In the Notice of Allowance for the ’723
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`patent, the Examiner expressly acknowledged that Pasolini (among the other
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`references cited) fails to disclose, for example, ‘assigning a dominant axis with
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`respect to gravity based on an orientation of the inertial sensor.’” Response, p.23.
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`The Examiner made no such express acknowledgement regarding any single claim
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`2
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`limitation. See Ex.1012, pp.35-36. Instead, the portion of the Notice of Allowance
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`upon which Patent Owner relies lists all of the ’723 patent’s independent claim
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`limitations, including the “cadence window,” among the reasons why the Examiner
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`allowed the claims of the ’723 patent. Id.
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`Accordingly, Patent Owner’s reliance on the prosecution history of the ’723
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`patent is irrelevant. In sum, because the Petition does not argue that Pasolini
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`discloses the claimed “cadence window,” Patent Owner’s reliance on the ’723
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`patent’s prosecution history has no relevance to the claims at issue here.
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`III. The term “dominant axis” is properly construed to include the axis
`most influenced by gravity.
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`A.
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`Petitioner’s proposed construction is supported by the
`specification.
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`The Petition states that “for the purposes of this proceeding, the term
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`‘dominant axis’ as used in the claims includes ‘the axis most influenced by
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`gravity.’” Petition, p.8. This construction is supported by both the embodiments
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`described in the specification of the ’508 patent and Dr. Paradiso’s expert
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`testimony. See Ex.1003, ¶32. Notably, Patent Owner offers no construction of its
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`own. Patent Owner also does not dispute that the construction of this term includes
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`the axis most influenced by gravity. Instead, Patent Owner incorrectly argues that
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`the construction excludes other embodiments where the dominant axis may not be
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`the axis most influenced by gravity. See Response, pp.5-8.
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`3
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`When discussing the “dominant axis,” though, the specification of the ’508
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`patent specifically references the influence of gravity. In particular, the
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`specification states that “[i]n one embodiment, the dominant axis is assigned after
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`identifying a gravitational influence. The gravitational influence may be identified
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`by calculating total acceleration based upon the acceleration on each axis.”
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`Ex.1001, 14:37-41. And, “[i]n one embodiment, once the orientation is determined,
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`a dominant axis is assigned based upon the orientation. Determining an orientation
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`of the electronic device 100 may include identifying a gravitational influence.”
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`Ex.1001, 6:20-23. The specification provides no specific example where the
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`dominant axis is not based on gravity. Accordingly, Petitioner’s construction is
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`consistent with and supported by the embodiments described in the specification.
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`B.
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`Petitioner’s construction is inclusive rather than exclusive.
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`Patent Owner challenges Petitioner’s construction of “dominant axis” stating
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`that: “There simply is no unambiguous lexicography in the cited passage (or
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`elsewhere) that states the assigned “dominant axis” must be the one that is most
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`influenced by gravity.” Response pp.6-7 (emphasis added). However, nowhere
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`does Petitioner’s construction indicate that the dominant axis must be the one most
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`influenced by gravity and cannot be any other axis. Rather, Petitioner’s
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`construction does not define the entire claim scope, but provides an example of
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`what the claim includes.
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`4
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`Specifically, the Petition construes “dominant axis” to include “the axis most
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`influenced by gravity.” Petition, p.8. This construction is proper since a term need
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`only be construed to the extent necessary to resolve the issue. See Vivid Techs.,
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`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
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`terms need be construed that are in controversy, and only to the extent necessary to
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`resolve the controversy.”); Emerson Elec. Co., v. Ipco, LLC, IPR2017-00007
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`(PTAB Mar. 29, 2018), Paper 42, at 8 (holding that further construction of terms
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`defined by what they include is not necessary to resolve the dispute regarding the
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`asserted grounds of unpatentability). The construction of “dominant axis” is
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`sufficient to resolve the dispute here because the prior art of record teaches
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`identifying the axis most influenced by gravity. See Petition, pp.28-30.
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`Patent Owner further alleges that “the ’508 patent reveals that using a
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`rolling-average process to determine orientation does not necessarily result in
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`assigning a dominant axis that is most influenced by gravity.” Response, p.7. As
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`best understood, Patent Owner appears to argue that the dominant axis should
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`include more than, or be broader than, “the axis most influenced by gravity.” This
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`fails for two reasons. First, the embodiments disclosed in the specification, even
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`those referenced by Patent Owner, show determining the dominant axis based on
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`the influence of gravity. Second, a broader construction would still include
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`Petitioner’s construction, which is taught by the prior art as outlined in the Petition.
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`5
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`See, e.g., Petition pp.28-30. Thus, Patent Owner’s arguments do not sufficiently
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`refute the Petition’s inclusive claim construction nor the Petition’s showing that the
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`prior art satisfies a broader construction.
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`IV. Fabio’s validation interval teaches a “cadence window” as claimed.
`Patent Owner’s arguments are based on a mischaracterization of
`A.
`Fabio’s validation interval.
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`The Petition cites to Fabio’s validation of detected steps that fall within a
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`validation interval as rendering obvious “identifying a number of periodic human
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`motions in appropriate cadence windows.” Petition, pp.45-47. Patent Owner argues
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`throughout its Response that Fabio’s validation interval does not meet the “cadence
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`window” limitation. Response, pp.5,11-14. These arguments, though, are based on
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`the incorrect premise that “Fabio’s [validation interval] is retrospective at least in
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`that it is used to validate only the immediately preceding step (shown in Fig. 6 as
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`K-1), as opposed to the current step detected (shown in Fig. 6 as K).” Response,
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`pp.12-13,19. Patent Owner bases this flawed interpretation on a single sentence of
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`Fabio, taken out of context, stating that “[m]ore precisely, the last step recognized
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`is validated if the instant of recognition of the current step TR(K) falls within a
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`validation interval TV[.]” See Response, p.13 quoting Ex.1006, 4:35-39. Patent
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`Owner apparently believes that the term “last step recognized” means the step
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`6
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`recognized in some previous step cycle1, not the current step cycle. Fabio, though,
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`does not detect a step in one step cycle, and then validate and buffer/count that step
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`in a subsequent cycle. Rather, Fabio teaches recognizing, validating, and either
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`buffering or counting a step in a single step cycle. See, e.g., Ex.1006, Figs. 4,7.
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`More specifically, Fabio first teaches recognizing an acceleration signal as a
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`step by verifying “whether the time plot of the acceleration signal AZ (i.e., the
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`sequence of the samples acquired) has pre-determined characteristics.” Id., 4:12-
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`15. Fabio then teaches that “[i]f … the step-recognition test is passed,” the system
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`“executes a first validation test, corresponding to the regularity of the individual
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`step.” Id., 4:22-27. Depending on the state of Fabio’s system, the recognized and
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`validated step will either be buffered (if in the first counting procedure) or counted
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`(if in the second counting procedure). Id., 5:10-13, 6:40-43. In other words, Fabio
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`teaches performing its step recognition, validation, and either buffering or counting
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`in an immediately sequential manner with a single step cycle.
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`This process is demonstrated in Fabio’s Fig. 4, which details the first
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`counting procedure 110:
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`1 For purposes of this paper, the term “step cycle” refers to Fabio’s iterative
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`process of recognizing (e.g., 225), validating (e.g., 230) and buffering/counting
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`(235) a step upon acquisition of an acceleration sample. See Ex.1006, Figs. 4, 7.
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`7
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`First Counting Procedure
`(i.e., Non-Active Mode)
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`Validate Step within
`Cadence Window
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`Recognize
`Step
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`Buffer Steps
`(NVC=NVC+1)
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`If steps meet regularity threshold, add buffered steps to total steps
`and move to the second counting procedure (i.e., the active mode)
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`Ex.1006, Fig. 4 (annotated); Petition, p.22; Ex.1003, p.27. As seen in Fig. 4, Fabio
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`teaches recognizing a step at 225, validating the step immediately upon recognition
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`at 230, and buffering the step upon successful validation at 255. Ex.1006, 4:12-
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`5:13; Ex.1003, pp.47-50. Then, at block 260, if the buffer count (NVC) is less than a
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`threshold (NT2), the process returns to block 200 to detect the next step and the step
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`cycle repeats. Ex.1006, 5:13-29; Ex.1003, pp.50-52.
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`8
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`A similar process is followed in Fabio’s Fig. 7, which details Fabio’s second
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`counting procedure 130:
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`Recognize Step
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`Second Counting Procedure
`(i.e., Active Mode)
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`Count Steps (NVT=NVT+1)
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`Validate Step within
`Cadence Window
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`Ex.1006, Fig. 7 (annotated); Petition, p.23; Ex.1003, p.28. Similar to the first
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`counting procedure in Fig. 4, the second counting procedure recognizes a step at
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`315, validates the step immediately upon recognition at 320, and counts the step
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`upon successful validation at 325. Ex.1006, 6:27-43; Ex.1003, pp.59-62. The
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`process then returns to block 300 to detect the next step and the step cycle repeats.
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`Ex.1006, 6:46-53; Ex.1003, pp.59-62.
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`9
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`Because the flowcharts in Figs. 4 and 7 and the corresponding text clearly
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`show that steps are recognized, validated, and buffered/counted in a single cycle,
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`Patent Owner’s interpretation—that step recognition occurs in one step cycle and
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`validation and buffering/counting occur in another step cycle—is incorrect.
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`Moreover, Patent Owner fails to cite to any testimonial evidence supporting its
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`mischaracterization of Fabio’s validation interval. Thus, Patent Owner fails to
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`distinguish the “cadence window” limitation in the challenged claims over Fabio’s
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`“validation interval.”
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`B.
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`Patent Owner’s arguments based on its incorrect understanding
`of Fabio fail.
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`Relying on its mischaracterization of Fabio, as discussed above, Patent
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`Owner makes several flawed arguments. First, Patent Owner states that: “Fabio’s
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`validation interval TV is not ‘a window of time since a last step was counted’ (as
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`required by Petitioner’s construction) at least because Fabio defines its TV as
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`necessarily starting before the last step is counted.” Response, p.12. However,
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`despite Patent Owner’s assertion, the validation interval for a currently recognized
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`step is the window of time since (i.e., after) the last step was counted because the
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`last step (K-1) was recognized, validated, and counted in the previous step cycle
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`(TR(K-1)). This is represented in Fig. 6, reproduced below:
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`10
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`Recognized Step (K) falling within a Cadence Window
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`Validation Interval TV
`(i.e., Cadence Window)
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`
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`Ex.1006, Fig. 6 (annotated). Petition, p.45; Ex.1003, p.58.
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`Relying further on its mischaracterization of Fabio’s validation interval,
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`Patent Owner also argues that “[t]he ‘cadence window’ cannot be defined by
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`alleged lexigraphy in the specification in terms of ‘since a last step was counted’
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`and yet be applied, inconsistently, in terms of when ‘an immediately preceding
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`step was recognized.’” Response, p.13. Fabio’s system, though, recognizes,
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`validates, and buffers/counts steps in a single step cycle. In other words, timing
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`wise, there is no meaningful distinction or inconsistency in Fabio’s recognizing a
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`step versus buffering/counting a step since, as discussed above, Fabio teaches
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`recognizing, validating, and buffering/counting in a single step cycle.
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`11
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`C.
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`Patent Owner’s extraneous characterizations of Fabio’s validation
`interval do not sufficiently refute the analysis in the Petition.
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`Patent Owner makes a variety of other arguments alleging that Fabio’s
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`validation intervals does not teach the claimed “cadence window.” First, Patent
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`Owner argues that Fabio “defines its TV as necessarily excluding at least the time
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`interval (indicated by a red block-arrow annotation to Fig. 6 copied above)
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`commencing since detection of the last step (K-1) but before commencement of
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`TV.” Response, pp.13-14. According to Patent Owner, this is a problem because
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`the Petition proposes a construction of “cadence window”—not adopted by the
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`Board—that includes the specification’s definition of “a window of time since a
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`last step was counted that is looked at to detect a new step.” Ex.1001, 3:66-67; see
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`Petition, pp.8-9. In other words, Patent Owner believes that Fabio’s validation
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`interval TV as represented in Fig. 6 is not a window of time “since” the last step
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`(K-1) was detected. Response, pp.13-14.
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`This argument, however, fails to appreciate that the ’508 patent’s cadence
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`window behaves in the same way. In reference to Fig. 2, the ’508 patent states that:
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`a first step 217 is counted at 0.65 seconds, and a second
`step 232 is counted at approximately 1.15 seconds. The
`first cadence window 240 opens at approximately 0.4
`seconds from
`the first step 217, and closes at
`approximately 0.8 seconds from the first step 217. As
`shown, the second step 232 falls within the first
`dynamic cadence window 240. A third step 233 falls
`within the second dynamic cadence window 255, which
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`12
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`may have a second cadence window minimum 245 and
`second cadence window maximum 250 that are
`different from the first cadence window minimum 230
`and first cadence window maximum 235.
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`Ex.1001, 4:41-52 (emphasis added).
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`Fig. 2 of the ’508 patent is reproduced below showing the second step 232
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`and the second cadence window minimum 245 separated by a similar gap:
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`Gap Between Step 232 and Cadence Window Minimum 245
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`First Cadence Window
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`Second Cadence Window
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`
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`Ex.1001, Fig. 2 (annotated). Patent Owner’s version of Fabio Fig. 6—annotated to
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`show a similar gap between the previous step (K-1) and the validation interval TV
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`13
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`(i.e., the cadence window)—is reproduced below for reference:
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`Ex.1006, Fig. 6 (annotated by Patent Owner); Response, p.12.
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`Since the ’508 patent describes its cadence window as “a window of time
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`since a last step was counted,” and shows a gap between the last step 232 and the
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`cadence window minimum 245, limiting the word “since” as Patent Owner argues
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`would result in various cadence window embodiments of the ’508 patent not being
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`supported its own definition. For that reason, Patent Owner’s arguments are
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`contrary to the express disclosure set forth in the ’508 patent.
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`Second, Patent Owner argues that “there is no proof of obviousness by
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`Fabio’s VT [sic] [validation interval, TV] at least because certain ‘true positive’
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`steps occurring within VT [sic] would not be counted.” Response, p.14. Patent
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`Owner also argues that “[t]his would … run afoul of ‘the recited ‘counting’ step,
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`which also references and limits the ‘cadence window’ term.” Response, pp.14-15.
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`Apart from there being no basis in Fabio for Patent Owner’s characterization, this
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`14
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`argument is irrelevant. Even assuming, arguendo, that Fabio’s system excludes
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`“certain true positive” detections as asserted by Patent Owner, nothing in the claim
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`language suggests that the cadence window doesn’t allow for “certain true
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`positive” steps to not be counted. Instead, claim 6, for example, broadly recites:
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`“switching the device from the non-active mode to an active mode, after
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`identifying a number of periodic human motions within appropriate cadence
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`windows” and “during the active mode, counting each of the periodic human
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`motions to enable the monitoring of human activity.” Ex.1001, claim 6. Neither of
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`these limitations exclude the concept of not counting certain “true positive” steps.
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`Accordingly, Patent Owner’s argument that Fabio is somehow deficient is
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`irrelevant.
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`D.
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`Patent Owner’s expert, Mr. Easttom, does not support the
`arguments in the Response.
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`Patent Owner cites to its expert’s pre-institution declaration to support the
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`mischaracterization that Fabio’s step recognition and validation process is
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`“retrospective” (i.e., that step recognition occurs in one step cycle while validation
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`and buffering/counting occur in a subsequent step cycle). See Response, p.12 citing
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`Ex.2001, ¶¶32‒35. Mr. Easttom’s declaration does not support Patent Owner’s
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`specific position, but rather states that “Fabio’s ‘validation window’ is reactive,
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`waiting for a step to be discovered and then looking backward to discover a
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`duration. Whereas the ’508 Patent’s ‘cadence window’ is proactive—first
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`determining the appropriate window of time, and then actively seeking to detect a
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`step while within that window of time.” Ex.2001, p.16. Apart from this being
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`incorrect for the same reasons discussed above, Mr. Easttom’s opinion is
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`conclusory and fails cite to any portion of Fabio for support.2
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`V.
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`Fabio teaches the claim limitations related to the cadence window.
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`A.
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`Fabio’s first counting procedure is analogous to the claimed non-
`active mode.
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`Patent Owner argues that Fabio’s first counting procedure does not meet the
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`claimed “non-active” mode. See Response, p.15. More specifically, Patent Owner
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`complains that “[i]f the claimed ‘non-active mode’ requires buffering but not
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`counting steps, as Petitioner alleges, then Petitioner’s mapping must fail because
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`Fabio’s first counting procedure clearly involves counting steps.” Response, p.15.
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`This argument fails as it is based on Patent Owner’s misunderstanding of Fabio’s
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`2 Regarding Mr. Easttom more generally, nothing in his CV indicates that he has
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`any experience with accelerometers or analyzing data generated by accelerometers.
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`Mr. Easttom’s testimony on such matters should thus be given little to no weight.
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`See Trs. of Columbia Univ. v. Illumina, Inc., 620 Fed. Appx. 916, 922 (Fed. Cir.
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`2015) (“The PTAB [is] entitled to weigh the credibility of the witnesses in light of
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`their qualifications and evaluate their assertions accordingly.”).
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`first counting procedure.
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`As a threshold issue, the claims state “running a device … in a non-active
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`mode, in which periodic human motions are buffered.” Ex.1001, 15:39-41. In the
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`specification of the ’508 patent, this “non-active mode” corresponds to the entry
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`mode where steps are counted in a buffer until reaching a threshold. See Ex.1001,
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`10:25-11:12; Fig. 5. Upon reaching the threshold, “the buffered steps are added to
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`an actual or final step count” and the device switches to an active or stepping mode
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`Ex.1001, 10:63-11:3.
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`Fabio’s first counting procedure behaves in the same way. See Ex.1006,
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`3:60-6:11; Ex.1003, pp.46-53. As explained in the Petition, during Fabio’s first
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`counting procedure 110, “the number of valid control steps NVC is incremented by
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`one (block 255) ….” Ex.1006, 5:10-11; see also Petition, p.41; Ex.1003, pp.48-49.
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`The control steps recorded in the NVC variable are buffered steps because they are
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`not added to the total step count until reaching a predetermined threshold NT2. See
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`Ex.1006, 5:22-39; Petition, p.41. Once the number of control steps NVC meets the
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`threshold NT2, “the total number of valid steps NVT is updated and incremented by a
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`value equal to the second threshold number NT2 (block 265).” The device then
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`switches to the second counting procedure 130. Id.
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`Accordingly, both the ’508 patent and Fabio describe “non-active modes”
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`that buffer steps in a variable and then add the buffered steps to the total step count
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`upon the number of buffered steps meeting a predetermined threshold. Despite
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`Patent Owner’s argument, there is no contradiction between Fabio’s first counting
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`procedure and the claimed “non-active” mode. As discussed above, the Petition
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`clearly establishes that, in Fabio’s first counting procedure, steps are buffered but
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`not added to the final step count. Petition, pp.39-43. This satisfies the express
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`claim language and performs in the same way as the embodiments in the ’508
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`patent. Thus, contrary to Patent Owner’s arguments, Fabio teaches the claimed
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`“non-active mode”
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`B.
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`Fabio switches counting procedures after validating and counting
`a number of steps.
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`Patent Owner argues that the Petition “fails to prove that Fabio discloses
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`‘switching’ from the first counting procedure to the second counting procedure.”
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`Response, p.16. According to Patent Owner, “the first counting procedure is
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`included as a part of every process flow, while the second counting procedure is
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`simply included as a secondary process in certain instances.” Id. Patent Owner also
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`argues that “[m]erely adding a secondary counting procedure in certain instances is
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`distinguishable from ‘switching the device from the non-active mode to an active
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`mode,’ as recited in claim 6.” Id., p.17. These arguments fail because Fabio clearly
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`teaches switching between counting procedures after identifying and validating a
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`predetermined number of steps.
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`As stated in the Petition, Fabio teaches “[a]t the end of the first counting
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`procedure, the control unit 5 checks whether the state flag FST has been set at the
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`first value C (block 120), i.e., whether a sequence of steps has been recognized. If
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`so (output YES from block 120), a second counting procedure is executed
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`(block 130).” Ex.1006, 3:37-49; Petition, p.43. Thus, Fabio “switches from the
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`first counting procedure 110 (e.g., the non-active mode as discussed in [6.1]) to the
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`second counting procedure 130 (e.g., the active mode) after identifying a
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`recognized sequence of steps.” Petition, p.43; Ex.1003, pp.53-55. The Petition
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`further provides an annotated drawing for clarification showing Fabio’s process for
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`switching between the counting procedures:
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`Non-Active Mode
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`Active Mode
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`Switch if sequence of steps is recognized
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`Ex.1006, Fig. 3 (annotated); Petition, p.44; Ex.1003, p.54.
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`Moreover, Patent Owner’s assertion that Fabio’s system switches from the
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`first counting procedure (i.e., the non-active mode) to the second counting
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`procedure (i.e., the active mode) “in certain instances” appears to add a non-
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`existent limitation to the claims. The claims merely recite “switching the device
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`from the non-active mode to an active mode, after identifying a number of periodic
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`human motions within appropriate cadence windows.” Ex.1001, 15:42-44. Nothing
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`requires the switching to occur always and, in fact, the claim language itself
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`supports switching in certain instances since switching is performed only “after
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`identifying a number of periodic human motions.” The specification of ’508 patent
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`similarly supports switching modes in certain instances. Ex.1001, 7:62-64 (“The
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`active mode is entered once continuous steps within the cadence window have
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`been identified, while the non-active mode is used for all other states.”).
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`Thus, contrary to Patent Owner’s arguments, Fabio teaches switching from a
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`non-active mode to an active mode after identifying and validating a predetermined
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`number of steps.
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`C.
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`Fabio’s device counts steps when acceleration is detected within
`the validation interval.
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`Patent Owner argues that “[t]he Petition fails to prove obvious of the step
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`‘counting a periodic human motion when an acceleration measurement that meets
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`Petitioner’s Reply
`IPR2018-00387 (Patent No. 7,653,508)
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`motion criteria is within the cadence window,’” as recited in claim 6.3 This
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`argument, however, is entirely based on Patent Owner misunderstanding that Fabio
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`“count[s] a step only if a distinct and preceding step falls within its preceding
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`cadence window.” For the reasons discussed above in Secti