UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00387
`PATENT 7,653,508
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00387
`PATENT 7,653,508
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2018-00387
`U.S. Patent 7,653,508
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`Table of Contents
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`
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`I.
`II.
`III.
`IV.
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`V.
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`7.
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`ii
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`INTRODUCTION .................................................................................... 1
`THE ’508 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`THE PETITION DOES NOT DEFINE THE LEVEL OF
`ORDINARY SKILL IN THE ART .......................................................... 2
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 3
`A.
`Claim Construction ......................................................................... 3
`1.
`“dominant axis” .................................................................... 4
`2.
`“cadence window” ................................................................ 5
`3.
`“a dominant axis logic to continuously determine
`an orientation of a device, to assign a dominant
`axis, and to update the dominant axis as the
`orientation of the device changes” ....................................... 6
`“a counting logic to count periodic human
`motions by monitoring accelerations relative to
`the dominant axis” ................................................................ 7
`“a counting logic to identify and count periodic
`human motions” ................................................................... 9
`“a cadence logic to continuously update a
`dynamic cadence window”................................................. 10
`“a mode logic, to switch the device from a non-
`active mode to an active mode after a number of
`periodic human motions are detected within
`appropriate cadence windows by the counting
`logic” .................................................................................. 12
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`4.
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`5.
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`6.
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`B.
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`C.
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`D.
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`E.
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`IPR2018-00387
`U.S. Patent 7,653,508
`[Grounds 1 and 3] No Prima Facie Obviousness For
`“continuously determining an orientation of the inertial
`sensor” (Claim 1) .......................................................................... 13
`[Grounds 1 and 3] No Prima Facie Obviousness For
`“updating the dominant axis as the orientation of the
`inertial sensor changes” (Claim 1) ............................................... 15
`[Grounds 1 and 3] No Prima Facie Obviousness For
`“counting periodic human motions by monitoring
`accelerations relative to the dominant axis” (Claim 1) ................ 17
`[Ground 2] No Prima Facie Obviousness For
`“switching the device from the non-active mode to an
`active mode, after identifying a number of periodic
`human motions within appropriate cadence windows”
`(Claim 6) ....................................................................................... 19
`The Petition Should Be Denied as To Challenged
`Dependent In Each Of Grounds 1-3. ............................................ 23
`CONCLUSION ....................................................................................... 23
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`F.
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`VI.
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`
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`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
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`iii
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`IPR2018-00387
`U.S. Patent 7,653,508
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00387 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 7,653,508 (“the ’508 patent” or “EX1001”)
`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’508 PATENT
`The ’508 patent is titled “Human activity monitoring device.” The ʼ508 patent
`issued January 26, 2010, from U.S. Patent Application No. 11/644,455 filed
`December 22, 2006.
`The inventors of the ’508 patent observed that at the time, step counting
`devices that utilize an inertial sensor to measure motion to detect steps generally
`required the user to first position the device in a limited set of orientations. In some
`devices, the required orientations are dictated to the user by the device. In other
`devices, the beginning orientation is not critical, so long as this orientation can be
`maintained. EX1001, 1:19-26. Further, the inventors observed that devices at the
`time were often confused by motion noise experienced by the device throughout a
`user's daily routine. The noise would cause false steps to be measured and actual
`steps to be missed in conventional step counting devices. Conventional step counting
`devices also failed to accurately measure steps for individuals who walk at a slow
`pace. Id., 1:27-34.
`According to the invention of the ’508 Patent, a device to monitor human
`activity using an inertial sensor assigns a dominant axis after determining the
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`orientation of an inertial sensor. he orientation of the inertial sensor is continuously
`determined, and the dominant axis is updated as the orientation of the inertial sensor
`changes. Id., 2:8-15.
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`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 7,653,508 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
`
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple Inc. v. Uniloc
`Luxembourg SA
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`4-17-cv-00832
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`2-17-cv-00737
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`2-17-cv-01629 WAWD November 1,
`2017
`TXND October 13,
`2017
`TXED November 9,
`2017
`September
`15, 2017
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`2-17-cv-00650
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`TXED
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`2-17-cv-00522
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`TXED
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`June 30, 2017
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`IPR2018-01026
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`PTAB May 4, 2018
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`IV. THE PETITION DOES NOT DEFINE THE LEVEL OF ORDINARY
`SKILL IN THE ART
`The Petition alleges that “a person of ordinary skill in the art (“POSITA”)
`would include someone who had, at the priority date of the ’508 Patent (i) a
`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
`Computer Science, or equivalent training, and (ii) approximately two years of
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`experience working in hardware and/or software design and development related to
`MEMS (micro-electro-mechanical) devices and body motion sensing systems.” Pet.
`6-7. Given that Petitioner fails to meet its burden of proof in establishing prima facie
`obviousness when applying its own definition of a person of ordinary skill in the art
`(“POSITA”), Patent Owner does not offer a competing definition for POSITA at this
`preliminary stage, though it reserves the right to do so in the event that trial is
`instituted.
`
`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The raises the following obviousness challenges under 35 U.S.C. § 103:
`Ground
`Claims
`Reference(s)
`1
`1-2 and 11-12
`2
`6-8, 15-16, and 19
`3
`3-4 and 13-14
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`Pasolini1
`Fabio2
`Pasolini and Fabio
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`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
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`3
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` 1
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` EX1005, U.S. Patent No. 7,463,997
`2 EX1006, U.S. Patent No. 7,698,097
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”). Nevertheless, Patent Owner addresses those terms for which the
`Petitioner proposes constructions. As explained below, Petitioner bases its
`patentability challenges on erroneous constructions, which provide an independent
`and fully-dispositive basis to deny the Petition in its entirety. See Mentor Graphics
`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp.,
`669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
`unreasonable in light of the specification, and therefore, denying Petition as tainted
`by reliance on an incorrect claim construction).
`
`“dominant axis”
`1.
`Petitioner’s proposed construction violates the well-established rule against
`reading limitations from the specification into the claim language. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
`teachings from the specification, Petitioner seeks to limit the claim term “dominant
`axis” to mean “the axis most influenced by gravity”. Pet. 8. However, the teachings
`of the specification cited by Petitioner clearly state that they are only example
`embodiments and are not meant to be limiting. See e.g., Pet. 9 quoting EX1001,
`14:34-38 (“[i]n one embodiment…”) (emphasis added). Importantly, Petitioner
`expressly acknowledges that the ’508 Patent specifically provides for different ways
`to determine the “dominant axis” in other embodiments. For example, in one
`embodiment, the “dominant axis” is determined by orientation of the device. See
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`EX1001, 6:7-21. And here, while the orientation “may include identifying a
`gravitational influence…” (EX1001, 6:13-15) (emphasis added), by definition, that
`means the “dominant axis” is not limited to just gravitational influence.
`As a further example, in the same section, the specification also states that
`“[t]herefore, a new dominant axis may be assigned when the orientation of the
`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
`electronic device 100 changes.” Id., 6:19-21 (emphasis added). Thus, the
`specification recites yet another example of a different way to determine the
`“dominant axis”. Another non-limiting example from the specification states: “[i]n
`one embodiment, the dominant axis corresponds to a virtual axis that is a
`component of a virtual coordinate system.” Id., 6:27-29 (emphasis added).
`Petitioner’s proposed construction would impermissibly exclude preferred
`embodiments and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
`embodiment is rarely, if ever, correct and would require highly persuasive
`evidentiary support).
`Petitioner has not and cannot establish prima facie obviousness through
`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
`Synopsys, 669 Fed. Appx. 569. In any event, Petitioner fails to present a case of
`prima facie obviousness even under its own construction.
`
` “cadence window”
`2.
`At this preliminary stage, Patent Owner submits that the Board need not
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`construe any claim term, including the term “cadence window”, in a particular
`manner in order to arrive at the conclusion that the Petition is substantively deficient.
`Wellman, 642 F.3d at 1361. Therefore, at this preliminary stage, Patent Owner does
`not submit a competing definition, however, in the event that trial is instituted,
`Patent Owner reserves the right to object to Petitioner’s proposed construction and
`provide Patent Owner’s proposed construction.
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`3.
`
`“a dominant axis logic to continuously determine an
`orientation of a device, to assign a dominant axis, and to
`update the dominant axis as the orientation of the device
`changes”
`The recitation “a dominant axis logic to continuously determine an orientation
`of a device, to assign a dominant axis, and to update the dominant axis as the
`orientation of the device changes” is not governed by 35 U.S.C. § 112(6), and no
`construction of this phrase is necessary. The claim language provides its own
`definition, as evidenced by Petitioner’s proposed definition, which repeats the claim
`language verbatim except that Petitioner substitutes the phrase “dominant axis
`logic” with the phrase “hardware, software, or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “dominant axis logic” by reciting that it “continuously
`determine[s] an orientation of a device, to assign a dominant axis, and to update the
`dominant axis as the orientation of the device changes”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
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`Arrays. And Petitioner’s proposed substitution of “dominant axis logic” with
`“hardware, software, or both” injects ambiguity by reducing claim language to
`virtually anything within the universe of hardware and/or software. Moreover, a
`POSITA would understand that such a determination cannot be done in software
`alone, as permitted by Petitioner’s unreasonably broad construction. Rather, the
`determination, at a minimum, must require some form of hardware, such as an
`accelerometer.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),3 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
`4.
`
`“a counting logic to count periodic human motions by
`monitoring accelerations relative to the dominant axis”
`The Petition takes the same erroneous approach to the term “counting logic”
`that it does with the “dominant axis logic” term addressed in the preceding section
`above. Accordingly, the proposed construction in the Petition should be rejected for
`analogous reasons, which are repeated below for completeness and clarity.
`Uniloc submits that “counting logic” is not governed by 35 U.S.C. § 112(6),
`
`
` 3
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` The Petition merely muses, “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 10.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`and no construction is necessary. The claim language provides its own definition,
`as evidenced by Petitioner’s proposed definition, which repeats the claim language
`verbatim with the exception that Petitioner substitutes the term “counting logic”
`with the phrase “hardware, software, or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “counting logic” by reciting that it “count[s] periodic
`human motions by monitoring accelerations relative to the dominant axis”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “counting logic” with “hardware,
`software, or both” injects ambiguity by reducing claim language to virtually
`anything within the universe of hardware and/or software. Moreover, a POSITA
`would understand that such a determination cannot be done in software alone, as
`permitted by Petitioner’s unreasonably broad construction. Rather,
`the
`determination, at a minimum, must require some form of hardware, such as an
`accelerometer.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),4 and Patent Owner contends that it is not. For at
`
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` 4
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet.11.
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`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
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`5.
`
`“a counting logic to identify and count periodic human
`motions”
`As discussed immediately above, Uniloc submits that “counting logic” is not
`governed by 35 U.S.C. § 112(6), and no construction is necessary. The claim
`language provides its own definition, as evidenced by Petitioner’s proposed
`definition, which repeats the claim language verbatim with the exception that
`Petitioner substitutes the term “counting logic” with the phrase “hardware, software,
`or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “counting logic” by reciting that it “count[s] periodic
`human motions”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “counting logic” with “hardware,
`software, or both” injects ambiguity by reducing claim language to virtually
`anything within the universe of hardware and/or software. Moreover, a POSITA
`
`
`
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`would understand that such a determination cannot be done in software alone, as
`permitted by Petitioner’s unreasonably broad construction. Rather,
`the
`determination, at a minimum, must require some form of hardware, such as an
`accelerometer.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),5 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
`6.
`
`“a cadence logic to continuously update a dynamic cadence
`window”
`The Petition takes the same erroneous approach to the term “cadence logic”
`that it does with the “dominant axis logic” and “counting logic” terms addressed
`above. Accordingly, the proposed construction in the Petition should be rejected for
`analogous reasons, which are repeated below for completeness and clarity.
`Uniloc submits that “cadence logic” is not governed by 35 U.S.C. § 112(6),
`and no construction is necessary. The claim language provides its own definition,
`as evidenced by Petitioner’s proposed definition, which repeats the claim language
`verbatim with the exception that Petitioner substitutes the term “cadence logic” with
`
`
` 5
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet.12.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`the phrase “hardware, software, or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “cadence logic” by reciting that it “continuously
`update[s] a dynamic cadence window”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “cadence logic” with “hardware,
`software, or both” injects ambiguity by reducing claim language to virtually
`anything within the universe of hardware and/or software. Moreover, a POSITA
`would understand that such a determination cannot be done in software alone, as
`permitted by Petitioner’s unreasonably broad construction. Rather,
`the
`determination, at a minimum, must require some form of hardware to detect “actual
`cadence changes.”
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),6 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`
`
`
` 6
`
` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 13.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`hypotheticals.
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`7.
`
`“a mode logic, to switch the device from a non-active mode to
`an active mode after a number of periodic human motions are
`detected within appropriate cadence windows by the counting
`logic”
`The Petition takes the same erroneous approach to the term “mode logic” that
`it does with the “cadence logic”, “dominant axis logic”, and “counting logic” terms
`addressed above. Accordingly, the proposed construction in the Petition should be
`rejected for analogous reasons, which are repeated below for completeness and
`clarity.
`Uniloc submits that “mode logic” is not governed by 35 U.S.C. § 112(6), and
`no construction is necessary. The claim language provides its own definition, as
`evidenced by Petitioner’s proposed definition, which repeats the claim language
`verbatim with the exception that Petitioner substitutes the term “mode logic” with
`the phrase “hardware, software, or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “mode logic” by reciting that it “switch[es] the device
`from a non-active mode to an active mode after a number of periodic human motions
`are detected within appropriate cadence windows by the counting logic”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “cadence logic” with “hardware,
`software, or both” injects ambiguity by reducing claim language to virtually
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`anything within the universe of hardware and/or software. Moreover, a POSITA
`would understand that such a determination cannot be done in software alone, as
`permitted by Petitioner’s unreasonably broad construction. Rather,
`the
`determination, at a minimum, must require some form of hardware to detect
`“periodic human motions.”
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),7 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
`B.
`
`[Grounds 1 and 3] No Prima Facie Obviousness For “continuously
`determining an orientation of the inertial sensor” (Claim 1)
`The Petition relies on its argument in Claim 1 for similar limitations in Claim
`11. See Pet. 34 (“Second, consistent with the analysis at [1.1] Pasolini discloses
`that one of the functions of the processing unit and processing operations is
`determining the main vertical axis (and thus an orientation) at each new acceleration
`sample”) (emphasis added); Therefore, the Petition fails to establish prima facie
`obviousness of independent Claims 1 and 11 for at least the reasons below.
`The Petition relies solely on Pasolini for this limitation. Petitioner
`
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` 7
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 14.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`acknowledges and tacitly admits that Pasolini does not disclose “continuously
`determining an orientation of the inertial sensor” because Pasolini only discloses
`“identifying the main vertical axis … at each acquisition of a new acceleration
`sample … so as to take into account variations in the orientation of the pedometer
`device”. Pet. 27. In other words, Pasolini is not concerned with, and does not
`perform “determining an orientation of the inertial sensor”, as required by the claim
`language, instead Pasolini merely discloses the periodic “acquisition of a new
`acceleration sample”. Furthermore, Pasolini discloses that each new acceleration
`sample merely “take[s] into account variations in the orientation of the pedometer
`device”, further showing that Pasolini only considers slight variations of its device
`as an afterthought and does not disclose “continuously determining an orientation
`of the inertial sensor” as required by the claim language.
`Furthermore, “a patent composed of several elements is not proven obvious
`merely by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167
`L.Ed.2d 705 (2007). The obviousness analysis must focus on the knowledge and
`motivations of the skilled artisan at the time of the invention. InTouch Techs., Inc.
`v. VGO Commc'ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of
`obviousness, there must be an explanation of why a person of ordinary skill in the
`art would modify the prior art references to create the claimed invention. Cutsforth,
`Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re
`Kotzab, 217 F.3d 1365, 1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359
`(Fed.Cir.1998).
`
`14
`
`
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`IPR2018-00387
`U.S. Patent 7,653,508
`
`Here, Pasolini does not disclose the required “continuously determining an
`orientation of the inertial sensor”, and in any case, Petitioners propose no
`modifications to Pasolini.
`Thus, Grounds 1 and 3 should be denied because Pasolini only discloses
`“Pasolini only discloses “identifying the main vertical axis … at each acquisition of
`a new acceleration sample” and does not disclose “continuously determining an
`orientation of the inertial sensor” as required by the claim language.
`
`C.
`
`[Grounds 1 and 3] No Prima Facie Obviousness For “updating the
`dominant axis as the orientation of the inertial sensor changes”
`(Claim 1)
`The Petition relies on its argument in Claim 1 for similar limitations in Claim
`11. See Pet. 35 (“Fourth, Pasolini teaches dominant axis logic … to update the
`dominant axis as the orientation of the device changes. Consistent with the analysis
`at [1.3]…”) (emphasis added); Therefore, the Petition fails to establish prima facie
`obviousness of independent Claims 1 and 11 for at least the reasons below.
`The Petition relies solely on Pasolini for this limitation. Petitioner
`acknowledges, and tacitly admits that Pasolini does not disclose “updating the
`dominant axis as the orientation of the inertial sensor changes” because Pasolini
`only discloses that “the main vertical axis can be identified at each acquisition of a
`new acceleration sample.” Pet. 29; EX1005, 8:11-24. Thus, the device of Pasolini
`does not disclose “updating the dominant axis as the orientation of the inertial sensor
`changes” as required by the claims because Pasolini only discloses “identifying”
`and does not disclose the required “updating the dominant axis”.
`
`15
`
`
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`IPR2018-00387
`U.S. Patent 7,653,508
`
`Additionally, Pasolini fails to disclose “updating the dominant axis as the
`orientation of the inertial sensor changes” as required by the claims because
`Pasolini is not concerned with and does not disclose performing any action upon
`detecting “as the orientation of the inertial sensor changes”, instead Pasolini merely
`discloses “acquisition of a new acceleration sample.” To put it another way, Pasolini
`could not detect a change in orientation of the inertial sensor if it doesn’t happen at
`the time of its “acceleration sample”, much less perform the required updating of
`the dominant axis (which Pasolini does not disclose either).
`More specifically, in acknowledging Pasolini’s shortcomings, the Petition
`merely provides conclusory statements and speculation through its declarant for the
`proposition that “a POSITA would have thus recognized that as the pedometer (and
`by extension the accelerometer inside it) is rotated, a new acceleration sample is
`acquired to both identify the main vertical axis (i.e., the dominant axis) and count
`the steps that occur along this axis.” Pet. 29-30 citing EX1003, p. 36.
`However, Petitioner cannot merely speculate through its declarant, outside
`the four corners of the reference, to carry its burden. The Federal Circuit has
`instructed that “legal determinations of obviousness, as with such determinations
`generally, should be based on evidence rather than on mere speculation or
`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014)
`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`been common knowledge in the art). Further, the obviousness analysis must focus
`on the knowledge and motivations of the skilled artisan at the time of the invention.
`
`16
`
`
`
`IPR2018-00387
`U.S. Patent 7,653,508
`
`InTouch Techs, 751 F.3d at 1348. And there must be an explanation of why a person
`of ordinary skill in the art would modify the prior art reference to create the claimed
`invention. Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In
`re Rouffet, 149 F.3d at 1359.
`Regardless, here Pasolini does not disclose “updating the dominant axis as
`the orientation of the inertial sensor changes”, and in any case, Petitioners do not
`propose any modifications to Pasolini.
`Thus, Grounds 1 and 3 should be denied because Pasolini does not disclose
`updating the axis, and Pasolini does not disclose detecting, much less performing
`any action “as the orientation of the inertial sensor changes”, and therefore
`Pasolini cannot and does not disclose “updating the dominant axis as the orientation
`of the inertial sensor changes”.
`
`D.
`
`[Grounds 1 and 3] No Prima Facie Obviousness For “counting
`periodic human motions by monitoring accelerations relative to
`the dominant axis” (Claim 1)
`The Petition relies on its argument in Claim 1 for similar limitations in Claim
`11. See Pet. 36 (“Second, consistent with the analysis at [1.4]…”) (emphasis
`added); Therefore, the Petition fails to establish prima facie obviousness of
`independent Claims 1 and 11 for at least the reasons below.
`The Petition relies solely on Pasolini for this limitation. Petitioner
`acknowledges and admits that Pasolini does not disclose “counting periodic human
`motions by monitoring accelerations relative to the dominant axis” because
`Pasolini only dis
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