throbber
Trials@uspto.gov
`571-272-7822
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`Paper No. 21
`Entered: June 17, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., LG ELECTRONICS, INC.,
`HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-003871,2
`Patent 7,653,508 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
`2 LG Electronics, Inc., who filed a Petition in IPR2018-01577, and HTC
`Corporation and HTC America, Inc., who collectively filed a Petition in
`IPR2018-01589, have been joined to petitioner in this proceeding.
`
`
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`

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`IPR2018-00387
`Patent 7,653,508 B1
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`I. INTRODUCTION
`
`A. Background
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
`
`claims 1–4, 6–8, 11–16, and 19 (the “challenged claims”) of U.S. Patent No.
`7,653,508 B1 (Ex. 1001, “the ’508 patent”). Paper 2 (“Pet.”), 1. Uniloc
`Luxembourg S.A., a predecessor in interest to Uniloc 2017 LLC (“Patent
`Owner”), filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On July
`23, 2018, we instituted an inter partes review of the challenged claims on all
`grounds raised in the Petition. Paper 8 (“Decision” or “Dec.”), 27.
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 11, “PO Resp.”) and Petitioner filed a Reply to Patent
`Owner’s Response (Paper 12, “Pet. Reply”). Patent Owner subsequently
`filed a Sur-Reply to Petitioner’s Reply. Paper 14 (“PO Sur-Reply”). On
`April 2, 2019, we held an oral hearing. A transcript of the hearing has been
`entered into the record. Paper 20 (“Tr.”).3
`
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response will be deemed
`waived.”4 Nonetheless, Petitioner bears the burden to show, by a
`preponderance of the evidence, that the challenged claims are unpatentable.
`35 U.S.C. § 316(e). For the reasons that follow, we conclude that Petitioner
`
`
`3 The oral hearing included related proceedings IPR2018-00389, IPR2018-
`00424, and IPR2018-01028. Paper 17.
`4 See Paper 9, 3; see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012) (“The patent owner response . . . should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.”).
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`IPR2018-00387
`Patent 7,653,508 B1
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`has proven by a preponderance of the evidence that the challenged claims of
`the ’508 patent are unpatentable.
`
`B. Related Matters
`The parties indicated that the ’508 patent is the subject of the
`
`following litigation:
`Uniloc USA, Inc. v. Apple Inc., No. 2-17-cv-00522 (E.D. Tex.
`filed June 30, 2017),
`Uniloc USA, Inc. v. Samsung Electronics America, Inc., No. 2-
`17-cv-00650 (E.D. Tex. filed Sept. 15, 2017),
`Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 4-12-cv-
`00832 (N.D. Tex. filed Oct. 13, 2017),
`Uniloc USA, Inc. v. HTC America, Inc., No. 2-17-cv-01629
`(W.D. Wash. filed Nov. 1, 2017),
`Uniloc USA, Inc. v. Huawei Devices USA, Inc., No. 2-17-cv-
`00737 (E.D. Tex. filed Nov. 9, 2017), and
`Uniloc USA, Inc. v. Apple Inc., No. 4-18-cv-00364 (N.D. Cal.
`filed Jan. 17, 2018).
`Pet. 2; PO Resp., 2.
`
`We note that in IPR2018-01026, Petitioner sought inter partes review
`of claim 5 of the ’508 patent. We declined to institute review. IPR2018-
`01026, Paper 9. The ’508 patent was also subject to a petition for inter
`partes review in IPR2018-01756, which we did not institute. IPR2018-
`01756, Paper 7.
`
`C. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
`
`certain requirements for a petition for inter partes review, including that “the
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`IPR2018-00387
`Patent 7,653,508 B1
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`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2); see also
`37 C.F.R. § 42.8(b)(1) (requiring identification of real parties-in-interest in
`mandatory notices). The Petition identifies “Apple Inc.” as the real party-in-
`interest. Pet. 1. The joinder petitioners identify LG Electronics, Inc., LG
`Electronics U.S.A., Inc., LG Electronics MobileComm USA, Inc., HTC
`Corporation, and HTC America, Inc. as real parties-in-interest. IPR2018-
`01577, Paper 1, 2; IPR2018-01589, Paper 1, 2. Patent Owner states that its
`real parties-in-interest are Uniloc 2017 LLC, Uniloc USA, Inc., and Uniloc
`Licensing USA LLC. Paper 10, 2.
`
`D. The Challenged Patent
`The ’508 patent discloses a device and method for counting a user’s
`
`steps using an inertial sensor. Ex. 1001, 1:5–7, 2:8–9. As used in the ’508
`patent, a “step” is “any user activity having a periodic set of repeated
`movements.” Id. at 3:32–36. A tri-axis inertial sensor can be used to
`provide acceleration data as a function of time along three axes. Id. at 3:37–
`44; Fig. 2. Steps are counted by analyzing acceleration data relative to a
`dominant axis, which can be the axis most influenced by gravity or an axis
`that is defined as approximately aligned to gravity. Id. at 6:22–55. An
`example acceleration chart is shown in Figure 2, which is reproduced below:
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`Figure 2 illustrates an exemplary cadence of motion graph displaying
`acceleration measurements versus time along a first axis 203, a second axis
`205, and a third (dominant) axis 207. Id. at 1:45–47, 3:42–45.
`
`Step counting may be accomplished by taking an acceleration
`measurement, filtering the measurement to remove high and/or low
`frequency data, and determining whether the measurement is within a certain
`amount of time since the last step was counted. Id. at 3:65–67, 12:31–51. If
`the measurement is made within the allowed time, it is further evaluated to
`determine whether the acceleration along the dominant axis is greater than a
`lower threshold. Id. at 12:52–58. A step may be counted if the
`measurement is greater than the lower threshold, greater than previous
`measurements, and less than an upper threshold, and if it is determined that
`the user is moving away from gravity (e.g., the user is lifting a foot from the
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`ground rather than planting a foot on the ground). Id. at 12:59–63, 13:33–
`14:3, Fig. 8.
`
`In operation, the system is initiated in a sleep mode during which data
`is collected at a low sampling rate. Id. at 8:20, 8:64–66. If acceleration is
`detected, an entry mode is initiated. Id. at 8:22–23. If a certain number of
`steps are detected in a predetermined amount of time, the system shifts to a
`stepping mode; if not, the system returns to the sleep mode. Id. at 8:24–29.
`In the stepping mode, data is monitored to count steps according to
`predefined sets of rules and motion criteria. Id. at 8:30–35. If a step is not
`detected within a set time interval, the system shifts into an exit mode. Id. at
`8:35–37. If a certain number of steps are detected in a predetermined
`amount of time in the exit mode, the system returns to the stepping mode; if
`not, the system returns to the entry mode. Id. at 8:38–44.
`
`E. The Challenged Claims
`Petitioner challenges claims 1–4, 6–8, 11–16, and 19 of the ’508
`
`patent. Pet. 1, 16. Claims 1, 6, 11, and 15 are independent. Claims 1 and 6
`are illustrative of the challenged claims, and are reproduced below:
`1.
`A method of monitoring human activity using an inertial
`sensor, comprising:
`
`continuously determining an orientation of the inertial
`sensor;
`
`assigning a dominant axis;
`
`updating the dominant axis as the orientation of the
`inertial sensor changes; and
`
`counting periodic human motions by monitoring
`accelerations relative to the dominant axis.
`6.
`A method of monitoring human activity using an inertial
`sensor, comprising:
`
`6
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`IPR2018-00387
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`running a device that includes the inertial sensor in a
`
`non-active mode, in which periodic human motions are
`buffered;
`
`switching the device from the non-active mode to an
`active mode, after identifying a number of periodic human
`motions within appropriate cadence windows; and
`
`during the active mode, counting each of the periodic
`human motions to enable the monitoring of human activity.
`Ex. 1001, 15:10–18, 15:37–47.
`
`F. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted claims and grounds of
`
`unpatentability as follows (Dec. 27):
`Reference(s)
`Basis5
`Pasolini6
`35 U.S.C. § 103(a)
`Fabio7,8
`35 U.S.C. § 103(a)
`Pasolini and Fabio
`35 U.S.C. § 103(a)
`
`Challenged Claims
`1, 2, 11, and 12
`6–8, 15, 16, and 19
`3, 4, 13, and 14
`
`Petitioner submitted a declaration of Joseph A. Paradiso, PhD (Ex. 1003,
`“Paradiso Declaration” or “Paradiso Decl.”) in support of its contentions in
`the instituted challenges.
`
`
`5 The ’508 patent was filed on December 22, 2006, prior to the date when
`the Leahy-Smith America Invents Act (“AIA”) took effect.
`6 US 7,463,997 B2 (filed Oct. 2, 2006, issued Dec. 9, 2008) (Ex. 1005,
`“Pasolini”).
`7 US 7,698,097 B2 (filed Oct. 2, 2006, issued Apr. 13, 2010) (Ex. 1006,
`“Fabio”).
`8 We note that the first named inventor of both Pasolini and Fabio is “Fabio
`Pasolini,” and we adopt the naming protocol used by the parties.
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`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenges, Petitioner must demonstrate by a
`
`preponderance of the evidence that the claims of the ’508 patent are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is
`unpatentable under 35 U.S.C. § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`Citing its declarant, Joseph A. Paradiso, PhD, Petitioner contends that
`
`a person having ordinary skill in the art at the time of the invention
`(“POSITA”) would have had “a Bachelor’s degree in Electrical Engineering,
`Computer Engineering, and/or Computer Science, or equivalent training,”
`and “approximately two years of 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 (citing Ex.
`1003, 8). “Patent Owner does not offer a competing definition for purposes
`of this proceeding.” PO Resp. 3.
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`We find Petitioner’s definition reasonable, and, because it is
`
`consistent with the problems and solutions in the ’508 patent and cited
`references, we adopt it as our own. See, e.g., Ex. 1001, 1:11–18 (discussing
`MEMS technology); Ex. 1005, 1:34–39 (same); Ex. 1006, 2:49–52 (same);
`see also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“In
`determining this skill level, the court may consider various factors including
`type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” (citations
`and internal quotations omitted)).
`
`C. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
`
`its broadest reasonable construction in light of the specification of the patent
`in which it appears.9 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v.
`Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). Consistent with the broadest reasonable
`construction, claim terms are presumed to have their ordinary and customary
`meaning as understood by a person of ordinary skill in the art in the context
`of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`
`9 This Petition was filed before the effective date of the amendment to
`37 C.F.R. § 42.100 that changed the claim construction standard applied in
`inter partes reviews. Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
`§ 42.100(b) effective November 13, 2018). Thus, we use the broadest
`reasonable interpretation claim construction standard in this proceeding.
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`1257 (Fed. Cir. 2007). The presumption may be overcome by providing a
`definition of the term in the specification with reasonable clarity,
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994). In the absence of such a definition, limitations are not to be read
`from the specification into the claims. See In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993). Only those terms that are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`
`When a claim term does not include the word “means,” a rebuttable
`presumption that the term is not drafted in means-plus-function language can
`be overcome “if the challenger demonstrates that the claim term fails to
`recite sufficiently definite structure or else recites function without reciting
`sufficient structure for performing that function.” Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part)
`(quotation marks and internal citations omitted). If the presumption is
`overcome, “[a]pplication of § 112, ¶ 6 requires identification of the structure
`in the specification which performs the recited function,” but does not
`permit “incorporation of structure from the written description beyond that
`necessary to perform the claimed function.” Micro Chemical, Inc., v. Great
`Plains Chemical Co., 194 F.3d 1250, 1257–58 (Fed. Cir. 1999).
`
`Petitioner proposes constructions for seven claim terms, asserting that
`its “claim constructions . . . are based on the broadest reasonable
`construction.” Pet. 7–15. Patent Owner disagrees with Petitioner’s
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`proposed constructions. PO Resp. 4–10. We address each of the disputed
`terms below.
`
`1. “logic” terms
`We first address the “logic” terms recited in claims 11–16 and 19:
`
`“dominant axis logic,” “counting logic,” “cadence logic,” and “mode logic.”
`Pet. 9−14. Petitioner contends that these terms would have been understood
`to include “hardware, software, or both” to perform the functions recited.
`See id. at 9, 10–11, 12, 13–14. Petitioner also contends that “to the extent
`that Patent Owner overcomes the presumption against construction under 35
`U.S.C. § 112, sixth paragraph, a POSITA would have understood” certain
`structures to be associated with the recited functions. Id. at 10, 11, 12, 13,
`14. More particularly, Petitioner contends that these terms “under the
`narrower Phillips standard,” which does not apply in this inter partes
`review, are directed to “logic,” which “invoke[s] § 112 ¶ 6 but fail[s] to meet
`the definiteness requirement of § 112 ¶ 2.” Id. at 14–15. Patent Owner
`contends that none of these “logic” terms are governed by 35 U.S.C. § 112,
`¶ 6, and that no construction is necessary. PO Resp. 8−10.
`
`We determine that the presumption against application of § 112 ¶ 6
`has not been overcome, and that express construction of these terms is not
`necessary. None of these “logic” terms recite the word “means,” and,
`therefore, there is a presumption that the term is not drafted in means-plus-
`function format. Williamson, 792 F.3d at 1349. Additionally, although
`preserving for district court litigation its position that the claims are drafted
`in means-plus-function format, Petitioner affirmatively argues here, and
`supports with testimonial evidence, the contention that a person of ordinary
`skill in the art would interpret each of these “logic” terms to include
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`“hardware, software, or both.” See Ex. 1003 ¶¶ 36, 39, 42, 45, 48. Patent
`Owner similarly contends that none of these “logic” terms are governed by
`35 U.S.C. § 112, ¶ 6. PO Resp. 8−10.
`
`Therefore, under Williamson, neither party has challenged the
`rebuttable presumption that § 112 ¶ 6 does not apply to these terms, which
`do not use the word “means.” Petitioner’s alternative position that these
`claim terms are indefinite appears to give “notice” of its claim construction
`position in district court, but is not a position that Petitioner is affirmatively
`asserting in this proceeding. See Pet. 15 (stating that “regardless of whether
`the recited ‘logic’ is a nonce word requiring the disclosure of an algorithm,
`the Board may still find that the claims are obvious in view of the software
`and hardware disclosed in the prior art cited in this Petition”). More
`importantly, there is no record evidence, proposed by either party, to support
`the construction of these “logic” terms as nonce words under § 112 ¶ 6, and,
`therefore, the presumption against application of § 112 ¶ 6 is unrebutted.
`See Zeroclick LLC v. Apple Inc., 891 F.3d 1003, 1007–08 (Fed. Cir. 2018).
`
`2. dominant axis
`Petitioner proposes that this term is properly construed as including
`
`“the axis most influenced by gravity.” Pet. 8 (citing Ex. 1003, 15). Patent
`Owner challenges this construction, arguing that “the Petition incorrectly
`conflates certain description directed to determining an orientation of the
`electronic device with, instead, assigning a dominant axis. The claim
`language itself, and the remainder of the intrinsic evidence, proscribe such
`an interpretation.” PO Resp. 5–6. Patent Owner acknowledges that the
`dominant axis “may be the axis most influenced by gravity,” but argues that
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`nothing in the ’508 patent requires that the “dominant axis[] must be the
`[axis] that is most influenced by gravity.” Id. at 6–7.
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`The Specification supports Petitioner’s proposal (Ex. 1001, 6:15−18)
`and also explains that “[i]n alternative embodiments, the dominant axis does
`not correspond to one of the actual axes of the inertial sensor(s) in a current
`orientation, but rather to an axis that is defined as approximately aligned to
`gravity” (id. at 6:24−27). Therefore, we are persuaded that the Specification
`is consistent in explaining that a dominant axis, whether a virtual axis or
`otherwise, is assigned on the basis of gravity: “most influenced by gravity”
`(id. at 6:15–17) and “approximately aligned to gravity” (id. at 6:25–28).
`Patent Owner’s characterization of the Specification as describing
`embodiments that exclude the gravitational influence are unpersuasive.
`
`To the extent that Patent Owner argues that the claims require a cause
`and effect relationship such that detecting a change in sensor orientation
`must be wholly independent from assigning the dominant axis, such
`argument is unpersuasive for the reasons set forth in section II.F.1.d below.
`
`Accordingly, we adopt Petitioner’s proposed construction and
`determine that the plain and ordinary meaning of “dominant axis” includes
`“the axis most influenced by gravity.” No further construction is necessary
`to resolve the issues in this proceeding. Vivid Techs., 200 F.3d at 803; Nidec
`Motor Corp., 868 F.3d at 1017.
`
`3. cadence window
`Petitioner proposes that “cadence window” includes “a window of
`
`time since a last step was counted that is looked at to detect a new step.”
`Pet. 9 (citing Ex. 1003, 15). Patent Owner does not contest Petitioner’s
`proposal or offer one of its own. PO Resp. 5.
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`Petitioner relies on language from the Specification of the ’508 patent;
`
`namely the statement that “[a] cadence window is a window of time since a
`last step was counted that is looked at to detect a new step” (Ex. 1001, 3:65–
`67). We note that the ’508 patent also states: “cadence window (the
`allowable time window for steps to occur).” Id. at 3:58–59. These
`descriptions are similar in that they are both lengths of time during which a
`step can be detected, with Petitioner’s definition being narrower due to the
`requirement that the cadence window occurs “since a last step was counted.”
`During the hearing, Petitioner explained that it relied on the narrower
`definition due to its inclusion of the first instance of the word is. Tr. 19:2–
`12. We understand Petitioner to interpret “[a] cadence window is a window
`of time since a last step was counted that is looked at to detect a new step”
`(Ex. 1001, 3:65–67 (emphasis added)) to indicate that a definition is
`provided.
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`We agree with Petitioner’s reasoning regarding “is,” adopt
`Petitioner’s proposed construction, and determine that a “cadence window”
`is a window of time since a last step was counted that is looked at to detect a
`new step.
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`D. Overview of the Prior Art
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`1. Pasolini
`Pasolini discloses a pedometer and step detection method. Ex. 1005,
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`1:10–12. The pedometer includes an accelerometer and a processing unit.
`Id. at 2:60–63. The pedometer is carried by the user, and the accelerometer
`senses vertical accelerations that occur with each step due to impact of the
`feet on the ground. Id. at 2:66–3:29. The accelerometer produces an
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`acceleration signal corresponding to the detected accelerations, and the
`processing unit acquires, at pre-set intervals, samples of the signal. Id. at
`3:16–19, 3:30–33. The processing unit processes the acceleration signal to
`count the number of steps taken by the user. Id. at 3:32–34. Figure 2 is
`reproduced below:
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`Figure 2 shows a graph corresponding to the pattern of an acceleration signal
`during a step. Id. at 2:39–40.
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`Step counting may be accomplished by an algorithm that analyzes the
`acceleration signal to look for a positive phase of the step followed by a
`negative phase within a pre-set time interval from the occurrence of the
`positive phase. Id. at 3:63–66. During the positive phase, a positive-
`acceleration peak occurs (i.e., directed upwards) due to contact and
`consequent impact of the foot with the ground; during the negative phase, a
`negative-acceleration peak occurs (i.e., directed downwards) due to rebound,
`having an absolute value smaller than that of the positive-acceleration peak.
`Id. at 3:23–29. The processing unit compares the value of the acceleration
`signal with positive and negative reference thresholds (S+ and S−,
`respectfully) to identify, respectively, the positive phase (positive
`acceleration peak) and the negative phase (negative acceleration peak) of the
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`step. Id. at 3:36–41. Acceleration datum (CalAcc) values are calculated for
`each acceleration sample (Acc) based on the acceleration sample value and a
`mean value (Accm) of the acceleration samples. Id. at 6:5, Fig. 3. The
`positive phase is detected when the acceleration datum exceeds the positive
`reference threshold and then drops below the positive reference threshold.
`Id. at 4:35–40. The negative phase is detected when the acceleration datum
`drops below the negative reference threshold within a certain time interval,
`in which case the processing unit increments the count of detected steps and
`the algorithm looks for a new potential positive phase of a step. Id. at 4:66–
`5:3, 5:40–41. If no negative phase is detected within the time interval, the
`algorithm looks for a new potential positive phase of a step without
`incrementing the step count. Id. at 4:62–65, Fig. 3. Alternatively, the step
`detection can be based solely on the positive phase of the step. Id. at 7:65–
`8:1.
`The accelerometer can be a linear accelerometer (id. at 2:61), and can
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`also be a three-axis accelerometer (id. at 8:11–15). In the latter case, the
`processing unit identifies the axis having the highest mean acceleration
`value (due to gravity) as the main vertical axis to be used for step detection.
`Id. at 8:15–24.
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`2. Fabio
`Fabio discloses a pedometer that includes an inertial sensor and a
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`control unit. Ex. 1006, 2:34–40, Figs. 1–2. The pedometer is carried by the
`user, and the inertial sensor measures accelerations along its detection axis.
`Id. at 2:49–59. Steps are detected by analyzing the acceleration data for a
`positive peak exceeding a first threshold AZP, followed by a negative peak
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`Patent 7,653,508 B1
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`exceeding a second threshold AZN within a certain time window TW after
`the positive peak. Id. at 4:12–21. Figure 5 is reproduced below:
`
`
`
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`
`
`
`Figure 5 shows a graph of the acceleration signal measured during a step of
`the user. Id. at 4:13–15, 6:23–26.
`
`A detected step is validated as a step when it falls within a variable
`time window TV, which is illustrated in Figure 6, reproduced below.
`
`
`
`
`
`
`
`
`
`
`
`Figure 6 of Fabio is a graph illustrating quantities used to validate user steps
`detected from acceleration data. Id. at 2:24–25. Figure 6 illustrates a
`sequence of user steps detected at times TR(1), TR(2), . . . , TR(K−2),
`TR(K−1), and TR(K) according to the method disclosed in Figure 5. The
`time between steps detected at times TR(K−1) and TR(K−2) is ∆TK-1; the
`time between steps detected at times TR(K) and TR(K−1) is ∆TK. Id. at
`4:28–35. For the step detected at time TR(K) to be validated as a step, it
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`IPR2018-00387
`Patent 7,653,508 B1
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`must fall within variable time window TV; i.e., TR(K) must be greater than
`TR(K−1) + ½ (∆TK−1) and less than TR(K−1) + 2 (∆TK−1). Id. at 4:35–52.
`
`In operation, the control unit initially implements a first counting
`procedure in which acceleration data is sampled at a pre-determined
`frequency. Id. at 3:13–21, Figs. 3–4. The user is considered to be at rest,
`and the control unit executes the first counting procedure to analyze
`acceleration data for an indication that the user is engaged in activity with a
`regular gait. Id. at 3:22–27. If a regular gait is detected, the number of
`detected steps during the first counting procedure is added to the number of
`total steps and the control unit executes a second counting procedure
`according to which each detected valid step is added to the number of total
`steps; if no regular gait is detected within a certain amount of time, the
`pedometer is set in a low power consumption state and the control unit
`executes a surveying procedure until the pedometer is moved. Id. at 3:27–
`56, Figs. 4, 7, 8. If, when executing the second counting procedure, an
`interruption in locomotion is detected, the control unit reverts to the first
`counting procedure. Id. at 3:44–49. If pedometer movement is detected
`during execution of the surveying procedure, the control unit reverts to the
`first counting procedure. Id. at 3:53–57, Fig. 3.
`
`E. Prosecution History
`Patent Owner notes that Pasolini was cited during prosecution of U.S.
`
`Patent No. 8,712,723 B1 (“the ’723 patent”), which is a descendant of the
`’508 patent. PO Resp. 3. Patent Owner argues that “Applicant successfully
`distinguished Pasolini and all other references of record from the claims that
`ultimately issued, including on the basis of certain claim limitations that also
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`IPR2018-00387
`Patent 7,653,508 B1
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`are cited in the ’508 patent.” Id. (footnote omitted). Patent Owner argues
`that Fabio does not cure the alleged deficiencies of Pasolini, and that “[t]he
`interest of finality weighs against revisiting the deficiencies of Pasolini and
`whether the cumulative disclosure in Fabio renders obvious what Pasolini
`admittedly fails to disclose.” Id. at 4.
`
`It is not clear what relief, if any, Patent Owner seeks in advancing
`these arguments. We note that Applicant argued that Pasolini does not
`disclose cadence windows (see the ’723 patent file history, Amendment 6, 8
`(filed January 29, 2013)), but Petitioner relies on Fabio, not Pasolini, to
`disclose a cadence window. See, e.g., Pet. 45–47. To the extent Patent
`Owner requests denial of Petitioner’s challenges due to their reliance on
`Pasolini, such request is denied.
`
`F. Challenge Based on Pasolini
`Petitioner argues that claims 1, 2, 11, and 12 would have been
`
`unpatentable over Pasolini. Pet. 24–37. In support of its showing, Petitioner
`relies upon the Paradiso declaration. Id. (citing Ex. 1003).
`
`1. Independent Claims 1 and 11
`We are satisfied that Petitioner has demonstrated how Pasolini teaches
`
`the limitations of independent claims 1 and 11. We focus on the language of
`claim 1 to address the similarly recited limitations of claim 11. We note that
`Petitioner relies on essentially the same contentions with claims 1 and 11
`(compare Pet. 24–31, with id. at 32–37), and that Patent Owner addresses
`these claims collectively (see PO Resp. 21–29 (presenting arguments with
`respect to claim 1 and referring back to such arguments when addressing
`claim 11)).
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`IPR2018-00387
`Patent 7,653,508 B1
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`a. A method of monitoring human activity using an inertial
`
`sensor
`
`For the preamble of claim 1, Petitioner relies on Pasolini’s disclosure
`of step detection, asserting that a user’s steps are human activity and an
`accelerometer is an example of an inertial sensor. Pet. 24–26 (citing, inter
`alia, Ex. 1005, 2:6–9, 3:13–19). Patent Owner does not challenge this
`aspect of the Petition.
`
`Pasolini discloses a pedometer device and a method for detecting and
`counting a user’s steps. Ex. 1005, 2:6–9. The pedometer includes an
`accelerometer, and, in a portion cited by Petitioner, Pasolini discloses that
`the accelerometer is used to measure accelerations along the vertical axis as
`a user takes a step and produces a corresponding acceleration signal. Id. at
`2:60–63, 3:13–19. The ’508 patent explains that steps are a form of human
`activity (Ex. 1001, 1:5–7) and an accelerometer is an inertial sensor (id. at
`1:13). We are persuaded by Petitioner’s showing, and find that Pasolini
`describes a method of monitoring human activity using an inertial sensor.
`
`b. continuously determining an orientation of the inertial sensor
`Petitioner relies on Pasolini’s disclosure of a three-axis accelerometer
`
`to teach this limitation. Pet. 26–28 (citing Ex. 1003, 33–34; Ex. 1005, 3:31–
`33, 8:11–24). In particular, Petitioner relies on Pasolini’s disclosure of
`identifying the main vertical axis at each acquisition of a new acceleration
`sample. Id. at 27–28; see also Ex. 1005, 8:15–24. According to Petitioner, a
`person of ordinary skill in the art would have understood that Pasolini
`continuously determines the main vertical axis because it acquires
`acceleration samples at pre-set intervals and determines the device
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`IPR2018-00387
`Patent 7,653,508 B1
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`orientation at each acquisition. Pet. 28 (citing Ex. 1003, 33; Ex. 1005, 3:31–
`33, 8:20–22). Patent Owner does not challenge this aspect of the Petition.
`Pasolini discloses that its “accelerometer 2 could be equipped with . . .
`
`three mutually orthogonal axes of measurement,” in which case “the
`algorithm implemented by the processing unit 3 envisages identifying the
`main vertical axis to be used for step detection as the axis of detection that
`has the highest mean acceleration value Accm (on account of gravity).” Ex.
`1005, 8:11–20. “[T]he main vertical axis can be identified at each
`acquisition of

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