Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 20
`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 IPR2018-003891,2
`Patent 8,712,723 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, 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 LG Electronics, Inc., HTC Corporation, and HTC America, Inc., who filed
`a Petition in IPR2018-01458, have been joined to petitioner in this
`proceeding.
`2 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 20
`Entered: June 17, 2019
`
`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 IPR2018-003891,2
`Patent 8,712,723 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, 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 LG Electronics, Inc., HTC Corporation, and HTC America, Inc., who filed
`a Petition in IPR2018-01458, have been joined to petitioner in this
`proceeding.
`2 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
`
`
`
`
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`Case IPR2018-00389
`Patent 8,712,723 B1
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`I. INTRODUCTION
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`A. Background
`Apple Inc. (“Petitioner”) filed a Petition for inter partes review of
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`claims 1–3, 5–7, and 10–18 (“the challenged claims”) of U.S. Patent No.
`8,712,723 B1 (Ex. 1001, “the ’723 patent”). Paper 2 (“Pet.”), 1. Uniloc
`Luxembourg S.A., a predecessor in interest to Uniloc 2017 LLC (“Patent
`Owner”), filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). On June
`27, 2018, we instituted an inter partes review of the challenged claims on all
`grounds raised in the Petition. Paper 7 (“Decision” or “Dec.”), 25.
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`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 11 (“PO Resp.”)) and Petitioner filed a Reply to the Patent
`Owner Response (Paper 12 (“Pet. Reply”)). Patent Owner subsequently
`filed a Sur-Reply to Petitioner’s Reply. Paper 14 (“PO Sur-Reply”). An
`oral hearing was held on April 2, 2019. A transcript of the hearing has been
`entered into the record. Paper 19 (“Tr.”).3
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`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 IPR2018-00387, IPR2018-
`00424, and IPR2018-01028. Paper 17.
`4 See Paper 8, 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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`has proven by a preponderance of the evidence that claims 1–3, 5–7, and 10–
`18 of the ’723 patent are unpatentable.
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`B. Related Matters
`The parties indicated that the ’723 patent is the subject of the
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`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),
`Uniloc USA, Inc. v. Apple Inc., No. 4-18-cv-00364 (N.D. Cal.
`filed Jan. 17, 2018), and
`Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 4-18-cv-
`02918 (N.D. Cal. filed May 17, 2018).
`Pet. 2; PO Resp. 2–3.
`
`We note that in IPR2018-01027, Petitioner sought inter partes review
`of claims 4 and 19 of the ’723 patent. We declined to institute review.
`IPR2018-01027, Paper 8. The ’723 patent was also subject to a petition for
`inter partes review in IPR2018-01757, which we did not institute.
`IPR2018-01757, Paper 7.
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`C. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
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`certain requirements for a petition for inter partes review, including that “the
`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-
`01458, 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 9, 2.
`
`D. The Challenged Patent
`The ’723 patent relates to monitoring and counting periodic human
`
`motions, such as steps. Ex. 1001, 1:12−14. The ’723 patent states that
`inertial sensors (e.g., accelerometers) are used in step counting devices,
`allowing an individual to track the number of daily steps. Id. at 1:18−29.
`One problem recognized in the ’723 patent is the limitations of these step
`counting devices concerning the orientation of the device during use. Id. at
`1:29−34. Further, motion noise often confuses these devices, resulting in
`missed steps or counting false steps, with a particular problem of inaccurate
`step measurements for slow walkers. Id. at 1:35−43.
`
`The ’723 patent provides for accurate counting of steps regardless of
`the orientation of the step counting device, even if that orientation changes
`during operation. Id. at 2:33−38. In particular, the ’723 patent describes
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`assigning a dominant axis after determining an orientation of the inertial
`sensor, where the orientation of the inertial sensor is continuously
`determined. Id. at 2:15−19. In one embodiment, the ’723 patent method
`determines rolling averages of the accelerations of each axis monitored by
`the inertial sensor in the device. Id. at 6:15−21. The largest absolute rolling
`average indicates the axis most influenced by gravity, which may change
`over time, as the device’s orientation changes because of rotation. Id. at
`6:20−26.
`
`With regard to the embodiment shown in Figure 8, reproduced below,
`the ’723 patent describes the method for measuring the acceleration along
`the assigned dominant axis to detect and count steps. See id. at 12:30−35.
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`Figure 8 illustrates a diagram for a method of recognizing a step. Id. at 2:4–
`7. After taking measurements of acceleration data (step 805) and filtering
`those measurements (step 810), the method evaluates the orientation of the
`device and assigns a dominant axis (step 812). Id. at 12:36–49. A
`processing logic determines whether a measurement is within a cadence
`window (step 815). Id. at 12:50–57. The cadence window is the allowable
`time window for steps to occur. Id. at 3:65−66. In one embodiment, the
`cadence window is determined based on the actual stepping period or actual
`motion cycle, but default limits or other determiners may be used to set the
`cadence window. Id. at 4:7−27. After each step is counted, the minimum
`and/or maximum of the cadence window, or window length, may be
`adjusted based on actual cadence changes. Id. Therefore, the cadence
`window is dynamic so that it continuously updates. Id. at 4:31−33.
`
`If the measurement of acceleration along the dominant axis is within
`the cadence window, is greater than previous measurements, and is within
`the range of acceleration thresholds (steps 820, 825, 830), the motion is
`determined to be a step and is counted (step 835). Id. at 12:53–62, 13:37–
`14:6. Otherwise, the step is not counted (step 840) and the method continues
`to evaluate subsequent measurements. Id. at 12:51–53.
`
`E. The Challenged Claims
`Petitioner challenges claims 1–3, 5–7, and 10–18 of the ’723 patent.
`
`Claims 1, 5, 10, and 14 are independent. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`1.
`A method of monitoring human activity using an inertial
`sensor, comprising:
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`assigning a dominant axis with respect to gravity based
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`on an orientation of the inertial sensor;
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`detecting a change in the orientation of the inertial sensor
`and updating the dominant axis based on the change; and
`
`counting periodic human motions by monitoring
`accelerations relative to the dominant axis by counting the
`periodic human motions when accelerations showing a motion
`cycle that meets motion criteria is detected within a cadence
`window; and
`
`updating the cadence window as actual cadence changes.
`Ex. 1001, 15:13–24.
`
`
`
`
`
`
`F. The Prior Art and Instituted Ground of Unpatentability
`Petitioner relies on the following prior art references:
`1) Fabio: U.S. Patent No. 7,698,097 B2, filed in the record as Exhibit
`1006; and
`2) Pasolini: U.S. Patent No. 7,463,997 B2, filed in the record as
`Exhibit 1005.5
`We instituted trial based on all challenged claims and the single
`
`ground of unpatentability asserted in the Petition: obviousness of all
`challenged claims (claims 1–3, 5−7, and 10−18) over Fabio and Pasolini.
`Dec. 25. Petitioner submits a declaration of Joseph A. Paradiso, PhD
`(Ex. 1003) in support of its contentions in the instituted challenges.
`
`
`5 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 challenge to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims 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)6 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, 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
`
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`6 The ’723 patent was filed on January 31, 2001, prior to the date when the
`Leahy-Smith America Invents Act (“AIA”) took effect.
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`related to MEMS (micro-electro-mechanical) devices and body motion
`sensing systems.” Pet. 7–8 (citing Ex. 1003, 8).
`
`Patent Owner notes that its declarant, Dr. William C. Easttom II,7
`disagrees with the experience level set forth by Petitioner, contending
`instead that a person having ordinary skill in the art at the time of the
`invention would have had “two years of experience ‘related to
`accelerometers or similar devices.’” PO Resp. 3 (citing Ex. 2001 ¶ 13).
`Patent Owner acknowledges, however, that Dr. Easttom “recognizes that the
`difference is inconsequential to the dispute here.” Id. at 4.
`
`Although the definitions proposed by the parties vary slightly, any
`differences do not alter the obviousness analysis for purposes of rendering
`this decision. We find Petitioner’s definition reasonable, and, because it is
`consistent with the problems and solutions in the ’723 patent and cited
`references, we adopt it as our own. See, e.g., Ex. 1001, 1:19–26 (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)).
`
`
`7 It is our understanding that since the time of submitting his declaration,
`Dr. Easttom has obtained his doctorate. See IPR2017-02148, Paper 79, 51.
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`C. Claim Construction
`In an inter partes review, a claim in an unexpired patent shall be given
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`its broadest reasonable construction in light of the specification of the patent
`in which it appears.8 37 C.F.R. § 42.100(b) (2017); 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, 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).
`
`
`8 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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`When a claim term does not include the word “means,” a rebuttable
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`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 Chem., Inc., v. Great
`Plains Chem. Co., 194 F.3d 1250, 1257–58 (Fed. Cir. 1999).
`
`Petitioner proposes constructions for five claim terms, asserting that
`its “claim constructions . . . are based on the broadest reasonable
`construction.” Pet. 8–15. Patent Owner disagrees with Petitioner’s
`proposed constructions. PO Resp. 4–9. We address each of the disputed
`terms below.
`
`1. “logic” terms
`We first address the “logic” terms recited in claim 10: “a dominant
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`axis logic,” “a counting logic,” and “a cadence logic.” Pet. 10−15.
`Petitioner contends that these terms would have been understood to include
`“hardware, software, or both” to perform the functions recited. See id. at 10,
`12, 13 (citing Ex. 1003, 19, 21, 22). 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 11, 12,
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`13. 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” that invokes § 112 ¶ 6 but fails to meet the
`definiteness requirement of § 112 ¶ 2. Pet. 14. Patent Owner notes that
`“[t]he Institution Decision determined that ‘the presumption against
`application of § 112 ¶ 6 has not been overcome, and that no construction is
`necessary.’” PO Resp. 9 (citing Dec. 8).
`
`We determine that the presumption against application of § 112 ¶ 6
`has not been overcome, and that no construction is 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, Petitioner, although preserving for district court
`litigation its position that the claims are drafted in means-plus-function
`format, 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 “hardware, software, or both.” See Ex.
`1003 ¶¶ 40, 43, 46.
`
`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. Pet. 14 (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,
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`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
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`“the axis most influenced by gravity.” Pet. 9 (citing Ex. 1003, 18). Patent
`Owner challenges this construction as importing limitations from the
`Specification because the “dominant axis” is not limited to just gravitational
`influence. PO Resp. 5–6. Petitioner’s proposal, although taken directly
`from the Specification (Ex. 1001, 6:23−26), is not as objectionable as Patent
`Owner argues because the claims of the ’723 patent recite that the “dominant
`axis” is assigned “with respect to gravity” based on an orientation of the
`inertial sensor. Ex. 1001, 15:15–16, 15:62−63, 16:27−28 (emphasis added)
`(language of independent claims 1, 10, 14). Although the word “dominant”
`in and of itself may be sufficient to identify the recited axis, the surrounding
`claim language makes clear that gravity influences which axis is dominant.
`Id.
`The Specification supports Petitioner’s proposal (id. at 6:23−26) and
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`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 6:32−35). 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”
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`(id. at 6:23–25) and “approximately aligned to gravity” (id. at 6:32–35).
`Further, as discussed above, the claim language expressly requires the
`assignment of the dominant axis based on gravity. Patent Owner’s
`characterization of the Specification as describing embodiments that exclude
`the gravitational influence are unpersuasive. 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.
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`3. cadence window
`Petitioner proposes that the term “cadence window” includes “a
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`window of time since a last step was counted that is looked at to detect a
`new step.” Pet. 9–10 (citing Ex. 1001, 4:4–5; Ex. 1003, 18–19). Patent
`Owner argues that “a ‘cadence window’ corresponds to the time allowable
`for a particular motion to occur.” PO Resp. 11 (citing, inter alia, Ex. 1001,
`3:65–66). Petitioner replies that “Patent Owner . . . has not explained why
`this definition is meaningfully different than Petitioner’s definition.” Pet.
`Reply 8.
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`Both Petitioner and Patent Owner rely on language from the
`Specification of the ’723 patent. Petitioner relies on 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, 4:5–7), and Patent Owner relies
`on the statement “cadence window (the allowable time window for steps to
`occur)” (id. at 3:65–66). The proposed definitions proffered by the parties
`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
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`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, 4:5–7
`(emphasis added)) to indicate that a definition is provided.
`
`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. Fabio
`Fabio is directed to controlling a pedometer based on the use of
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`inertial sensors. Ex. 1006, 1:10−11, Abstract, Title. Fabio describes that
`pedometer reliability depends in part on “recognizing and ignoring events
`not correlated to the gait, which, however, cause perturbations resembling
`those produced by a step.” Id. at 1:22−27. Pedometers that use inertial
`sensors detect accelerations along a substantially vertical axis and recognize
`a step when the pedometer detects a positive acceleration peak followed by a
`negative acceleration peak, both of these peaks within certain thresholds. Id.
`at 1:32−38. Random events, however, can interfere with step recognition,
`causing “false positives” (i.e., steps are recognized when they are not steps).
`Id. at 1:38−44. Rest periods also produce events that are detected by the
`pedometer, and “isolated” steps or brief sequences of steps are irrelevant to
`assessment of activity for which a pedometer is used. Id. at 1:44−52.
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`Fabio overcomes the above-described problems by detecting whether
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`sequences of detected steps satisfy predetermined conditions of regularity.
`Id. at 1:63−2:3. If the condition of regularity is satisfied, the valid step count
`is updated; if the condition of regularity is not satisfied, the number of valid
`steps is not updated. Id. In particular, Fabio describes a method that
`involves two counting procedures, as shown in Figure 3, reproduced below.
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`Figure 3 depicts a flowchart of a control method executed by a control
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`unit of a pedometer. Ex. 1006, 2:17−19, 3:11−12. In particular, upon
`switching on the pedometer, an initialization step 100 sets to zero the
`counters for valid steps (NVT), valid control steps (NVC), and invalid steps
`(NINV). Id. at 3:13−18. Then, during the first counting procedure
`(COUNT I, step 110), the acceleration signal output by the accelerometer of
`the pedometer is sampled and evaluated to recognize sequences of steps that
`are “close to one another, which satisfy [the] pre-determined conditions of
`regularity.” Id. at 3:19−27. In particular, for each step that is validated
`during this first counting procedure, the number of valid control steps is
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`increased until the number of valid control steps matches a predetermined
`threshold. Id. at 5:40−45 (describing that regularity is sufficient when NVC
`reaches a threshold NT2). The first counting procedure terminates after
`updating the valid steps counter, NVT, to equal the number of “regular” steps
`just detected. Id. at Fig. 4, step 265 (NVT=NVT+NT2).
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`Fabio describes this first counting procedure as enabling the
`pedometer to wait for a sequence of events that satisfies regularity and to
`detect events that are irregular (or a wait time between steps that is too long)
`so the counter for valid control steps NVC is decreased or reset to zero
`accordingly. Id. at 5:40−49. Fabio states that programming thresholds for
`the first counting procedure, such as NT2 described above, enables
`modification of the sensitivity of the pedometer. Id. at 5:62−6:11. The user
`can program lower values of the threshold number of steps when regularity
`of gait is not possible, such as when in an office, enabling the pedometer to
`validate and count shorter sequences of steps as “regular” steps. Id. On the
`other hand, by programming higher values for the thresholds for intense
`activity, such as running, short step sequences can be ignored. Id.
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`When the first counting procedure passes control to the second
`counting procedure, the user is considered to be moving and the second
`counting procedure counts valid steps NVT. Id. at 3:41−44. The second
`counting procedure also checks for continued regularity of the sequences of
`steps by counting the number of valid control steps NVC and the number of
`invalid steps NINV. Id. at 6:40−62. If the number of invalid steps NINV is
`lower than a threshold, the method assumes regularity of steps and continues
`counting validated steps. Id. at 7:7−13. Validation of steps in both counting
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`procedures is described more particularly with respect to Figure 6,
`reproduced below.
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`Figure 6 is a graph plotting the time of recognition TR of a sequence
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`of steps (1, 2, . . . K−2, K−1, K). Id. at Fig. 6. Fabio validates a step when
`the duration of a current step K (ΔTK) is “substantially homogeneous with
`respect to the duration . . . of an immediately preceding step K−1 [(ΔTK−1)].”
`Id. at 4:28−35. In particular, “the last step recognized is validated if the
`instant of recognition of the current step TR(K) falls within a validation
`interval TV, defined with respect to the instant of recognition of the
`immediately preceding step TR(K+1),” according to a specific equation. Id.
`at 4:35−42. Fabio describes that the validation interval TV has an
`“amplitude” equal to “3ΔTK−1/2” but could have a different “amplitude.” Id.
`at 4:50−53.
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`2. Pasolini
`Pasolini is also directed to a pedometer for detecting and counting
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`steps. Ex. 1005, Abstract. Specifically, Pasolini describes using an
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`accelerometer that detects an acceleration component along axis Z of the
`vertical acceleration generated during a step. Id. at 3:16−19. Pasolini
`applies positive and negative thresholds S+ and S− to the acceleration signal
`for identifying the positive phase and the negative phase of a step. Id. at
`3:35−41. The values of these thresholds are modified at each acquisition of
`a new sample. Id. at 3:42−54. In particular, Pasolini utilizes an algorithm
`for determining positive and negative envelope values E+ and E− using the
`acceleration datum for each sampled acceleration signal, and adjusting the
`thresholds S+ and S− as a function of the envelope values E+ and E−. Id. at
`5:42−54. In this manner, the pedometer adapts to variations in the detection
`conditions due, for example, to a different type of terrain, or to an increase in
`the speed of the gait. Id. at 3:54−59.
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`Pasolini’s accelerometer can be a three-axis accelerometer, in which
`case:
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`[T]he algorithm implemented by the processing unit 3 [of the
`pedometer] 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).
`For example, the main vertical axis can be identified at each
`acquisition of a new acceleration sample, block 30 of FIG. 4, so
`as to take into account variations in the orientation of the
`pedometer device 1, and consequently of the accelerometer 2
`arranged inside it.
`Id. at 8:11−24.
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`E. Prosecution History
`Patent Owner notes that Pasolini was cited during prosecution of the
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`’723 patent, pointing out that Applicants argued that Pasolini does not teach
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`or suggest the use of cadence windows. PO Resp. 9–10 (reproducing a
`portion of Ex. 1002, 142). Patent Owner characterizes Fabio and Pasolini as
`having “overlapping applications” and argues 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.” PO Sur-Reply 2.
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`It is not clear what relief, if any, Patent Owner seeks in advancing
`these arguments. We note that Petitioner relies on Fabio, not Pasolini, to
`disclose a cadence window. See, e.g., Pet. 33–36. Moreover, as correctly
`noted by Petitioner (see Pet. Reply 10), the combination of Pasolini and
`Fabio was not considered during prosecution of the ’723 patent. To the
`extent Patent Owner requests denial of Petitioner’s challenge due to its
`reliance on Pasolini, such request is denied.
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`F. The Challenge
`Petitioner asserts that the combination of Fabio and Pasolini describes
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`all elements of claims 1–3, 5–7, and 10–18, and that it would have been
`obvious to combine Fabio and Pasolini. Pet. 26–66.
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`1. Independent Claims 1, 5, 10, and 14
`We are satisfied that Petitioner has demonstrated how the combination
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`of Fabio and Pasolini teaches the limitations of the independent claims. We
`focus on the language of claim 1 to address the similarly recited limitations
`of claims 1, 5, 10, and 14. Claim 5 recites limitations not recited in claims 1,
`10, and 14, and, thus, those limitations are reviewed separately. Claim 10
`recites certain logic limitations not recited in claims 1, 5, and 14, and, thus,
`those limitations are reviewed separately. Claim 14 recites a non-transitory
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`machine readable medium containing executable computer program
`instructions that is not recited in claims 1, 5, and 10, and, thus, that
`limitation is reviewed separately.
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`a. A method of monitoring human activity using an inertial
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`sensor
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`For the preamble of claim 1, Petitioner relies on Fabio’s disclosure of
`controlling a pedometer, comprising an inertial sensor, to detect the steps of
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