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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
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`_____________________
`
`
`Case IPR2018-00389
`Patent No. 8,712,723
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`_____________________
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`PETITIONER’S REPLY
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`I.
`II.
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`V.
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`B.
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`B.
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`C.
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`D.
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`TABLE OF CONTENTS
`Introduction ...................................................................................................... 1
`Patent Owner’s Response entirely consists of attorney argument.
` ......................................................................................................................... 2
`III. Claim Construction .......................................................................................... 3
`A.
`The term “dominant axis” is properly construed to include
`the axis most influenced by gravity. ..................................................... 3
`1.
`Petitioner’s construction is not required to define
`the full scope of the term. ........................................................... 5
`Petitioner’s construction does not
`improperly
`exclude embodiments from the specification. ............................ 6
`Patent Owner’s arguments are not supported by
`evidence. ..................................................................................... 7
`The term “cadence window” is properly construed to
`include a window of time since a last step was counted. ...................... 8
`IV. The combination of Pasolini and Fabio was never considered
`during original prosecution. ............................................................................. 9
`Fabio’s validation interval teaches the claimed “cadence
`window.” ........................................................................................................10
`A.
`Fabio’s validation interval meets the claimed “cadence
`window.” .............................................................................................11
`Patent Owner’s characterizations of both the claimed
`cadence window and Fabio’s validation interval do not
`effectively challenge the Petition’s analysis. ......................................11
`Fabio’s validation interval is “updat[ed] … as the actual
`cadence changes,” as claimed. ............................................................15
`Patent Owner’s arguments are not supported by evidence. ................16
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`2.
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`3.
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`i
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`B.
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`VI. Both Fabio and Pasolini teach “assigning a dominant axis with
`respect to gravity based on an orientation of the inertial sensor,”
`as claimed. .....................................................................................................17
`A.
`Both Fabio and Pasolini explicitly teach a triaxial
`accelerometer to allow the device to be used in various
`orientations. .........................................................................................17
`The combination of Fabio and Pasolini teaches “updating
`the dominant axis based on the change” of the orientation
`of the inertial sensor, as claimed. ........................................................19
`VII. A person of ordinary skill in the art would have combined Fabio
`and Pasolini. ...................................................................................................21
`VIII. The dependent claims are obvious.................................................................24
`IX. Conclusion .....................................................................................................25
`X.
`Certificate of Word Count .............................................................................26
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`ii
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`PETITIONER’S EXHIBIT LIST
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`January 2, 2019
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`Ex. 1001
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`U.S. Patent No. 8,712,723
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`Ex. 1002
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`Prosecution History of U.S. Patent No. 8,712,723
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`Ex. 1003
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`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
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`Ex. 1004
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`Curriculum Vitae of Joe Paradiso
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`Ex. 1005
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`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
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`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
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`Ex. 1006
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`iii
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`
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`Introduction
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`I.
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`The Petition and the record as a whole provide detailed reasons why the
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`claimed subject matter of the ’723 patent would have been obvious to a person of
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`ordinary skill in the art (“POSITA”) in view of Pasolini (Ex.1005) and Fabio
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`(Ex.1006). None of Patent Owner’s arguments adequately refute the evidence of
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`record. Moreover, the evidence of record weighs in Petitioner’s favor because the
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`Response relies on Patent Owner’s expert, Mr. Easttom, regarding only two
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`issues—the level of ordinary skill in the art and the claims allowing for a dominant
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`axis that “allows for any direction and axis to become dominant.” See Response,
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`pp.3,18. Neither of Mr. Easttom’s opinions on which Patent Owner relies address
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`the prior art presented in the Petition or the application of that prior art to the
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`challenged claims.
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`Patent Owner’s remaining arguments, for which it relies exclusively on
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`attorney argument, fail for multiple reasons, as described in more detail below. For
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`instance, while the Petition characterizes its proposed constructions as inclusive,
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`Patent Owner incorrectly argues that such constructions exclude embodiments
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`from the specification. Response, pp.4-9. Patent Owner also points to statements in
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`isolation and characterizes them as conclusory and speculative, while ignoring the
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`surrounding analysis in support of such statements, including testimonial evidence
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`offered from Petitioner’s expert, Dr. Paradiso. Response, pp.18-25.
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`1
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`Patent Owner’s Response entirely consists of attorney argument.
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`II.
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`In the Response, Patent Owner’s arguments disputing the analysis in the
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`Petition are unsupported, and there is no relevant controverting evidence presented,
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`via expert testimony or otherwise. Notably, the Response is not accompanied by an
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`expert declaration, but instead only cites to two portions of Mr. Easttom’s
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`declaration filed pre-institution. Neither portion of Mr. Easttom’s declaration for
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`which Patent Owner relies refutes the application of the prior art to the challenged
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`claims as set forth in the Petition. See Response, pp.3,18. The first citation relates
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`to Patent Owner’s slightly different definition of the level of ordinary skill in the
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`art, which Patent Owner admits “is inconsequential to the dispute here.” See
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`Response, p.3. The second citation is intended to support a statement that the claim
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`language “allows for any direction and axis to become dominant.” See Response,
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`p.18.
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`“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . .
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`evidence.” Gemtron Corp. v. Saint-Gobain Corp., 572 F. 3d 1371, 1380 (Fed. Cir.
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`2009). Moreover, the Board gives little or no weight to attorney argument not
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`supported by evidence. See Apple, Inc. v. Evolved Wireless LLC, IPR2016-00758,
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`Paper 48 at 20 (PTAB Mar. 12, 2018) (“[W]e keep in mind that attorney argument
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`is not evidence and Patent Owner cannot rebut evidence with unsworn attorney
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`argument.”); see also Itron Networked Solutions, Inc. v. Acoustic Tech., Inc.,
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`2
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`IPR2017-01024, Paper 49 at 26 (Aug. 21, 2018) (refusing to discount expert
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`testimony because “Patent Owner provide[d] considerable attorney argument, but
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`[did] not support its assertions with evidence that rebuts … expert testimony.”);
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`Nike Inc. v. Jezign Licensing, LLC, IPR2017-00246, Paper 33 at 27 (May 29, 2018)
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`(“We are not swayed by Patent Owner’s conclusory attorney arguments … [r]ather
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`… we agree with Petitioner’s position as supported by the declaration testimony.”);
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`Celanese Int’l Corp. v. Daicel Corp., IPR2017-00166, Paper 61 at 30 (May 4,
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`2018) (“Patent Owner relies on attorney argument to criticize the declaration of Dr.
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`Liu, which we give little to no weight.”).
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`Accordingly, without any supporting evidence, Patent Owner’s statements
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`against the claim construction and analysis provided by Dr. Paradiso and relied
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`upon in the Petition amount to nothing more than attorney argument and cannot
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`rebut the evidence of record.
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`III. Claim Construction
`A. The term “dominant axis” is properly construed to include the
`axis most influenced by gravity.
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`The Petition establishes that the term “dominant axis” “includes ‘the axis
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`most influenced by gravity.’” Petition, p.9; Ex.1003, p.18. This construction is
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`supported by both the claim language itself and the specification. See Ex.1001,
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`14:37-41, 6:20-26; Ex.1003, p.18.
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`The claims of the ’723 patent broadly recite “assigning a dominant axis with
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`respect to gravity based on an orientation of the inertial sensor.” Ex.1001, 15:15-
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`16. The specification also states that “[i]n one embodiment, the dominant axis is
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`assigned after identifying a gravitational influence. The gravitational influence
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`may be identified by calculating total acceleration based upon the acceleration on
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`each axis.” Ex.1001, 14:37-41. And, “[i]n one embodiment, once the orientation is
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`determined, a dominant axis is assigned based upon the orientation. Determining
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`an orientation of the electronic device 100 may include identifying a gravitational
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`influence.” Ex.1001, 6:20-23. Based on these disclosures, the specification
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`contemplates that the dominant axis is, at a minimum, “the axis most influenced by
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`gravity, which may change over time (e.g., as the electronic device is rotated).”
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`Ex.1001, 6:24-26; Petition, p.9. Accordingly, Petitioner’s construction is fully
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`supported by the claim language and the specification.
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`The Board agreed that Petitioner’s construction is supported by the claim
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`language and specification. See Institution Decision, pp.9-10. However, Patent
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`Owner challenges the Board’s statement that the claim language “expressly
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`requires the assignment of the dominant axis based on gravity.” Response, p.7
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`(citing Institution Decision, pp.9-10) (emphasis added). Specifically, Patent Owner
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`argues that the claim language recites “with respect to gravity” rather than “based
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`on gravity” and that this distinction “doesn’t require assigning the dominant axis to
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`be aligned with gravity.” See Response, pp.7-8. This argument, though, does not
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`4
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`provide any meaningful distinction that affects the application of the prior art in
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`this case. As recognized by Dr. Paradiso and found by the Board, assigning a
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`dominant axis “with respect to gravity” would certainly include assigning the
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`dominant axis “based on” gravity.
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`1.
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`Petitioner’s construction is not required to define the full
`scope of the term.
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`Rather than provide its own construction of “dominant axis,” Patent Owner
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`argues that Petitioner’s construction is too narrow. See Response, pp.5-8.
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`Specifically, Patent Owner argues that Petitioner’s construction “violates the well-
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`established rule against reading limitations from the specification into the claim
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`language” and that “the teachings of the specification cited by Petitioner clearly
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`state that they are only example embodiments and are not meant to be limiting.”
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`Response, p.5 (emphasis in the original).
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`Patent Owner’s argument here is irrelevant. Petitioner’s construction is not
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`required to cover the full metes and bounds of the claim term, but need only
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`construe the term to the extent necessary to resolve the issue. Vivid Techs., Inc. v.
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`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
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`need be construed that are in controversy, and only to the extent necessary to
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`resolve the controversy.”). Emerson Elec. Co., v. Ipco, LLC, IPR2017-00007
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`(PTAB, Mar. 29, 2018), Paper 42 at 8 (holding that further construction of terms
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`5
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`defined by what they include is not necessary to resolve the dispute regarding the
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`asserted grounds of unpatentability). Here, Petitioner’s construction of “dominant
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`axis” that includes, at a minimum, “the axis most influenced by gravity” is
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`sufficient to resolve the dispute over the asserted grounds of unpatentability.
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`2.
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`Petitioner’s construction does not improperly exclude
`embodiments from the specification.
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`Patent Owner further argues that the construction of “dominant axis”
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`proposed in the Petition “would impermissibly exclude preferred embodiments.”
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`Response, p.6. Patent Owner then cites to various embodiments in the specification
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`of the ’723 patent that would allegedly be excluded. Response, pp.6-7. A closer
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`inspection of these embodiments, though, shows the opposite.
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`For example, Patent Owner refers to the specification’s statement that:
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`“Therefore, a new dominant axis may be assigned when the orientation of the
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`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
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`electronic device 100 changes.” Response, p.6 (citing Ex.1001, 6:26-29). Patent
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`Owner offers no explanation of how Petitioner’s construction excludes this
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`embodiment other than the conclusory statement that this is “yet another example
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`of a different way to determine the ‘dominant axis.’” Further description of this
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`embodiment, though, indicates that “an orientation of the electronic device 100
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`may include identifying a gravitational influence.” Id., 6:22-23. In other words,
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`6
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`even with this embodiment, the dominant axis is assigned based on a change in the
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`orientation of the device, determined by the influence of gravity.
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`Patent Owner also refers to the specification’s statement that “[i]n one
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`embodiment, the dominant axis corresponds to a virtual axis that is a component of
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`a virtual coordinate system.” Id., 6:35-37. Again, Patent Owner does not proffer
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`any explanation of how the influence of gravity is excluded in this embodiment.
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`Instead, and again upon further inspection, a virtual axis may also be the axis most
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`influenced by gravity. See Ex.1001, 6:32-37. Thus, Petitioner’s construction of
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`“dominant axis” does not improperly exclude embodiments from the specification.
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`3.
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`Patent Owner’s arguments are not supported by evidence.
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`Patent Owner’s only citation to its pre-institution declaration is to support its
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`statement that the claim language “allows for any direction and axis to become
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`dominant.” See Response, p.18. This, however, does not refute Petitioner’s
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`construction because a dominant axis that allows for any direction and axis to
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`become dominant would still include the axis most influenced by gravity. Thus,
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`Patent Owner’s broader interpretation of the term “dominant axis” does not affect
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`the application of the art applied to the claims. None of Patent Owner’s other
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`challenges to Petitioner’s positions on the “dominant axis” rely on any expert
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`testimony. As discussed above at Section II, without any supporting evidence,
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`Patent Owner’s statements against the claim construction and analysis provided by
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`7
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`Dr. Paradiso amount to nothing more than attorney argument and cannot rebut the
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`evidence of record.
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`B.
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`The term “cadence window” is properly construed to include a
`window of time since a last step was counted.
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`Petitioner’s construction of “cadence window” to include a “window of time
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`since a last step was counted that is looked at to detect a new step” is fully
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`supported by the specification of the ’723 patent. See Petition, pp.9-10. The
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`petition cites directly to the specification of the ’723 patent as support for such a
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`definition being included in the construction of the term “cadence window.” See id.
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`(citing Ex.1001, 4:4-5). Patent Owner offers a slightly different construction by
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`stating that: “As explained in the ‘723 Specification, a ‘cadence window’
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`corresponds to the time allowable for a particular motion to occur. See e.g.,
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`EX1001 at 3:9-17, 56-59; 3:64-6:6; 11:13-28; 12:45-50.” Response, p.11.1 Patent
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`Owner, however, has not explained why this definition is meaningfully different
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`than Petitioner’s definition. As will be explained below in Section VI, even under
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`Patent Owner’s interpretation, the combination of Pasolini and Fabio renders the
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`1 The portions of the specification cited by Patent Owner describe the cadence
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`window as “the allowable time window for steps to occur” rather than “the time
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`allowable for a particular motion to occur.”
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`8
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`claimed limitations related to the cadence window obvious.
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`Patent Owner further notes that: “The independent claims must encompass
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`such a ‘cadence window’ being based on ‘rolling averages’ because dependent
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`claims (e.g., Claim 4 and 19) narrow the updating of the ‘cadence window’ to
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`being based on rolling averages.” Response, p.11. However, Patent Owner has not
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`explained why this is relevant. While the terms in the independent claims must be
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`construed to encompass what is in the dependent claims, they are certainly not
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`limited to what is recited in the dependent claims. And, Petitioner’s construction is
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`consistent with the dependent claims.
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`Furthermore, Patent Owner does not cite any expert testimony to refute the
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`Petition’s proposed construction, which relies on Dr. Paradiso’s declaration. As
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`stated above at Section II, without any supporting evidence, Patent Owner’s
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`statements against the claim construction and analysis provided by Dr. Paradiso
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`and relied upon in the Petition amount to nothing more than attorney argument and
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`cannot rebut the evidence of record.
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`IV. The combination of Pasolini and Fabio was never considered during
`original prosecution.
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`Patent Owner notes that the Pasolini reference was considered during
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`prosecution of the ’723 patent. See Response, p.9. Patent Owner, however, has not
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`identified any statute, case law, or other authority showing the relevance of
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`Pasolini being considered during prosecution of the ’723 patent, especially given
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`that the Petition relies on a combination of Pasolini and Fabio to render the
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`challenged claims obvious. See Oracle Corp. v. Clouding IP, LLC, IPR2013-
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`00100, Paper 8 at 20 (PTAB May 16, 2013) (declining to deny ground of
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`unpatentability where petitioner “presents different arguments and new supporting
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`evidence that were not before the examiner, shedding a different light on” the prior
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`art). Fabio was not considered and does not even appear in the file history of the
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`’723 patent. See Ex.1002. Consequently, the combination of Pasolini with Fabio
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`has not been previously considered. Thus, this Petition presents a new, not
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`previously considered argument—the combination Pasolini with Fabio.
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`V.
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`Fabio’s validation interval teaches the claimed “cadence window.”
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`The Petition identifies Fabio’s “validation interval” as corresponding to the
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`claimed “cadence window.” Patent Owner challenges this comparison by stating
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`that “such a validation interval TV has nothing to do with a ‘cadence’ or the
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`claimed ‘cadence window.’” Response, p.12. Patent Owner then makes several
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`statements regarding Fabio’s validation interval as supposed reasons why it is
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`different than the claimed “cadence window.” However, many of Patent Owner’s
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`statements are incorrect. Moreover, Patent Owner’s characterization of Fabio’s
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`validation interval still teaches the claimed “cadence window.”
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`Fabio’s validation interval meets the claimed “cadence window.”
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`A.
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`The ’723 patent describes a cadence window as “a window of time since a
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`last step was counted that is looked at to detect a new step.” Ex.1001, 4:5-7;
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`Petition, p.10. The “cadence window may be set based on the period and/or
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`cadence of the actual motion cycle (e.g., a stepping period).” Ex.1001, 4:7-9
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`(emphasis added). Fabio’s validation interval meets the claimed “cadence window”
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`because the validation interval is a window of time (see Ex.1006, 4:28-49) that is
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`similarly used to check for regularity of stepping (i.e., cadence): “the control unit 5
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`executes a first validation test [via the validation interval], corresponding to the
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`regularity of the individual step.” Ex.1006, 4:26-27 (emphasis added). The steps
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`are validated by determining if the duration of a current step is “substantially
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`homogenous with respect to the duration … of an immediately preceding step.”
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`Ex.1006, 4:29-31. This duration is defined by the validation interval. See Ex.1006,
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`4:28-49 (“the last step recognized is validated if the instant of recognition of the
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`current step TR(K) falls within a validation interval TV, defined with respect to the
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`instant of recognition of the immediately preceding step TR(K-1).”). Thus, Fabio’s
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`validation interval satisfies the “cadence window” limitation recited in the claims.
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`B.
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`Patent Owner’s characterizations of both the claimed cadence
`window and Fabio’s validation interval do not effectively
`challenge the Petition’s analysis.
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`Patent Owner makes numerous attempts to distinguish Fabio’s validation
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`interval from the claimed “cadence window” that are both irrelevant and incorrect.
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`First, Patent Owner argues that in Fabio, a step is validated and counted
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`“regardless of (a) the time interval between steps, (b) whether a false positive is
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`detected, or (c) the time interval between other detected steps (e.g., steps preceding
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`the immediate step).” Response, p.12. This argument fails because Fabio
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`specifically teaches that “validation occurs when the duration ΔTK of a current
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`step K is substantially homogeneous with respect to the duration ΔTK−1 of an
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`immediately preceding step K−1.” Ex.1006, 4:28-31 (emphasis added). Fabio
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`also teaches that “the duration of a generic step is determined by the time that has
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`elapsed between an instant of recognition of the step of which the duration is
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`evaluated and an instant of recognition of the step that immediately precedes it.”
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`Id., 4:31-35. Thus, contrary to Patent Owner, Fabio validates and counts steps
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`specifically based on the time interval between steps. See Petition, pp.35-36;
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`Ex.1003, pp.48-49.
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`This argument should also be disregarded because it attempts to improperly
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`import limitations from the specification that the “cadence window” both disregard
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`false positives and somehow be based on more than just the immediately preceding
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`step. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F. 3d 898, 913 (Fed. Cir.
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`2004) (“[I]t is improper to read limitations from a preferred embodiment described
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`in the specification — even if it is the only embodiment — into the claims absent a
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`clear indication in the intrinsic record that the patentee intended the claims to be so
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`limited.”) Patent Owner’s Response cites to nothing showing a clear indication in
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`the intrinsic record that the “cadence window” should be defined so narrowly.
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`Second, Patent Owner argues that Fabio’s “discussion of validation logic
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`mentions nothing of trying to figure out a cadence.” Response, p.13. This is
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`incorrect because, as stated in the Petition, Fabio describes the validation process
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`as looking for a regularity of stepping. Ex.1006, 4:54-56 (“In practice, it is verified
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`that the last step recognized is compatible with the frequency of the last steps made
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`previously.”). In fact, the entire purpose of Fabio’s validation process is to
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`“check[] whether sequences of the detected steps satisfy pre-determined conditions
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`of regularity” and then “updating a total number of valid steps if the conditions of
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`regularity are satisfied ….” Ex.1006, 1:62-2:3 (emphasis added); see also Petition,
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`pp.18-19.
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`Moreover, the specification of the ’723 describes a process similar to Fabio
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`where “a new cadence window length may be set after each step.” Ex.1001, 4:34-
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`38. This is done by “subtracting a value from the stepping period” for the cadence
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`window minimum and “adding a value to the stepping period” for the cadence
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`window maximum. Id. Fabio similarly defines its validation interval (i.e., a
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`cadence window) by subtracting a value (e.g., TA) from the previous step period
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`(e.g., ΔTK-1) for the beginning of the validation interval and adding a value (e.g.,
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`TB) to the previous step period for the end of the validation interval. Ex.1006,
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`4:35-49. In other words, both Fabio and the ’723 patent determine their respective
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`cadence windows in the same way, by adding or subtracting a value from the
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`stepping period.
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`Third, Patent Owner argues that Fabio’s “TV validation process uses a time
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`period of a current step to determine whether a prior step is counted.” Response,
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`p.14. This is, again, incorrect. Patent Owner does not cite to, and nowhere does
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`Fabio appear to teach, anything that suggests what Patent Owner asserts.
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`Moreover, Patent Owner’s assertion is irrelevant because even if it were true,
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`Fabio would still teach the claimed limitations. Specifically, the claim language
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`does not specify which step (current or previous) is incrementing the step count.
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`Instead, claim 1 recites “counting the periodic human motions when accelerations
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`showing a motion cycle that meets motion criteria is detected within a cadence
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`window.” (emphasis added). As stated in the Petition, Fabio’s device validates (and
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`counts) a step when “the instant of recognition of TR(K) [i.e., the current step] falls
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`within a validation interval TV.” Ex.1006, 4:36-37; Petition, pp.33-36.
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`Accordingly, Fabio teaches the limitations as expressly claimed.
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`Fourth, Patent Owner argues that Fabio’s validation interval “validates
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`whether the time between a current detected step and a prior detected step is within
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`a 50% variance of an immediately preceding period.” Response, p.12. Yet, Patent
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`14
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`Owner does not explain why that is not a “cadence window” as claimed. The claim
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`language puts no limitations or exclusions on the size or frame of reference (i.e.,
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`50% variance of the previous step) of the cadence window. Additionally, Patent
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`Owner has not explained why that characterization is not “the allowable time
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`window for steps to occur” as Patent Owner would construe “cadence window.”
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`Thus, Patent Owner has not presented any argument that effectively overcomes the
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`Petition’s analysis of how Fabio’s validation interval teaches the claimed cadence
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`window.
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`C.
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`Fabio’s validation interval is “updat[ed] … as the actual cadence
`changes,” as claimed.
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`In Fabio, the cadence window (validation interval TV) is repeatedly updated
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`based on the duration (ΔTK−1) of the immediately preceding step K-1 (actual
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`cadence). Petition, p.37; Ex.1003, p.50; Ex.1006, 4:42-49. Accordingly, Fabio
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`teaches that the validation interval is updated as the actual cadence changes, step
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`by step. See Petition, p.37; Ex.1003, p.50; Ex.1006, 4:42-49. Patent Owner
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`challenges this by arguing that “Fabio (EX1006)’s ‘validation interval TV’ for a
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`particular step considers only an immediately preceding step” and that “[o]ne
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`cannot reasonably dispute that a singular measurement by itself could not be
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`considered a cadence change.” Response, p.15.
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`Patent Owner is attempting to read a limitation into the claim by requiring
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`15
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`

`

`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
`
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`that the cadence change be determined based on a certain number of steps. Claim
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`1, however, merely recites “updating the cadence window as actual cadence
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`changes.” Nothing in the claim language itself, nor the specification of the ’723
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`patent, indicates that the cadence change must be detected based on a certain
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`number of steps. Because the claim does not require that the cadence change be
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`based on more than one step, Patent Owner’s argument relies on claim limitations
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`that do not exist.
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`The Petition shows how Fabio’s device meets the claim language because a
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`change in cadence is reflected in the duration of the previous step upon which the
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`validation interval is based. Ex.1006, 4:42-49. Accordingly, Fabio teaches
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`updating a cadence window as the cadence changes.
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`D.
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`Patent Owner’s arguments are not supported by evidence.
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`Patent Owner does not rely on any expert testimony to support its arguments
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`regarding the claimed “cadence window.” Yet, Patent Owner makes various
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`unsupported assertions about what a POSITA would have known. For example,
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`Patent Owner argues, without support, that:
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`One cannot reasonably dispute that even under the
`broadest reasonable interpretation of the term “cadence”
`and “cadence window” (in a manner consistent with the
`specification), one of ordinary skill in the art would not
`view a 50% validation check to a prior step as
`corresponding to a “cadence” or a “cadence window” for
`an activity, which looks to an expected rhythm of a
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`16
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`

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`cadence.
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`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`Response, p.13. No citation supports this statement, and this statement should thus
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`carry no weight. Gemtron, 572 F. 3d at 1380 (“[U]nsworn attorney argument . . . is
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`not evidence and cannot rebut . . . evidence.”). Patent Owner’s statements amount
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`to nothing more than unsworn attorney argument that carry no weight.
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`VI. Both Fabio and Pasolini teach “assigning a dominant axis with respect
`to gravity based on an orientation of the inertial sensor,” as claimed.
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`As stated in the Petition, Pasolini meets this limitation because it (i) takes
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`into account the variations in orientation of the accelerometer (e.g., an inertial
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`sensor) and (ii) updates which axis is dominant at each new acceleration sample
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`based on the orientation of the accelerometer. Accordingly, a POSITA would have
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`understood that Pasolini’s pedometer detects a change (e.g., “variation”) in
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`orientation of the inertial sensor based on the acceleration samples. See Petition,
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`p.30; Ex.1003, p.40. Moreover, Pasolini teaches that this “variation” is taken into
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`account by indicating that the pedometer updates, based on gravity, which of its
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`multiple axes is identified as the vertical axis at each acceleration sample. See
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`Petition, p.30; Ex.1003, p.40; Ex.1005, 8:9-24. This is described in more detail
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`below.
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`A. Both Fabio and Pasolini explicitly teach a triaxial accelerometer
`to allow the device to be used in various orientations.
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`As explained in the Petition, Fabio teaches “using an inertial sensor ‘with
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`17
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`

`Petitioner’s Reply
`IPR2018-00389 (Patent No. 8,712,723)
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`two or three axes of detection’ so that ‘step recognition can advantageously be
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`performed by selecting the acceleration signal corresponding to the detection axis
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`nearest to the vertical.’” Ex.1006, 8:20-25; Petition, p.20. Fabio elaborates that:
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`“The detection axis nearest to the vertical is the axis along which the contribution
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`of the acceleration of gravity is greater. The pedometer can then be used
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`independently of how it is oriented.” Ex.1006, 8:30-33.
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`Despite this, Patent Owner attempts to distinguish the device from the
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`inertial sensor inside by arguing that Fabio “discloses only that the device may be
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`used independently of how it is oriented. Fabio (EX1006) is silent as to the
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`orientation of the inertial sensor.” Response, p.17 (emphasis in the original).
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`However, Patent Owner provides no explanation as to why rotating the device
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`would not also rotate the inertial sen