UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S. A.1
`
`Patent Owner
`
`
`
`
`
`
`
`IPR2018-00389
`PATENT 8,712,723
`
`
`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1
`
` The owner of this patent is Uniloc 2017 LLC.
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE, INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S. A.1
`
`Patent Owner
`
`
`
`
`
`
`
`IPR2018-00389
`PATENT 8,712,723
`
`
`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1
`
` The owner of this patent is Uniloc 2017 LLC.
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`Table of Contents
`
`
`
`I.
`II.
`
`III.
`
`
`B.
`
`C.
`
`D.
`
`INTRODUCTION .................................................................................... 1
`PETITIONER FAILED TO MEET ITS BURDEN ................................. 1
`A.
`Petitioner Does Not Dispute that the Pasolini Reference
`it Now Applies Was Already Considered by the USPTO .............. 1
`The Applied References Fail to Disclose a “Cadence
`Window” ......................................................................................... 3
`The Applied References Fail to Disclose an Update to
`the Cadence Window as “Actual Cadence” or
`“Cadence” Changes ........................................................................ 6
`The Applied References Fail to “Assigning a Dominant
`axis with Respect to Gravity Based on an Orientation of
`the Inertial Sensor” ......................................................................... 8
`The Applied References Fail to Disclose “Detecting a
`Change in the Orientation of the Inertial Sensor and
`Updating the Dominant Axis Based on the Change” ................... 15
`The Applied Reference Fail to Disclose Challenged
`Dependent Claims. ........................................................................ 17
`CONCLUSION ....................................................................................... 18
`
`E.
`
`F.
`
`
`
`ii
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to
`
`Petitioner’s Reply in IPR2018-00389 (“Reply”) regarding United States Patent No.
`
`8,712,723 (“the ’723 patent” or “EX1001”) filed by Apple, Inc. (“Petitioner”).
`
`II.
`
`PETITIONER FAILED TO MEET ITS BURDEN
`
`The Petition has failed to meets its burden in establishing that claims 1-3, 5-
`
`7, 10-18 are obvious under 35 U.S.C. § 103 over Fabio2 and Pasolini.3
`
`A.
`
`Petitioner Does Not Dispute that the Pasolini Reference it Now
`Applies Was Already Considered by the USPTO
`
`In its Reply, Petitioner acknowledges that there are two applications filed by
`
`inventor Fabio Pasolini on the same day – one that it chooses to refer to as Fabio
`
`(Ex. 1006) and the other that it chooses to refer to as Pasolini (Ex 1005). And, in its
`
`Reply, Petitioner does not dispute that the USPTO already considered the disclosures
`
`in Pasolini (Ex. 1005) and specifically indicated that such a reference fails to disclose
`
`1
`
`the claimed “cadence window.”
`
`
`
`
`
` 2
`
` EX1006, U.S. Patent No. 7,698,097
`3 EX1005, U.S. Patent No. 7,463,997
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`See EX1002 at pg. 142 of 454 (Emphasis Added).
`
`The Petitioner has no explanation for why it failed to bring this fact to the
`
`Board’s attention and merely argues instead that the combination of “Fabio
`
`Pasolini’s” two overlapping applications4 – Pasolini and Fabio were not before the
`
`examiner. However, the intimately related and relevant argument that Pasolini
`
`allegedly discloses the required “cadence windows” was specifically considered and
`
`rejected by the examiner. The 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. See, e.g., Shire LLC v. Amneal
`
`Pharm., LLC, 802 F.3d 1301, 1307 (Fed. Cir. 2015) (holding a patent challenger has
`
`“the added burden of overcoming the deference that is due to a qualified government
`
`agency presumed to have properly done its job, which includes one or more
`
`
`
` 4
`
` A review of these two specifications reveal the overlapping nature.
`
`2
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`examiners who are assumed to have some expertise in interpreting the references
`
`and to be familiar from their work with the level of skill in the art and whose duty it
`
`is to issue only valid patents.”); Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d
`
`1340, 1350 (Fed. Cir. 2004) (upholding claim construction of the district court in
`
`limiting the scope of the earlier, already issued patent based on statements offered
`
`during prosecution of a related application that issued later).
`
`B.
`
`The Applied References Fail to Disclose a “Cadence Window”
`
`Each of the challenged claims requires a “cadence window.” As recognized
`
`by the Examiner in the prosecution history of the ‘723 Patent, Pasolini (EX1005)
`
`fails to disclose such a cadence window. See EX1002 at 35-36 (indicating in notice
`
`of allowance that prior art fails to disclose the now-challenged claims). Likewise,
`
`the other Fabio Pasolini reference, Fabio (EX1006)5 also fails to disclose anything
`
`resembling such a cadence window.
`
`The Petition, as well as the Reply, incorrectly defines the “cadence window”
`
`as a “window of time since a last step was counted that is looked at to detect a new
`
`step.” See Petition at 9-10; Reply at 8, 11. This definition ignores the term “cadence”
`
`
`
` 5
`
` The last name of the inventor is actually Pasolini; however, to maintain consistency
`with petitioner’s nomenclature, Fabio (the first name) is used. Both EX1005 and
`EX1006 share the same inventors and have the same filing dates.
`
`3
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`and treat the words as though they merely reference a “window” without regard to
`
`an “cadence.” Both the common definition of cadence (usually referring to a
`
`repetitive rhythmic pattern) and the specification describe a “cadence” as looking at
`
`multiple motion cycles (not just a single cycle) to determine a particular rhythmic
`
`pattern. See e.g., Id. at 3:18-32, 38-54; 6:65-7:14. Indeed, the specification describes
`
`the cadence window as a rolling average of previous detected cycles. Id at 3:66-4:10.
`
`And, the independent claims must encompass such a “cadence window” being based
`
`on “rolling averages” because dependent claims (e.g., Claim 4 and 19) narrow the
`
`updating of the “cadence window” to being based on rolling averages.
`
`Petitioner’s Reply does not save its faulty argument and simply points again
`
`to Fabio (EX1006)’s “validation interval TV,” which undeniably considers nothing
`
`of a “cadence” and only considers the time for a single prior step. Petitioner does not
`
`dispute that Fabio (EX1006)’s validation TV only looks at the single prior step time
`
`to determine whether to count the current step.
`
`To this end, other than allege that Fabio (EX1006) has a “window,” Petitioner
`
`does nothing to explain how in Fabio (EX1006) a single prior step can approximate
`
`a “cadence” as discussed in the specification.
`
`If one were to follow Petitioner’s faulty logic, the alleged “cadence” is a prior
`
`step – regardless of how short or large it is (e.g., including a stutter step). Stated
`
`differently, if a runner tripped and had a stutter step, the stutter step – according to
`
`4
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`Petitioner’s logic – would be the cadence. This would be true even if the prior steps
`
`were completely homogenous because Fabio (EX1006) only considers the
`
`immediately prior step. No reasonable person of ordinary skill in the art would
`
`consider such a single stutter step to be the cadence.
`
`In this regard, the Reply also misunderstands Patent Owner’s Response,
`
`stating:
`
`“[Fabio’s] TV logic simply validates whether the time
`between a current detected step and a prior detected step
`is within a 50% variance of an immediately preceding
`period. If so, the prior (but not the current step) is
`validated and counted. If not, the prior step is disregarded.
`This happens regardless of (a) the time interval between
`steps, (b) whether a false positive is detected, or (c) the
`time interval between other detected steps (e.g., steps
`preceding the immediate step). Such a concept cannot
`reasonably correspond to a “cadence” or “cadence
`window” as claimed, which can be based a rolling average
`of previous detected cycles.”
`
`
`
`Response at 12 (emphasis added). The Reply misread the above passage to state that
`
`a step is counted no matter what in each of scenarios (a) through (c). Reply at 12
`
`(“Patent Owner argues that in Fabio, a step is validated and counted…”) That is not
`
`what the Response states. Rather, the Response points out that Fabio’s TV logic
`
`5
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`merely performs the step validation (which can result in a step counted or not
`
`counted), regardless of each of the scenarios (a) through (c). Put another way, and
`
`as recited by the Reply itself, Fabio’s TV logic is backwards looking and validates
`
`a prior step when the duration of a current step (K) is substantially homogenous with
`
`respect to the duration of an immediately preceding step (K-1). Reply at 12; EX1006,
`
`4:28-31.
`
`C. The Applied References Fail to Disclose an Update to the Cadence
`Window as “Actual Cadence” or “Cadence” Changes
`
` The challenged claims all recite an update to the cadence window as either
`
`an “actual cadence” or a “cadence” changes. Here, the rhythmic pattern changes.
`
`The applied reference fail to disclose such an update. Again, Fabio (EX1006)’s
`
`“validation interval TV” for a particular step considers only an immediately
`
`preceding step and time period and cannot account, for example, a rolling average
`
`of previous detected cycles. A singular measurement by itself could not be
`
`considered a change of cadence. Again, following Petitioner’s logic, a stutter-step
`
`would be considered a cadence – regardless of steps occurring before such a stutter
`
`step.
`
`The Reply alleges that Patent Owner is “attempting to read a limitation into
`
`the claim by requiring the cadence change to be determined based on a certain
`
`number of steps.” Reply at 15-16. To the contrary, Petitioner is reading the term
`
`6
`
`
`
`“cadence” out of the claim to ignore any rhymical component.
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`Moreover, Petitioner is mistaken as to this particular point. The failing in
`
`Fabio isn’t with regard to the number of steps the system of Fabio can address (one
`
`since the last one), instead Fabio’s failure here, as just discussed, is Fabio’s inability
`
`to detect a change in cadence. Whereas the claimed invention would detect a stutter
`
`step as not corresponding to the cadence, Fabio does not.
`
`As Petition and the Reply emphasize, in the system of Fabio, “validation
`
`occurs when the duration ΔTK of a current step K is substantially homogeneous
`
`with respect to the duration ΔTK-1 of an immediately preceding step K-1.” Reply
`
`at 12 citing EX1006, 4:28-31 (emphasis altered). As another example from Fabio
`
`itself, Fabio states: “Isolated events and sequence steps that are in any case too short
`
`are advantageously ignored, whereas counting of the steps promptly resumes also
`
`in the case of isolated irregularities (for example, due to a non-homogeneous
`
`acceleration or to a loss of balance at the start of locomotion).” EX1006, 5:56-61
`
`(emphasis added). In other words, the system of Fabio purposely chooses to ignore
`
`valid steps that happen to be non-homogeneous with respect to the duration of an
`
`immediately preceding step. Or said differently, Fabio ignores changes to in cadence
`
`by design, and therefore does not update the cadence window as the actual cadence
`
`changes as required by the claim language.
`
`7
`
`
`
`D. The Applied References Fail to “Assigning a Dominant axis with
`Respect to Gravity Based on an Orientation of the Inertial
`Sensor”
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`
`The Petitioner argues that the dominant axis must be vertical (direction of
`
`gravity) and hence, Polisnelli (EX1005)’s selection of the gravitational axis meets
`
`the claim features. However, the ‘723 Patent recognizes that multiple activities may
`
`occur and that the dominant axis may be other than vertical (gravity) – hence the
`
`reference to “dominant axis.” FIGURE 2 of the ‘723 Patent gives an example of
`
`three axis measurements where one acceleration activity is dominant over the others
`
`and can be used for periodic motion detections for cadence and cadence window
`
`determinations. All of these axis measurements have an acceleration with respect
`
`to gravity; one just happens to be dominant over the other two.
`
`Petitioner acknowledges that Fabio does not disclose “assigning a dominant
`
`axis with respect to gravity based on an orientation of the inertial sensor”, because
`
`Fabio (EX1006) can only “select[] the acceleration signal corresponding to the
`
`detection axis nearest to the vertical.” Pet. 28-29; EX1006, 8:23-25. Thus, the device
`
`of Fabio (EX1006) does not disclose “assigning a dominant axis” as required by the
`
`claims and furthermore, Fabio (EX1006) does not disclose assigning a dominant
`
`axis based on an orientation of the inertial sensor, as Petitioner admits. Pet. 29. The
`
`Institution Decision disagrees that Fabio (EX1006) does not disclose assigning a
`
`8
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`dominant axis based on the orientation of the inertial sensor, by paraphrasing Fabio
`
`as disclosing selecting a vertical axis based on orientation. However, that is not what
`
`Fabio discloses. Instead, Fabio states:
`
`“The detection axis nearest to the vertical is the axis
`along which the contribution of the acceleration of
`gravity is greater. The pedometer can then be used
`independently of how it is oriented.”
`EX1006, 8:30-33.
`The passage above discloses only that the device may be used independently
`
`of how it is oriented. Fabio (EX1006) is silent as to the orientation of the inertial
`
`sensor, and Fabio (EX1006) does not disclose assigning a dominant axis based on
`
`an orientation of the inertial sensor, as required by the claim language.
`
`Next, the Institution Decision also argues that Pasolini (EX1005) “takes into
`
`account the orientation of the acceleration in detecting the main axis.” Institution
`
`Decision at 18. However, just like with Fabio (EX1006), the passage of Pasolini
`
`(EX1005) cited by the Institution Decision does not disclose the required claim
`
`language:
`
`“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.”
`
`9
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`EX1005, 8:20-24. Even here, there is nothing in the passage above that shows that
`
`the device of Pasolini (EX1005) assigning a dominant axis based on an orientation
`
`of the inertial sensor as required by the claim language. At best, the “variations in
`
`the orientation” are taken into account as a subsequent step, after the “main vertical
`
`axis” is identified.
`
`Recognizing that Fabio (EX1006) does not disclose this limitation, Petitioner
`
`relies on a combination of Fabio (EX1006) and Pasolini (EX1005). However, the
`
`proposed combination fails because neither Fabio (EX1006) or Pasolini (EX1005).
`
`discloses “assigning a dominant axis with respect to gravity based on an orientation
`
`of the inertial sensor.” Instead, Fabio (EX1006) merely selects the “axis nearest to
`
`the vertical”, without any regard for orientation. Pet. 28; EX1006, 8:23-25. And
`
`Pasolini (EX1005) only contemplates determining the “main vertical axis”
`
`(EX1005, 8:18-19) via the “vertical detection axis z” component. EX1005, 2:62.
`
`Whereas, the claim language requires “assigning a dominant axis with respect to
`
`gravity”, which allows for any direction and axis to become dominant. See also
`
`EX2001, ¶¶ 18-19. Thus, neither Fabio (EX1006) nor Pasolini (EX1005), alone or
`
`in combination disclose changing axis, and therefore does not disclose “assigning a
`
`dominant axis with respect to gravity based on an orientation of the inertial sensor”.
`
`Furthermore, “a patent composed of several elements is not proved obvious merely
`
`by demonstrating that each of its elements was, independently, known in the prior
`
`10
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d
`
`705 (2007). The obviousness analysis must focus on the knowledge and motivations
`
`of the skilled artisan at the time of the invention. InTouch Techs., Inc. v. VGO
`
`Commc'ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of obviousness
`
`there must be an explanation of why a person of ordinary skill in the art would
`
`modify the prior art references to create the claimed invention. Cutsforth, Inc. v.
`
`MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re
`
`Kotzab, 217 F.3d 1365, 1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359
`
`(Fed.Cir.1998).
`
`The Petition merely provides conclusory statements and speculation through
`
`its declarant for the proposition that “a POSITA would have understood that Fabio’s
`
`pedometer would assign the vertical detection axis with respect to gravity using
`
`Pasolini’s technique of identifying the vertical detection axis each acquisition of a
`
`new acceleration signal to take into account changes in the device’s orientation.”
`
`Pet. 29.
`
`However, Petitioner cannot merely speculate through its declarant, outside
`
`the four corners of the reference, to carry its burden. The Federal Circuit has
`
`instructed that “legal determinations of obviousness, as with such determinations
`
`generally, should be based on evidence rather than on mere speculation or
`
`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
`
`11
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014)
`
`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`
`been common knowledge in the art). Further, the obviousness analysis must focus
`
`on the knowledge and motivations of the skilled artisan at the time of the invention.
`
`InTouch Techs, 751 F.3d at 1348. And there must be an explanation of why a person
`
`of ordinary skill in the art would modify the prior art reference to create the claimed
`
`invention. Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In
`
`re Rouffet, 149 F.3d at 1359.
`
`Petitioner speculates through its declarant, for example, that “[a] POSITA
`
`would have also understood that implementing Pasolini’s additional teachings into
`
`Fabio’s device would result in a signal that is less susceptible to the type of errors
`
`that Fabio is concerned with preventing, …” Pet. 24. The Petition purports to rely
`
`on its declarant for support of its speculative and conclusory statements, however,
`
`the declaration merely parrots the exact same speculative and conclusory statements
`
`(compare Pet. 24 with EX1003, ¶ 66), without the required analysis or explanation.
`
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`
`149 F.3d at 1359.
`
`The Institution Decision points to Petitioner’s conclusory argument that a
`
`POSITA would have sought to improve Fabio (EX1006)’s accuracy as being
`
`“reasonable, at this juncture, [as being] the rationale for the combination of Fabio
`
`12
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`with the Pasolini teachings of identifying a main vertical axis at each acquisition of
`
`the acceleration sample to take into account variations in the orientation of the
`
`accelerometer.” Institution Decision at 23. And the Institution Decision cites to a
`
`partially excerpted passage in Fabio (EX1006) that states: the “nearer the detection
`
`axis is used to the vertical, in fact, the greater the amplitude of the signal useful for
`
`step recognition.” Institution Decision at 22-23 citing EX1006, 8:25-27. However,
`
`the Institution Decision left out the sentence immediately preceding that excerpt. In
`
`full, the passage states:
`
`“Finally, the inertial sensor can be of the type with two or
`three axes of detection. In this case, step recognition can
`advantageously be performed by selecting the
`acceleration signal corresponding to the detection axis
`nearest to the vertical. The nearer the detection axis used
`is to the vertical, in fact, the greater the amplitude of the
`signal useful for step recognition.”
`EX1006, 8:21-27.
`A review of the passage above shows that in context, Fabio (EX1006) does
`not express any concern about a lack of accuracy, instead, Fabio (EX1006), in the
`reference itself, presented a solution: the use of an inertial sensor “of the type with
`two or three axes of detection.” Thus, Fabio (EX1006), and the passage above, does
`not provide a POSITA with a reason to combine because there is no evidence that
`Fabio (EX1006) expressed a concern about a lack of accuracy, and in fact, to the
`
`13
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`extent there is any problem with accuracy, Fabio (EX1006) expressly purports to
`solve it.
`As another example, Petitioner cites its declarant’s testimony as allegedly
`supporting the conclusion that “[c]ombining Pasolini’s technique for identifying the
`main vertical axis at each acquisition of a new acceleration sample into Fabio’s
`pedometer would have been a relatively simple and obvious solution to solve the
`problem of Fabio’s pedometer changing orientation during use.” Pet. 25. However,
`the declaration merely parrots the exact same speculative conclusion (compare Pet.
`25 with EX1003, ¶ 68), without the required analysis or explanation. This
`conclusory approach does not and cannot establish prima facie obviousness.
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359. And here, the Institution Decision expressly, and correctly finds
`that Petitioner’s mere statement of “relatively simple and obvious solution” as a
`rationale is on its face deficient. Institution Decision at 23; id. (“Stating (either in
`the Petition or by expert declaration) that something is ‘relatively simple’ and an
`‘obvious solution,’ without further explanation and factual support, does not satisfy
`Petitioner’s burden.”) citing In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381
`(Fed. Cir. 2016).
`Therefore, The Petition should fail because Fabio (EX1006) does not disclose
`
`assigning a dominant axis based on an orientation of the inertial sensor, and because
`
`neither Fabio (EX1006) nor Pasolini (EX1005), alone or in combination disclose
`
`changing axis, and therefore does not disclose “assigning a dominant axis with
`
`14
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`respect to gravity based on an orientation of the inertial sensor”, and because the
`
`Petition merely and improperly speculates through its declarant without providing
`
`any of the required analysis or explanation for the proposed combination of Fabio
`
`(EX1006) and Pasolini (EX1005).
`
`E.
`
`The Applied References Fail to Disclose “Detecting a Change in
`the Orientation of the Inertial Sensor and Updating the Dominant
`Axis Based on the Change”
`Petitioner’s proposed combination of Fabio (EX1006) and Pasolini
`(EX1005) cites the latter reference only for the alleged teaching that “the main
`vertical axis can be identified at each acquisition of a new acceleration sample.” Pet.
`30. According to Petitioner, this alleged teaching renders obvious the requirement
`of “detecting a change in the orientation of the inertial sensor and updating the
`dominant axis based on that change.” Id.
`The Petition is deficient because Pasolini (EX1005) does not disclose
`“detecting a change in the orientation of the inertial sensor”, as required by the claim
`language. Indeed, the Petition admits that Pasolini (EX1005) merely discloses that
`its “main vertical axis is identified by “tak[ing] into account variations in the
`orientation…” Pet. 30. As plainly stated by Pasolini (EX1005), and quoted by the
`Petition, Pasolini (EX1005) does not detect a change in the orientation of the
`inertial sensor and then in response, act upon that change, as required by the claim
`language. Instead, Pasolini (EX1005) is completely silent regarding the detection of
`any change in the orientation of the inertial sensor, as required by the claim
`
`15
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`language. At best, the “variations in the orientation” are taken into account as a
`subsequent step, after the “main vertical axis” is identified. The Institution Decision
`states that “we understand Pasolini to detect a change in the orientation of the
`accelerometer when it performs the identification of a new main vertical axis ‘to
`take into account the variation in the orientation’ of the accelerometer inside the
`pedometer.” Institution Decision at 19. However, the Institution Decision glosses
`over the requirement that the device must detect a change in the orientation of the
`inertial sensor, and then in response to that, act, based on that change, as required
`by the claim language. Here again, all Pasolini (EX1005) discloses is accounting
`for “variations in the orientation” after the fact of identifying the “main vertical
`axis”. In other words, Pasolini (EX1005) discloses exactly the backwards sequence
`of steps as what the claim language requires.
`Petitioner, apparently recognizing that Pasolini (EX1005) fails to disclose
`detecting a change in the orientation of the inertial sensor, attempts to cure this
`deficiency by offering the speculative argument through its declarant that “a
`POSITA would have understood that Pasolini’s pedometer detects a change (e.g.,
`“variation”) in orientation of the inertial sensor based on the acceleration samples,
`and that this variation is taken into account by the pedometer updating which of its
`multiple axes is identified as the vertical axis.” Pet. 30. The Petition is wrong for at
`least two independent reasons.
`First, for the reasons explained above, Petitioner’s conclusory speculation
`through its declarant is improper. Compare Pet. 30 with EX1003 at p. 43; see also
`
`16
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359.
`Second, Petitioner’s improper speculation through its declarant concedes that
`Pasolini does not perform the required action (or any action) “based on the change
`[in the orientation of the inertial sensor]”, as required by the claim language.
`Therefore, the Petition should fail because neither Fabio (EX1006) nor
`Pasolini (EX1005) alone or in combination disclose changing axis, and therefore
`does not disclose updating the dominant axis, and because Pasolini (EX1005) does
`not detect a change in the orientation of the inertial sensor and then in response, act
`upon that change, as required by the claim language, and because the Petition merely
`and improperly speculates through its declarant without providing any of the
`required analysis or explanation for the proposed combination of Fabio (EX1006)
`and Pasolini (EX1005)
`
`F.
`
`The Applied Reference Fail to Disclose Challenged Dependent
`Claims.
`The deficiencies of the Petition articulated above concerning the challenged
`independent claims apply also taint the analysis of the challenged dependent claims.
`Accordingly, the Petition should be denied in its entirety.
`
`
`
`
`
`
`17
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`III. CONCLUSION
`For at least the reasons set forth above, Uniloc respectfully requests that the
`Board deny all challenges in the instant Petition.6
`
`Date: February 4, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`
` 6
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`18
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Sur-
`
`Reply to Petitioner’s Reply complies with the type-volume limitation of 37 C.F.R.
`
`§ 42.24(c) because it contains fewer than the limit of 5,600 words, as determined
`
`by the word-processing program used to prepare the brief, excluding the parts of
`
`the brief exempted by 37 C.F.R. §42.24(c).
`
`Date: February 4, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`i
`
`
`
`IPR2018-00389
`U.S. Patent 8,712,723
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`of the foregoing PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. §
`42.120along with any accompanying exhibits via the Patent Review Processing
`System (PRPS) to Petitioner’s counsel at the following addresses identified in the
`Petition’s consent to electronic service:
`
`Lead Counsel
`
`andy.ehmke.ipr@haynesboone.com
`
`Andrew Ehmke
`
`First Back Up Counsel
`
`
`
`Date: February 4, 2019
`
`
`
`Michael Parsons
`
`michael.parsons.ipr@haynesboone.com
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`ii
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
