UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00389
`PATENT 8,712,723
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00389
`PATENT 8,712,723
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2018-00389
`U.S. Patent 8,712,723
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`Table of Contents
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`I.
`II.
`III.
`IV.
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`V.
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`INTRODUCTION .................................................................................... 1
`THE ’723 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`THE PETITION DOES NOT DEFINE THE LEVEL OF
`ORDINARY SKILL IN THE ART .......................................................... 2
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 3
`A.
`Claim Construction ......................................................................... 3
`1.
`“dominant axis” .................................................................... 4
`2.
`“cadence window” ................................................................ 5
`3.
`“a dominant axis logic to determine an orientation
`of a device with respect to gravity, to assign a
`dominant axis, and to update the dominant axis
`when the orientation of the device changes”........................ 6
`“a counting logic to count 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” ............................................................... 7
`“a cadence logic to update the cadence window as
`actual cadence changes” ....................................................... 9
`No Prima Facie Obviousness for “assigning a dominant
`axis with respect to gravity based on an orientation of
`the inertial sensor” ........................................................................ 10
`No Prima Facie Obviousness for “detecting a change in
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`4.
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`5.
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`B.
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`C.
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`ii
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`U.S. Patent 8,712,723
`the orientation of the inertial sensor and updating the
`dominant axis based on the change” ............................................ 14
`D. No Prima Facie Obviousness for “updating the cadence
`window as actual cadence changes” ............................................. 16
`The Petition Should Be Denied as To Challenged
`Dependent Claims 2-3, 5-7, 11-13, and 15-18. ............................ 19
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 19
`CONCLUSION ....................................................................................... 19
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`E.
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`VI.
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`VII.
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`List of Exhibits
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`Exhibit No.
`2001
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`Description
`Declaration of William C. Easttom
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`iii
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`IPR2018-00389
`U.S. Patent 8,712,723
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`I.
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`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00389 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 8,712,723 (“the ’723 patent” or “EX1001”)
`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’723 PATENT
`The ’723 patent is titled “Human activity monitoring device.” The ʼ723 patent
`issued April 29, 2014, from U.S. Patent Application No. 13/018,321 filed January
`31, 2011.
`The inventors of the ’723 patent observed that at the time, step counting
`devices that utilize an inertial sensor to measure motion to detect steps generally
`required the user to first position the device in a limited set of orientations. In some
`devices, the required orientations are dictated to the user by the device. In other
`devices, the beginning orientation is not critical, so long as this orientation can be
`maintained. EX1001, 1:29-34. Further, the inventors observed that devices at the
`time were often confused by motion noise experienced by the device throughout a
`user's daily routine. The noise would cause false steps to be measured and actual
`steps to be missed in conventional step counting devices. Conventional step counting
`devices also failed to accurately measure steps for individuals who walk at a slow
`pace. Id., 1:35-40.
`According to the invention of the ’723 Patent, a device to monitor human
`activity using an inertial sensor assigns a dominant axis after determining the
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`orientation of an inertial sensor. The orientation of the inertial sensor is continuously
`determined, and the dominant axis is updated as the orientation of the inertial sensor
`changes. Id., 2:14-19.
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`III. RELATED PROCEEDINGS
`The following are currently pending cases concerning U.S. Pat. No.
`8,712,723 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
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`Uniloc USA, Inc. et al. v.
`Apple Inc.
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
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`2-17-cv-00522
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`TXED
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`June 30, 2017
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`2-17-cv-00650
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`TXED
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`Sept. 15,
`2017
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`4-17-cv-00832
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`TXND Oct. 13, 2017
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`2-17-cv-01629 WAWD Nov. 1, 2017
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`2-17-cv-00737
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`TXED Nov. 9, 2017
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`IV. THE PETITION DOES NOT DEFINE THE LEVEL OF ORDINARY
`SKILL IN THE ART
`The Petition does not offer a definition of a person of ordinary skill in the art
`(“POSITA”) and therefore has not provided the perspective from which to properly
`analyze its patentability challenge. Given that the burden lies with Petitioner, Patent
`Owner does not cure this deficiency at this preliminary stage by offering its own
`definition for POSITA. Nevertheless, Patent Owner reserves the right to offer a
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`definition for POSITA in the event that trial is instituted.
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition challenges claims 1-3, 5-7, 10-18 under 35 U.S.C. § 103 over
`Fabio1 and Pasolini.2
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`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”). Nevertheless, Patent Owner addresses those terms for which the
`Petitioner proposes constructions. As explained below, Petitioner bases its
`patentability challenges on erroneous constructions, which provide an independent
`and fully-dispositive basis to deny the Petition in its entirety. See Mentor Graphics
`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp.,
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` EX1006, U.S. Patent No. 7,698,097
`2 EX1005, U.S. Patent No. 7,463,997
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`669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
`unreasonable in light of the specification, and therefore, denying Petition as tainted
`by reliance on an incorrect claim construction).
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`“dominant axis”
`1.
`Petitioner’s proposed construction violates the well-established rule against
`reading limitations from the specification into the claim language. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
`teachings from the specification, Petitioner seeks to limit the claim term “dominant
`axis” to mean “the axis most influenced by gravity”. Pet. 9. However, the teachings
`of the specification cited by Petitioner clearly state that they are only exemplar
`embodiments and are not meant to be limiting. See e.g., Pet. 9 quoting EX1001,
`14:37-41 (“[i]n one embodiment…”) (emphasis added). Importantly, Petitioner
`expressly acknowledges that the ’723 Patent specifically provides for different ways
`to determine the “dominant axis” in other embodiments. For example, in one
`embodiment, the “dominant axis” is determined by orientation of the device. See
`EX1001, 6:15-29. And here, while the orientation “may include identifying a
`gravitational influence…” (EX1001, 6:21-23) (emphasis added), by definition, that
`means the “dominant axis” is not limited to just gravitational influence.
`As a further example, in the same section, the specification also states that
`“[t]herefore, a new dominant axis may be assigned when the orientation of the
`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
`electronic device 100 changes.” Id., 6:26-29 (emphasis added). Thus, the
`specification recites yet another example of a different way to determine the
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`“dominant axis”. Another non-limiting example from the specification states: “[i]n
`one embodiment, the dominant axis corresponds to a virtual axis that is a
`component of a virtual coordinate system.” Id., 6:35-37 (emphasis added).
`Petitioner’s proposed construction would impermissibly exclude preferred
`embodiments and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
`embodiment is rarely, if ever, correct and would require highly persuasive
`evidentiary support).
`Petitioner has not and cannot establish prima facie obviousness through
`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
`Synopsys, 669 Fed. Appx. 569. In any event, Petitioner fails to present a case of
`prima facie obviousness even under its own construction.
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` “cadence window”
`2.
`At this preliminary stage, Patent Owner submits that the Board need not
`construe any claim term, including the term “cadence window”, in a particular
`manner in order to arrive at the conclusion that the Petition is substantively deficient.
`Wellman, 642 F.3d at 1361. Therefore, at this preliminary stage, Patent Owner does
`not submit a competing definition, however, in the event that trial is instituted,
`Patent Owner reserves the right to object to Petitioner’s proposed construction and
`provide Patent Owner’s proposed construction.
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`3.
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`U.S. Patent 8,712,723
`“a dominant axis logic to determine an orientation of a device
`with respect to gravity, to assign a dominant axis, and to
`update the dominant axis when the orientation of the device
`changes”
`The recitation “a dominant axis logic to determine an orientation of a device
`with respect to gravity, to assign a dominant axis, and to update the dominant axis
`when the orientation of the device changes” is not governed by 35 U.S.C. § 112(6),
`and no construction of this phrase is necessary. The claim language provides its own
`definition, as evidenced by Petitioner’s proposed definition, which repeats the claim
`language verbatim with the exceptions that (1) Petitioner substitutes the phrase
`“dominant axis logic” with the phrase “hardware, software, or both” and (2)
`Petitioner deletes, without explanation, the phrase “with respect to gravity”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “dominant axis logic” by reciting that it “determine[s]
`an orientation of a device with respect to gravity, to assign a dominant axis, and to
`update the dominant axis when the orientation of the device changes”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “dominant axis logic” with
`“hardware, software, or both” injects ambiguity by reducing claim language to
`virtually anything within the universe of hardware and/or software. Moreover, a
`POSITA would understand that such a determination cannot be done in software
`alone, as permitted by Petitioner’s unreasonably broad construction. Rather, the
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`determination, at a minimum, must require some form of hardware, such as an
`accelerometer. See EX2001, ¶7.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),3 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
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`4.
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`“a counting logic to count 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”
`The Petition takes the same erroneous approach to the term “counting logic”
`that it does with the “dominant axis logic” term addressed in the preceding section
`above. Accordingly, the proposed construction in the Petition should be rejected for
`analogous reasons, which are repeated below for completeness and clarity.
`Uniloc submits that “counting logic” is not governed by 35 U.S.C. § 112(6),
`and no construction is necessary. The claim language provides its own definition,
`as evidenced by Petitioner’s proposed definition, which repeats the claim language
`verbatim with the exception that Petitioner substitutes the term “counting logic”
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 11.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`with the phrase “hardware, software, or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “counting logic” by reciting that it “count[s] periodic
`human motions by monitoring accelerations relative to the dominant axis by
`counting the periodic human motions when accelerations showing a motion cycle
`that meets motion criteria is detected within a cadence window”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “counting logic” with “hardware,
`software, or both” injects ambiguity by reducing claim language to virtually
`anything within the universe of hardware and/or software. Moreover, a POSITA
`would understand that such a determination cannot be done in software alone, as
`permitted by Petitioner’s unreasonably broad construction. Rather,
`the
`determination, at a minimum, must require some form of hardware, such as an
`accelerometer. See EX2001, ¶8.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),4 and Patent Owner contends that it is not. For at
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet.12.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
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`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
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`5.
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`“a cadence logic to update the cadence window as actual
`cadence changes”
`The Petition takes the same erroneous approach to the term “cadence logic”
`that it does with the “dominant axis logic” and “counting logic” terms addressed
`above. Accordingly, the proposed construction in the Petition should be rejected for
`analogous reasons, which are repeated below for completeness and clarity.
`Uniloc submits that “cadence logic” is not governed by 35 U.S.C. § 112(6),
`and no construction is necessary. The claim language provides its own definition,
`as evidenced by Petitioner’s proposed definition, which repeats the claim language
`verbatim with the exception that Petitioner substitutes the term “cadence logic” with
`the phrase “hardware, software, or both”.
`Petitioner’s revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “cadence logic” by reciting that it “update[s] the cadence
`window as actual cadence changes”.
`Petitioner’s proposed construction of the word “logic” itself leaves it unclear
`if Petitioner is seeking to exclude things like firmware or Field-Programmable Gate
`Arrays. And Petitioner’s proposed substitution of “cadence logic” with “hardware,
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`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`software, or both” injects ambiguity by reducing claim language to virtually
`anything within the universe of hardware and/or software. Moreover, a POSITA
`would understand that such a determination cannot be done in software alone, as
`permitted by Petitioner’s unreasonably broad construction. Rather,
`the
`determination, at a minimum, must require some form of hardware to detect “actual
`cadence changes.”
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),5 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
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`B. No Prima Facie Obviousness for “assigning a dominant axis with
`respect to gravity based on an orientation of the inertial sensor”
`The Petition relies on its argument in Claim 1 for similar limitations in Claims
`10 and 14. See Pet. 51 (“Second, as described in detail at [1.1], Fabio in view of
`Pasolini renders obvious to “determine an orientation of a device with respect to
`gravity”) (emphasis added); Pet. 62 (“This limitation is the same as the limitation
`discussed in section [1.1]. Therefore, Fabio in view of Pasolini renders this
`limitation obvious as described in section [1.1]”) (emphasis added). Therefore, the
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 13.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`Petition fails to establish prima facie obviousness of independent Claims 1, 10, and
`14 for the same reasons.
`Petitioner acknowledges, and tacitly admits that Fabio does not disclose
`“assigning a dominant axis with respect to gravity based on an orientation of the
`inertial sensor”, because Fabio 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 does not disclose “assigning a dominant axis” as
`required by the claims, and furthermore, Fabio does not disclose assigning a
`dominant axis based on an orientation of the inertial sensor, as Petitioner admits.
`Pet. 29.
`Recognizing that Fabio does not disclose this limitation, Petitioner relies on
`a combination of Fabio and Pasolini. However, the proposed combination fails
`because neither Fabio or Pasolini discloses “assigning a dominant axis with respect
`to gravity based on an orientation of the inertial sensor”. Instead, Fabio merely
`selects the “axis nearest to the vertical”, without any regard for orientation. Pet. 28;
`EX1006, 8:23-25. And Pasolini 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 or Pasolini, alone or in combination disclose
`changing the 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
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`merely by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167
`L.Ed.2d 705 (2007). The obviousness analysis must focus on the knowledge and
`motivations of the skilled artisan at the time of the invention. InTouch Techs., Inc.
`v. VGO Commc'ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of
`obviousness, there must be an explanation of why a person of ordinary skill in the
`art would modify the prior art references to create the claimed invention. Cutsforth,
`Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re
`Kotzab, 217 F.3d 1365, 1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359
`(Fed.Cir.1998).
`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);
`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
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`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.
`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.
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`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359.
`Therefore, The Petition should be denied because Fabio does not disclose
`assigning a dominant axis based on an orientation of the inertial sensor, and because
`neither Fabio or Pasolini, alone or in combination disclose changing the axis, and
`therefore does not disclose “assigning a dominant axis with 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 and Pasolini.
`
`C. No Prima Facie Obviousness for “detecting a change in the
`orientation of the inertial sensor and updating the dominant axis
`based on the change”
`The Petition relies on its argument in Claim 1 for similar limitations in Claims
`10 and 14. See Pet. 53 (“As discussed above in [1.2], the combination of Fabio and
`Pasolini discloses “updating the dominant axis” based on detected changes in the
`orientation of the pedometer.”) (emphasis added); Pet. 63 (“This limitation is the
`same as the limitation discussed in section [1.2]. Therefore, Fabio in view of
`Pasolini renders this limitation obvious as described in section [1.2].”) (emphasis
`added). Therefore, the Petition fails to establish prima facie obviousness of
`independent Claims 1, 10, and 14 for the same reasons.
`Petitioner’s proposed combination of Fabio and Pasolini 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,
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`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.
`As described above, the proposed combination fails because neither Fabio
`nor Pasolini (either alone or in combination) discloses changing the axis, and
`therefore does not disclose updating the dominant axis. Furthermore, the Petition
`improperly relies on speculative and conclusory testimony of its declarant for the
`proposed combination of Fabio and Pasolini. Such an 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.
`In addition, the Petition is further deficient because Pasolini 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 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, and quoted by the Petition, Pasolini 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 is completely
`silent regarding the orientation of the device.
`Petitioner, apparently recognizing that Pasolini 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
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`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
`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 be denied because neither Fabio nor Pasolini
`alone or in combination disclose changing the axis, and therefore does not disclose
`updating the dominant axis, and because Pasolini 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 and Pasolini.
`
`D. No Prima Facie Obviousness for “updating the cadence window as
`actual cadence changes”
`The Petition relies on its argument in Claim 1 for similar limitations in Claims
`10 and 14. See Pet. 55 (“the limitation is substantially similar to the limitation in
`[1.4] and is taught by Fabio as discussed above.”) (emphasis added); Pet. 63
`(“This limitation is the same as the limitation discussed in section [1.4]. Therefore,
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`Fabio teaches this limitation as described in section [1.4].”) (emphasis added).
`Therefore, the Petition fails to establish prima facie obviousness of independent
`Claims 1, 10, and 14 for the same reasons.
`The Petition relies solely on Fabio for this limitation “updating the cadence
`window as actual cadence changes”. However, Fabio does not disclose updating
`the cadence window, much less updating the cadence window as actual cadence
`changes, as required by the claim language.
`The Petition wrongly conflates Fabio’s “first validation test” (EX1006, 4:26)
`with the required “updating the cadence window”. The Petition argues that Fabio’s
`disclosed formula for updating its “validation interval TV” is “updated repeatedly
`based on the duration [] of the immediately preceding step K-1 (actual cadence)”.
`Pet. 36-37. But a review of Fabio proves otherwise. The formula and disclosure of
`Fabio that Petitioner relies upon is merely part of a “first validation test” to
`determine if the event received “correspond[s] to the regularity of an individual
`step.” EX1006, 4:26-27. Fabio itself explains this plainly as follows: “[m]ore
`precisely, 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”. Id., 4:35-39.
`Contrary to Petitioner’s arguments and speculation, the cited teachings in
`Fabio do not “update the cadence window” as required by the claim language. The
`disclosure of Fabio uses the previous validated step to validate the current step. If
`the current step does not conform with the previous steps, the current step is not
`validated and does not count as a step. This is confirmed by Fabio itself as follows:
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