`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC USA Inc.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,712,723
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  MANDATORY NOTICES ............................................................................. 1 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party-in-Interest ........................................................................... 1 
`
`Related Matters ..................................................................................... 1 
`
`Lead and Back-up Counsel and Service Information .......................... 2 
`
`III.  GROUNDS FOR STANDING ........................................................................ 3 
`
`IV.  NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 3 
`
`V.  OVERVIEW OF THE ’723 PATENT ............................................................ 3 
`
`A. 
`
`B. 
`
`Summary of the Patent ......................................................................... 3 
`
`Prosecution History .............................................................................. 6 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7 
`
`VII.  CLAIM CONSTRUCTION ............................................................................ 8 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`“dominant axis” .................................................................................... 9 
`
`“cadence window” ................................................................................ 9 
`
`“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” .............. 10 
`
`“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” ............................................................................................. 11 
`
`E. 
`
`“a cadence logic to update the cadence window as actual cadence
`changes” ............................................................................................. 13 
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`F. 
`
`Note Regarding the Claim Terms directed to “Logic” ...................... 14 
`
`VIII.  RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................. 15 
`
`IX. 
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 15 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`Challenged Claims ............................................................................. 15 
`
`Statutory Grounds for Challenge........................................................ 15 
`
`State of the Art at the Time of the ’723 Patent .................................. 16 
`
`Summary of Fabio .............................................................................. 17 
`
`Summary of Pasolini .......................................................................... 20 
`
`Reasons to Combine Fabio and Pasolini ............................................ 22 
`
`G.  Detailed Analysis ............................................................................... 26 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`Claim 1 ..................................................................................... 26 
`
`Claim 2 ..................................................................................... 37 
`
`Claim 3 ..................................................................................... 39 
`
`Claim 5 ..................................................................................... 41 
`
`Claim 6 ..................................................................................... 46 
`
`Claim 7 ..................................................................................... 48 
`
`Claim 10 ................................................................................... 49 
`
`Claim 11 ................................................................................... 56 
`
`Claim 12 ................................................................................... 56 
`
`10.  Claim 13 ................................................................................... 59 
`
`11.  Claim 14 ................................................................................... 61 
`
`iii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`12.  Claim 15 ................................................................................... 63 
`
`13.  Claim 16 ................................................................................... 64 
`
`14.  Claim 17 ................................................................................... 64 
`
`15.  Claim 18 ................................................................................... 65 
`
`X. 
`
`CONCLUSION .............................................................................................. 67 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 68 
`
`CERTIFICATE OF SERVICE ................................................................................ 69 
`
`
`
`
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`PETITIONER’S EXHIBIT LIST
`
`December 21, 2017
`
`Ex.1001
`
`U.S. Patent No. 8,712,723
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 8,712,723
`
`Ex.1003
`
`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
`
`Ex.1004
`
`Curriculum Vitae of Joe Paradiso
`
`Ex.1005
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
`
`Ex.1006
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
`
`v
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 8,712,723 (“the ’723 Patent,” Ex.1001) is generally directed
`
`to a device for “monitoring human activity, and more particularly to counting
`
`periodic human motions.” Ex.1001, 1:13-15. The claims of the ’723 Patent are
`
`directed to two separate step detection concepts. The first concept is a known
`
`technique for determining which of three axes in a tri-axial accelerometer is a
`
`“dominant axis with respect to gravity.” The second concept is a known technique
`
`for updating a “cadence window” corresponding to a user’s steps. As shown
`
`below, these concepts were known in the prior art before the priority date of the
`
`’723 Patent.
`
`Accordingly, this Petition and the cited evidence demonstrates that claims 1-
`
`3, 5-7, and 10-18 of the ’723 Patent are unpatentable under (pre-AIA) 35 U.S.C. §
`
`103(a). Apple Inc. (“Petitioner”) therefore respectfully requests that these claims
`
`be held unpatentable and cancelled.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`The real party-in-interest is Apple Inc.
`
`B. Related Matters
`
`As of the filing date of this Petition and to the best knowledge of the
`
`petitioner, the ’723 Patent has been asserted in the following cases:
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Heading
`
`Number
`
`Court
`
`Filed
`
`Uniloc USA, Inc. v. Huawei Devices
`USA, Inc.
`
`Uniloc USA, Inc. v. HTC America,
`Inc.
`
`Uniloc USA, Inc. v. LG Electronics
`USA, Inc.
`
`Uniloc USA, Inc. v. Samsung
`Electronics America, Inc.
`
`Uniloc USA, Inc. v. Apple Inc.
`
`
`2-17-cv-00737
`
`E.D. Tx. Nov. 9, 2017
`
`2-17-cv-01629 W.D. Wa. Nov. 1, 2017
`
`4-12-cv-00832 N.D. Tx. Oct. 13, 2017
`
`2-17-cv-00650
`
`E.D. Tx. Sep. 15, 2017
`
`2-17-cv-00522
`
`E.D. Tx.
`
`Jun. 30, 2017
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`
`
`
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`
`Phone: (972) 739-8611
`Fax: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`USPTO Reg. No. 58,767
`
`
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’723 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition. Petitioner
`
`was served with a complaint asserting infringement of the ’723 Patent on July 7,
`
`2017, which is not more than one year before the filing of this Petition. Petitioner
`
`has not filed a civil action challenging the validity of any claim of the ’723 Patent.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioner’s citation to Ex.1002 uses the page numbers added for compliance
`
`with 37 C.F.R. § 42.63(d)(2)(ii). Petitioner’s citations to the remaining exhibits use
`
`the page numbers in their original publication. All bold underline emphasis in any
`
`quoted material has been added.
`
`V. OVERVIEW OF THE ’723 PATENT
`
`A.
`
`Summary of the Patent
`
`The ’723 Patent is directed to “a method of monitoring human activity, and
`
`more particularly, to counting periodic human motions such as steps.” Ex.1001,
`
`1:13-15. The monitoring of human activity is performed using “inertial sensors
`
`(e.g., accelerometers)” found in commercial electronic devices such as “cellular
`
`phones, portable music players, pedometers, game controllers, and portable
`
`computers.” Ex.1001, 1:20-26. As noted in the background of the ’723 Patent,
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`“[s]tep counting devices are used to monitor an individual's daily activity by
`
`keeping track of the number of steps that he or she takes.” Ex.1001, 1:27-29. The
`
`background section also identifies the known problem that “[s]tep counting devices
`
`are often confused by motion noise [that] … causes false steps to be measured and
`
`actual steps to be missed in conventional step counting devices.” Ex.1001, 1:35-39.
`
`The claims of the ’723 Patent are directed to two separate concepts that are
`
`alleged improvements over conventional step counting devices. The first concept
`
`relates to “assigning a dominant axis with respect to gravity.” See, e.g., Ex.1001,
`
`claim 1. In the ’723 Patent, the dominant axis is “the axis most aligned with
`
`gravity,” which “may change over time (e.g. as the electronic device is rotated).”
`
`Ex.1001, 6:20-25. Figure 8 of the ’723 Patent, reproduced below in part, provides a
`
`method for assigning a dominant axis based on taking measurements of
`
`acceleration data:
`
`Ex.1001, Fig. 8, in part.
`
`4
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`The second concept relates to updating a “cadence window” corresponding
`
`to the user’s step cadence. See, e.g., Ex.1001, claim 1. In the’723 Patent, “[a]
`
`cadence window is a window of time since a last step was counted that is looked at
`
`to detect a new step.” Ex.1001, 4:5-7. Figure 6, reproduced below, shows an
`
`example method for setting a cadence window, including recognizing a step in the
`
`cadence window then adding one to the step count:
`
`Ex.1001, Fig. 6.
`
`The “dominant axis” and “cadence window” concepts claimed in the ’723
`
`Patent were not novel. As shown in this Petition, (1) U.S. Patent No. 7,698,097 to
`
`
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Fabio Pasolini et al. (“Fabio”) describes a validation interval (cadence window)
`
`that is a window of time since a last step was counted that is looked at to detect a
`
`new step and (2) both Fabio and U.S. Patent No. 7,463,997 to Fabio Pasolini et al.
`
`(“Pasolini”) describe detecting steps using a dominant axis of a tri-axial
`
`accelerometer, or, in other words, using the axis most influenced by gravity.
`
`B.
`
`Prosecution History
`
`The ’723 Patent issued on April 29, 2014 from U.S Patent Application No.
`
`13/018,321 filed on January 31, 2011. The ’723 Patent is a continuation of U.S.
`
`Application No. 12/694,135, filed on January 26, 2010, which is a continuation of
`
`U.S. Application No. 11/644,455, filed on December 22, 2006.
`
`In a first Office action, the Examiner rejected claims 1, 2, 11, 12, 14, and 16
`
`under 35 U.S.C. 102 (e) as anticipated by U.S. Patent Application Publication No.
`
`2007/0143068 to Fabio Pasolini et al. Ex.1002 at 200. This application later issued
`
`as U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”), and is cited in
`
`this Petition as a secondary reference (Ex.1005).
`
`In the first Office action, the Examiner states that Pasolini disclosed
`
`“assigning a dominant axis based on an orientation of the inertial sensor,”
`
`“detecting a change in the orientation of the inertial sensor and updating the
`
`dominant axis based on the change,” and “counting periodic human motions by
`
`monitoring accelerations relative to the dominant axis based upon acceleration
`
`6
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`measurements along only the dominant axis to count steps.” Ex.1002, p.201.
`
`In its response to the first Office action, the Applicant amended the claims to
`
`further recite “by counting the periodic human motions when accelerations
`
`showing a motion cycle that meets motion criteria within a cadence window” and
`
`“updating the cadence window as actual cadence changes.” Ex.1002, p.138-41.
`
`The Applicant argued in its response that “Pasolini does not teach or suggest the
`
`use of cadence windows, much less the comparison of a motion cycle to a cadence
`
`window which is adjusted as the user’s motion is detected.” Ex.1002, p.201.
`
`In Notice of Allowance, the Examiner quoted the amended claims and
`
`indicated that the amended claims were allowable over Pasolini (among others).
`
`Ex.1002 at 34-36. However, U.S. Patent No. 7,698,097 to Fabio Pasolini et al.
`
`(“Fabio”), which is the primary prior art reference relied on in this Petition, does
`
`not appear to have been cited or otherwise considered by the Examiner during
`
`prosecution.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, a person of ordinary skill in
`
`the art (“POSITA”) would include someone who had, at the priority date of the
`
`‘723 Patent (i) a Bachelor’s degree in Electrical Engineering, Computer
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Engineering, and/or Computer Science, or equivalent training, and (ii)
`
`approximately two years of experience working in hardware and/or software
`
`design and development related to MEMS (micro-electro-mechanical) devices and
`
`body motion sensing systems. Ex.1003, p.8. Lack of work experience can be
`
`remedied by additional education, and vice versa. Ex.1003, p.8.
`
`VII. CLAIM CONSTRUCTION
`
`This Petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable construction in light of the specification. See 37 C.F.R. §
`
`42.100(b). Under the broadest reasonable construction, claim terms are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`in the art in the context of the entire disclosure. Cuozzo Speed Techs., LLC v. Lee,
`
`579 U.S. ___, slip op. at 17 (2016); In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Also, because the claim constructions proposed herein are
`
`based on the broadest reasonable construction, they do not necessarily apply to
`
`other proceedings that use different claim construction standards. See Samsung
`
`Elecs. Co. v. Virginia Innovation Sci., Inc., IPR2013-00569, Paper 9 at 2 (PTAB
`
`2013). For terms not addressed below, Petitioner submits that no specific
`
`construction is necessary for this proceeding.1
`
`1 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`A.
`
`“dominant axis”
`
`This term appears in at least claims 1, 2, 10, 11, 14, and 15. In the
`
`specification of the ’723 Patent, the dominant axis is determined based on the
`
`accelerometer’s alignment with gravity. Ex.1003, pp.17-18. For example, the
`
`specification states that “[i]n one embodiment, the dominant axis is assigned after
`
`identifying a gravitational influence. The gravitational influence may be identified
`
`by calculating total acceleration based upon the acceleration on each axis.”
`
`Ex.1001, 14:37-41. The specification also states that “[i]n one embodiment, once
`
`the orientation is determined, a dominant axis is assigned based upon the
`
`orientation. Determining an orientation of the electronic device 100 may include
`
`identifying a gravitational influence.” Ex.1001, 6:20-23. In other words, the
`
`dominant axis in the specification is “the axis most influenced by gravity, which
`
`may change over time (e.g., as the electronic device is rotated).” Ex.1001, 6:24-26.
`
`Thus, for the purposes of this proceeding, the term “dominant axis” as used
`
`in the claims includes “the axis most influenced by gravity.” Ex.1003, p.18.
`
`B.
`
`“cadence window”
`
`This term appears in at least claims 1, 5, 6, 10, 12, 14, 16 and 17. The
`
`specification of the ’723 Patent specifically defines this term as “a window of time
`
`since a last step was counted that is looked at to detect a new step.” Ex.1001, 4:4-5.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Thus, for the purposes of this proceeding, the term “cadence window” as
`
`used in the claims includes “a window of time since a last step was counted that is
`
`looked at to detect a new step.” Ex.1003, pp.18-19.
`
`C.
`
`“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”
`
`This term appears in at least claim 10. The specification of the ’723 Patent
`
`describes that “dominant axis logic 127 is used to determine an orientation of the
`
`electronic device 100 and/or an inertial sensor within the electronics device 100.”
`
`Ex.1001, 3:13-17. The specification further describes that “[a]t processing block
`
`812, in one embodiment the inertial sensor is oriented by assigning a dominant
`
`axis. Assigning a dominant axis may include calculating rolling averages of
`
`acceleration and assigning the dominant axis based on the rolling averages of
`
`acceleration.” Ex.1001, 12:45-49. The specification further describes that the
`
`present invention may be performed by hardware, software, or a combination of
`
`both. See Ex.1001, 14:53-59.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to
`
`determine an orientation of a device, to assign a dominant axis, and to update the
`
`dominant axis as the orientation of the device changes.” Ex.1003, p.19.
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function: 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;
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions described with respect to block 812. Ex.1001, 3:13-17, 12:45-
`
`49, 14:53-59. Ex.1003, p.20.
`
`D.
`
`“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”
`
`This term appears in at least claim 10. The specification of the ’723 Patent
`
`describes “step counting logic 130” that is used “to determine if a step has
`
`occurred” and indicate if “a step may be counted.” Ex.1001, 6:45-50, 7:7-10. In
`
`one example, at block 615 “measurement data is checked to determine whether an
`
`additional step is recognized.” Ex.1001, 11:19-21. At block 620, “[i]f an additional
`
`step is recognized, then it is added to the final or actual step count.” Ex.1001,
`
`11:21-22. The specification further describes that the present invention may be
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`performed by hardware, software, or a combination of both. See Ex.1001, 14:53-
`
`59.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both 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.” Ex.1003,
`
`p.21.
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function:
`
`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;
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions described with respect to blocks 615 and 620. Ex.1001, 6:45-50, 7:7-10,
`
`11:19-22, 14:53-59; Ex.1003, p.21.
`
`
`
`
`
`12
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`E.
`
`“a cadence logic to update the cadence window as actual cadence
`changes”
`
`This term appears in at least claim 10. The specification of the ’723 Patent
`
`describes “cadence logic 132 [that] detects a period and/or cadence of a motion
`
`cycle. The period and/or cadence of a motion cycle may be based upon user
`
`activity (e.g. rollerblading, biking, running, walking, etc.).” Ex.1001, 3:21-25. In
`
`one example, “a new cadence window is set (block 574) based on a stepping
`
`cadence of the M steps measured.” Ex.1001, 10:61-62. The specification further
`
`describes that the present invention may be performed by hardware, software, or a
`
`combination of both. See Ex.1001, 14:53-59.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to update
`
`the cadence window as actual cadence changes.” Ex.1003, p.22.
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function: to update the cadence window as actual cadence changes;
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions described with respect to block 574. Ex.1001, 3:21-25, 10:61-
`
`62, 14:53-59; Ex.1003, p.22.
`
`
`
`13
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`F. Note Regarding the Claim Terms directed to “Logic”
`
`Petitioner may assert in this same district court litigation that, under the
`
`narrower Phillips standard, the claim limitations directed to “logic” invoke § 112
`
`¶6 but fail to meet the definiteness requirement of § 112 ¶2. As of the filing of this
`
`petition, the district court has not yet issued a claim construction order.
`
`Petitioner recognizes that inter partes review proceedings cannot be used to
`
`challenge definiteness under § 112. See 35 U.S.C. § 311(b). However, for purposes
`
`of this proceeding, the broadest reasonable interpretation of these claim terms
`
`encompasses software, hardware, or a combination thereof for performing the
`
`recited function, as explained by the ’723 Patent.
`
`Additionally, regardless of whether the recited “logic” is a nonce word
`
`requiring the disclosure of an algorithm, the Board may still find that the claims are
`
`obvious in view of the software and hardware disclosed in the prior art cited in this
`
`Petition. See, e.g., Vibrant Media, Inc. v. Gen’l Elec. Co., IPR2013-00172, Paper
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`50 at 10-11 (PTAB Jul. 28, 2014) (“an indefiniteness determination in this
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`proceeding would not have prevented us from deciding whether the claims would
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`have been obvious over the cited prior art.”); Microsoft Corp. v. Enfish, IPR2013-
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`00560, Paper 14 at 9-10 (PTAB Mar. 4, 2014) (instituting review and directing
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`patent owner to identify structure in its Patent Owner Response). As detailed
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`herein, the prior art teaches software, hardware, or a combination thereof
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
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`performing the claimed function. Therefore, any indefiniteness determination
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`would not prevent the Board from deciding that these claims are obvious in light of
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`the provided prior art.
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
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`Petitioner asks that the Board review the accompanying prior art and
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`analysis, institute a trial for inter partes review of claims 1-3, 5-7, and 10-18 of the
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`’723 Patent, and cancel those claims as invalid.
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`As explained below and in the declaration of Petitioner’s expert, Dr. Joe
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`Paradiso, the concepts described and claimed in the ’723 Patent were not new. This
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`Petition explains where each element of claims 1-3, 5-7, and 10-18 is found in the
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`prior art and why the claims would have been obvious to a person of ordinary skill
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`in the art (“POSITA”) before the earliest claimed priority date of the ’723 Patent.
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`IX.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Challenged Claims
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`Claims 1-3, 5-7, and 10-18 of the ’723 Patent are challenged in this petition.
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`B.
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`Statutory Grounds for Challenge
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`Claims 1-3, 5-7, and 10-18 of the ’723 Patent obvious under 35 U.S.C §
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`103(a) over U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”) in view of
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`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”). Both Fabio and
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`Pasolini were filed on October 2, 2006, which is before the ’723 Patent’s earliest
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
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`claimed effective filing date of December 22, 2006. Accordingly, Fabio and
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`Pasolini qualify as prior art under at least pre-AIA 35 U.S.C. § 102(e).
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`C.
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`State of the Art at the Time of the ’723 Patent
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`Before the earliest claimed priority date of December 22, 2006, others were
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`actively working on pedometer devices that monitored a user’s steps. One such
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`developer was Fabio Pasolini, who designed motion detection systems using
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`MEMS that could be implemented in phones or other portable electronic devices.
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`See Ex.1006, 2:33-36; Ex.1005, 8:31-34. The pedometers devices that Mr. Pasolini
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`designed use an inertial sensor, such an accelerometer, to count steps of the user
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`while the user is carrying the device. Ex.1006, 1:10-11, 2:49-64; Ex.1005, 3:30-35.
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`To detect and identify the user’s steps, Mr. Pasolini’s devices analyze
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`positive and negative acceleration peaks provided by the accelerometer. Ex.1006,
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`4:12-21; Ex.1005, 3:35-41. In this way, Mr. Pasolini’s devices provide features
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`that help avoid “false positives” with respect to the step recognition. Ex.1006,
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`7:16-19; Ex.1005, 1:61-2:3. These step-recognition features are described in two of
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`Mr. Pasolini’s issued patents—U.S. Patent No. 7,698,097 (“Fabio”) and U.S.
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`Patent No. 7,463,997 (“Pasolini”)—that were both filed on October 2, 2006 and
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`share the same inventive entity (Fabio Pasolini and Ivo Binda).
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`Both of Mr. Pasolini’s patents describe a number of features in common
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`with the pedometer devices. These features include, for example, an accelerometer
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
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`with multiple axes of detection, so that step recognition is advantageously
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`performed using the accelerations measured by the axis that is most aligned with
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`gravity. Ex.1006, 8:20-32; Ex.1005, 8:15-24.
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`The references differ in that the Pasolini reference provides additional detail
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`regarding step detection using linear and multi-axes accelerometers, including
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`describing that the pedometer updates the vertical axis with each acquisition of an
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`acceleration sample to take into account variations of the orientation of the
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`pedometer device during use. Ex.1005, 8:20-24. The Fabio reference, on the other
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`hand, describes applying a regularity condition to the detected step data so that a
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`step is counted when it occurs within a “validation interval,” which is identified as
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`a window of time since a previous step was counted. Ex.1006, 4:35-39, 7:16-19,
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`FIG. 6.
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`As described in more detail below, the disclosures provided in the Fabio and
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`Pasolini references render obvious each and every element of the challenged
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`claims.
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`D.
`
`Summary of Fabio
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`Fabio is directed to “controlling a pedometer based on the use of inertial
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`sensors.” Ex.1006, 1:10-11. An example of Fabio’s pedometer device 1 as
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`“integrated within a portable electronic device, such as a cell phone 2” (Ex.1006,
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`2:33-36) is reproduced below:
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
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`
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`Ex.1006, Fig. 1.
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`
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`Fabio describes that its pedometer 1 includes an “inertial sensor 3 [that]
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`supplies at output an acceleration signal AZ, which is correlated to the accelerations
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`undergone by the inertial sensor 3 itself along the detection axis Z.” Ex.1006, 2:56-
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`59. Fabio’s pedometer performs step recognition by sampling the acceleration
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`signal AZ to identify characteristics including “a positive peak, higher than a
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`positive acceleration threshold AZP, followed by a negative peak, smaller than a
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`negative acceleration threshold AZN.” Ex.1006, 4:12-21.
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`Fabio notes that “there are many random events that can interfere with
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`correct recognition of the step. Impact or other external vibrations and given
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`movements of the user can, in fact, give rise to so-called ‘false positives.’”
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`Ex.1006, 1:38-41. For this reason, Fabio describes a pedometer having various
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
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`features to overcome these step detection challenges. Some of these features
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`include “checking whether sequences of the detected steps satisfy pre-determined
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`conditions of regularity; updating a total number of valid steps if the conditions of
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`regularity are satisfied; and preventing updating of the total number of valid steps
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`if the conditions of regularity are not satisfied.” Ex.1006, 1:62-2:3. More precisely,
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`Fabio explains that “the last step is validated if the instance of recognition of
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`the current step TR(K) falls within a validation interval TV[.]” Ex.1006, 4:35-
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`39. Fabio shows the instant of recognition of a current step occurring within the
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`validation interval after an instant of recognition of a previous step in Figure 6
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`(below).
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`Instant of recognition of current step
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`Instant of
`recognition of
`previous step
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`
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`Validation Interval
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`
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`Ex.1006, Fig. 6 (annotated); Ex.1003, p.27.
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`Using this step validation technique, Fabio’s device is able to more
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`accurately count steps and adapt to changes in the user’s pace. Ex.1003, p.27.
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`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
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`Specifically, Fabio teaches that “[p]ossible isolated irregularities are ignored and
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`do not interrupt or suspend updating of the count, which is, instead, interrupted
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`when prolonged pauses occur or in the presence of significant discontinuities in
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`locomotion.” Ex.1006, 7:16-19.
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`Fabio additionally describes sampling the acceleration signal from a
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`detection axis most influenced by gravity. Ex.1003, p.27. Specifically, Fabio
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`teaching using an inertial sensor “with two or three axes of detection” so that “step
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`recognition can advantageously be performed by selecting