`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC Luxembourg S.A.,
`Patent Owner
`
`———————
`
`Declaration of Joseph A. Paradiso, PhD
`under 37 C.F.R. § 1.68
`
`
`
`
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`Apple v. Uniloc
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`Page 1 of 104
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`Ex. 1003
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`Paradiso Decl.
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`Inter Partes Review of U.S. 7,881,902
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 2
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
`
`IV. RELEVANT LEGAL STANDARDS ............................................................. 9
`
`A. Anticipation ............................................................................................ 10
`
`B. Obviousness ........................................................................................... 10
`
`V. OVERVIEW OF THE ’902 PATENT .......................................................... 11
`
`A. Summary of the ’902 Patent .................................................................. 11
`
`B. Prosecution History of the ’902 Patent .................................................. 14
`
`VI. BROADEST REASONABLE INTERPRETATION ................................... 14
`
`A. “dominant axis” ..................................................................................... 15
`
`B. “cadence window” ................................................................................. 16
`
`VII.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 16
`
`A. Challenge #1: Claims 1 and 2 ................................................................ 16
`
`1. Summary of Mitchnick .................................................................. 16
`
`2. Mitchnick’s Embodiments Are Combinable ................................. 18
`
`3. Detailed Analysis ........................................................................... 19
`
`B. Challenge #2: Claim 3 ........................................................................... 29
`
`1. Summary of Sheldon ...................................................................... 29
`
`2. Reasons to Combine Mitchnick and Sheldon ................................ 29
`
`3. Detailed Analysis ........................................................................... 32
`
`C. Challenge #3: Claim 4 ........................................................................... 43
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`Ex. 1003
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`1. Summary of Tanenhaus .................................................................. 43
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`2. Reasons to Combine Mitchnick, Sheldon, Tanenhaus .................. 43
`
`3. Detailed Analysis ........................................................................... 46
`
`D. Challenge #4: Claims 5-6 and 9-10 ....................................................... 52
`
`1. State of the Art at the Time of the ’902 Patent .............................. 52
`
`2. Summary of Fabio .......................................................................... 54
`
`3. Summary of Pasolini ...................................................................... 57
`
`4. Reasons to Combine Fabio and Pasolini ........................................ 60
`
`5. Detailed Analysis ........................................................................... 63
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`VIII. CONCLUSION ............................................................................................101
`
`
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`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
`
`of the inter partes review of U.S. Patent No. 7,881,902 (“the ’902 Patent”) to
`
`Kahn, et al.
`
`2.
`
`I am being compensated for my work in this matter at the rate of
`
`$500/hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`6 and 9-10 of the ’902 Patent are unpatentable, either because they are anticipated
`
`or would have been obvious to a person having ordinary skill in the art
`
`(“POSITA”) at the time of the alleged invention, in light of the prior art. It is my
`
`opinion that all of the limitations of claims 1-6 and 9-10 would have been obvious
`
`to a POSITA.
`
`4.
`
`In the preparation of this declaration, I have studied:
`
`a)
`
`b)
`
`c)
`
`The ’902 Patent, Ex. 1001;
`
`The prosecution history of the ’902 Patent, Ex. 1002;
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”),
`
`Ex. 1005;
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`
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`1
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`d)
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`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”), Ex.
`
`1006;
`
`e)
`
`U.S. Publication No. 2006/0084848 to Mitchnick
`
`(“Mitchnick”), Ex. 1007;
`
`f)
`
`U.S. Patent No. 6,469,639 to Tanenhaus et al. (“Tanenhaus”),
`
`Ex. 1008; and
`
`g)
`
`U. S. Patent No. 5,957,957 to Sheldon (“Sheldon”), Ex. 1009.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a)
`
`The documents listed above, and
`
`b) My own knowledge and experience based upon my work in the
`
`field of MEMS (micro-electro-mechanical systems) devices
`
`and body motion sensing systems, as described below.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`6. My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in Ex. 1004. The following
`
`is a brief summary of my relevant qualifications and professional experience.
`
`7.
`
`As shown in my curriculum vitae, I have devoted my career to various
`
`fields of physical, electrical, and computer science with more than two decades
`
`focused on embedding sensing, including wearable and wireless sensors. I have
`
`twenty years of experience in wearable devices and computing, during which I
`
`
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`2
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`invented and fielded many types of wearable activity tracking devices that utilized
`
`a variety of power management and wakeup protocols.
`
`8.
`
`I am the Alexander W. Dreyfoos (1954) Professor in Media Arts and
`
`Sciences at the Massachusetts Institute of Technology (MIT), where I direct the
`
`Responsive Environments Group, which explores how sensor networks augment
`
`and mediate human experience, interaction and perception. I also have served as a
`
`co-director of the Things That Think Consortium, a group of MIT Media Lab
`
`researchers and industrial partners focused on the future of embedded computation
`
`and sensing, and I am now serving as our Associate Department Head.
`
`9.
`
`I received my B.S. in electrical engineering and physics summa cum
`
`laude from Tufts University in 1977 and my Ph.D. in physics from MIT in 1981.
`
`From 1981 to 1984, I did post-doctoral research at the Swiss Federal Institute of
`
`Technology (ETH) in Zurich, working on sensor technology for high-energy
`
`particle physics. From 1984-1994, I was a physicist at the Draper Laboratory in
`
`Cambridge, Massachusetts, where, as a member of the NASA Systems and
`
`Advanced Sensors and Signal Processing Directorates, my research included
`
`spacecraft control systems and sensor technology for both sonar systems and high-
`
`energy physics. I also worked at Draper Lab as an undergraduate (1974-1978) on
`
`software for advanced strategic inertial measurement units and guidance systems.
`
`From 1992-1994, I directed the development of precision alignment sensors for the
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`GEM muon detector at the Superconducting Supercollider, and worked on design
`
`of particle detectors at the CERN Large Hadron Collider (LHC).
`
`10.
`
`I joined the MIT Media Lab in 1994. The MIT Media Lab was
`
`founded in 1985 to actively promote a unique, anti-disciplinary culture that focuses
`
`on research projects joining different technological and academic fields. As
`
`described further below, researchers at the MIT Media Lab have pioneered areas
`
`such as wearable computing, tangible interfaces, and affective computing.
`
`Examples of products or platforms spun off from the Media Lab research include
`
`electronic ink readers such as the Amazon Kindle and Barnes & Noble Nook, the
`
`popular video game Guitar Hero, the MPEG-4 structured audio format, the first
`
`bionic lower-leg system for amputees, wireless mesh networks developed by
`
`Nortel, and the Mercury RFID Reader, commercialized by spin-off ThingMagic.
`
`Today, the Lab is supported by more than 70 sponsors/members, comprising some
`
`of the world’s leading corporations and representing the fields of electronics,
`
`entertainment, fashion, health care, greeting cards, and telecommunications, among
`
`others. Faculty members, research staff, and students at the Media Lab work in
`
`more than 25 research groups on more than 350 projects that range from digital
`
`approaches for treating neurological disorders, to a stackable, electric car for
`
`sustainable cities, to advancing imaging technologies that can see around corners.
`
`
`
`4
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`11. Upon joining the Media Lab, I focused on developing new sensing
`
`modalities for human-computer interaction, then by 1997 evolved my research into
`
`wearable wireless sensing and distributed sensor networks. This work anticipated
`
`and influenced transformative products and industries that have blossomed in
`
`recent years. For example, the sensor-laden wireless shoe I developed for
`
`interactive dance in 1997 is recognized as a watershed in the field of wearable
`
`wireless sensing and was an inspiration for the Nike+, one of the very first activity
`
`trackers and the first commercial product to integrate dynamic music with
`
`monitored exercise. My team went on to pioneer clinical gait analysis with
`
`wearable wireless sensors in collaboration with the Massachusetts General
`
`Hospital (MGH) in 2002, and then broke new ground in sports medicine with
`
`another MGH collaboration that developed an ultra-wide-range wireless inertial
`
`measurement unit system for evaluating professional baseball pitchers in 2007. My
`
`team and I have also been leaders on wearable sensing for Human-Computer
`
`Interfaces, over the past decade fielding, for example, wristbands to measure finger
`
`position, wristbands to enable pointing interaction and control of heating and
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`lighting, and even a wireless touchpad mounted on a fingernail.
`
`12. Leading to over 300 publications, 17 issued patents, and a string of
`
`awards in the Pervasive Computing, Human Computer Interaction, and sensor
`
`network communities, my research has become the basis for widely established
`
`
`
`5
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`curricula. Many of these publications are directed to wearables. I have also advised
`
`over 55 graduate (M.S. and Ph.D) theses for students who have done their work in
`
`my research group, and served as a reader for roughly 100 MS and PhD students in
`
`other groups and at other universities. Some of my own students have gone on to
`
`prominence in their own careers that have involved wearables—for example, Dr.
`
`Nan-Wei Gong (Ph.D 2013) was the R&D lead of Project Jacquard (integrating
`
`electronics and textiles) at Google ATAP before becoming founder and CEO of
`
`her own companies with a wearable focus ‘Circular2’ and ‘Figure8,’ and Dr. Stacy
`
`Morris Bamberg (Ph.D 2004) became a tenured professor at the University of Utah
`
`doing wearable gait analysis, then started a company in this space (Veristride). I
`
`have given over 280 invited talks, panel appearances, and seminars worldwide,
`
`recently keynoting on topics relating to ubiquitous sensing and the Internet of
`
`Things (IoT) for prestigious venues ranging from the Sensors Expo (the main
`
`industrial sensors conference) to the World Economic Forum. I am frequently
`
`asked to address industrial groups on wearables and IoT, and often engage with the
`
`Media Lab’s extensive list of industrial partners in strategizing these areas.
`
`13.
`
`I belong to and participate in various professional organizations. I am
`
`a senior member of the IEEE (Institute of Electrical and Electronics Engineers),
`
`and also belong to the ACM (Association for Computer Machinery). I also belong
`
`to the APS American Physical Society (the major professional society in physics),
`
`
`
`6
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`and am a senior member in the AIAA (the American Institute of Aeronautics and
`
`Astronautics). Within the IEEE, I belong to the Signal Processing Society, the
`
`Controls Society, and the Computer Society. As detailed in my CV, I have served
`
`on many Technical Program Committees (TPCs, which solicit, review, and select
`
`papers for academic conferences) and journal editorial boards, plus have organized
`
`academic conferences in areas such as wireless sensor networks, wearable
`
`computing and wearable sensing, human-computer interfaces, ubiquitous
`
`computing, etc.
`
`14. One of the themes of my research has been on low-power embedded
`
`systems and energy harvesting. I have written several well-regarded papers on
`
`these topics that well predate the ’902 Patent—for example, the review article that
`
`I wrote for IEEE Pervasive Computing in 2005, ‘Energy Scavenging for Mobile
`
`and Wireless Electronics’ has become their most popular article and is widely
`
`cited. My work on smart wakeup systems (e.g., as described in my papers such as
`
`‘A Framework for the Automated Generation of Power-Efficient Classifiers for
`
`Embedded Sensor Nodes’ and ‘CargoNet: A Low-Cost MicroPower Sensor Node
`
`Exploiting Quasi-Passive Wakeup for Adaptive Asynchronous Monitoring of
`
`Exceptional Events,’ both presented at SenSys 2007), are of relevance here.
`
`
`
`
`
`
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`7
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`15.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`16.
`
`I am familiar with accelerometers (including those found in portable
`
`devices such as mobile phones). I am also aware of the state of the art at the time
`
`the application resulting in the ’902 Patent was filed. I have been informed by
`
`Apple’s counsel that the earliest alleged priority date for the ’902 Patent is
`
`December 22, 2006. Based on the technologies disclosed in the ’902 Patent, a
`
`POSITA would be someone knowledgeable concerning accelerometers and the
`
`analysis of the data generated thereby. That person would have (i) a Bachelor’s
`
`degree in Electrical Engineering, Computer Engineering, Computer Science, or
`
`equivalent training, as well as (ii) approximately two years of experience
`
`working in hardware and/or software design and development related to MEMS
`
`devices and body motion sensing systems. Lack of work experience can be
`
`remedied by additional education, and vice versa. Such academic and industry
`
`experience would be necessary to appreciate what was obvious and/or
`
`anticipated in the industry and what a POSITA would have thought and
`
`
`
`8
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`understood at the time. Based on this criteria, as of the relevant time frame for
`
`the ’902 Patent, I possessed at least such experience and knowledge of a
`
`POSITA, as well as trained many of them by then, hence am qualified to opine
`
`on the ’902 Patent.
`
`17. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of December
`
`22, 2006. Unless otherwise stated, when I provide my understanding and analysis
`
`below, it is consistent with the level of a POSITA prior to the priority date of the
`
`’902 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`18.
`
`I understand that prior art to the ’902 Patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’902 Patent. For purposes of this Declaration, I have been
`
`asked to apply December 22, 2006, the earliest alleged priority date, as the priority
`
`date.
`
`19.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ’902 Patent, I am relying on certain basic
`
`
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`9
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`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`20.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`
`21.
`
`I have been informed by counsel that a patent claim is unpatentable as
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation, and the
`
`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`
`22.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`
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`10
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`23.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`V. OVERVIEW OF THE ’902 PATENT
`
`A.
`
`Summary of the ’902 Patent
`
`24. The ’902 patent is directed to an electronic device that “may be used
`
`to count steps or other periodic human motions.” Ex. 1001, 2:29-30. To detect
`
`periodic human motions, the electronic device “includes one or more inertial
`
`sensors,” such as an accelerometer. Ex. 1001, 2:25-26, 1:18. The inertial sensor
`
`measures acceleration data to detect a motion cycle. Ex. 1001, 2:38-43, 3:47-48.
`
`
`
`11
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`The ’902 patent explains that the “period and/or cadence of the motion cycle may
`
`be based upon user activity,” such as rollerblading, biking, running, walking, or
`
`any other activity having a periodic set of repeated movements. Ex. 1001, 3:16-17,
`
`3:36-38.
`
`25. To reduce power consumption, the electronic device in the ’902 patent
`
`operates in different modes. Ex. 1001, 8:20-23. As recited in claims 1-4, one of
`
`these modes is a “sleep mode.” The “sleep mode” in the ’902 patent is described as
`
`a power level that “reduces power consumption and prolongs battery life.” Ex.
`
`1001, 8:66-67. The electronic device enters the sleep mode when “no relevant
`
`acceleration is detected.” Ex. 1001, 10:41-41. While in the sleep mode, “a
`
`sampling function is periodically executed,” where the function “samples
`
`acceleration data at a set sampling rate for a set time period.” Ex. 1001, 9:5-9. The
`
`device terminates the sleep mode “[w]hen acceleration is detected.” Ex. 1001,
`
`9:39-41.
`
`26. Claims 5-6 and 9-10 differ from claims 1-4 in that they are not related
`
`to the sleep mode, but instead are directed to determining a step cadence window
`
`“used to count steps.” Ex. 1001, 4:21-22. According to the ’902 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, 3:66-4:1. The ’902 patent describes how “[i]f fewer
`
`than the required number of steps” are detected, “the cadence window may have a
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`
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`12
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`default minimum and maximum value.” Ex. 1001, 4:63-66. However, “[o]nce
`
`enough steps have been detected to determine a dynamic stepping cadence or
`
`period,” the dynamic cadence window “continuously updates as a user’s cadence
`
`changes.” Ex. 1001, 5:1-2, 4:24-26.
`
`27. Claim 10 of the ’902 Patent is further directed to assigning a dominant
`
`axis based on the orientation” of the mobile device with respect to gravity. See,
`
`e.g., Ex. 1001, claim 10. In the ’902 Patent, the dominant axis is “the axis most
`
`influenced by gravity,” which “may change over time (e.g. as the electronic device
`
`is rotated).” Ex. 1001, 6:16-21. Figure 9 of the ’902 Patent, reproduced below in
`
`part, provides a method for assigning a dominant axis based on taking
`
`measurements of acceleration data:
`
`
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`13
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`Ex. 1001, Fig. 9.
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`28. The “cadence window” and the “dominant axis” concepts claimed in
`
`the ’902 Patent were not novel. As shown in this Declaration, (1) U.S. Patent No.
`
`7,698,097 to 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 of the ’902 Patent
`
`29. The ’902 patent issued on February 1, 2011 from the U.S. Patent
`
`Application No. 12/694,135 filed January 26, 2010. The ’902 patent is a
`
`continuation of the U.S. Patent No. 7,653,508, filed on December 22, 2006.
`
`30. The first action by the Office during prosecution was a Notice of
`
`Allowance that issued on September 24, 2010. Ex. 1002, p. 34.
`
`31.
`
`In the Notice of Allowance the Examiner stated that the cited art (not
`
`included in this petition) failed to teach or suggest the limitations of original claim
`
`12 (issued claim 1) and original claim 25 (issued claim 5). Ex. 1002, p.5.
`
`VI. BROADEST REASONABLE INTERPRETATION
`
`32.
`
`It is my understanding that in order to properly evaluate the ’902
`
`Patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claims are to be given their
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`broadest reasonable interpretation in light of the specification. It is my further
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`understanding that claim terms are given their ordinary and accustomed meaning
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`as would be understood by one of ordinary skill in the art, unless the inventor has
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`set forth a special meaning for a term. In order to construe the following claim
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`terms, I have reviewed the entirety of the ’902 Patent, as well as its prosecution
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`history.
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`A.
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`“dominant axis”
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`33. This term appears in at least claim 10. In the’902 specification, the
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`dominant axis is determined based on the accelerometer’s alignment with gravity.
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`For example, the specification states that “[i]n one embodiment, the dominant axis
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`is assigned after identifying a gravitational influence. The gravitational influence
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`may be identified by calculating total acceleration based upon the acceleration on
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`each axis.” Ex. 1001, 14:34-38. The specification also states that “[i]n one
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`embodiment, once the orientation is determined, a dominant axis is assigned based
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`upon the orientation. Determining an orientation of the electronic device 100 may
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`include identifying a gravitational influence.” Ex. 1001, 6:13-16. In other words,
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`the dominant axis is “the axis most influenced by gravity, which may change over
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`time (e.g., as the electronic device is rotated).” Ex. 1001, 6:17-19.
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`34. Thus, for the purposes of this proceeding, the term “dominant axis” as
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`used in the claims includes “the axis most influenced by gravity.”
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`B.
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`“cadence window”
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`35. This term appears in at least claim 5. The ’902 specification
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`specifically defines this term as “a window of time since a last step was counted
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`that is looked at to detect a new step.” Ex. 1001, 3:66-4:1.
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`36. Thus, for the purposes of this proceeding, the term “cadence window”
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`as used in the claims includes “a window of time since a last step was counted that
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`is looked at to detect a new step.”
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`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Challenge #1: Claims 1 and 2
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`37.
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`It is my opinion that claims 1 and 2 are obvious under 35 U.S.C. § 103
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`over U.S. Patent Publication No. 2006/0084848 to Mitchnick (“Mitchnick”).
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`1.
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`Summary of Mitchnick
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`38. Mitchnick is directed to a monitoring device “for automatically
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`monitoring participants.” Ex. 1007, ¶9. The monitoring device can reside “in or on
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`the body.” Ex. 1007, ¶43.
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`39. Mitchnick describes that to monitor participants, monitoring device
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`includes an inertial sensor, such as a “MEMS-based accelerometer.” Ex. 1007, ¶55.
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`The accelerometer “can measure positive and negative accelerations.” Ex. 1007,
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`¶55. Mitchnick explains that the monitoring device can detect an activity of a
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`participant “by observing characteristic patterns of participant motion as sensed by
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`an acceleration.” Ex. 1007, ¶12. For example, to identify whether an activity is
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`occurring, the monitoring device “compares observed characteristics” of an
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`acceleration signal “to a template indicating ranges of characteristics likely to
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`indicate” the activity. Ex. 1007, ¶70. The monitoring device then determines that
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`the “activity is likely if the observed characteristics match the template.” Ex. 1007,
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`¶70.
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`40.
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` Mitchnick also describes how the monitoring device includes a “low-
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`voltage, low-power micro-controller (MC) 31 in order to minimize device count,
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`size, and power consumption.” Ex. 1007, ¶50. The minimized power consumption
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`allows the monitoring device to function “for extended periods, e.g., weeks, a
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`month, or several months, or up to a year or more.” Ex. 1007, ¶11. Mitchnick uses
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`this power consumption mode because the monitored “activity is intermittent” and
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`“power and memory can be advantageously further conserved, and device life
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`further extended, by only intermittently sampling 75” for the activity. Ex. 1007,
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`¶69. Mitchnick further explains that “when the device is neither sampling for
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`sexual activity nor storing monitoring data, it enters a low-power sleep state.” Ex.
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`1007, ¶72.
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`41. Mitchnick more specifically describes that “[p]rior to entering this
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`sleep state, the MC controls power control 45 to power down external components
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`not necessary for its subsequent wake-up.” Ex. 1007, ¶72. In Mitchnick, “[o]nly
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`the MC and a wake-up circuit need to be powered.” Ex. 1007, ¶68. Upon entering
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`the sleep state, the MC “loads the sampling interval into an MC timer, and then
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`executes a SLEEP instruction.” Ex. 1007, ¶72. When the timer expires, “the
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`SLEEP instruction completes, and the device again checks for sexual activity.” Ex.
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`1007, ¶72. If the activity is not detected, “the device remains in a low-power sleep
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`state.” Ex. 1007, ¶69. Otherwise, the monitoring device enters into a “normal
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`operation mode” where the “the device proceeds to repetitively retrieve sensor data
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`77 and store retrieved data in memory.” Ex. 1007, ¶¶50, 72.
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`42.
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`It is my opinion that claims 1-4 are obvious under 35 U.S.C. § 103
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`over U.S. Patent Publication No. 2006/0084848 to Mitchnick (“Mitchnick”)
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`2. Mitchnick’s Embodiments Are Combinable
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`43. Mitchnick’s disclosure is primarily directed to a monitoring device
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`that operates inside a body cavity. Ex. 1007, ¶11. For example, Mitchnick
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`describes the accelerometer and power management functionality included in a
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`monitoring device “designed to be affixed to or reside in a cavity of, a participant.”
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`Ex. 1007, ¶11. A POSITA would have recognized that Mitchnick’s internal
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`embodiment could be performed by an external device attached to a body. In fact,
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`Mitchnick states that its device can reside elsewhere “on the body” in order to
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`detect “other parameters of medical/clinical interest.” Ex. 1007, ¶43.
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`44. A POSITA would have recognized the benefits of modifying
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`Mitchnick’s internal device to reside on the body, and not in the body cavity. For
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`example, an external version of the monitoring device—that resides on the body—
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`can be placed and removed by a user, rather than inserted by a medical
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`professional. This would allow such a device to be more widely distributed to both
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`male and female patients, particularly in less developed areas as medical
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`intervention would not be required to begin use. In this way, Mitchnick’s external
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`version would be useful to detect user activities pertaining to other areas of
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`medical interest, which a POSITA would understand to include walking or
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`running, following medical issues and procedures such as, a heart attack or a knee
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`surgery. An external version of the device also has the benefit of being shared
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`hygienically by numerous users, potentially reducing overall cost of use by
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`allowing devices to be reused by various patients for various types of monitoring.
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`Thus, given Mitchnick’s express teachings, a POSITA would have found it
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`obvious to implement internal embodiment as an external version that resides on
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`the human body.
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`3.
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`Detailed Analysis
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`45. The following analysis describes how Mitchnick renders obvious
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`claims 1 and 2 of the ’902 Patent.
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`US 7,881,902
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`Claim 1
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`[1.0] A method
`comprising:
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`Mitchnick
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`To the extent that this preamble is limiting, Mitchnick
`discloses it.
`Mitchnick discloses this limitation because it teaches a
`method that describes using acceleration measurements to
`monitor activity of a user:
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`inve