`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`Uniloc Luxembourg S.A.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 7,881,902
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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 ........................................................................ 2 
`
`IV.  NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 3 
`
`V.  OVERVIEW OF THE ’902 PATENT ............................................................ 3 
`
`A. 
`
`B. 
`
`Summary of the Patent ......................................................................... 3 
`
`Prosecution History .............................................................................. 4 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 5 
`
`VII.  CLAIM CONSTRUCTION ............................................................................ 5 
`
`A. 
`
`B. 
`
`“dominant axis” .................................................................................... 6 
`
`“cadence window” ................................................................................ 7 
`
`VIII.  RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................... 7 
`
`IX. 
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ...... 7 
`
`A. 
`
`B. 
`
`C. 
`
`Challenged Claims ............................................................................... 7 
`
`Statutory Grounds for Challenges ........................................................ 8 
`
`Challenge #1: Claims 1 and 2 are unpatentable under 35 U.S.C §
`103 over Mitchnick .............................................................................. 8 
`
`
`
`
`–ii–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`1. 
`
`Summary of Mitchnick .............................................................. 8 
`
`2.  Mitchnick’s embodiments are combinable .............................. 10 
`
`3. 
`
`4. 
`
`Claim 1 ..................................................................................... 11 
`
`Claim 2 ..................................................................................... 16 
`
`D. 
`
`Challenge #2: Claim 3 is unpatentable under 35 U.S.C § 103 over
`Mitchnick and Sheldon ....................................................................... 17 
`
`1. 
`
`2. 
`
`3. 
`
`Summary of Sheldon ................................................................ 17 
`
`Reasons to Combine Mitchnick and Sheldon .......................... 17 
`
`Claim 3 ..................................................................................... 20 
`
`E. 
`
`Challenge #3: Claim 4 is unpatentable under 35 U.S.C § 103 over
`Mitchnick, Sheldon, and Tanenhaus .................................................. 28 
`
`1. 
`
`2. 
`
`3. 
`
`Summary of Tanenhaus ........................................................... 28 
`
`Reasons to Combine Mitchnick, Sheldon, Tanenhaus ............ 28 
`
`Claim 4 ..................................................................................... 31 
`
`F. 
`
`Challenge #4: Claim 5-6 and 9-10 are unpatentable under 35
`U.S.C §103 over Fabio in view of Pasolini ........................................ 34 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`7. 
`
`State of the Art at the Time of the ’902 Patent ........................ 35 
`
`Summary of Fabio .................................................................... 36 
`
`Summary of Pasolini ................................................................ 39 
`
`Reasons to Combine Fabio and Pasolini .................................. 42 
`
`Claim 5 ..................................................................................... 45 
`
`Claim 6 ..................................................................................... 57 
`
`Claim 9 ..................................................................................... 61 
`
`–iii–
`
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`8. 
`
`Claim 10 ................................................................................... 66 
`
`X. 
`
`CONCLUSION .............................................................................................. 72 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 73 
`
`CERTIFICATE OF SERVICE ................................................................................ 74 
`
`
`
`
`
`
`
`
`
`
`–iv–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`PETITIONER’S EXHIBIT LIST
`
`January 5, 2018
`
`U.S. Patent No. 7,881,902
`
`Ex.1001
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 7,881,902
`
`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”)
`
`Ex.1007
`
`U.S. Publication No. 2006/0084848 to Mitchnick (“Mitchnick”)
`
`Ex.1008
`
`U.S. Patent No. 6,469,639 to Tanenhaus et al. (“Tanenhaus”)
`
`Ex.1009
`
`U. S. Patent No. 5,957,957 to Sheldon (“Sheldon”)
`
`
`–v–
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,881,902 (“the ’902 patent,” Ex.1001) is generally directed
`
`to monitoring periodic human motions, such as walking, running, biking, and other
`
`activities. To do this, the ’902 patent uses a device that includes an accelerometer,
`
`which detects acceleration associated with the periodic human motion. And, when
`
`the accelerometer fails to detect acceleration associated with the periodic motion,
`
`the monitoring device enters a low power sleep mode.
`
`As this Petition shows, the prior art renders obvious the challenged claims of
`
`the ʼ902 patent. Accordingly, the Board should institute trial and find claims 1-6
`
`and 9-10 unpatentable.
`
`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 ’902 patent has been asserted in the following cases:
`
`Heading
`
`Number
`
`Court
`
`Filed
`
`Uniloc USA, Inc. v. Huawei Devices
`USA, Inc.
`
`Uniloc USA, Inc. v. HTC America,
`Inc.
`
`2-17-cv-00737
`
`E.D. Tx. Nov. 9, 2017
`
`2-17-cv-01629 W.D. Wa. Nov. 1, 2017
`
`
`
`–1–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`Uniloc USA, Inc. v. LG Electronics
`USA, Inc.
`
`Uniloc USA, Inc. v. Samsung
`Electronics America, Inc.
`
`4-12-cv-00832 N.D. Tx. Oct. 13, 2017
`
`2-17-cv-00650
`
`E.D. Tx. Sep. 15, 2017
`
`Uniloc USA, Inc. v. Apple Inc.
`
`C. Lead and Back-up Counsel and Service Information
`
`2-17-cv-00522
`
`E.D. Tx.
`
`Jun. 30, 2017
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Michael Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Dina Blikshteyn
`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
`
`Phone: (212) 835-4809
`Fax: (214) 200-0853
`dina.blikshteyn.ipr@haynesboone.com
`USPTO Reg. No. 63,962
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’902 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 ’902 patent on July 7,
`
`
`
`–2–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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 ’902 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). Citations to the remaining exhibits use the page
`
`numbers in their original publication. Unless otherwise noted, all bold underline
`
`emphasis in any quoted material has been added.
`
`V. OVERVIEW OF THE ’902 PATENT
`
`A.
`
`Summary of the Patent
`
`The ’902 patent is directed to an electronic device that “count[s] steps or
`
`other periodic human motions.” Ex.1001, 2:29-30. To “count” the periodic human
`
`motions, the electronic device “includes one or more inertial sensors”—such as an
`
`accelerometer—that measure acceleration data to detect a motion cycle. Ex.1001,
`
`1:18, 2:25-26, 2:38-43, 3:47-48. According to the ’902 patent, a “period and/or
`
`cadence of the motion cycle may be based on a human 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.
`
`To reduce power consumption, the electronic device operates in different
`
`modes. Ex.1001, 8:20-23. In claims 1-4, one of these modes is a “sleep mode” that
`
`“reduces power consumption and prolongs battery life.” Ex.1001, 8:66-67. The
`
`
`
`–3–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`electronic device enters the sleep mode when “no relevant acceleration is
`
`detected.” Ex.1001, 10:40-41. 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, 9:5-7.
`
`Unlike claims 1-4, claims 5-10 are directed to determining a step cadence
`
`window “used to count steps.” Ex.1001, 4:21-22. The step 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 cadence window may have a 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.
`
`B.
`
`Prosecution History
`
`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 U.S.
`
`Patent No. 7,653,508, filed on December 22, 2006. On September 24, 2010, and
`
`without any previous action, the Examiner issued a Notice of Allowance for
`
`original claim 12 (issued claim 1) and original claim 25 (issued claim 5). Ex.1002,
`
`pp.5,34. Consequently, the references presented in this petition were not cited or
`
`applied by during prosecution.
`
`
`
`–4–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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
`
`’902 Patent (i) a Bachelor’s degree in Electrical Engineering, Computer
`
`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
`
`
`
`–5–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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.
`
`A.
`
`“dominant axis”
`
`This term appears in at least claim 10. In the specification of the ’902 patent,
`
`the dominant axis is determined based on the accelerometer’s alignment with
`
`gravity. Ex.1003, p.15. 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, 14:34-38. 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, 6:13-16. In other words, 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, 6:17-19.
`
`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.16.
`
`
`
`
`
`–6–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`B.
`
`“cadence window”
`
`This term appears in at least claim 5. The specification 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, 3:66-4:1.
`
`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, p.16.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-6 and 9-10, and cancel
`
`those claims. As explained below and in the declaration of Petitioner’s expert, Dr.
`
`Joe Paradiso, the concepts described and claimed in the ’902 patent were not new.
`
`This petition explains where each element of claims 1-6 and 9-10 is found in the
`
`prior art and why the claims would have been obvious to a POSITA before the
`
`earliest claimed priority date of the ’902 patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Claims 1-6 and 9-10 of the ’902 patent are challenged in this petition.
`
`
`
`
`
`
`
`–7–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`B.
`
`Statutory Grounds for Challenges
`
`Challenge
`
`Claims
`
`Challenge #1
`
`1-2
`
`Challenge #2
`
`Challenge #3
`
`3
`
`4
`
`Ground
`
`Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`Publication No. 2006/0084848 to Mitchnick
`(“Mitchnick”).
`
`Obvious under 35 U.S.C. § 103(a) over Mitchnick in
`view of U.S. Patent No. 5,957,957 to Sheldon
`(“Sheldon”).
`
`Obvious under 35 U.S.C. § 103(a) over Mitchnick, in
`view of Sheldon, and further in view of U.S. Patent
`No. 6,469,639 to Tanenhaus et al. (“Tanenhaus”)
`
`Challenge #4 5-6, 9-10 Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`No. 7,698,097 to Fabio Pasolini et al. (“Fabio”) in
`view of U.S. Patent No. U.S. Patent No. 7,463,997 to
`Fabio Pasolini et al. (“Pasolini”)
`
`Pasolini (Ex.1005) was filed on October 2, 2006, issued on December 9,
`
`2008, and is prior art under § 102(e). Fabio (Ex.1006) was filed on October 2,
`
`2006, issued on April 13, 2010, and is prior art under § 102(e). Mitchnick
`
`(Ex.1007) was filed on October 14, 2004, published on April 20, 2006, and is prior
`
`art under § 102(e). Tanenhaus (Ex.1008) issued on October 22, 2002, and is prior
`
`art under § 102(b). Sheldon (Ex.1009) issued on September 28, 1999, and is prior
`
`art under § 102(b).
`
`C. Challenge #1: Claims 1 and 2 are unpatentable under 35 U.S.C §
`103 over Mitchnick
`
`1.
`
`Summary of Mitchnick
`
`
`
`–8–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`Mitchnick is directed to a monitoring device “for automatically monitoring
`
`participants.” Ex.1007, ¶9. The device can reside “in or on the body.” Ex.1007,
`
`¶43. The device includes an inertial sensor, such as a “MEMS-based
`
`accelerometer” that “can measure positive and negative accelerations.” Ex.1007,
`
`¶50. The device can detect an activity of a participant “by observing characteristic
`
`patterns of participant motion as sensed by an acceleration.” Ex.1007, ¶12. To
`
`identify the activity, the device “compares observed characteristics” of an
`
`acceleration signal “to a template indicating ranges of characteristics likely to
`
`indicate” the activity. Ex.1007, ¶70. The device then determines that the “activity
`
`is likely if the observed characteristics match the template.” Ex.1007, ¶70.
`
`Mitchnick’s device also includes a “low-voltage, low-power micro-
`
`controller (MC) 31 in order to minimize device count, size, and power
`
`consumption.” Ex.1007, ¶50. The minimized power consumption allows the device
`
`to function “for extended periods, e.g., weeks, a month, or several months, or up to
`
`a year or more.” Ex.1007, ¶11. This is used because the monitored “activity is
`
`intermittent” and “power and memory can be advantageously further conserved,
`
`and device life further extended, by only intermittently sampling.” Ex.1007, ¶69.
`
`“[W]hen the device is neither sampling for sexual activity nor storing monitoring
`
`data, it enters a low-power sleep state.” Ex.1007, ¶72.
`
`
`
`–9–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`In Mitchnick, “[p]rior to entering this sleep state, the MC controls power
`
`control 45 to power down external components not necessary for its subsequent
`
`wake-up.” Ex.1007, ¶72. Accordingly, “[o]nly the MC and a wake-up circuit need
`
`to be powered.” Ex.1007, ¶68. Upon entering the sleep mode, the MC “loads the
`
`sampling interval into an MC timer, and then executes a SLEEP instruction.”
`
`Ex.1007, ¶72. When the timer expires, “the SLEEP instruction completes, and the
`
`device again checks for sexual activity.” Ex.1007, ¶72. If the activity is not
`
`detected, “the device remains in a low-power sleep state.” Ex.1007, ¶69.
`
`Otherwise, the monitoring device enters into a “normal operation mode” where the
`
`“the device proceeds to repetitively retrieve sensor data 77 and store retrieved data
`
`in memory.” Ex.1007, ¶¶50,72.
`
`2. Mitchnick’s embodiments are combinable
`
`Mitchnick is primarily directed to a monitoring device that is “designed to
`
`be affixed to or reside in a cavity of, a participant.” Ex.1007, ¶11. A POSITA
`
`would have recognized that Mitchnick’s internal embodiment could also be
`
`performed by an external device attached to a body since Mitchnick specifically
`
`states that its device can resides elsewhere “on the body” in order to detect “other
`
`parameters of medical/clinical interest.” Ex.1007, ¶11; see Ex.1003, pp.18-19.
`
`A POSITA would have recognized the benefits of modifying Mitchnick’s
`
`internal device to reside on the body, and not in the body cavity. Ex.1003, p.19.
`
`
`
`–10–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`For example, an external version of the monitoring device—that resides on the
`
`body—can be placed and removed by a user, rather than inserted by a medical
`
`professional. Ex.1003, p.19. This would allow such a device to be more widely
`
`distributed to both male and female patients, particularly in less developed areas as
`
`medical intervention would not be required to begin use. Ex.1003, p.19. In this
`
`way, Mitchnick’s external version would be useful to detect user activities
`
`pertaining to other areas of medical interest, which a POSITA would understand to
`
`include walking or running, following for example, a heart attack or a knee
`
`surgery. Ex.1003, p.19. An external version of the device also has the benefit of
`
`being shared hygienically by numerous users, potentially reducing overall cost of
`
`use by allowing devices to be reused by various patients for various types of
`
`monitoring. Ex.1003, p.19. Thus, given Mitchnick’s express teachings, a POSITA
`
`would have found it obvious to implement Mitchnick’s internal embodiment as an
`
`external version that resides on the human body. Ex.1003, p.19.
`
`3.
`
`Claim 1
`
`[1.0] “A method comprising:”
`
`To the extent that this preamble is limiting, Mitchnick discloses a method
`
`that “comprises awakening periodically from a low power sleep state in order to
`
`determine from acceleration measurements” whether a participant is engaged in an
`
`
`
`–11–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`activity. Ex.1007, ¶31. Accordingly, Mitchnick discloses “[a] method comprising”
`
`as claimed. Ex.1003, p.20.
`
`[1.1] “detecting motion by an inertial sensor included in a mobile device”
`
`First, Mitchnick teaches that a monitoring device having an accelerometer
`
`that detects motion. Ex.1007, ¶49, Fig.7. The accelerometer is a type of an inertial
`
`sensor because it senses acceleration due to gravity. Ex.1003, pp.20-21.
`
`Inertial Sensor
`(e.g., Accelerometer)
`
`Mobile Device
`
`
`
`Ex.1007, Fig.1 (annotated); Ex.1003, p.21. In Mitchnick, the accelerometer detects
`
`motion because it measures acceleration caused by “patterns of participant
`
`motion.” Ex.1001, ¶12. Accordingly, Mitchnick teaches detecting motion by an
`
`inertial sensor.
`
`
`
`–12–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`Second, Mitchnick teaches that the accelerometer is in a “monitoring
`
`device[]” that resides within a human subject. Ex.1007, ¶43. This monitoring
`
`device is a mobile device for a number of reasons—it is small in size and can be
`
`easily transported by a human; it includes a battery and is not otherwise tethered to
`
`an external power source; and it does not restrict the user’s movement and
`
`mobility. See Ex.1007, Figs.1, 5B; Ex.1003, pp.22-23. Additionally, Mitchnick
`
`teaches that its internal embodiment can be “entirely dispensed with, and all data
`
`sensed from an external unit on … the participant.” Ex.1007, ¶15. As discussed
`
`above, a POSITA would find it obvious to implement Mitchnick’s internal
`
`embodiment as an external device. Ex.1003, pp.18-19.
`
`Further, Mitchnick’s device is designed to “communicate wirelessly using
`
`one of the available very lower power, short range radio linked protocols.”
`
`Ex.1007, ¶15. Accordingly, given that Mitchnick teaches a device that is small,
`
`battery powered, carried by a human, and communicates with other devices
`
`wirelessly, a POSITA would recognize the monitoring device to be a mobile
`
`device. Ex.1003, pp.23-24.
`
`Because Mitchnick teaches a mobile monitoring device that includes an
`
`accelerometer that measures acceleration due to participant’s motion, and teaches
`
`that the device can be implemented externally, Mitchnick renders obvious
`
`
`
`–13–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`“detecting motion by an inertial sensor included in a mobile device” as claimed.
`
`Ex.1003, p.24.
`
`[1.2] “determining, by the mobile device, whether the motion has a motion
`signature indicative of a user activity that the mobile device is configured to
`monitor”
`
`Mitchnick discloses this limitation. First, as discussed in section [1.1],
`
`Mitchnick’s monitoring device renders obvious a mobile device that detects motion
`
`via an accelerometer. Ex.1003, p.24.
`
`Second, Mitchnick teaches that the monitoring device includes a “sexual-
`
`activity check” that “extracts characteristics from an observed accelerometer
`
`signal, compares observed characteristics to a template indicating ranges of
`
`characteristics likely to indicate sexual activity, and indicates sexual activity is
`
`likely if the observed characteristics match the template.” Ex.1007, ¶70. In
`
`particular, Mitchnick teaches the characteristics of the observed accelerometer
`
`signal include “the values of significant peaks in the accelerometer signal,
`
`representing significant acceleration of a device wearer, and the times of these
`
`peaks or the time intervals between these peaks.” Ex.1007, ¶70. These acceleration
`
`signals are compared with a template that “describes one or more joint ranges of
`
`peak values and time intervals that have been determined as likely indicative of
`
`sexual activity.” Ex.1007, ¶70. According to Mitchnick, the “sexual activity is
`
`likely if the observed characteristics match the template.” Ex.1007, ¶70. A
`
`
`
`–14–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`POSITA would understand that comparing acceleration signals to a template to
`
`determine whether a particular activity is occurring is “determining” whether a
`
`“motion signature” is “indicative of a user activity” that the device is “configured
`
`to monitor.” Ex.1003, pp.25-26.
`
`Accordingly, Mitchnick’s monitoring device that includes an activity check
`
`used to determine the occurrence of sexual activity by matching the characteristics
`
`of the observed acceleration signal to a template, discloses “determining, by the
`
`mobile device, whether the motion has a motion signature indicative of a user
`
`activity that the mobile device is configured to monitor” as claimed. Ex.1003, p.26.
`
`[1.3] “when the motion does not have a motion signature of a user activity that
`the mobile device is configured to monitor, entering a sleep mode.”
`
`Mitchnick discloses this limitation. First, as discussed in section [1.2],
`
`Mitchnick teaches determining, based on acceleration data, whether a particular
`
`activity occurs. Ex.1003, p.26; Ex.1007, ¶70. While the activity is occurring, the
`
`device stays in a normal operational mode where “the device proceeds to
`
`repetitively retrieve sensor data 77,” “store retrieved data in memory 79,” and
`
`intermittently checks “that sexual activity is continuing.” Ex.1007, ¶¶50, 72, Fig.3.
`
`Otherwise, “when the device is neither sampling for sexual activity nor storing
`
`monitoring data, it enters a low-power sleep state.” Ex.1007, ¶72. The sleep state is
`
`a result of the activity check not finding the type of activity that it is configured to
`
`
`
`–15–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`monitor: “If this check fails, the device again enters the sleep state.” Ex.1007, ¶72;
`
`Ex.1003, pp.26-27.
`
`Because Mitchnick’s monitoring device (mobile device) enters a sleep mode
`
`when sexual activity is not detected, Mitchnick discloses when the motion does not
`
`have a motion signature of a user activity that the mobile device is configured to
`
`monitor, entering a sleep mode. Ex.1003,p.27.
`
`4.
`
`Claim 2
`
`[2.0] The method of claim 1, further comprising:
`
`Mitchnick teaches this limitation as described in sections [1.0]-[1.3].
`
`Ex.1003, p.27.
`
`[2.1] “when the motion does have a motion signature of a user activity that the
`mobile device is configured to monitor, monitoring for future motions having the
`motion signature.”
`
`As discussed in section [1.2], Mitchnick’s monitoring device determines
`
`whether the motion signature of a user activity (e.g., sexual activity) is indicative
`
`of the motion signature of a user activity that the device is configured to monitor.
`
`Ex.1003, p.27. This occurs when the monitoring device “checks for sexual
`
`activity” and “succeeds.” Ex.1007, ¶72; Ex.1003, p.27. Thus, Mitchnick teaches
`
`that its device detects a motion signature that it is configured to monitor. Ex.1003,
`
`p.27.
`
`
`
`–16–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`In Mitchnick, when the activity check “succeeds,” the monitoring device
`
`“proceeds to repetitively retrieve sensor data.” Ex.1007, ¶72. Intermittently with
`
`retrieving the sensor data, the monitoring device also monitor[s] for future motion
`
`having the motion signature by checking “that sexual activity is continuing.”
`
`Ex.1007, ¶72. Thus, the intermittent activity check performed by the monitoring
`
`device once the device has determined that the activity has occurred teaches
`
`monitoring for future motions having the motion signature. Ex.1003, pp.28-29.
`
`D. Challenge #2: Claim 3 is unpatentable under 35 U.S.C § 103 over
`Mitchnick and Sheldon
`
`1.
`
`Summary of Sheldon
`
`Sheldon describes a monitoring device, such as a pacemaker, that
`
`distinguishes human motions, such as stair climbing, from other user activities,
`
`such as stair descending or walking. Ex.1009, 4:20-23. Sheldon explains that to
`
`monitor user activity, an accelerometer is mounted within the pacemaker. Ex.1009,
`
`4:53-54. The accelerometer provides an output signal due to the force of gravity,
`
`which is collected over a time period that can be used to determine a human
`
`activity, such as walking or running. Ex.1009, 4:56-57, 12:21-29. Sheldon teaches
`
`an example “running time period” (also referred to as sampling period) that can be
`
`a two second period. Ex.1009, 11:64-12:2, 12:27-29.
`
`2.
`
`Reasons to Combine Mitchnick and Sheldon
`
`
`
`–17–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`A POSITA would have found it obvious to combine the teachings in
`
`Mitchnick and Sheldon for the reasons discussed below, and for additional reasons
`
`included in the detailed analysis of claim limitations. Ex.1003, p.30. Mitchnick and
`
`Sheldon are analogous art because they are in the same field of endeavor and both
`
`use accelerometers to monitor user activity. Ex.1003, p.30. Both Mitchnick and
`
`Sheldon are also concerned with saving power and extending battery life in a
`
`mobile device. Ex.1003, p.30. Accordingly, a POSITA would have looked to
`
`Sheldon to make improvements to Mitchnick’s monitoring device so that the
`
`monitoring device would monitor user activity with an accelerometer while being
`
`better able to conserve power and extend battery life. Ex.1003, p.30.
`
`Reason 1: Improve Power Management and Extended Battery Life
`
`A POSITA would have been motivated to modify the mobile device in
`
`Mitchnick to include Sheldon’s technique for sampling an accelerometer signal
`
`over a given sampling time period. Ex.1003, p.30. This is because improved power
`
`management is one of Mitchnick’s goals (“managing power use for longer battery
`
`life” Ex.1007, ¶13), and Sheldon provides improved power management by using a
`
`sampling time period to avoid scenarios where the activity check would
`
`unnecessarily occur because of ambiguous results. Ex.1003, pp.30-31.
`
`Implementing Sheldon’s power management techniques (e.g. sampling for a
`
`predetermined time period) in Mitchnick’s device would lead to better power
`
`
`
`–18–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`management, and the device would be better able to function for “extended
`
`periods, e.g., weeks, a month, or several months, or up to a year or more.”
`
`Ex.1007, ¶11; Ex.1003, p.31.
`
`Reason 2: Optimize Battery Cost
`
`A POSITA would also have incorporated Sheldon’s technique for sampling
`
`an accelerometer signal over a given sampling time period into Mitchnick’s mobile
`
`device because it would minimize battery cost. Ex.1003, p.31. Mitchnick teaches
`
`that “[e]xtended battery life (for example, a month o[r] longer) is important.”
`
`Ex.1007, ¶52. Mitchnick also explains that a “[s]uitable battery capacity is selected
`
`according the de