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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC., SAMSUNG ELECTRONICS AMERICA, INC., HTC CORP., HTC
`AMERICA, INC., and LG ELECTRONICS, INC.,1
`Petitioner,
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`V-
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`UNILOC 2017 LLC,
`Patent Owner.
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`Case IPR2018-00424
`Patent 7,881,902 B1
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`:1
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`£57)
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`PETITIONER NOTICE OF APPEAL
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`Via Hand Delivery
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
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`‘
`
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22314
`
`Via EZE
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`Patent Trial and Appeal Board
`
`Via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`1 HTC Corp., HTC America, Inc., and LG Electronics, Inc., who collectively filed
`a petition in IPR2018-0163 l, and Samsung Electronics America, Inc., who filed a
`petition in IPR2018-01653, have been joined as petitioners in IPR2018-00424.
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`
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`Case IPR2018-00424
`Patent 7,881,902
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`Pursuant to 35 U.S.C. §§ 141(c), 142, and 319 and 37 C.F.R. §§ 90.2(a) and
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`90.3(a), Petitioner LG Electronics, Inc. (“Petitioner”) hereby provides notice that it
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`appeals to the United States Court of Appeals for the Federal Circuit from the Final
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`Written Decision of the Patent Trial and Appeal Board entered July 16, 2019
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`(Paper 21), and from all underlying and related orders, decisions, rulings, and
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`opinions regarding U.S. Patent 7,881,902 (“the ’902 patent”) in Inter Partes
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`Review IPR2018-00424.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the expected issues on appeal
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`include, but are not limited to, the Patent Trial and Appeal Board’s determination
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`that Petitioner has failed to demonstrate by a preponderance of evidence that claim
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`9 of the ’902 patent is unpatentable, and any finding or determination supporting or
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`related to that determination, as well as all other issues decided adversely to
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`Petitioners in any orders, decisions, rulings, or opinions.
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`A copy of the decision being appealed is attached to this Notice.
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
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`filed with the Director of the United States Patent and Trademark Office and a
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`copy of this Notice is being filed with the Patent Trial and Appeal Board. In
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`addition, a copy of this Notice and the required docketing fees are being filed with
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`the Clerk’s Office for the United States Court of Appeals for the Federal Circuit
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`via CM/ECF.
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`1
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`Case IPR2018-00424
`Patent 7,881,902
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`Respectfully submitted,
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`/Joshua L. Goldberg/
`Joshua L. Goldberg,
`Reg. No. 59,369
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`Counsel for LG Electronics, Inc.
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`2
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`Date: January 9, 2020
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`Case IPR2018-00424
`Patent 7,881,902
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`CERTIFICATE OF SERVICE AND FILING
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`Pursuant to 37 C.F.R. § 42.6(e) (and to the extent necessary under Fed. R.
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`App. P. 25 and Fed. Cir. R. 25), I, Lauren K. Young, certify that on January 9,
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`2020, a copy of PETITIONER NOTICE OF APPEAL was served this date on
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`the Patent Owner’s counselors and other parties of record by email as follows:
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`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Michael Parsons
`michael.parsons.ipr@haynesboone.com
`Dina Blikshteyn
`dina.blikshteyn.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`
`Todd E. Landis
`tlandis@velaw.com
`Mario A. Apreotesi
`mapreotesi@velaw.com
`Jeffery R. Swigart
`jswigart@velaw.com
`VINSON & ELKINS LLP
`
`Naveen Modi
`naveenmodi@paulhastings.com
`Joseph E. Palys
`josephpalys@paulhastings.com
`Chetan Bansal
`chetanbansal@paulhastings.com
`PH-Samsung-Uniloc-IPR@paulhastings.com
`PAUL HASTINGS LLP
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`Brett Mangrum
`brett@etheridgelaw.com
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`3
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`Patent 7,881,902
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`Ryan Loveless
`ryan@etheridgelaw.com
`James Etheridge
`jim@etheridgelaw.com
`Jeffrey Huang
`jeff@etheridgelaw.com
`ETHERIDGE LAW GROUP
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`Sean D. Burdick
`sean.burdick@unilocusa.com
`UNILOC USA, INC.
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`In accordance with 37 C.F.R. §§ 90.2(a)(1) and 104.2(b), I hereby certify
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`that, in addition to being filed electronically through the Board’s E2E System, the
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`foregoing Petitioner’s Notice of Appeal was filed and served by hand delivery on
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`January 9, 2020, with the Director of the United States Patent and Trademark
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`Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
`
`In accordance with 37 C.F.R. § 90.2(a)(2), I hereby certify that on January 9,
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`2020, a true and correct copy of the foregoing Petitioner’s Notice of Appeal was
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`filed electronically with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit via CM/ECF.
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`By: /Lauren K. Young/
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`Dated: January 9, 2020
` Lauren K. Young
` Litigation Legal Assistant
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`4
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` FINNEGAN, HENDERSON, FARABOW,
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`GARRETT & DUNNER, L.L.P.
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`Case IPR2018-00424
`Patent 7,881,902
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`5
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`Trials@uspto.gov
`571-272-7822
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`Paper 21
`Entered: July 16, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., SAMSUNG ELECTRONICS AMERICA, INC.,
`HTC CORP., HTC AMERICA, INC., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-004241
`Patent 7,881,902 B1
`____________
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R § 42.73
`
`1 HTC Corp., HTC America, Inc., and LG Electronics, Inc., who collectively
`filed a petition in IPR2018-01631, and Samsung Electronics America, Inc.,
`who filed a petition in IPR2018-01653, have been joined to this proceeding.
`
`
`
`IPR2018-00424
`Patent 7,881,902 B1
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Apple Inc. filed a Petition requesting inter partes review of claims
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`1(cid:16)6, 9, and 10 (“the challenged claims”) of U.S. Patent No. 7,881,902 B1
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`(Ex. 1001, “the ’902 patent”). Paper 2 (“Pet.”). Uniloc Luxembourg S.A., a
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`predecessor-in-interest of the ’902 patent, filed a Preliminary Response.
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`Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition and
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`Preliminary Response, we instituted inter partes review of all challenged
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`claims on all grounds raised in the Petition. Paper 7 (“Dec. Inst.”).
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`Subsequent to our Institution Decision, Uniloc Luxembourg S.A.
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`assigned the ’902 patent to Uniloc 2017 LLC (“Patent Owner”), and we
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`granted motions for Samsung Electronics America, Inc., HTC Corp., HTC
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`America, Inc., and LG Electronics, Inc. to join Apple, Inc. as Petitioner in
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`this proceeding. See Papers 10, 13, and 14.2
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`Patent Owner filed a Response to the Petition (Paper 11, “PO Resp.”),
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`Petitioner filed a Reply (Paper 12, “Pet. Reply”), and Patent Owner filed a
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`Sur-Reply (Paper 15, “PO Sur-Reply”). We held a consolidated oral hearing
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`for this case and related cases involving the same parties and related patents
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`on April 2, 2019, and the hearing transcript is included in the record. See
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`Paper 20 (“Tr.”).
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`2 Apple identifies itself as the real party-in-interest. Uniloc 2017 LLC
`identifies itself, Uniloc USA, Inc., and Uniloc Licensing USA LLC as real
`parties-in-interest. Paper 10, (1). Samsung Electronics America, Inc.
`identifies itself and Samsung Electronics Co., Ltd. as real parties-in-interest.
`Paper 13, 2 n.1. HTC Corp., HTC America, Inc., and LG Electronics, Inc.
`identify themselves, LG Electronics U.S.A., Inc., and LG Electronics
`MobileComm USA, Inc. as real parties-in-interest. Paper 14, 2 n.1.
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`2
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`
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`IPR2018-00424
`Patent 7,881,902 B1
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`We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
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`Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
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`set forth below, we find Petitioner has shown by a preponderance of
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`evidence that claims 1–6 and 10 of the ’902 patent are unpatentable, but has
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`failed to show by a preponderance of evidence that claim 9 is unpatentable.
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`B. Related Matters
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`Petitioner and Patent Owner identify numerous district court matters
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`that could affect, or be affected by, a decision in this proceeding. Pet. 1–2;
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`Paper 3, (2). In addition, our Institution Decision identifies numerous inter
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`partes reviews challenging claims of the ’902 patent and related U.S. Patent
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`Nos. 7,653,508 B1 and 8,712,723 B1 that could affect, or be affected by, this
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`proceeding. Dec. Inst. 2–3.
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`C. Evidence Relied Upon3
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`Reference
`
`Effective Date4
`
`Exhibit
`
`Pasolini
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`US 7,463,997 B2
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`Oct. 2, 2006
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`Fabio
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`US 7,698,097 B2
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`Oct. 2, 2006
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`Mitchnick
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`US 2006/0084848 A1
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`Oct. 14, 2004
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`Tanenhaus
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`US 6,469,639 B2
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`Oct. 22, 2002
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`1005
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`1006
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`1007
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`1008
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`Sheldon
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`US 5,957,957
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`Sept. 28, 1999
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`1009
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`3 Petitioner also relies upon the Declaration of Joseph A. Paradiso, Ph.D.
`(Ex. 1003).
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`4 Petitioner relies on the filing dates of Pasolini, Fabio, and Mitchnick as the
`effective date for determining their availability as prior art.
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`3
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`IPR2018-00424
`Patent 7,881,902 B1
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`D. Instituted Grounds of Unpatentability
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`Reference(s)
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`Basis
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`Claim(s) Challenged
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`Mitchnick
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`Mitchnick and Sheldon
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`Mitchnick, Sheldon, and
`Tanenhaus
`
`Fabio and Pasolini
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`A. The ’902 Patent
`
`§ 103(a)
`
`§ 103(a)
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`§ 103(a)
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`§ 103(a)
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`II. ANALYSIS
`
`1 and 2
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`3
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`4
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`5, 6, 9, and 10
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`The ’902 patent relates to “a method of . . . counting periodic human
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`motions such as steps.” Ex. 1001, 1:9–11. The method involves the use of a
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`“portable electronic device that includes one or more inertial sensors” that
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`“measure accelerations along a single axis or multiple axes.” Id. at 2:24–28.
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`Figure 1 of the ’902 patent is reproduced below.
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`4
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`IPR2018-00424
`Patent 7,881,902 B1
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`Figure 1 of the ’902 patent is a block diagram illustrating electronic device
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`100. Id. at 1:47–48. Device 100 includes acceleration measuring logic 105
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`(e.g., inertial sensors), dominant axis logic 127, and step counting logic 130.
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`Id. at 2:19–24, 2:38–43, Fig. 1. Device 100 “may be used to count steps or
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`other periodic human motions,” where a “step” is “any user activity having a
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`periodic set of repeated movements.” Id. at 2:29–30, 3:34–38. According to
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`the ’902 patent, device 100 accurately counts steps “regardless of the
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`placement and/or orientation of the device on a user,” and regardless of
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`whether the device “maintains a fixed orientation or changes orientation
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`during operation.” Id. at 2:31–35.
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`Dominant axis logic 127 includes cadence logic 132 and rolling
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`average logic 135. Id. at 2:66–3:2, Fig. 1. Inertial sensors 105 measure
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`acceleration data, and cadence logic 132 analyzes this data to detect “a
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`period and/or cadence of a motion cycle,” which may be based on user
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`activity such as running or walking. Id. at 2:38–40, 3:14–18, 3:46–51.
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`Cadence logic 132 determines “a cadence window 150 to be used by the step
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`counting logic 130.” Id. at 3:11–14. Cadence window 150 is “a window of
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`time since a last step was counted that is looked at to detect a new step.” Id.
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`at 3:65–4:1. Cadence window 150 is initially set to a default value, and can
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`be dynamically updated to reflect the cadence or period of detected steps
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`once a minimum number of steps have been detected. Id. at 3:57–61, 4:22–
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`28, 4:61–5:6. The cadence or stepping period can be determined as a
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`“rolling average of the stepping periods over previous steps.” Id. at 3:61–62.
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`Cadence logic 132 also determines “one or more sample periods to be
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`used by the rolling average logic 135.” Id. at 3:11–14, 5:31–34. The sample
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`periods can be set to “the length of, or longer than, the stepping period,”
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`IPR2018-00424
`Patent 7,881,902 B1
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`including a “multiple of the stepping period.” Id. at 5:34–37. Rolling
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`average logic 135 “creates one or more rolling averages of accelerations . . .
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`measured by the inertial sensor(s) over the sample period(s) set by the
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`cadence logic 132.” Id. at 5:39–41. These rolling averages are used to
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`determine an orientation of the electronic device and a threshold against
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`which acceleration measurements are compared. Id. at 5:41–45.
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`Dominant axis logic 127 includes dominant axis setting logic 140,
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`which determines an orientation of device 100 or of the inertial sensor(s)
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`within device 100. Id. at 6:8–10. This may be done “based upon the rolling
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`averages of accelerations created by the rolling average logic 135.” Id. at
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`6:10–12. In particular, “[t]he axis with the largest absolute rolling average”
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`over a given sampling period, which can be the “axis most influenced by
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`gravity,” is designated the dominant axis. Id. at 6:14–18, 6:23–25. The ’902
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`patent explains that because device orientation may change over time, the
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`rolling average acceleration may change and “a new dominant axis may be
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`assigned when the orientation of the electronic device 100 and/or the inertial
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`sensor(s) attached to or embedded in the electronic device 100 changes.” Id.
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`at 6:16–22. Dominant axis setting logic 140 can also set the dominant axis
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`to be a virtual “axis that is defined as approximately aligned to gravity,” and
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`that is found from “trigonometric calculations on the actual axes based on
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`the gravitation influence” on those axes. Id. at 6:25–34.
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`Step counting logic 130 includes measurement selection logic 145,
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`measurement comparator 155, and threshold comparator 160. Id. at 6:38–
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`41. Measurement selection logic 145 “monitor[s] accelerations relative to
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`the dominant axis, and select[s] only those measurements with specific
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`relations to the dominant axis.” Id. at 6:44–47. “Selected measurements
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`6
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`IPR2018-00424
`Patent 7,881,902 B1
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`[are] forwarded to the measurement comparator 155 and the threshold
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`comparator 160 to determine whether a step has occurred.” Id. at 6:57–59.
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`A method for determining whether a step has occurred is disclosed in
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`Figure 8 of the ’902 patent, which is reproduced below.
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`7
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`IPR2018-00424
`Patent 7,881,902 B1
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`Figure 8 is a flow diagram of a method for recognizing that a step has
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`occurred. Id. at 2:1–4, 12:25–27. Acceleration measurement data is
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`received and filtered to remove low and high frequency components. Id. at
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`12:31–38, Fig. 8 (steps 805 and 810). A dominant axis is assigned as
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`described above. Id. at 12:40–44, Fig. 8 (step 812). If the acceleration
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`measurement falls outside the cadence window, it is discarded. Id. at 12:45–
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`48, Fig. 8 (steps 815, 840). If the acceleration measurement falls within the
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`cadence window, three additional tests are performed to determine whether a
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`step is counted. First, the acceleration along the dominant axis must be
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`greater than a lower threshold, such as the rolling average acceleration along
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`the dominant axis. Id. at 7:9–12, 12:51–55, 12:64–65, Fig. 8 (step 820).
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`Second, the acceleration along the dominant axis must be greater than
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`previous measured accelerations along the dominant axis. Id. at 7:9–12,
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`13:34–38, 13:53–56, Fig. 8 (step 825). Third, the acceleration along the
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`dominant axis must be lower than an upper threshold, which “prevent[s]
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`sudden accelerations such as taps from being counted as steps.” Id. at
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`13:66–14:3, 7:9–12, 13:59–62, Fig. 8 (step 830).
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`Device 100 is battery operated and has multiple operating modes to
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`preserve battery life, including sleep mode 305, entry mode 315, stepping
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`mode 325, and exit mode 335. Id. at 8:16–18. The power level of device
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`100 is linked to these modes. Id. at 8:18–19. The different modes and the
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`relationships between them are shown in Figure 3 of the ’902 patent, which
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`is reproduced below.
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`8
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`IPR2018-00424
`Patent 7,881,902 B1
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`Figure 3 of the ’902 patent is a state diagram showing the different modes of
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`electronic device 100. Id. at 1:52–54. When no acceleration data is
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`measured, device 100 is in sleep mode 305. Id. at 8:20–22. When
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`acceleration data is detected, device 100 enters entry mode 315 to search for
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`steps in the acceleration data. Id. at 8:22–25. If a predetermined number
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`(N) of steps are detected in a sampling period, device 100 enters stepping
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`mode 325; otherwise it reverts to sleep mode 305. Id. at 8:25–28. In
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`stepping mode 325, steps are detected and counted as described above until
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`no steps are detected within the cadence window, at which point device 100
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`enters exit mode 335. Id. at 8:30–37. In exit mode 335, device 100
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`determines whether a predetermined number (X) of steps are detected at a
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`particular cadence. Id. at 8:38–40. If so, device 100 reverts to stepping
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`mode 325; if not, device 100 reverts to entry mode 315. Id. at 8:41–44.
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`The method by which device 100 transitions from entry mode 315 to
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`stepping mode 325 is shown in Figure 5, which is reproduced below.
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`9
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`IPR2018-00424
`Patent 7,881,902 B1
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`Figure 5 of the ’902 patent is a flow chart of entry mode 315. Id. at 1:58–60.
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`After setting a sampling rate (504), a first step is detected in the acceleration
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`data (510), a default cadence window is set (514), and a temporary or
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`buffered step count is set to one (520). Id. at 9:55–10:8, 10:25. Next,
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`additional steps are searched for in the acceleration data (524) using the
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`10
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`IPR2018-00424
`Patent 7,881,902 B1
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`criteria discussed above, including whether the acceleration data falls within
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`the default cadence window. Id. at 10:25–30, 12:45–46, Fig. 8.
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`When additional steps are detected (524), they are added to the
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`buffered step count (560). Id. at 10:46–47. If the buffered step count is less
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`than a predetermined number M (564), additional steps are looked for in the
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`acceleration data (524). Id. at 10:47–52. If the buffered step count is equal
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`to M (564) and the cadence window is the default cadence window (570), a
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`new cadence window is determined based on the cadence of the M steps
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`(574). Id. at 10:53–57. The new cadence window is used to look for
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`additional steps in the acceleration data (524) until a predetermined number
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`of N steps is counted in the buffered step count (580). Id. at 10:57–67.
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`When the buffered step count reaches N steps, the N steps are added to an
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`actual step count (584), and device 100 enters stepping mode 325. Id. at
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`10:67–11:3. In stepping mode 325, the cadence window is dynamically
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`updated based on the rolling average of previously measured stepping
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`periods. Id. at 11:13–17.
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`As discussed above, measured acceleration data is only counted as a
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`step when it falls within the cadence window. Id. at 10:25–30, 12:45–46,
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`Fig. 8. If the measured acceleration data falls outside the cadence window
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`(530), the buffered step count is reset to zero (534). Id. at 10:36–37. If
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`acceleration data is subsequently detected (540), the process begins again to
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`look for a first step (510). Id. at 10:42–44. Otherwise, the device enters
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`sleep mode (544). Id. at 10:41–42.
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`11
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`IPR2018-00424
`Patent 7,881,902 B1
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`B. Illustrative Claims
`
`Of the challenged claims, claims 1 and 5 of the ’902 patent are
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`independent. Each of the other challenged claims depends directly from
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`either claim 1 or claim 5. Claim 1 is reproduced below.
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`1. A method comprising:
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`detecting motion by an inertial sensor included in a
`mobile device;
`
`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;
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`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.
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`Ex. 1001, 15:10–18. Claim 5 is reproduced below.
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`5. A method for a mobile device comprising:
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`receiving acceleration data that meets stepping
`criteria from an accelerometer included in the
`mobile device;
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`incrementing a step count in a step count buffer;
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`when at least one of a) the step count is below a step
`count threshold, or b) a current user cadence fails to
`match a step cadence of a user profile, using a
`default step cadence window to identify a time
`frame within which to monitor for a next step; and
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`when the step count is at or above the step count
`threshold, determining a dynamic step cadence
`window and using the dynamic step cadence
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`12
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`IPR2018-00424
`Patent 7,881,902 B1
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`window to identify the time frame within which to
`monitor for the next step.
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`Ex. 1001, 15:46–16:6.
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`C. Claim Construction
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`This Petition was filed on January 5, 2018. Pet. 72. For Petitions
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`filed before November 13, 2018, claim terms of an unexpired patent are
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`given their broadest reasonable interpretation in light of the specification of
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`the patent in which they appear. 37 C.F.R. § 42.100(b) (2017).5 Under the
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`broadest reasonable interpretation standard, claim terms are generally given
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`their ordinary and customary meaning, as would be understood by one of
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`ordinary skill in the art, in the context of the entire disclosure. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Only claim
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`terms that are in controversy need to be construed and only to the extent
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`necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan
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`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).
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`Petitioner proposes constructions for the terms “dominant axis” and
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`“cadence window.” Pet. 6–7. In our Institution Decision, we adopted
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`Petitioner’s proposed construction of “dominant axis,” declined to expressly
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`construe “cadence window,” and sua sponte construed “periodically
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`sampling acceleration data at a predetermined sampling rate, wherein each
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`sample includes acceleration data measured by the inertial sensor over a
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`predetermined time period” (the “periodically sampling” limitation). Dec.
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`Inst. 13–16. Patent Owner disputes our constructions of the “dominant axis”
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`5 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent and Trial Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018).
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`and “periodic sampling” limitations. PO Resp. 6–13. Patent Owner does
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`not dispute our finding that express construction of “cadence window” is not
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`necessary, but argues that its “meaning is ignored by the Petitioner.” Id. at
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`11–12. We revisit our constructions of these claim terms below.
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`1. dominant axis
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`Petitioner argues “the term ‘dominant axis’ as used in the claims
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`includes ‘the axis most influenced by gravity.’” Pet. 6 (citing Ex. 1003
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`¶¶ 33–34) (emphasis added). As noted above, we adopted Petitioner’s
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`proposed construction in our Institution Decision. See Dec. Inst. 13–15.
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`Patent Owner argues this construction “violates the well-established
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`rule against reading limitations from the specification into the claim
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`language.” PO Resp. 6. In particular, Patent Owner argues “Petitioner seeks
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`to limit the claim term . . . to mean ‘the axis most influenced by gravity.’ . . .
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`However, the teachings of the specification cited by Petitioner clearly state
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`that they are only example embodiments and are not meant to be limiting.”
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`Id. (citing Pet. 6). Patent Owner cites various portions of the Specification
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`that allegedly illustrate that assigning a “dominant axis” as “the axis most
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`influenced by gravity” is only one of many embodiments of the invention.
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`Id. at 6–11 (citing Ex. 1002, 6:7–37). Despite disagreeing with Petitioner’s
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`proposed construction of “dominant axis,” Patent Owner does not offer an
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`alternative construction. Rather, Patent Owner argues “Petitioner has not
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`and cannot establish prima facie obviousness through application of an
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`incorrect construction.” Id. at 11.
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`We are not persuaded by Patent Owner’s arguments. In particular, we
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`disagree that Petitioner seeks to limit the meaning of the term “dominant
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`axis” to “the axis most influenced by gravity.” Id. at 6. As noted above,
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`Petitioner’s proposed construction is that “the term ‘dominant axis’ as used
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`in the claims includes ‘the axis most influenced by gravity.’” Pet. 6
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`(emphasis added). Thus, Petitioner does not contend the term is limited to
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`“the axis most influenced by gravity,” but rather that the term, as used in the
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`claims, includes “the axis most influenced by gravity.” Id.
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`Petitioner’s proposed construction is supported by claim 10 of the
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`’902 patent, the only claim that includes the term “dominant axis.” Claim 10
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`requires “determining an orientation of [a] mobile device with respect to
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`gravity,” and “assigning a dominant axis based on the orientation.”
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`Ex. 1001, 16:40–42. Thus, the “dominant axis” of claim 10 is an axis
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`assigned based on the “orientation of the mobile device with respect to
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`gravity.” This claim limitation is fully supported by the Specification of the
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`’902 patent, which discloses an embodiment in which “[d]etermining the
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`orientation of the electronic device 100 may include identifying a
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`gravitational influence,” and in which “once the orientation is determined, a
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`dominant axis is assigned based upon the orientation.” Id. at 6:13–16
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`Accordingly, we agree with and continue to adopt Petitioner’s
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`proposed construction that the term “dominant axis includes the axis most
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`influenced by gravity.” See Renishaw PLC v. Marposs Societa’ per Azioni,
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`158 F.3d 1243, 1248 (Fed. Cir. 1998) (“[T]he claim construction inquiry . . .
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`begins and ends in all cases with the actual words of the claim.”); id. at 1250
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`(“[T]he interpretation to be given a term can only be determined and
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`confirmed with a full understanding of what the inventors actually invented
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`and intended to envelop with the claim.”); id. (“The construction that stays
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`true to the claim language and most naturally aligns with the patent’s
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`description of the invention will be, in the end, the correct construction.”);
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`see also Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d. 1294,
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`1300 (Fed. Cir. 2003) (“[I]n determining the ordinary and customary
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`meaning . . . of disputed claim terms, the correct meaning of a word or
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`phrase is informed only by considering the surrounding text.”).
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`2. cadence window
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`Petitioner argues the Specification defines the term “cadence window”
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`to mean “a window of time since a last step was counted that is looked at to
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`detect a new step.” Pet. 7 (quoting Ex. 1001, 3:66–4:1). In our Institution
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`Decision, we preliminarily determined that this claim term did not require
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`express construction. See Dec. Inst. 15.
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`Neither party appears to dispute our preliminary determination that
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`express construction of “cadence window” is not needed to resolve any
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`dispute between the parties. Instead, Patent Owner argues the plain and
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`ordinary meaning of the term “is ignored by the Petitioner.” PO Resp. 11–
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`12. And Petitioner argues, “[w]hether under Petitioner’s construction or the
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`plain and ordinary meaning, . . . the combination of Pasolini and Fabio
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`renders the claimed ‘cadence window’ obvious.” Pet. Reply 6.
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`Accordingly, we maintain our decision declining to expressly construe
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`the term “cadence window.”
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`3. periodically sampling acceleration data at a predetermined
`sampling rate, wherein each sample includes acceleration data
`measured by the inertial sensor over a predetermined period of
`time
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`In our Institution Decision, we sua sponte construed this limitation
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`based on a potential lack of clarity as to whether “each sample” in the
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`“wherein” clause refers to all of the many acceleration data points that are
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`measured over each sampling period, or instead refers to each one of those
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`acceleration data points. See Dec. Inst. 15–16. Patent Owner argues that
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`“the claim language is clear and no construction is necessary.” PO Resp.
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`12–13. Nonetheless, Patent Owner offers a modification of our preliminary
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`construction in the event we construe this term. Id. at 13. Petitioner agrees
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`with Patent Owner that “no construction is required,” because “regardless of
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`any construction of this term, Patent Owner does not separately argue the
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`patentability of claim 3 under any construction.” Pet. Reply 7.
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`Upon consideration of the arguments presented by Petitioner and
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`Patent Owner, we agree with both parties that express construction of this
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`term is not required, because it is not needed to resolve any dispute between
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`the parties. See Nidec Motor, 868 F.3d at 1017.
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`D. Level of Ordinary Skill in the Art
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`Petitioner contends a person of ordinary skill in the art would have
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`had a Bachelor of Science degree or equivalent training in electrical
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`engineering, computer engineering, or computer science, and approximately
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`two years of hardware or software design and development experience
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`related to micro-electro-mechanical (MEM) devices and body motion
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`sensing systems. Pet. 5 (citing Ex. 1003 ¶ 16).6
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`Patent Owner disagrees with the experiential component of
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`Petitioner’s definition (i.e., experience with MEMS and body motion
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`sensing systems), and contends that a person skilled in the art would instead
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`have two years of experience “related to accelerometers or similar devices.”
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`PO Resp. 3 (quoting Ex. 2001 ¶ 12). Nonetheless, Patent Owner admits that
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`6 Petitioner cites to the page number of Exhibit 1003. We cite here to the
`paragraph number of Dr. Paradiso’s Declaration.
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`this “difference is inconsequential to the dispute here.” Id.
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`For purposes of this Decision, we find Petitioner’s description of a
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`person skilled in the art to be reasonable, and adopt it as our own, because it
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`is consistent with the problems and solutions disclosed in the patent and
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`prior art of record. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
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`1995). Although Patent Owner’s description is slightly different, we agree
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`with Patent Owner that that difference is inconsequential to the analysis that
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`follows.
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`E. Overview of the Prior Art
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`1. Mitchnick
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`Mitchnick discloses “a device for participant monitoring . . . that
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`automatically collects monitoring data with little or no participant attention.”
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`Ex. 1007 ¶ 1. The device “includes sensors for, at least, detecting and
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`storing the occurrences of sexual activity . . . by observing characteristic
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`patterns of participant motion as sensed by an acceleration.” Id. ¶ 12.
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`Mitchnick’s preferred embodiment is a vaginally implanted device;
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`however, Mitchnick discloses alternative embodiments that can reside
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`“elsewhere in or on the body [for] detecting other parameters of
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`medical/clinical interest.” Id. ¶ 43.
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`Figure 1 of Mitchnick is reproduced below.
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`Figure 1 of Mitchnick is a schematic illustration of an activity monitoring
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`device. Id. ¶ 49. The device includes housing 1, batteries 13, and
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`accelerometer 7 “mounted so that its acceleration measurements are
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`correctly oriented with respect to the housing.” Id. The device is controlled
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`by a microprocessor that “implements general-purpose and power
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`management instructions,” including processing analog sensor signals from
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`the accelerometer. Id. ¶¶ 50, 66, Fig. 2. The device may also include a
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`radio-frequency transceiver for communicating with external devices. Id.
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`¶ 49.
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`The microprocessor’s power management instructions allow the
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`device to operate in either “a very low power . . . sleep mode,” an optional
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`“low power mode,” or a “normal operational mode.” Id. ¶¶ 50, 67. At least
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`some of these modes are shown in Figure 3 of Mitchnick, which is
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`reproduced below.
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`Figure 3 of Mitchnick is a flow chart showing the operating states of
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`Mitchnick’s device and transitions between those operating states. Id. ¶ 67,
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`Fig. 3. The device is in wait/sleep state 71 when it is initially powered on or
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`after the microprocessor receives and executes a SLEEP instruction. Id.
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`¶ 68. The device transitions from wait/sleep state 71 to operational/sleep
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`state 73 when the microprocessor receives an interrupt signal generated by
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`either an internal timer or a wake-up circui