UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A. 1
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`Patent Owner
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`IPR2018-00424
`PATENT 7,881,902
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`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
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` The owner of this patent is Uniloc 2017 LLC.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A. 1
`
`Patent Owner
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`
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`IPR2018-00424
`PATENT 7,881,902
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`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`IPR2018-00424
`U.S. Patent 7,881,902
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`Table of Contents
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`
`
`I.
`II.
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`b)
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`c)
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`2.
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`INTRODUCTION .................................................................................... 1
`PETITIONER FAILS TO ESTABLISH
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM ................. 1
`A. Ground 4 Fails ................................................................................ 1
`1.
`The cited Fabio and Pasolini references fail to
`disclose “using a default step cadence window to
`identify a time frame within which to monitor for
`a next step” (Claim 5) ........................................................... 1
`a)
`Petitioner fails to prove Fabio’s validation
`interval (TV) maps onto Petitioner’s own
`definition for “cadence window” ............................... 2
`The Reply Fails to Controvert the Plain
`Disclosure of Fabio .................................................... 4
`Fabio’s TS1 is not a default cadence
`window ....................................................................... 5
`The cited Fabio and Pasolini references fail to
`disclose “when the step count is at or above the
`step count threshold, determining a dynamic step
`cadence window” (Claim 5) ................................................. 7
`The cited Fabio and Pasolini references fail to
`disclose “using the dynamic step cadence window
`to identify the time frame within which to
`monitor for the next step” ..................................................... 9
`The Petition should fail as to the challenged
`dependent claims in Ground 4. ........................................... 10
`Grounds 1-3 Fail ........................................................................... 10
`1.
`The Petition Fails to Show Mitchnick’s
`Embodiments Are Combinable .......................................... 10
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`3.
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`4.
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`B.
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`ii
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`U.S. Patent 7,881,902
`a) Mitchnick fails to teach an embodiment that
`can be a “mobile device” as claimed ....................... 12
`The Reply’s Reliance on Hong (EX1013) is
`Improper and Misplaced .......................................... 13
`Petitioner fails to provide the required
`analysis and explanation of how and why
`Mitchnick would be modified to make the
`hypothetical “external device” ................................. 15
`There is no Prima Facie obviousness for
`“detecting motion by an inertial sensor included
`in a mobile device” ............................................................. 20
`3. Mitchnick fails to disclose “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.” ........................... 21
`The Petition Fails as to challenged dependent
`claims in Grounds 1-3 ........................................................ 21
`CONCLUSION ....................................................................................... 22
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`2.
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`4.
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`b)
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`c)
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`iii
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`III.
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`IPR2018-00424
`U.S. Patent 7,881,902
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`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to
`Petitioner’s Reply in IPR2018-00424 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,881,902 (“the ’902 Patent” or “EX1001”) filed by
`Apple, Inc. (“Petitioner”).
`
`II.
`
`PETITIONER FAILS TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM
`The Petition fails to established unpatentability for the following grounds it
`raised under 35 U.S.C. § 103:
`Ground
`Claims
`1
`2
`3
`4
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`1-2
`3
`4
`5-6, 9-10
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`Reference(s)
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`Mitchnick2
`Mitchnick and Sheldon3
`Mitchnick and Sheldon and Tanenhaus4
`Fabio5 and Pasolini6
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`A. Ground 4 Fails
`The cited Fabio and Pasolini references fail to disclose “using
`1.
`a default step cadence window to identify a time frame within
`which to monitor for a next step” (Claim 5)
`The cited Fabio and Pasolini references fail to disclose “using a default step
`cadence window to identify a time frame within which to monitor for a next step”
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` 2
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` EX1007, U.S. Patent Publication No. 2006/0084848
`3 EX1009, U.S. Patent No. 5,957,957
`4 EX1008, U.S. Patent No. 6,469,639
`5 EX1006, U.S. Patent No. 7,698,097
`6 EX1005, U.S. Patent No. 7,463,997
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`as required by Claim 5.The Petition relies solely on Fabio for the requirement of
`“using a default step cadence window.” Specifically, the Petition points to Fabio’s
`“validation interval” (TV) as allegedly disclosing the claimed “cadence window.”
`However, this is incorrect. The claimed “cadence window” is used to “monitor for
`a next step.” Even if the Fabio’s “validation interval” (TV) could be considered a
`“cadence window” (which it is not), Fabio’s “validation interval” (TV) is used for
`a prior step – not the next step as claimed. Also, in its Institution Decision, the
`Board stated that is “not persuaded that Fabio’s validation window TV in first
`counting procedure 110 teaches or suggests using a “default cadence window.”
`Institution Decision at 42.
`Petitioner fails to prove Fabio’s validation interval
`a)
`(TV) maps onto Petitioner’s own definition for
`“cadence window”
`The Petition, as well as the Reply, incorrectly defines the “cadence window”
`as a “window of time since a last step was counted that is looked at to detect a new
`step.” See Petition at 9-10; Reply at 8, 11. This definition ignores the term “cadence”
`and treat the words as though they merely reference a “window” without regard to
`a “cadence.” Both the common definition of cadence (usually referring to a
`repetitive rhythmic pattern) and the specification describe a “cadence” as looking at
`multiple motion cycles (not just a single cycle) to determine a particular rhythmic
`pattern. See e.g., Id. at 3:18-32, 38-54; 6:65-7:14. Indeed, the specification describes
`the cadence window as a rolling average of previous detected cycles. Id at 3:66-
`4:10.
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`Assuming for the sake of argument that Petitioner’s incorrect definition were
`adopted, Fabio still does not disclose the claimed “cadence window.” This is
`because Fabio’s so-called “validation interval” TV is used to determine whether the
`last step is to be counted – not as a “window of time since a last step was counted.”
`Specifically, Fabio describes its “validation interval” TV with reference to its Figure
`6, which is copied and annotated below. See, e.g., EX1006, Fig. 6 and accompanying
`description including, for example, 4:28‒49.
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`Fabio’s TV is retrospective at least in that it is used to validate only the
`immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current step
`detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
`validated if the instant of recognition of the current step TR(K) falls within a
`validation interval TV[.]” Id. Unless and until the last step is validated by the current
`step in the manner disclosed, the last step is not counted. Id. 5:10‒39. The current
`step (K), in turn, is dependent upon the next step (K+1) for validation and counting.
`Id. The final step detected will not be counted because it cannot be validated. Id.
`Accordingly, Fabio’s validation interval TV is not “a window of time since a
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`last step was counted” (as required by Petitioner’s construction) at least because
`Fabio defines its TV as necessarily starting before the last step is counted. Id.; see
`also EX2001 ¶¶ 32‒35. Indeed, Fabio’s TV is used in determining whether to count
`the last step. Id. The Petition should therefore be denied because Fabio’s TV does
`not satisfy the construction for “cadence window” relied upon in the Petition. This
`deficiency is independently fatal to the challenge of independent claim 5 and all
`challenged claims depending therefrom.
`
`The Reply Fails to Controvert the Plain Disclosure of
`Fabio
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`The Reply argues that Patent Owner supplied a flawed interpretation
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`b)
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`concerning the Fabio and its validation of a “last step.” Reply at 9-12. Petitioner is
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`mistaken. Fabio in describing the very figures that the Reply relies upon, describes
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`its own function as follows:
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`EX1006, 4:22-39 (highlighting and underlining added).
`As made clear above, Fabio expressly distinguishes between the current step
`and the previous, or last step recognized. In other words, while it is the case that the
`system of Fabio executes a step validation step after a step recognition test, the step
`validation step is validating the previous step recognized. There is no validation of
`the current step in any given instant cycle. And nothing in the Petition or Reply
`shows otherwise.
`
`Fabio’s TS1 is not a default cadence window
`c)
`The Institution Decision points to Fabio’s threshold time TS1 as allegedly
`being the default cadence window because “Fabio uses threshold time TS1 as
`window within which a sample of acceleration data AZ (step 200) can be searched
`to both detect (step 225) and validate (step 230) the sample as a step that has
`occurred since the time the last step was counted.” Institution Decision at 42.
`However, Fabio confusingly and improperly conflates two different concepts in its
`use of the term “step” to mean both an actual step (that is validated as a step), and a
`step-like event that could end up being not a step (e.g., because it is not validated
`later)
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`As a result, even though step 225 of Fabio is labeled as a “step-recognition
`test,” Fabio’s TS1 does not “identify a time frame within which to monitor for a next
`step” as the claim language requires because Fabio’s TS1 precedes the step validation
`procedure, which is backwards-looking and functions to validate the previous step.
`First, as already discussed above in Section VI.C.1.a, the step validating
`procedures of Fabio, using validation interval TV, is used in determining whether
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`to count the last step. In other words, the “validation interval” of Fabio cannot
`“monitor for the next step” as required by the claim language because the “validation
`interval” TV is reactive and waits for the next step to occur before making its
`determination of whether to count the previous step.
`Next, the counting procedures of Fabio, including Fabio’s use of TS1,
`precedes Fabio’s “step validation procedure,” which, as already discussed, is
`reactive and only determines whether to count the previous step. All of the above is
`illustrated by Figure 4 of Fabio:
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`TS1 Is involved in determining
`whether to execute procedure
`to validate the previous step-
`like event
`
`Step validating procedure
`for the previous step-like
`event
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`“NO” means
`previous step-like
`event was not a
`step
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`Therefore, as shown above, Fabio’s TS1 is only a gatekeeper to Fabio’s step
`validation procedure, which in turn merely determines whether to count the previous
`step, therefore, Fabio’s TS1 cannot be “a default step cadence window to identify a
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`time frame within which to monitor for a next step”.
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`2.
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`The cited Fabio and Pasolini references fail to disclose “when
`the step count is at or above the step count threshold,
`determining a dynamic step cadence window” (Claim 5)
`The cited Fabio and Pasolini references fail to disclose “when the step count
`is at or above the step count threshold, determining a dynamic step cadence
`window” as required by Claim 5. The Petition relies solely on Fabio for this
`limitation. As described above, Fabio fails disclose the required “cadence window”
`under Petitioner’s own definition. For that reason alone, the Petition should fail.
`However, even if Fabio’s validation interval TV was a cadence window
`(which it is not), Fabio does not disclose “a dynamic step cadence window” as
`required by the claim language.
`The Petition wrongly conflates Fabio’s “second counting procedure” and
`“second validation test” for the required “determining a dynamic step cadence
`window.” The Petition agrees that in Fabio’s “first counting procedure” and “second
`counting procedure” steps are validated “when the duration ΔTK of a current step K
`is substantially homogeneous with respect to the duration ΔTK-1 of an immediately
`preceding step K-1”. Pet. 56. But the Petition then argues that “[b]ased on this, a
`POSITA would have understood that defining the validation interval in this way
`compensates for changes in each step.” Id. (emphasis added) (relying solely on its
`declarant).
`But a review of Fabio show Petitioner is wrong. First, as the Petition admits,
`Fabio’s “second validation test ‘is altogether similar to the first validation test
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`carried out in block 230 of FIG. 3.’” Pet. 55-56; EX1006, 6:31-32 (emphasis added).
`Second, Fabio’s TV is retrospective at least in that it is used to validate only
`the immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current
`step detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
`validated if the instant of recognition of the current step TR(K) falls within a
`validation interval TV[.]” EX1006, 4:28-49. Unless and until the last step is
`validated by the current step in the manner disclosed, the last step is not counted. Id.
`5:10‒39. The current step (K), in turn, is dependent upon the next step (K+1) for
`validation and counting. Id. The final step detected will not be counted because it
`cannot be validated. Id.
`Third, Fabio describes the validation tests as such: “[i]f the verification yields
`a negative result (output NO from block 230), the number of invalid steps NINV is
`incremented by one (block 235).” EX1006., 4:56-57.
`The result is that in Fabio, “it is verified that the last step recognized is
`compatible with the frequency of the last steps made previously.” Id., 4:54-55
`(emphasis added). In other words, the last recognized step in Fabio comes at the
`same frequency as steps made previously. The Reply argues that Patent Owner
`“mischaracterizes” Fabio, and that Fabio “does not teach ‘the same frequency’”.
`Reply at 14. However, as the Reply itself admits, Fabio’s validation interval TV,
`“teaches that validation ‘occurs when the duration ΔTK of a current step K is
`substantially homogeneous with respect to the duration ΔTK-1 of an immediately
`preceding step K-1’”. Reply at 14 (emphasis added). In other words, regardless of
`whether Fabio teaches “frequency” or “duration”, Fabio teaches the same thing –
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`that for the current step to be validated, it must have a frequency, or duration,
`substantially homogenous (i.e., consistent with), the previously validated step.
`Accordingly, Fabio does not disclose “determining a dynamic step cadence
`window,” as the claim language requires.
`Petitioner, recognizing that Fabio fails to disclose the required limitation,
`then speculates through its declarant that “a POSITA would have understood that
`defining the validation interval in this way compensates for changes in each step.”
`Pet. 56. However, as shown above, that is factually incorrect. Fabio does not
`compensate for each step, when in fact Fabio counts steps that are “compatible with
`the frequency of the last steps made previously.” Furthermore, the declaration relied
`upon for the Petitioner’s erroneous conclusion merely repeats the same speculative
`and conclusory statement, without providing any of the analysis or explanation
`required. Compare Pet. 56 with EX1003 at p. 79; see also Cutsforth, 636 Fed. Appx.
`at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet, 149 F.3d at 1359.
`
`3.
`
`The cited Fabio and Pasolini references fail to disclose “using
`the dynamic step cadence window to identify the time frame
`within which to monitor for the next step”
`The cited Fabio and Pasolini references fail to disclose “using the dynamic
`step cadence window to identify the time frame within which to monitor for the next
`step” as required by Claim 5. The Petition relies solely on Fabio for this limitation.
`As described above, the Petition fails to show that Fabio discloses the required
`“cadence window” under Petitioner’s own definition. For that reason alone, the
`Petition should fail. Furthermore, as also discussed above, Fabio’s “validation
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`interval” is reactive and backwards-looking, waiting for a step to be detected before
`calculating whether the event occurred within its “validation interval”.
`Again, this is confirmed by Fabio itself: “[m]ore precisely, the last step
`recognized is validated if the instant of recognition of the current step TR(K) falls
`within a validation interval TV[.]” EX1006, 4:28-49 (emphasis added). Unless and
`until the last step is validated by the current step in the manner disclosed, the last
`step is not counted. Id. 5:10‒39. The current step (K), in turn, is dependent upon the
`next step (K+1) for validation and counting. Id. The final step detected will not be
`counted because it cannot be validated. Id. Therefore, Fabio’s validation interval TV
`(which the Petition identifies as allegedly being the “dynamic step cadence
`window”), cannot be used to identify the time frame within which to monitor for the
`next step. And for that additional reason, the Petition should fail.
`
`4.
`
`The Petition should fail as to the challenged dependent claims
`in Ground 4.
`Because the remaining challenged claims all depend from Claim 5, for the
`reasons stated, the Ground 4 of the Petition should fail.
`
`B. Grounds 1-3 Fail
`The Petition Fails to Show Mitchnick’s Embodiments Are
`1.
`Combinable
`The Petition relies on Mitchnick for each of Grounds 1-3. The Petition
`recognizes immediately that Mitchnick does not disclose “a mobile device” as
`required by the claims. See Pet. 10 (“Mitchnick is primarily directed to a monitoring
`device that is ‘designed to be affixed to or reside in a cavity of, a participant.’”)
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`Instead, as Mitchnick makes clear, it is a vaginally implanted medical device with a
`stated purpose of “sensing and recording data relevant to [a] clinical trial or study.”
`EX1007 at ¶ [0011]. More particularly, Mitchnick teaches “a device for participant
`monitoring with accompanying systems and methods that automatically collects
`monitoring data with little or no participant attention.” Id at ¶ [0011]. A preferred
`practical application is as an “intra-vaginal device used during trials of
`pharmaceuticals, especially microbicides, for preventing or limiting STD (e.g.,
`HIV) transmission.” Id. Example of embedded sensors used to gather data include
`temperature sensors, pH sensors, hear rate sensor, pO2 sensors, sensors for specific
`chemicals (such as pharmaceuticals, microbicides, and spermicides), and
`menstruation sensors. Id at ¶ [0012] and [0020].
` Despite Mitchnick’s clear, and admitted shortcomings concerning a mobile
`device, Petitioner argues that “[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 reside elsewhere “on the
`body” in order to detect “other parameters of medical/clinical interest.” Id.
`Such an argument would have to completely ignore the express teachings of
`Mitchnick, which is gathering a particular type of data via these sensors. The so-
`called external embodiment arrangement as proposed by Petitioner completely
`moots Mitchnick’s stated data gathering purposes. There is no evidence that one of
`ordinary skill in the art would choose to selectively ignore such express teachings
`in favor of a sentence picked out by Petitioner of an embodiment could exist
`elsewhere “in or on the body.”
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`a) Mitchnick fails to teach an embodiment that can be a
`“mobile device” as claimed
`In a relevant decision, the Board concluded “it is not enough that the prior art
`reference … includes multiple, distinct teachings that the artisan might somehow
`combine to achieve the claimed invention.”). Luye Pharma Group Ltd. v. Alkermes
`Pharma Ireland, Ltd., Case No. IPR2016-01095, Paper No. 40 (P.T.A.B. Nov. 30,
`2016)(Emphasis added). Likewise, here, it is not enough that Mitchnick states that
`its device could exist “elsewhere in or on the body and detecting other parameters
`of medical/clinical interest.” EX1007, ¶ 43 see also Id., ¶ 15. The unambiguous
`teachings in Mitchnick concern measuring via sensors specific biological parameters
`for a “medical/clinical” interest. There is no suggestion or teaching how such a
`device could somehow be “mobile” and yet retain its “medical/clinical” measuring
`capabilities.
`Attempting to “mobilize” as claimed would not allow the various automatic
`measurements in the vaginal area that Mitchnick describes for gathering of
`medical/clinical data.
`The Institution Decision argues that “[w]e note Mitchnick’s device is shaped
`like a ring or bracelet, and therefore could easily be worn as such on a participant’s
`wrist or ankle.” Institution Decision at 30. However, there is no evidence that
`Mitchnick’s device “could easily be worn as such on a participant’s wrist or ankle,”
`let alone doing so and retaining the sensing properties Mitchnick describes as its
`purpose. Furthermore, wearing the device as such would further defeat the stated
`and intended purpose of Mitchnick to periodically and intermittently compare
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`motion data to find sexual activity, as the device of Mitchnick is intended to be an
`“intra-vaginal device.” See e.g. EX1007, ¶¶ 0012, 0014, 0015. And there is no
`evidence or support that one would interchangeably use a vaginally insertable device
`as a bracelet instead. Furthermore, Mitchnick’s unequivocally stated purpose is to
`gather data during, for example, during sexual activity – not to actually monitor
`sexual activity itself (e.g., via accelerometers). Sexual activity is just a means to an
`end in Mitchnick’s designs. Additionally, Mitchnick further notes that it need not
`even monitor for sexual activity (e.g., using accelerometers) in all configurations to
`remain in a wake mode. Rather, Mitchnick states that it can rely on other sensors
`such as the “proximity/material 55” detection of pharmaceutical to “wake up.”
`EX1007, ¶[0072].
`The two isolated sentences from Mitchnick are the only evidence Petitioner
`has, and must rely on, for its speculative conclusion that a POSITA would have
`modified Mitchnick to create the hypothetical “external device attached to a body.”
` But even if Mitchnick did teach an external device (which it does not), as the Board
`in Luye Pharma found, “it is not enough that the prior art reference … includes
`multiple, distinct teachings that the artisan might somehow combine to achieve the
`claimed invention.” Luye Pharma, Case No. IPR2016-01095, Paper No. 40.
`The Reply’s Reliance on Hong (EX1013) is Improper
`b)
`and Misplaced
`
`Recognizing the deficiencies of its argument in its Petition, Petitioner filed
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`with the Reply a new exhibit, EX1013 (“Hong”), which was not submitted with the
`
`original Petition, and Petitioner provides no explanation why it could not have been
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`filed with the original Petition. Replies are not to be used to fill gaps in deficiencies
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`in a Petition. The Board should strike EX1013 and/or disregard Petitioner’s reliance
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`on EX1013 because, as the 2018 Trial Practice Guide states: “Petitioner may not
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`submit new evidence or argument in reply that it could have presented earlier, e.g.
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`to make out a prima facie case of unpatentability.” 2018 Trial Practice Guide at 14.
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`Furthermore, it is of the utmost importance that petitioners in IPR proceedings
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`adhere to the requirement that the initial petition identify “with particularity” the
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`“evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. §
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`312(a)(3); Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
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`1369 (Fed. Cir. 2016). “All arguments for the relief requested in a motion must be
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`made in the motion.” 37 C.F.R. § 42.23(b); see also IPR2015-00737, Paper 37 at 23-
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`24 (Board declining to consider newly presented evidence with reply brief and
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`corresponding portions of the reply brief).
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`Moreover, Hong is not, and cannot be presented by Petitioner as a direct
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`rebuttal because Patent Owner’s argument in the Response is that Mitchnick fails to
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`make any disclosure or suggestion of a device that “could easily be worn as such on
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`a participant’s wrist or ankle.” See Response at 23-24. Indeed, Mitchnick fails to
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`even mention the word “wrist” anywhere in its disclosure, and Petitioner cannot
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`show otherwise. Hong is further irrelevant because the Petition does not seek to
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`include Hong in any of its grounds.
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`For each of the above reasons, Petitioner’s late-filed EX1013 (“Hong”) should
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`be stricken and/or disregarded by the Board.
`
`c)
`
`Petitioner fails to provide the required analysis and
`explanation of how and why Mitchnick would be
`modified to make the hypothetical “external device”
`Furthermore, even if Mitchnick did teach an external device (which it does
`not), nothing in the Petition provides the required analysis and explanation of why
`a POSITA would be motivated to make such a hypothetical modification, nor does
`the Petition provide the required analysis and explanation of how a POSITA would
`make such a hypothetical modification.
`The petitioner must “articulate[] reasoning with some rational underpinning
`to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550
`U.S. 398, 418 (2007) (citation omitted). The “factual inquiry” into the reasons for
`“combin[ing] references must be thorough and searching, and the need for
`specificity pervades.” In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016)
`(quotations omitted). An obviousness determination cannot be reached where the
`record lacks “explanation as to how or why the references would be combined to
`produce the claimed invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066
`(Fed. Cir. 2016). This requisite explanation avoids an impermissible “hindsight
`reconstruction,” using “the patent in suit as a guide through the maze of prior art
`references, combining the right references in the right way so as to achieve . . . The
`claims in suit.” Id.; In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
`
`
`15
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`IPR2018-00424
`U.S. Patent 7,881,902
`
`
`
`(1) The Petition Provides No Evidence,
`Explanation, or “Factual Inquiry” Into Why A
`POSITA Would Make Such Hypothetical
`Modifications
`“In appropriate circumstances, a single prior art reference can render a claim
`obvious. However, there must be a showing of a suggestion or motivation to modify
`the teachings of that reference to the claimed invention in order to support the
`obviousness conclusion.” SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225
`F.3d 1349, 1356 (Fed. Cir. 2000), aff'd, 659 F.3d 1109 (Fed. Cir. 2011). The
`obviousness analysis must focus on the knowledge and motivations of the skilled
`artisan at the time of the invention. InTouch Techs., Inc. v. VGO Commc'ns, Inc.,
`751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of obviousness, there must be an
`explanation of why a person of ordinary skill in the art would modify the prior art
`references to create the claimed invention. Cutsforth, Inc. v. MotivePower, Inc., 636
`Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re Kotzab, 217 F.3d 1365, 1371
`(Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359 (Fed.Cir.1998).
`Here, Petitioner purports to provide reasons as to why a POSITA would make
`such a hypothetical modification to Mitchnick, for example: “A POSITA would
`have recognized the benefits of modifying Mitchnick’s internal device to reside on
`the body, and not in the body cavity.” Pet. 10. However, for this and other
`conclusory statements, the Petition cites to its declarant’s testimony as the sole
`support. Compare Pet. 10 with EX1003, ¶ 43. But Petitioner cannot merely speculate
`through its declarant, outside the four corners of the reference, to carry its burden.
`
`16
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`IPR2018-00424
`U.S. Patent 7,881,902
`
`The Federal Circuit has instructed that “legal determinations of obviousness, as with
`such determinations generally, should be based on evidence rather than on mere
`speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290
`(Fed. Cir. 2006); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66
`(Fed. Cir. 2014) (finding the P.T.A.B. correctly rejected conclusory assertions of
`what would have been common knowledge in the art). Here, the Petitioner’s
`declarant merely makes the same conclusory statements, without providing the
`required “explanation as to how or why the references would be combined to
`produce the claimed invention.” TriVascular, 812 F.3d at 1066; see also Arendi
`S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362–66 (Fed. Cir. 2016) (recognizing that
`“reasoned analysis and evidentiary support” are required to supply a “limitation
`missing from the prior art” as well as a motivation to combine).
`The remaining conclusory statements, parroted
`through Petitioner’s
`declarant, allegedly regarding why such a POSITA would make such a hypothetical
`modification, are as follows:
`• “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.”
`• “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.”
`• “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
`
`17
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`IPR2018-00424
`U.S. Patent 7,881,902
`for example, a heart attack or a knee surgery.”
`• “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.”
`
`Pet. 11 and EX1003, ¶ 44.
`For each and every one of the conclusory statements above, the Petition cites
`to its declarant’s testimony, which is identically conclusory with the passages
`above, as the sole support. Compare Pet. 10 with EX1003, ¶ 44. That is improper
`and insufficient, and for this reason alone, Grounds 1-3 should be denied. Alza
`Corp., 464 F.3d at 1290; Hear-Wear Techs., 751 F.3d at 1365-66.
`(2) The Petition Provides No Evidence,
`Explanation, or “Factual Inquiry” Into How A
`POSITA Would Make Such Hypothetical
`Modifications
`Moreover, neither the Petition itself nor the attached declaration provides the
`required explanation as to how to make the hypothetical modification.
`For example, the Petition provides no analysis underpinning its ipse dixit
`conclusion that “[t]hus, 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.” Pet. 11. Instead, Petitioner’s declarant
`again merely parrots the Petition’s conclusion. Compare Pet. 11 with EX1003, ¶ 44.
`This is improper and insufficient. The Petition fails to carry its burden. See Personal
`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (holding
`obviousness determination to be improper where the record lacked a “clear,
`
`18
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`IPR2018-00424
`U.S. Patent 7,881,902
`
`evidence-supported account” of “how the combination” would work); Nuvasive,
`842 F.3d at 1381–82 (“[T]he factual inquiry whether to combine references must be
`thorough and searching, and the need for specificity pervades . . . .” (quotat
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