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.
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`Patent Owner
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`IPR2018-00424
`PATENT 7,881,902
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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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.
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`Patent Owner
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`IPR2018-00424
`PATENT 7,881,902
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2018-00424
`U.S. Patent 7,881,902
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`Table of Contents
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`
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`I.
`II.
`III.
`IV.
`V.
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`INTRODUCTION .................................................................................... 1
`THE ’902 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 2
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 3
`A.
`Claim Construction ......................................................................... 4
`1.
`“dominant axis” .................................................................... 5
`2.
`“cadence window” ................................................................ 6
`Grounds 1-3 Should Be Denied ...................................................... 6
`1.
`The Petition Fails To Show Mitchnick’s
`Embodiments Are Combinable ............................................ 6
`a) Mitchnick Does Not Teach An “External
`Device” Embodiment ................................................. 7
`Regardless, Petitioner Fails To Provide The
`Required Analysis and Explanation Of
`How And Why Mitchnick Would Be
`Modified To Make The Hypothetical
`“External Device” ...................................................... 8
`No Prima Facie Obviousness For “detecting
`motion by an inertial sensor included in a mobile
`device” ................................................................................ 13
`The Petition Should Be Denied as To Challenged
`Dependent Claims In Grounds 1-3 ..................................... 14
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`B.
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`b)
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`2.
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`3.
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`ii
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`C.
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`2.
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`3.
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`IPR2018-00424
`U.S. Patent 7,881,902
`Ground 4 Should Be Denied ......................................................... 14
`1.
`No Prima Facie Obviousness For “using a default
`step cadence window to identify a time frame
`within which to monitor for a next step” ........................... 14
`No Prima Facie Obviousness For “when the step
`count is at or above the step count threshold,
`determining a dynamic step cadence window” .................. 15
`No Prima Facie Obviousness For “using the
`dynamic step cadence window to identify the time
`frame within which to monitor for the next step” .............. 17
`The Petition Should Be Denied as To Challenged
`Dependent Claims In Ground 4. ......................................... 18
`CONCLUSION ....................................................................................... 18
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`4.
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`VI.
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`List of Exhibits
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`Exhibit No.
`2001
`2002
`
`Description
`Declaration of William C. Easttom
`United States Patent No. 5,593,431 to Sheldon (“Sheldon II”)
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`iii
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`IPR2018-00424
`U.S. Patent 7,881,902
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`I.
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`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition 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”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’902 PATENT
`The ’902 patent is titled “Human activity monitoring device.” The ʼ902 patent
`issued February 1, 2011, from U.S. Patent Application No. 12/694,135 filed January
`26, 2010, and is a continuation of U.S. Patent Application No. 11/644,455 filed
`December 22, 2006.
`The inventors of the ’902 patent observed that at the time, step counting
`devices that utilize an inertial sensor to measure motion to detect steps generally
`required the user to first position the device in a limited set of orientations. In some
`devices, the required orientations are dictated to the user by the device. In other
`devices, the beginning orientation is not critical, so long as this orientation can be
`maintained. EX1001, 1:23-30. Further, the inventors observed that devices at the
`time were often confused by motion noise experienced by the device throughout a
`user's daily routine. The noise would cause false steps to be measured and actual
`steps to be missed in conventional step counting devices. Conventional step counting
`devices also failed to accurately measure steps for individuals who walk at a slow
`pace. Id., 1:31-38.
`According to the invention of the ’902 Patent, a device to monitor human
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`activity using an inertial sensor assigns a dominant axis after determining the
`orientation of an inertial sensor. The orientation of the inertial sensor is continuously
`determined, and the dominant axis is updated as the orientation of the inertial sensor
`changes. Id., 2:10-17.
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`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 7,881,902 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
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`Uniloc USA, Inc. et al v. Apple
`Inc.
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple v. Uniloc Luxembourg
`SA
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`2-17-cv-00522
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`TXED
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`June 30, 2017
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`2-17-cv-00650
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`TXED
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`September
`15, 2017
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`4-17-cv-00832
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`2-17-cv-00737
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`TXND October 13,
`2017
`2-17-cv-01629 WAWD November 1,
`2017
`TXED November 9,
`2017
`January 17,
`2018
`PTAB May 4, 2018
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`4-18-cv-00364
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`CAND
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`IPR2018-01028
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “a person of ordinary skill in the art (“POSITA”)
`would include someone who had, at the priority date of the ’902 Patent (i) a
`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
`Computer Science, or equivalent training, and (ii) approximately two years of
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`experience working in hardware and/or software design and development related to
`MEMS (micro-electro-mechanical) devices and body motion sensing systems.” Pet.
`5. Given that Petitioner fails to meet its burden of proof in establishing prima facie
`obviousness when applying its own definition of a person of ordinary skill in the art
`(“POSITA”), Patent Owner does not offer a competing definition for POSITA at this
`preliminary stage, though it reserves the right to do so in the event that trial is
`instituted.
`
`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The raises the following obviousness challenges under 35 U.S.C. § 103:
`Ground
`Claims
`Reference(s)
`1
`2
`3
`4
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`1-2
`3
`4
`5-6, 9-10
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`Mitchnick1
`Mitchnick and Sheldon2
`Mitchnick and Sheldon and Tanenhaus3
`Fabio4 and Pasolini5
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` 1
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` EX1007, U.S. Patent Publication No. 2006/0084848
`2 EX1009, U.S. Patent No. 5,957,957
`3 EX1008, U.S. Patent No. 6,469,639
`4 EX1006, U.S. Patent No. 7,698,097
`5 EX1005, U.S. Patent No. 7,463,997
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`The petition insinuates that few references were considered and that the “the
`references presented in this petition were not cited or applied by during prosecution.”
`Pet. at 4. Both the insinuation and the statement are misleading. More than eighty
`(80) references were cited, as clearly listed on the cover of the ‘902 patent. EX1001.
`One specifically cited reference was United States Patent No. 5,593,431 to Sheldon
`(“Sheldon II”). Sheldon II has a substantial overlap of disclosures with the petition-
`applied Sheldon reference. The petition notes nothing of Sheldon II or why the
`disclosures presented in Sheldon are any different.
`
`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”). Nevertheless, Patent Owner addresses those terms for which the
`Petitioner proposes constructions. As explained below, Petitioner bases its
`patentability challenges on erroneous constructions, which provide an independent
`and fully-dispositive basis to deny the Petition in its entirety. See Mentor Graphics
`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp.,
`669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
`unreasonable in light of the specification, and therefore, denying Petition as tainted
`by reliance on an incorrect claim construction).
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`“dominant axis”
`1.
`Petitioner’s proposed construction violates the well-established rule against
`reading limitations from the specification into the claim language. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
`teachings from the specification, Petitioner seeks to limit the claim term “dominant
`axis” to mean “the axis most influenced by gravity.” Pet. 8. However, the teachings
`of the specification cited by Petitioner clearly state that they are only example
`embodiments and are not meant to be limiting. See e.g., Pet. 6 quoting EX1001,
`14:34-38 (“[i]n one embodiment…”) (emphasis added). Importantly, Petitioner
`expressly acknowledges that the ’902 Patent specifically provides for different ways
`to determine the “dominant axis” in other embodiments. For example, in one
`embodiment, the “dominant axis” is determined by orientation of the device. See
`EX1001, 6:7-21. And here, while the orientation “may include identifying a
`gravitational influence…” (EX1001, 6:13-15) (emphasis added), by definition, that
`means the “dominant axis” is not limited to just gravitational influence.
`As a further example, in the same section, the specification also states that
`“[t]herefore, a new dominant axis may be assigned when the orientation of the
`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
`electronic device 100 changes.” Id., 6:19-21 (emphasis added). Thus, the
`specification recites yet another example of a different way to determine the
`“dominant axis”. Another non-limiting example from the specification states: “[i]n
`one embodiment, the dominant axis corresponds to a virtual axis that is a
`component of a virtual coordinate system.” Id., 6:27-29 (emphasis added).
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`Petitioner’s proposed construction would impermissibly exclude preferred
`embodiments and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
`embodiment is rarely, if ever, correct and would require highly persuasive
`evidentiary support).
`Petitioner has not and cannot establish prima facie obviousness through
`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
`Synopsys, 669 Fed. Appx. 569. In any event, Petitioner fails to present a case of
`prima facie obviousness even under its own construction.
`
` “cadence window”
`2.
`At this preliminary stage, Patent Owner submits that the Board need not
`construe any claim term, including the term “cadence window,” in a particular
`manner in order to arrive at the conclusion that the Petition is substantively deficient.
`Wellman, 642 F.3d at 1361. Therefore, at this preliminary stage, Patent Owner does
`not submit a competing definition, however, in the event that trial is instituted,
`Patent Owner reserves the right to object to Petitioner’s proposed construction and
`provide Patent Owner’s proposed construction.
`
`B. Grounds 1-3 Should Be Denied
`The Petition Fails to Show Mitchnick’s Embodiments Are
`1.
`Combinable
`The Petition relies on Mitchnick for each of Grounds 1-3. The Petition
`immediately recognizes that Mitchnick does not disclose “a mobile device” as
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`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.’”)
`Instead, as Mitchnick makes clear, it is an implanted medical device, not a mobile
`device. Indeed, a surgical procedure would be required to remove or move the
`device – the device of Mitchnick is the opposite of a mobile device. Despite
`Mitchnick’s clear, and admitted shortcomings, 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.
`Yet, Petitioner provides none of the required analysis and evidence for
`support of that speculative conclusion. Instead, Petitioner improperly relies on
`further conclusory and speculative statements parroted identically through its
`declarant, Dr. Paradiso. Compare Pet. 10-11 with EX1003, ¶¶ 43-44.
`a) Mitchnick Does Not Teach An “External Device”
`Embodiment
`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). Here, Mitchnick does not even disclose a distinct “teaching” of an external
`device. Instead, Mitchnick merely recites in in two isolated sentences, that “This
`invention also includes multi-unit embodiments, and further embodiments for
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`residing elsewhere in or on the body and detecting other parameters of
`medical/clinical interest.” EX1007, ¶ 43 see also Id., ¶ 15. However, that is the only
`reference to any supposed “on the body” device, and there is no teaching anywhere
`in Mitchnick of how to create such a device or modify the device of Mitchnick into
`such an “on the body” device. The device of Mitchnick was intended to be an internal
`device, and the only teachings of Mitchnick are of an internal device.
`Moreover, 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.
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`b) Regardless, 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
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`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).
`(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
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`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, Petitioners purport 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.
`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
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`U.S. Patent 7,881,902
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`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
`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 identical to 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
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`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,
`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 . . . .” (quotations and
`alterations omitted)); Magnum Oil, 829 F.3d at 1380 (“[A] petitioner cannot employ
`mere conclusory statements” and “must instead articulate specific reasoning, based
`on evidence of record . . . .”).
`Recently, in DSS Tech. Mgmt. v. Apple Inc., Nos. 2016-2523, 2016-2524,
`2018 (Fed. Cir. Mar. 23, 2018), the Federal Circuit reversed a PTAB decision on
`obviousness, noting that the Petitioner (Apple) simply pointed to “conclusory
`statements and unspecific expert testimony” to allege a modification would have
`been within the skill of the ordinarily skilled artisan. Apple’s attempt to repeat the
`same approach here should be rejected.
`For the foregoing reasons, Grounds 1-3 of the Petition should be denied.
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`2.
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`IPR2018-00424
`U.S. Patent 7,881,902
`No Prima Facie Obviousness For “detecting motion by an
`inertial sensor included in a mobile device”
`As discussed above in Section V.B.1, Mitchnick fails to disclose a mobile
`device, as required by the claims. For that reason alone, Grounds 1-3 should be
`dismissed.
`Moreover, Mitchnick does not disclose detecting motion by an inertial sensor.
`Instead, as described by Mitchnick itself, and as the Petition fails to mention, the
`device of Mitchnick only performs intermittent sampling for data. See EX1007, ¶
`69. Mitchnick describes its operation as follows:
`
`
`“Because sexual activity is intermittent, power and
`memory can be advantageously further conserved, and
`device life further extended, by only intermittently
`sampling 75 for sexual activity, and by storing sensor
`detail data only if sexual activity is observed.”
`
` .
`
` . . .
`“For example, the device may periodically wake up and
`sample for sexual activity approximately every 5 min., or
`preferably approximately every 5-10 min., or more
`preferably approximately every 10-20 min. or longer.”
`EX1007, ¶ 69 (emphasis added).
`In other words, the device of Mitchnick does not “detect motion by an inertial
`sensor” as the claim requires, instead, Mitchnick merely periodically performs
`“intermittent[] sampling”, at frequencies of “approximately 10-20 min. or
`longer.” Id. (emphasis added).
`Therefore, Grounds 1-3 should be denied because Mitchnick is not “detecting
`motion by an inertial sensor included in a mobile device”, and because Mitchnick
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`does not disclose a “mobile device”.
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`3.
`
`The Petition Should Be Denied as To Challenged Dependent
`Claims in Grounds 1-3
`Petitioner also relies upon Mitchnick as the primary reference for each of
`Grounds 1-3. For the reasons discussed above in Section V.B.1, Grounds 1-3 should
`be denied. Furthermore, each of the other challenged claims in Grounds 1-3, Claims
`2-4, all depend from Claim 1, and thus for the reasons in stated in Section V.B.2,
`Grounds 1-3 should be denied.
`
`C. Ground 4 Should Be Denied
`No Prima Facie Obviousness For “using a default step
`1.
`cadence window to identify a time frame within which to
`monitor for a next step”
`The Petition relies on a combination of Fabio and Pasolini for this limitation,
`however, the Petition relies solely on Fabio for the requirement of “using a default
`step cadence window.” Specifically, the Petition relies on Fabio’s “validation
`interval” as allegedly meeting the “cadence window” requirement of the claim
`language. Petitioners are wrong because as the claim language states, the “cadence
`window” is to “monitor for a next step”, and this is further acknowledged by the
`Petition in its claim construction section: “The specification specifically defines
`[cadence window] as ‘a window of time since a last step was counted that is looked
`at to detect a new step.’” Pet. 7.
`However, as the Petition itself acknowledges, Fabio’s “validation interval” is
`merely “when the duration ΔTK of a current step K is substantially homogenous
`with respect to the duration of ΔTK-1 of an immediately preceding step K-1”.
`
`14
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`IPR2018-00424
`U.S. Patent 7,881,902
`
`EX1006, 4:28-31 (emphasis added). In other words, the device of Fabio does not
`look to detect a new step within a window of time since the last step was counted,
`instead, the device of Fabio waits for a step to be detected then looks to determine
`how long it has been since the previous step was detected. In other words, the
`“validation interval” of Fabio cannot “monitor for the next step” as required by the
`claim language because the “validation interval” is reactive and merely waits for
`the next step to occur before making its calculations.
`The Petition seeks to gloss over this important distinction by making the
`irrelevant argument that Fabio’s “validation interval” is in part “based on the
`immediately preceding step.” Pet. 51. But Petitioner misses the point, the fact that
`both things might look to the time of the “immediately preceding step” does not
`make the “validation interval” a “cadence window.” As discussed above, Fabio’s
`“validation interval” only looks to the duration of the interval after waiting for a
`step to be detected whereas the claim language requires that the device be proactive
`and “monitor for the next step” – not passively wait for a step once the “cadence
`window” has expired.
`Therefore, Ground 4 should be denied because Fabio alone and Fabio in
`combination with Pasolini does not disclose “using a default step cadence window
`to identify a time frame within which to monitor for a next step”.
`
`2.
`
`No Prima Facie Obviousness For “when the step count is at or
`above the step count threshold, determining a dynamic step
`cadence window”
`The Petition relies solely on Fabio for this limitation. However, Fabio does
`
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`IPR2018-00424
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`
`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
`“Based on this, a POSITA would have understood that defining the validation
`interval in this way compensates for changes in each step.” Id. (relying solely on its
`declarant).
`But a review of Fabio proves Petitioner is wrong. Contrary to Petitioner’s
`arguments and speculation, Fabio does not disclose “determining a dynamic step
`cadence window” as required by the claim language. The disclosure of Fabio uses
`the previous validated step to validate the current step. If the current step does not
`conform with the previous steps, the current step is not validated and does not count
`as a step. This is confirmed by Fabio itself.
`First, as the Petition admits, Fabio’s “second validation test ‘is altogether
`similar to the first validation test carried out in block 230 of FIG. 3.’” Pet. 55-56;
`EX1006, 6:31-32 (emphasis added).
`Second, 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
`
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`IPR2018-00424
`U.S. Patent 7,881,902
`
`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. 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, also
`resorts to speculating 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
`determine a dynamic cadence window. 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.
`Thus, Ground 4 should be denied because Fabio does not disclose “when the
`step count is at or above the step count threshold, determining a dynamic step
`cadence window”, as the claim language requires, and because the Petition merely
`and improperly speculates through its declarant without providing any of the
`required analysis or explanation, in direct contradiction to the express disclosure of
`Fabio itself.
`
`3.
`
`No Prima Facie Obviousness For “using the dynamic step
`cadence window to identify the time frame within which to
`monitor for the next step”
`The Petition relies solely on Fabio for this limitation. First, as discussed
`
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`U.S. Patent 7,881,902
`
`above in Section V.C.2, Fabio does not disclose a “dynamic step cadence window”
`as the claim language requires. Second, as discussed above in Section V.C.1,
`Fabio’s “validation interval” is reactive and backwards-looking, waiting for a step
`to be detected before calculating whether the event occurred within its “validation
`interval”. Whereas the required “cadence window”, and the requirement to “identify
`the time frame within which to monitor for the next step”, is proactive, or forward-
`looking, so the invention of the ’902 Patent knows ahead of time how much time it
`will allow when monitoring for the next step.
`Therefore, as more fully discussed above in Sections V.C.1 and V.C.2,
`Ground 4 should be
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