Trials@uspto.gov
`571-272-7822
`
`Paper 23
` Entered: October 29, 2019
`
`
`
`
`
`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.
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`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
`
`Apple, Inc. (“Petitioner”)2 filed a Petition (Paper 2, “Pet.”) requesting
`
`inter partes review of claims 1–6, 9, and 10 (“the challenged
`
`claims”) of U.S. Patent No. 7,881,902 B1 (Ex. 1001, “the ’902 patent”).
`
`Uniloc 2017 LLC (“Patent Owner”) filed a Response (Paper 11, “PO
`
`Resp.”), Petitioner filed a Reply (Paper 12, “Pet. Reply”), and Patent Owner
`
`filed a Sur-Reply (Paper (15, “PO Sur-Reply”).
`
`On July 16, 2019, we entered a Final Written Decision determining
`
`that Petitioner had shown, by a preponderance of evidence, that claims 1–6
`
`and 10 of the ’902 patent are unpatentable, but had failed to show that claim
`
`9 is unpatentable. Paper 21 (“Final Dec.”). On August 15, 2019, Patent
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`Owner filed a Request for Rehearing, asking us to reconsider our finding
`
`that Petitioner had shown claims 5, 6, and 10 are unpatentable over the
`
`combination of Fabio and Pasolini. Paper 22 (“Reh’g Req.”). For the
`
`reasons discussed below, Patent Owner’s Request for Rehearing is denied.
`
`
`
`II. ANALYSIS
`
`A request for rehearing “must specifically identify all matters the
`
`party believes the Board misapprehended or overlooked, and the place where
`
`each matter was previously addressed in a motion, an opposition, or a reply.”
`
`
`2 As noted above, HTC Corp., HTC America, Inc., LG Electronics, Inc., and
`Samsung Electronics America, Inc. have been joined as Petitioners to this
`proceeding.
`
`
`
`2
`
`
`
`

`

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`IPR2018-00424
`Patent 7,881,902 B1
`
`37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
`
`on a request for rehearing lies with the party challenging the decision. Id.
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`Patent Owner argues “[t]he Board appears to have misunderstood
`
`argument and evidence presented during trial why Petitioner failed . . . to
`
`prove Fabio’s validation interval TV maps onto the ‘cadence window’
`
`term,” and why “Fabio’s validation interval TV is not ‘a window of time
`
`since a last step was counted,’ as required by Petitioner’s construction for
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`the ‘cadence window’ term.” Reh’g Req. 1. Specifically, Patent Owner
`
`argues that the Board misunderstood the teachings of Fabio by repeating—
`
`for the third time—an argument first presented in Patent Owner’s Response
`
`and repeated in Patent Owner’s Sur-Reply that “Fabio’s validation scheme is
`
`retrospective in that it is used to validate only the last step.” Id. at 2; see
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`also PO Resp. 13–15, PO Sur-Reply 1–5.
`
`We discussed Patent Owner’s “retrospective argument” at length in
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`the Final Written Decision, as well as the reasons we did not find it
`
`persuasive. See Final Dec. 46–49. Although Patent Owner disagrees with
`
`that analysis, Patent Owner fails to explain how we misunderstood or
`
`misinterpreted its “retrospective” argument or how we erred in interpreting
`
`the teachings of Fabio. Instead, Patent Owner presents a new argument,
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`asserting for the first time that we misinterpreted Fabio because under
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`Petitioner’s interpretation, with which we agreed, “the first and second steps
`
`(shown in Figure 6 as TR(1) and TR(2), respectively) would necessarily be
`
`excluded from the total count of valid steps.” Reh’g Req. 3–4. This would
`
`occur, Patent Owner argues, because the validation interval TV needed to
`
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`3
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`IPR2018-00424
`Patent 7,881,902 B1
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`validate the step recognized at TR(1) would require the timing interval
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`between two non-existent previous steps, and the validation interval TV
`
`needed to validate the step recognized at TR(2) would require the timing
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`interval between the step recognized at TR(1) and a non-existent previous
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`step. Id. This exclusion of the first two steps would not happen under
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`Patent Owner’s interpretation of Fabio, Patent Owner argues, because “the
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`second step TR(2) can be retrospectively validated . . . when the third step is
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`recognized within its respective TV.” Id. at 4–5.
`
`We are not persuaded by Patent Owner’s argument for two reasons.
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`First, this is a new argument that was not previously presented in Patent
`
`Owner’s Response or Sur-Reply as evidenced by Patent Owner’s failure to
`
`identify where this “matter was previously addressed in a motion, an
`
`opposition, or a reply.” 37 C.F.R. § 42.71(d). It is, of course, axiomatic that
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`we cannot have misapprehended or overlooked an argument that Patent
`
`Owner had not previously made.
`
`Second, we would not be persuaded by this argument even if we were
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`to consider it on its merits. Fabio discloses two counting procedures—first
`
`counting procedure 110 and second counting procedure 130. Ex. 1006, Fig.
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`3. First counting procedure 110 includes step validation test (230), and
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`second counting procedure 130 includes step validation test (320) that is
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`“altogether similar to the first validation test carried out in block 230 of Fig.
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`[4].” Id. at 3:58–4:27, 6:12–34, Figs. 4, 7. Petitioner does not rely on
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`Fabio’s validation interval TV to validate the first few steps (e.g., the steps
`
`recognized at TR(1) and TR(2)) during first counting procedure 110. See Pet.
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`
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`4
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`IPR2018-00424
`Patent 7,881,902 B1
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`53–54. Instead, Petitioner relies on a modified validation interval TV having
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`a default value that “establish[es] a default cadence window based on the
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`user’s physical attributes [in order to] increase the likelihood that the first
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`few steps are recognized as being compatible,” or that “increase[s]
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`compatibility with the user’s previous step as the user is beginning a new
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`activity such as walking or running.” Id.
`
`In our Final Written Decision we “agree[d] with Petitioner’s
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`reasoning that a person skilled in the art would have been motivated to
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`modify Fabio’s validation interval TV [in first counting procedure 110] to
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`have a default width in order to determine the compatibility of the first few
`
`steps of user activity.” Final Dec. 46. In particular, we agreed that it would
`
`have been obvious to modify TV to have a default width because “Fabio
`
`teaches the importance of using TV to determine the compatibility of timing
`
`between steps, and the timing compatibility of the first few steps can only be
`
`determined with a default time interval rather than the time interval of (non-
`
`existing) previous steps.” Id. (citing Ex. 1006, 4:28–55). Patent Owner does
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`not argue that this finding was erroneous. See Reh’g Req. 1–6. Thus, using
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`modified validation interval TV having a default width would allow the step
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`recognized at TR(2) to be validated by the step recognized at TR(1),
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`assuming the step recognized at TR(1) to be a valid step.
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`Moreover, after counting a threshold number NT2 (e.g., 8) of control
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`steps that pass step validation test (230), first counting procedure 110 calls
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`second counting procedure 130. Ex. 1006, 5:10–39, Figs. 3, 4, 7. Thus, the
`
`first step recognized (315) in second counting procedure 130 (e.g., step 9)
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`5
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`IPR2018-00424
`Patent 7,881,902 B1
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`can be validated (320) using the timing between the last two steps validated
`
`in first counting procedure 110 (e.g., steps 7 and 8), and the second step
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`recognized (315) in second counting procedure 130 (e.g., step 10) can be
`
`validated (320) using the timing between the first step validated in second
`
`counting procedure 130 (e.g., step 9) and the last step validated in first
`
`counting procedure 110 (e.g., step 8). Thus, under Petitioner’s
`
`interpretation, Fabio validates and counts every step in a sequence of steps in
`
`either the first 110 or second 130 counting procedure, except for the first
`
`step in the first counting procedure 110, which is assumed to be a valid step.
`
`The same cannot be said under Patent Owner’s interpretation of
`
`Fabio. Under Patent Owner’s interpretation, Fabio fails to validate and
`
`count the first and last steps in a sequence of steps.3 The first step cannot be
`
`validated and counted because the validation interval TV requires the
`
`interval between the first step and a non-existing previous step. See Reh’g
`
`Req. 3 (“[T]he start and stop times for TV both depend on what Fabio refers
`
`to as TR(K-1), which . . . . cannot be determined for the first step TR(1)
`
`because there is no immediately preceding step.”). The last step cannot be
`
`
`3 We assume here, as we did under Petitioner’s interpretation, that data can
`be shared between the first 110 and second 130 counting procedures. Thus,
`the last step in first counting procedure 110 (e.g., step 8) can be validated
`retrospectively by the first step in second counting procedure 130 (e.g., step
`9) based on the time interval between the last two steps in first counting
`procedure 110 ((e.g., steps 7 and 8). Similarly, the first step in second
`counting procedure 130 (e.g., step 9) can be validated retrospectively by the
`second step in second counting procedure 130 (e.g., step 10) based on the
`time interval between the first step in second counting procedure 130 (e.g.,
`step 9) and the last step in first counting procedure 110 (e.g., step 8).
`6
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`IPR2018-00424
`Patent 7,881,902 B1
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`validated and counted because there is no subsequent step to retrospectively
`
`validate it. See PO Resp. 15 (“The final step detected will not be counted
`
`because it cannot be validated.”).
`
`Thus, although Fabio validates and counts every step in a sequence of
`
`steps under Petitioner’s interpretation (the validity of the first step being
`
`assumed), Fabio fails to validate and count the first and last steps in the same
`
`sequence of steps under Patent Owner’s interpretation. Moreover, even
`
`assuming the first step to be a valid step under Patent Owner’s interpretation
`
`(as we did under Petitioner’s interpretation), Fabio still fails to count the last
`
`step in the sequence of steps under Patent Owner’s interpretation because the
`
`last step cannot be retrospectively validated by a non-existing subsequent
`
`step. Id. (“The final step detected will not be counted because it cannot be
`
`validated.”). Thus, contrary to Patent Owner’s contention, it is Petitioner’s
`
`interpretation of Fabio that results in a more accurate step count for a given
`
`sequence of steps, rather than Patent Owner’s.
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`Accordingly, for the reasons explained above, Patent Owner has failed
`
`to demonstrate that we misinterpreted the teachings of Fabio or erred in our
`
`Final Written Decision.
`
`Patent Owner next argues that we “misunderstood the statement in
`
`Fabio that expressly distinguishes between the current step recognized and
`
`the last step recognized,” and that as a result, we erred by interpreting “the
`
`last step recognized and the current step recognized to be one and the same
`
`[step].” Reh’g Req. 5. This is so, Patent Owner argues, because “Fabio
`
`would not have explicitly distinguished these two different steps as last and
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`
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`7
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`IPR2018-00424
`Patent 7,881,902 B1
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`current . . . if the disclosed validation pertained to the current step and not
`
`the last step.” Id. at 5–6.
`
`We are not persuaded by this argument for the reasons explained in
`
`our Final Written Decision. See Final Dec. 47–50. It is Patent Owner, not
`
`the Board, who consistently misinterprets Fabio by arguing that Fabio
`
`validates the last step, when Fabio in fact validates the last step recognized.
`
`See Ex. 1006 4:35–39 (“[T]he last step recognized is validated if the instant
`
`of recognition of the current step TR(K) falls within validation interval TV,
`
`defined with respect to the instant of recognition of the immediately
`
`preceding step TR(K-1).” (emphases added)). Fabio expressly discloses that
`
`both current step K and immediately preceding step K-1 are recognized
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`steps, having respective instants of recognition of TR(K) and TR(K-1). Id.
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`Between them, current step K is the last step recognized because (a) current
`
`step K is a recognized step having an instant of recognition of TR(K), and
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`(b) current step K is more recently recognized than previous step K-1 having
`
`an instant of recognition of TR(K-1). Id., Fig. 6 (showing the instant of
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`recognition TR(K) of current step K occurs after the instant of recognition
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`TR(K-1) of immediately previous step K-1, thereby making current step K
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`the last step recognized and immediately preceding step K-1 the next to last
`
`step recognized).
`
`As we stated in our Final Written Decision:
`
`Notably, as shown in Figure 4, steps K and K-1 are both
`recognized steps during step validation test (230) because both
`have passed step recognition test (225). Thus, step K is the last
`recognized step with an instant of recognition TR(K), and step K-
`1 is the next to last recognized step with an instant of recognition
`
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`8
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`IPR2018-00424
`Patent 7,881,902 B1
`
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`TR(K-1). Consequently, when Fabio teaches “the last step
`recognized is validated” . . . Fabio is teaching validating step K,
`not step K-1 as Patent Owner contends, because step K is the last
`step recognized at TR(K).
`
`Final Dec. 49 (internal citations omitted). Patent Owner, although
`
`disagreeing with our interpretation of these teachings of Fabio, fails to
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`explain how or why our interpretation is erroneous.
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`Accordingly, for the reasons discussed above, Patent Owner has failed
`
`to demonstrate that we misinterpreted the teachings of Fabio or erred in our
`
`Final Written Decision, and has therefore failed to demonstrate that we erred
`
`in finding Petitioner has proven that claims 5, 6, and 10 are unpatentable
`
`over the combination of Fabio and Pasolini.
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`
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`III. CONCLUSION
`
`We have considered Patent Owner’s arguments that we erred in
`
`finding Petitioner has proven the unpatentability of claims 5, 6, and 10 over
`
`the combination of Fabio and Pasolini. For the reasons discussed above, we
`
`find Patent Owner has failed to demonstrate that we misapprehended or
`
`overlooked any matters in the Final Written Decision as required by
`
`37 C.F.R. § 42.71(d). Accordingly, we deny Patent Owner’s Request for
`
`Rehearing.
`
`Outcome of Decision on Rehearing:
`
`Claims
`5, 6, 10
`
`35 U.S.C §
`103(a)
`
`References
`Fabio, Pasolini
`
`Denied
`5, 6, 10
`
`
`
`Granted
`
`
`
`
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`9
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`
`IPR2018-00424
`Patent 7,881,902 B1
`
`Final Outcome of Final Written Decision after Rehearing:
`
`Claims
`
`35 U.S.C. §
`
`1, 2
`3
`4
`
`5, 6, 10
`9
`Overall
`Outcome
`
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`
`
`References
`
`Claims
`Shown
`Unpatentable
`1, 2
`Mitchnick
`Mitchnick, Sheldon 3
`Mitchnick, Sheldon,
`4
`Tanenhaus
`Fabio, Pasolini
`Fabio, Pasolini
`
`
`5, 6, 10
`
`1–6, 10
`
`Claims Not
`Shown
`Unpatentable
`
`
`
`
`
`9
`9
`
`
`
`
`
`
`
`
`IV. ORDER
`
`It is ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`10
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`

`

`
`IPR2018-00424
`Patent 7,881,902 B1
`
`
`For PETITIONER:
`
`Andrew S. Ehmke
`Michael Parsons
`Dina Blikshteyn
`HAYNES & BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`michael.parsons.ipr@ haynesboone.com
`dina.blikshteyn.ipr@haynesboone.com
`
`
`For PATENT OWNER:
`
`Ryan Loveless
`Sean D. Burdick
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`sean.burdick@unilocusa.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`11
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`
`