`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC USA Inc.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,712,723
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  MANDATORY NOTICES ............................................................................. 1 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party-in-Interest ........................................................................... 1 
`
`Related Matters ..................................................................................... 1 
`
`Lead and Back-up Counsel and Service Information .......................... 2 
`
`III.  GROUNDS FOR STANDING ........................................................................ 3 
`
`IV.  THIS PETITION IS NOT REDUNDANT ...................................................... 3 
`
`V.  NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 4 
`
`VI.  OVERVIEW OF THE ’723 PATENT ............................................................ 5 
`
`A. 
`
`B. 
`
`Summary of the Patent ......................................................................... 5 
`
`Prosecution History .............................................................................. 8 
`
`VII.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9 
`
`VIII.  CLAIM CONSTRUCTION .......................................................................... 10 
`
`A. 
`
`B. 
`
`“dominant axis” .................................................................................. 10 
`
`“cadence window” .............................................................................. 11 
`
`IX.  RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................. 11 
`
`X. 
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 12 
`
`A. 
`
`B. 
`
`C. 
`
`Challenged Claims ............................................................................. 12 
`
`Statutory Grounds for Challenge........................................................ 12 
`
`State of the Art at the Time of the ’723 Patent .................................. 13 
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`D. 
`
`Claims 1, 3, and 14 are obvious over Fabio in view of Pasolini ........ 14 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`6. 
`
`Summary of Fabio .................................................................... 14 
`
`Summary of Pasolini ................................................................ 17 
`
`Reasons to Combine Fabio and Pasolini .................................. 20 
`
`Claim 1 ..................................................................................... 23 
`
`Claim 3 ..................................................................................... 35 
`
`Claim 14 ................................................................................... 37 
`
`E. 
`
`Claims 4 and 19 are obvious over Fabio in view of Pasolini,
`further in view of Richardson ............................................................. 39 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Summary of Richardson .......................................................... 39 
`
`Reasons to combine Fabio, Pasolini, and Richardson ............. 42 
`
`Claim 4 ..................................................................................... 46 
`
`Claim 19 ................................................................................... 54 
`
`XI.  CONCLUSION .............................................................................................. 55 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 56 
`
`CERTIFICATE OF SERVICE ................................................................................ 57 
`
`
`
`
`
`iii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`PETITIONER’S EXHIBIT LIST
`
`May 4, 2018
`
`Ex.1001
`
`U.S. Patent No. 8,712,723
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 8,712,723
`
`Ex.1003
`
`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
`
`Ex.1004
`
`Curriculum Vitae of Joe Paradiso
`
`Ex.1005
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
`
`Ex.1006
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
`
`Ex.1007
`
`U.S. Patent No. 5,976,083 to Richardson et al. (“Richardson”)
`
`Ex.1008
`
`Reserved
`
`Ex.1009
`
`Reserved
`
`Ex.1010
`
`Reserved
`
`Ex.1011
`
`Excerpts from Robert L. Harris, INFORMATION GRAPHICS: A
`COMPREHENSIVE ILLUSTRATED REFERENCE (1996) (“Harris”)
`
`iv
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 8,712,723 (“the ’723 Patent,” Ex.1001) is generally directed
`
`to a device for “monitoring human activity, and more particularly to counting
`
`periodic human motions.” Ex.1001, 1:13-15. The claims of the ’723 Patent are
`
`directed to two separate step detection concepts. The first concept is a known
`
`technique for determining which of three axes in a tri-axial accelerometer is a
`
`“dominant axis with respect to gravity.” The second concept is a known technique
`
`for updating a “cadence window” corresponding to a user’s steps. As shown
`
`below, these concepts were known in the prior art before the priority date of the
`
`’723 Patent.
`
`Accordingly, this Petition and the cited evidence demonstrates that claims 4
`
`and 19 of the ’723 Patent are unpatentable under (pre-AIA) 35 U.S.C. § 103(a).
`
`Apple Inc. (“Petitioner”) therefore respectfully requests that these claims be held
`
`unpatentable and cancelled.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`The real party-in-interest is Apple Inc.
`
`B. Related Matters
`
`As of the filing date of this Petition and to the best knowledge of the
`
`petitioner, the ’723 Patent has been asserted in the following cases:
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Heading
`
`Number
`
`Court
`
`Filed
`
`Uniloc USA, Inc. v. Apple, Inc.
`
`4-18-cv-00364 N.D. Cal.
`
`Jan. 17, 2018
`
`Apple Inc. v. Uniloc USA, Inc.
`
`IPR2018-00389
`
`PTAB
`
`Dec. 22, 2017
`
`Uniloc USA, Inc. v. Huawei
`Devices USA, Inc.
`
`Uniloc USA, Inc. v. HTC America,
`Inc.
`
`Uniloc USA, Inc. v. LG Electronics
`USA, Inc.
`
`Uniloc USA, Inc. v. Samsung
`Electronics America, Inc.
`
`Uniloc USA, Inc. v. Apple Inc.
`(Transferred to N.D. Cal.)
`
`
`2-17-cv-00737
`
`E.D. Tx. Nov. 9, 2017
`
`2-17-cv-01629 W.D. Wa. Nov. 1, 2017
`
`4-12-cv-00832 N.D. Tx. Oct. 13, 2017
`
`2-17-cv-00650
`
`E.D. Tx. Sep. 15, 2017
`
`2-17-cv-00522
`
`E.D. Tx.
`
`Jun. 30, 2017
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Michael S. Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Calmann J. Clements
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`
`Phone: (972) 739-8611
`Fax: (214) 200-0853
`michael.parsons.ipr@haynesboone.com
`USPTO Reg. No. 58,767
`
`Phone: (972) 739-8638
`Fax: (214) 200-0853
`calmann.clements.ipr@haynesboone.com
`USPTO Reg. No. 66,910
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’723 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition. Petitioner
`
`was served with a complaint asserting infringement of the ’723 Patent on July 7,
`
`2017, which is not more than one year before the filing of this Petition. Petitioner
`
`has not filed a civil action challenging the validity of any claim of the ’723 Patent.
`
`IV. THIS PETITION IS NOT REDUNDANT
`
`On December 22, 2017, Petitioner filed IPR2018-00389 (“’389 petition)
`
`challenging claims 1-3, 5-7, and 10-18 of the ’723 patent. This petition is not
`
`redundant because it seeks review with respect to only previously unchallenged
`
`claims 4 and 19. Claims 4 and 19 were not challenged in the ’389 petition because
`
`the prior art teaching the limitations of claims 4 and 19 was not located by
`
`Petitioner until after the ’389 petition was filed. And, the prior art relied upon in
`
`this petition (i.e., Richardson, Ex.1007) is directed only to the limitations found in
`
`claims 4 and 19.
`
`Additionally, while this petition is directed toward only claims 4 and 19,
`
`claim 4 depends from claims 1 and 3 and claim 19 depends from claim 14. As
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`such, this petition incorporates analysis for claims 1, 3, and 14; however, the
`
`analysis of claims 1, 3 and 14 in this petition is verbatim identical to the analysis of
`
`claims 1, 3 and 14 presented in the ’389 petition.1 Accordingly, even though Patent
`
`Owner has filed its preliminary response in IPR2018-00389, the analysis in this
`
`petition directed to claims 1, 3, and 14 is identical to the original petition and
`
`remains unchanged, and, thus, no arguments or statements have been presented in
`
`consideration of Patent Owner’s preliminary response or its expert’s declaration.
`
`Therefore, this petition is not redundant because it seeks review for
`
`previously unchallenged claims based on prior art not previously before the Office,
`
`and does not add any new arguments or statements based on Patent Owner’s
`
`already filed preliminary response.
`
`V. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioner’s citation to Ex.1002 uses the page numbers added for compliance
`
`with 37 C.F.R. § 42.63(d)(2)(ii). Petitioner’s citations to the remaining exhibits use
`
`the page numbers in their original publication. All bold underline emphasis in any
`
`quoted material has been added.
`
`1 Not only is the analysis of claims 1, 3 and 14 unchanged, but the corresponding
`
`summary of the prior art, level of ordinary skill in the art, claim construction, and
`
`reasons to combine in regard to the previously presented claims remain unchanged
`
`as well.
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`VI. OVERVIEW OF THE ’723 PATENT
`
`A.
`
`Summary of the Patent
`
`The ’723 Patent is directed to “a method of monitoring human activity, and
`
`more particularly, to counting periodic human motions such as steps.” Ex.1001,
`
`1:13-15. The monitoring of human activity is performed using “inertial sensors
`
`(e.g., accelerometers)” found in commercial electronic devices such as “cellular
`
`phones, portable music players, pedometers, game controllers, and portable
`
`computers.” Ex.1001, 1:20-26. As noted in the background of the ’723 Patent,
`
`“[s]tep counting devices are used to monitor an individual's daily activity by
`
`keeping track of the number of steps that he or she takes.” Ex.1001, 1:27-29. The
`
`background section also identifies the known problem that “[s]tep counting devices
`
`are often confused by motion noise [that] … causes false steps to be measured and
`
`actual steps to be missed in conventional step counting devices.” Ex.1001, 1:35-39.
`
`The claims of the ’723 Patent are directed to two separate concepts that are
`
`alleged improvements over conventional step counting devices. The first concept
`
`relates to “assigning a dominant axis with respect to gravity.” See, e.g., Ex.1001,
`
`claim 1. In the ’723 Patent, the dominant axis is “the axis most aligned with
`
`gravity,” which “may change over time (e.g. as the electronic device is rotated).”
`
`Ex.1001, 6:20-25. Figure 8 of the ’723 Patent, reproduced below in part, provides a
`
`method for assigning a dominant axis based on taking measurements of
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`acceleration data:
`
`
`
`Ex.1001, Fig. 8, in part.
`
`The second concept relates to updating a “cadence window” corresponding
`
`to the user’s step cadence. See, e.g., Ex.1001, claim 1. In the’723 Patent, “[a]
`
`cadence window is a window of time since a last step was counted that is looked at
`
`to detect a new step.” Ex.1001, 4:5-7. Figure 6, reproduced below, shows an
`
`example method for setting a cadence window, including recognizing a step in the
`
`cadence window then adding one to the step count:
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`
`
`Ex.1001, Fig. 6.
`
`The “dominant axis” and “cadence window” concepts claimed in the ’723
`
`Patent were not novel. As shown in this Petition, (1) U.S. Patent No. 7,698,097 to
`
`Fabio Pasolini et al. (“Fabio”) describes a validation interval (cadence window)
`
`that is a window of time since a last step was counted that is looked at to detect a
`
`new step and (2) both Fabio and U.S. Patent No. 7,463,997 to Fabio Pasolini et al.
`
`(“Pasolini”) describe detecting steps using a dominant axis of a tri-axial
`
`accelerometer, or, in other words, using the axis most influenced by gravity.
`
`
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`B.
`
`Prosecution History
`
`The ’723 Patent issued on April 29, 2014 from U.S Patent Application No.
`
`13/018,321 filed on January 31, 2011. The ’723 Patent is a continuation of U.S.
`
`Application No. 12/694,135, filed on January 26, 2010, which is a continuation of
`
`U.S. Application No. 11/644,455, filed on December 22, 2006.
`
`In a first Office action, the Examiner rejected claims 1, 2, 11, 12, 14, and 16
`
`under 35 U.S.C. 102 (e) as anticipated by U.S. Patent Application Publication No.
`
`2007/0143068 to Fabio Pasolini et al. Ex.1002 at 200. This application later issued
`
`as U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”), and is cited in
`
`this Petition as a secondary reference (Ex.1005).
`
`In the first Office action, the Examiner states that Pasolini disclosed
`
`“assigning a dominant axis based on an orientation of the inertial sensor,”
`
`“detecting a change in the orientation of the inertial sensor and updating the
`
`dominant axis based on the change,” and “counting periodic human motions by
`
`monitoring accelerations relative to the dominant axis based upon acceleration
`
`measurements along only the dominant axis to count steps.” Ex.1002, p.201.
`
`In its response to the first Office action, the Applicant amended the claims to
`
`further recite “by counting the periodic human motions when accelerations
`
`showing a motion cycle that meets motion criteria within a cadence window” and
`
`“updating the cadence window as actual cadence changes.” Ex.1002, p.138-41.
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`The Applicant argued in its response that “Pasolini does not teach or suggest the
`
`use of cadence windows, much less the comparison of a motion cycle to a cadence
`
`window which is adjusted as the user’s motion is detected.” Ex.1002, p.201.
`
`In Notice of Allowance, the Examiner quoted the amended claims and
`
`indicated that the amended claims were allowable over Pasolini (among others).
`
`Ex.1002 at 34-36. However, U.S. Patent No. 7,698,097 to Fabio Pasolini et al.
`
`(“Fabio”), which is the primary prior art reference relied on in this Petition, does
`
`not appear to have been cited or otherwise considered by the Examiner during
`
`prosecution.
`
`VII. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, a person of ordinary skill in
`
`the art (“POSITA”) would include someone who had, at the priority date of the
`
`‘723 Patent (i) a Bachelor’s degree in Electrical Engineering, Computer
`
`Engineering, and/or Computer Science, or equivalent training, and (ii)
`
`approximately two years of experience working in hardware and/or software
`
`design and development related to MEMS (micro-electro-mechanical) devices and
`
`body motion sensing systems. Ex.1003, pp.8-9. Lack of work experience can be
`
`remedied by additional education, and vice versa. Ex.1003, p.9.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`VIII. CLAIM CONSTRUCTION
`
`This Petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable construction in light of the specification. See 37 C.F.R. §
`
`42.100(b). Under the broadest reasonable construction, claim terms are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`in the art in the context of the entire disclosure. Cuozzo Speed Techs., LLC v. Lee,
`
`579 U.S. ___, slip op. at 17 (2016); In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Also, because the claim constructions proposed herein are
`
`based on the broadest reasonable construction, they do not necessarily apply to
`
`other proceedings that use different claim construction standards. See Samsung
`
`Elecs. Co. v. Virginia Innovation Sci., Inc., IPR2013-00569, Paper 9 at 2 (PTAB
`
`2013). For terms not addressed below, Petitioner submits that no specific
`
`construction is necessary for this proceeding.2
`
`A.
`
`“dominant axis”
`
`This term appears in at least claims 1, 2, 10, 11, 14, and 15. In the
`
`specification of the ’723 Patent, the dominant axis is determined based on the
`
`accelerometer’s alignment with gravity. Ex.1003, pp.17-18. For example, the
`
`specification states that “[i]n one embodiment, the dominant axis is assigned after
`
`2 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`identifying a gravitational influence. The gravitational influence may be identified
`
`by calculating total acceleration based upon the acceleration on each axis.”
`
`Ex.1001, 14:37-41. The specification also states that “[i]n one embodiment, once
`
`the orientation is determined, a dominant axis is assigned based upon the
`
`orientation. Determining an orientation of the electronic device 100 may include
`
`identifying a gravitational influence.” Ex.1001, 6:20-23. In other words, the
`
`dominant axis in the specification is “the axis most influenced by gravity, which
`
`may change over time (e.g., as the electronic device is rotated).” Ex.1001, 6:24-26.
`
`Thus, for the purposes of this proceeding, the term “dominant axis” as used
`
`in the claims includes “the axis most influenced by gravity.” Ex.1003, p.18.
`
`B.
`
`“cadence window”
`
`This term appears in at least claims 1, 5, 6, 10, 12, 14, 16 and 17. The
`
`specification of the ’723 Patent specifically defines this term as “a window of time
`
`since a last step was counted that is looked at to detect a new step.” Ex.1001, 4:4-5.
`
`Thus, for the purposes of this proceeding, the term “cadence window” as
`
`used in the claims includes “a window of time since a last step was counted that is
`
`looked at to detect a new step.” Ex.1003, pp.18-19.
`
`IX. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 4 and 19 of the ’723
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Patent, and cancel those claims as invalid.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Joe
`
`Paradiso, the concepts described and claimed in the ’723 Patent were not new. This
`
`Petition explains where each element of claims 4 and 19 is found in the prior art
`
`and why the claims would have been obvious to a person of ordinary skill in the art
`
`(“POSITA”) before the earliest claimed priority date of the ’723 Patent.
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Claims 4 and 19 of the ’723 Patent are challenged in this petition.
`
`B.
`
`Statutory Grounds for Challenge
`
`Claims 4 and 19 of the ’723 Patent obvious under 35 U.S.C § 103(a) over
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”) in view of U.S. Patent
`
`No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”), further in view of U.S. Patent
`
`No. 5,976,083 to Richardson et al. (“Richardson”). Both Fabio and Pasolini were
`
`filed on October 2, 2006, which is before the ’723 Patent’s earliest claimed
`
`effective filing date of December 22, 2006. Accordingly, Fabio and Pasolini
`
`qualify as prior art under at least pre-AIA 35 U.S.C. § 102(e). Richardson was filed
`
`on July 30, 1997, and issued on Nov. 2, 1999, and thus qualifies as prior art under
`
`at least pre-AIA 35 U.S.C. § 102(b).
`
`
`
`12
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`C.
`
`State of the Art at the Time of the ’723 Patent
`
`Before the earliest claimed priority date of December 22, 2006, others were
`
`actively working on pedometer devices that monitored a user’s steps. One such
`
`developer was Fabio Pasolini, who designed motion detection systems using
`
`MEMS that could be implemented in phones or other portable electronic devices.
`
`See Ex.1006, 2:33-36; Ex.1005, 8:31-34. The pedometers devices that Mr. Pasolini
`
`designed use an inertial sensor, such an accelerometer, to count steps of the user
`
`while the user is carrying the device. Ex.1006, 1:10-11, 2:49-64; Ex.1005, 3:30-35.
`
`To detect and identify the user’s steps, Mr. Pasolini’s devices analyze
`
`positive and negative acceleration peaks provided by the accelerometer. Ex.1006,
`
`4:12-21; Ex.1005, 3:35-41. In this way, Mr. Pasolini’s devices provide features
`
`that help avoid “false positives” with respect to the step recognition. Ex.1006,
`
`7:16-19; Ex.1005, 1:61-2:3. These step-recognition features are described in two of
`
`Mr. Pasolini’s issued patents—U.S. Patent No. 7,698,097 (“Fabio”) and U.S.
`
`Patent No. 7,463,997 (“Pasolini”)—that were both filed on October 2, 2006 and
`
`share the same inventive entity (Fabio Pasolini and Ivo Binda).
`
`Both of Mr. Pasolini’s patents describe a number of features in common
`
`with the pedometer devices. These features include, for example, an accelerometer
`
`with multiple axes of detection, so that step recognition is advantageously
`
`13
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`

`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`performed using the accelerations measured by the axis that is most aligned with
`
`gravity. Ex.1006, 8:20-32; Ex.1005, 8:15-24.
`
`The references differ in that the Pasolini reference provides additional detail
`
`regarding step detection using linear and multi-axes accelerometers, including
`
`describing that the pedometer updates the vertical axis with each acquisition of an
`
`acceleration sample to take into account variations of the orientation of the
`
`pedometer device during use. Ex.1005, 8:20-24. The Fabio reference, on the other
`
`hand, describes applying a regularity condition to the detected step data so that a
`
`step is counted when it occurs within a “validation interval,” which is identified as
`
`a window of time since a previous step was counted. Ex.1006, 4:35-39, 7:16-19,
`
`FIG. 6.
`
`As described in more detail below, the disclosures provided in the Fabio and
`
`Pasolini references render obvious each and every element of the challenged
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`claims.
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`D. Claims 1, 3, and 14 are obvious over Fabio in view of Pasolini
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`1. Summary of Fabio
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`Fabio is directed to “controlling a pedometer based on the use of inertial
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`sensors.” Ex.1006, 1:10-11. An example of Fabio’s pedometer device 1 as
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`“integrated within a portable electronic device, such as a cell phone 2” (Ex.1006,
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`2:33-36) is reproduced below:
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`Ex.1006, Fig. 1.
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`Fabio describes that its pedometer 1 includes an “inertial sensor 3 [that]
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`supplies at output an acceleration signal AZ, which is correlated to the accelerations
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`undergone by the inertial sensor 3 itself along the detection axis Z.” Ex.1006, 2:56-
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`59. Fabio’s pedometer performs step recognition by sampling the acceleration
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`signal AZ to identify characteristics including “a positive peak, higher than a
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`positive acceleration threshold AZP, followed by a negative peak, smaller than a
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`negative acceleration threshold AZN.” Ex.1006, 4:12-21.
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`Fabio notes that “there are many random events that can interfere with
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`correct recognition of the step. Impact or other external vibrations and given
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`movements of the user can, in fact, give rise to so-called ‘false positives.’”
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`Ex.1006, 1:38-41. For this reason, Fabio describes a pedometer having various
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`features to overcome these step detection challenges. Some of these features
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`include “checking whether sequences of the detected steps satisfy pre-determined
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`conditions of regularity; updating a total number of valid steps if the conditions of
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`regularity are satisfied; and preventing updating of the total number of valid steps
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`if the conditions of regularity are not satisfied.” Ex.1006, 1:62-2:3. More precisely,
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`Fabio explains that “the last step is validated if the instance of recognition of
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`the current step TR(K) falls within a validation interval TV[.]” Ex.1006, 4:35-
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`39. Fabio shows the instant of recognition of a current step occurring within the
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`validation interval after an instant of recognition of a previous step in Figure 6
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`(below).
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`Instant of recognition of current step
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`Instant of
`recognition of
`previous step
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`Validation Interval
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`Ex.1006, Fig. 6 (annotated); Ex.1003, p.23.
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`Using this step validation technique, Fabio’s device is able to more
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`accurately count steps and adapt to changes in the user’s pace. Ex.1003, p.24.
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`Specifically, Fabio teaches that “[p]ossible isolated irregularities are ignored and
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`do not interrupt or suspend updating of the count, which is, instead, interrupted
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`when prolonged pauses occur or in the presence of significant discontinuities in
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`locomotion.” Ex.1006, 7:16-19.
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`Fabio additionally describes sampling the acceleration signal from a
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`detection axis most influenced by gravity. Ex.1003, p.24. Specifically, Fabio
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`teaching using an inertial sensor “with two or three axes of detection” so that “step
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`recognition can advantageously be performed by selecting the acceleration
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`signal corresponding to the detection axis nearest to the vertical.” Ex.1006,
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`8:20-25. According to Fabio, “[t]he detection axis nearest to the vertical is the axis
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`along which the contribution of gravity is greater.” Ex.1006, 8:30-32.
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`2. Summary of Pasolini
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`As discussed above, Pasolini shares the same inventive entity as Fabio
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`(Fabio Pasolini and Ivo Binda) and was filed on the same day. See Ex.1005;
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`Ex.1006. Pasolini is similarly directed to “a pedometer device and to a step
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`detection method using an algorithm for self-adaptive computation of acceleration
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`thresholds.” Ex.1005, 1:10-12. Like Fabio, Pasolini describes that its “pedometer
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`device 1 … may advantageously be housed inside a portable device, in particular a
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`mobile phone.” Ex.1005, 8:31-34. An example of Pasolini’s pedometer is shown in
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`Figure 8, reproduced below:
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`Ex.1005, Fig. 8.
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`Like Fabio, Pasolini also describes that its pedometer includes an inertial
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`sensor that is an “accelerometer 2 … having a vertical detection axis z.” Ex.1005,
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`2:60-64. Pasolini’s pedometer similarly “acquires at pre-set intervals samples of
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`the acceleration signal A generated by the accelerometer 2, and executes
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`appropriate processing operations for counting the number of steps.” Ex.1005,
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`3:30-35. Like Fabio, these processing operations include “identifying, respectively,
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`the positive phase (positive acceleration peak) and the negative phase (negative
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`acceleration peak) of the step.” Ex.1005, 3:35-41.
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`Pasolini is in a similar field of endeavor as Fabio, as it also addresses the
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`problems involving step recognition, such as that “the occurrence of errors that
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`may even be considerable in counting of steps … [i]n particular, if the threshold is
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`too low, spurious signals, rebounds, or noise in general may be counted as steps;
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`on the other hand, if the threshold is too high, some steps may not be detected.”
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`Ex.1005, 1:61-2:3.
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`Like Fabio, Pasolini teaches an embodiment where its “accelerometer 2
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`could be equipped with a number of axes of measurement, for example three
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`mutually orthogonal axes of measurement.” Ex.1005, 8:11-13. Pasolini, though,
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`additionally describes techniques for improving step detection including using the
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`accelerations detected along the axis most influenced by gravity. Ex.1003, p.26.
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`Specifically, Pasolini describes “identifying the main vertical axis to be used for
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`step detection as the axis of detection that has the highest mean acceleration value
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`Accm (on account of gravity).” Ex.1005, 8:15-20. Pasolini thus adds the
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`description that “the main vertical axis can be identified at each acquisition of a
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`new acceleration sample … so as to take into account variations in the
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`orientation of the pedometer device 1, and consequently the accelerometer
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`arranged inside it.” Ex.1005, 8:20-24.
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`3. Reasons to Combine Fabio and Pasolini
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`It would have been obvious for a POSITA to combine Fabio and Pasolini
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`because, as described below, the combination is merely a use of a known technique
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`to improve a similar device, method, or product in the same way. Ex.1003, p.27.
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`A POSITA would have recognized that Fabio and Pasolini describe similar
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`pedometer devices while addressing different shortcoming in the known
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`technology. Ex.1003, p.27. For example, the pedometers described in Fabio and
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`Pasolini are both implemented in portable electronic devices, such as mobile
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`phones, and include similar components for step detection, such as accelerometers
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`with multiple axes of detection. Ex.1003, p.27. Fabio and Pasolini are in the same
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`field of endeavor as both patents describe the problem that errors in step
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`recognition cause for step counting, and are directed to solving this problem.
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`Ex.1003, p.27. Both Fabio and Pasolini teach addressing the problem, at least in
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`part, by selecting the acceleration signal from the vertical detection axis (the axis
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`that is most influenced by gravity) and sampling the acceleration signal to
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`recognize steps by identifying positive and negative acceleration peaks. Ex.1003,
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`p.27.
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`Pasolini, however, differs from Fabio in that Pasolini addresses an improved
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`method of determining valid steps, including the specific issue of updating the
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`vertical detection axis as the orientation of the device changes. See, e.g., Ex.1005,
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`2:22-28. A POSITA would have thus recognized that Pasolini offers more specific
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`teachings about improved step detection that would be beneficially implemented
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`into Fabio’s device. Ex.1003, p.28.
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`A POSITA would have also understood that implementing Pasolini’s
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`additional teachings into Fabio’s device would result in a signal that is less
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`susceptible to the type of errors that Fabio is concerned with preventing, such as
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`the “[i]mpact or other external vibrations and given movements of the user [that]
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`can, in fact, give rise to so-called ‘false positives.’” Ex.1006, 1:38-41; Ex.1003,
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`p.28. Consequently, a POSITA would have recognized that Pasolini’s orientation
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`correction method implemented in Fabio’s pedometer would result in updating the
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`vertical detection axis based on changes in the orientation of the pedometer, so that
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`the acceleration signal would be selected from the step detection axis that is most
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`aligned with gravity. Ex.1003, p.28.
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`Pasolini explicitly addresses this problem by describing that “the main
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`vertical axis can be identified at each acquisition of a new acceleration sample …
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`so as to take into account variations in the orientation of the pedometer device 1,
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`and consequently the accelerometer arrange