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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`IPR2018-01027
`PATENT 8,712,723
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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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`IPR2018-01027
`PATENT 8,712,723
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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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`IPR2018-01027
`U.S. Patent 8,712,723
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`Table of Contents
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`
`
`I.
`II.
`III.
`IV.
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`V.
`VI.
`
`INTRODUCTION.................................................................................. 1
`THE ’723 PATENT ............................................................................... 1
`RELATED PROCEEDINGS ................................................................. 2
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. §
`325(D) .................................................................................................... 2
`A.
`Petitioner Had In Fact “Located” Richardson Prior To
`Filing Its Petition In IPR2018-00389 ............................................ 3
`Petitioner Had The Benefit Of Patent Owner’s
`Preliminary Response In IPR2018-00389 ..................................... 6
`LEVEL OF ORDINARY SKILL IN THE ART ..................................... 7
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ....................................................................... 8
`A.
`Claim Construction ...................................................................... 8
`1.
`“dominant axis”.................................................................. 9
`2.
`“cadence window” ........................................................... 10
`A POSITA Would Not Have Made The Hypothetical
`Combination of Fabio, Pasolini, and Richardson
`Because Pasolini Fails to Disclose “wherein the lower
`threshold is adjusted based on at least one of a rolling
`average of accelerations”; And Because Pasolini
`Teaches Away From Averaging (Claims 4 and 19) .................... 11
`1.
`A POSITA Would Not Have Made The
`Hypothetical Combination Because Pasolini Does
`Not Disclose Averaging Of Accelerations ........................ 11
`Pasolini Teaches Away From Averaging ......................... 14
`
`B.
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`B.
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`2.
`
`ii
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`IPR2018-01027
`U.S. Patent 8,712,723
`No Prima Facie Obviousness for “assigning a dominant
`axis with respect to gravity based on an orientation of
`the inertial sensor” (Claims 1 and 14) ......................................... 15
`D. No Prima Facie Obviousness for “detecting a change in
`the orientation of the inertial sensor and updating the
`dominant axis based on the change” (Claims 1 and 14) .............. 19
`No Prima Facie Obviousness for “updating the cadence
`window as actual cadence changes” (Claims 1 and 14) .............. 21
`The Petition Should Further Be Denied Because Claims
`4 and 19 Ultimately Depend From Claims 1 and 14. .................. 23
`CONCLUSION .................................................................................... 23
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`E.
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`F.
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`C.
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`VII.
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`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
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`iii
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`IPR2018-01027
`U.S. Patent 8,712,723
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-01027 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 8,712,723 (“the ’723 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 ’723 PATENT
`The ’723 patent is titled “Human activity monitoring device.” The ʼ723 patent
`issued April 29, 2014, from U.S. Patent Application No. 13/018,321 filed January
`31, 2011.
`The inventors of the ’723 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, 1:29-34. 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., 1:35-40.
`According to the invention of the ’723 Patent, a device to monitor human
`activity using an inertial sensor assigns a dominant axis after determining the
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`U.S. Patent 8,712,723
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`orientation of an inertial sensor. he orientation of the inertial sensor is continuously
`determined, and the dominant axis is updated as the orientation of the inertial sensor
`changes. Id., 2:14-19.
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`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 8,712,723 (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
`Apple Inc. v. Uniloc USA, Inc
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`Uniloc USA, Inc. et al v. Apple
`Inc.
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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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`Sept. 15,
`2017
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`4-17-cv-00832
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`TXND Oct. 13, 2017
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`2-17-cv-01629 WAWD Nov. 1, 2017
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`2-17-cv-00737
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`TXED Nov. 9, 2017
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`IPR2018-00389
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`PTAB Dec. 22, 2017
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`IV. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
`As the Petition admits, on December 22, 2017, Petitioner filed IPR2018-
`00389, challenging claims 1-3, 5-7, and 10-18 of the same patent that is the subject
`of the instant Petition (the ’723 Patent). Further, Petitioner also acknowledges that
`Patent Owner had already filed its preliminary response to the Petition in IPR2018-
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`U.S. Patent 8,712,723
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`00389 before Petitioner filed the instant Petition.
`However, the Petition argues, without evidence or support, that the instant
`Petition is not redundant to IPR2018-00389 because: (1) “the prior art teaching the
`limitations of claims 4 and 19 was not located by Petitioner until after the ’389
`petition was filed”, (Pet. 3 (emphasis added)), and (2) because allegedly “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.” Pet. 3-4 (emphasis removed). Petitioner’s unsupported attorney
`argument should not be given any weight, and at least in one instance, the facts
`show Petitioner’s contentions to be false.
`The Board should exercise its discretion under 35 U.S.C. § 325(d) and deny
`the Petition because Petitioner knew of the additional reference (Richardson) at the
`time of filing its IPR2018-00389, and because Petitioner had the benefit of Patent
`Owner’s preliminary responses to Petitioner’s IPR2018-00389.
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`A.
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`Petitioner Had In Fact “Located” Richardson Prior To Filing Its
`Petition In IPR2018-00389
`Despite Petitioner’s proclamation that “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” (Pet. 3), the
`facts show that Petitioner is wrong. At least four days before the filing of the
`petition in IPR2018-00389, Petitioner did in fact know of, and had “located”, “the
`prior art relied upon in [the instant] petition (i.e., Richardson, Ex.1007)” (id.).
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`U.S. Patent 8,712,723
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`Petitioner’s knowledge is shown in the filing of a petition in IPR2018-00294. The
`facts are as follows:
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`1. Exhibit 1007 of the instant petition is U.S. Patent No. 5,976,083 to
`Richardson.
`
` See Pet. at iv (highlighting added).
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`2. On December 22, 2017, Petitioner, Apple, Inc., filed the petition in
`IPR2018-00389:
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`
`
` See PTAB E2E (ptab.uspto.gov) (emphasis added);
`
` See IPR2018-00389, Paper 2 at 67 (highlighting added).
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`U.S. Patent 8,712,723
`3. However, on December 18, 2017, Petitioner, Apple, Inc., also filed a
`petition in IPR2018-00294:
`
` See PTAB E2E (ptab.uspto.gov) (emphasis added)
`
` See IPR2018-00294, Paper 1 at iii (highlighting added).
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`4. One of the references cited and filed by Petitioner, with IPR2018-
`00294, was the reference-at-issue, U.S. Patent No. 5,976,083 to
`Richardson.
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` See IPR2018-00294, Paper 1 at 8 (highlighting added).
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`As shown by the facts above, Petitioner’s contention that the prior art
`reference-at-issue, U.S. Patent No. 5,976,083 to Richardson “was not located by
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`Petitioner until after the ’389 petition was filed” (Pet. 3 (emphasis added)), is
`demonstrably false. Petitioner filed IPR2018-00389 on December 22, 2017, but
`Petitioner also filed IPR2018-00294 on December 18, 2017, and with the petition
`in IPR2018-00294, Petitioner analyzed, cited to, and provided copies of the
`reference-at-issue, U.S. Patent No. 5,976,083 to Richardson. Even the exhibit
`number (1007) of Richardson are the same in Petitioner’s IPR2018-00294 and the
`instant Petition.
`Therefore, Petitioner had not only known of the reference-at-issue, U.S.
`Patent No. 5,976,083 to Richardson, at least four days before the filing of its
`petition in IPR2018-00389, but in fact, Petitioner had the time to analyze
`Richardson, develop arguments based on Richardson, and file a copy of
`Richardson with its petition in IPR2018-00294. As such, it is likely that Petitioner
`had “located” Richardson weeks if not months before Petitioner filed its petition in
`IPR2018-00389. Therefore, Petitioner’s explanation that it could not have
`challenged dependent claims 4 and 19 along with its petition in IPR2018-00389
`because it had not yet “located” Richardson is demonstrably false.
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`B.
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`Petitioner Had The Benefit Of Patent Owner’s Preliminary
`Response In IPR2018-00389
`At the time of filing of the instant Petition, the Petitioner had the benefit of
`Patent Owner’s preliminary response to IPR2018-00389. Petitioner merely asserts
`that allegedly “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
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`response or its expert’s declaration.” Pet. 4 (emphasis removed).
`Petitioner does not deny that it had reviewed Patent Owner’s preliminary
`response prior to filing the current follow-on petition. Further, Petitioner’s choice
`of words is tellingly narrow. For example, Petitioner does not state that Petitioner
`did not choose to file the instant follow-on petition based in part on having the
`benefit of Patent Owner’s preliminary response. Nor does Petitioner affirm that its
`arguments and statements against the newly challenged dependent claims were not
`formulated based in part on having the benefit of Patent Owner’s preliminary
`response. Petitioner can only contend that the Petition’s discussion of the
`independent claims from which the newly challenged dependent claims depend
`from are identical to the original petition. Or put differently, Petitioner merely
`states that part of the instant follow-on Petition is copy-and-pasted, while other
`parts of the Petition are new, and Petitioner makes no affirmative statement
`regarding the new parts of the instant Petition. In short, Petitioner did have the
`benefit of Patent Owner’s preliminary response in IPR2018-00389.
`Thus, the instant follow-on Petition should be denied under 35 U.S.C. §
`325(d).
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`in
`skill
`ordinary
`The Petition
`alleges
`that
`“a
`person
`of
`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
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`U.S. Patent 8,712,723
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`design and development related to MEMS (micro-electro-mechanical) devices and
`body motion sensing systems.” Pet. 9. Given that Petitioner fails to meet its burden
`of proof in establishing prima facie anticipation or 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.
`
`VI. 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
`4 and 19
`Fabio1 and Pasolini2 and Richardson3
`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
`
`8
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` 1
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` EX1006, U.S. Patent No. 7,698,097
`2 EX1005, U.S. Patent No. 7,463,997
`3 EX1007, U.S. Patent No. 5,976,083
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`U.S. Patent 8,712,723
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`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 provides 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).
`
`“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. 11. 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. 11 quoting
`EX1001, 14:37-41 (“[i]n one embodiment…”) (emphasis added). Importantly,
`Petitioner expressly acknowledges that the ’723 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, 6:15-29. And here, while the orientation “may include
`identifying a gravitational influence…” (EX1001, 6:21-23) (emphasis added), by
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`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., 6:26-29 (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., 6:35-37 (emphasis added).
`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
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`U.S. Patent 8,712,723
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`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. A POSITA Would Not Have Made The Hypothetical
`Combination of Fabio, Pasolini, and Richardson Because Pasolini
`Fails to Disclose “wherein the lower threshold is adjusted based
`on at least one of a rolling average of accelerations”; And Because
`Pasolini Teaches Away From Averaging (Claims 4 and 19)
`The Petition seeks to combine Fabio, Pasolini, and Richardson, and the
`Petition relies solely on Pasolini for the concept of “average of accelerations” in
`making its proposed combination with Richardson. See Pet. 48-50. However,
`Pasolini fails to disclose any averaging, and furthermore, Pasolini teaches against
`averaging of accelerations as required by the claim language.
`
`1.
`
`A POSITA Would Not Have Made The Hypothetical
`Combination Because Pasolini Does Not Disclose Averaging
`Of Accelerations
`The Petition argues that “Pasolini teaches updating the negative acceleration
`threshold based on averaging the acceleration samples for each step”, and more
`specifically, Petitioner argues that “[i]n Pasolini, the self-adaptive calculation of the
`negative threshold S- is based on an average of the current and previous acceleration
`data.” Pet. 48. However, Pasolini itself does not support Petitioner’s contention.
`The Petition points to a “multi-step” process of Pasolini, which involves
`removing the D.C. component from the acceleration sample. See Pet. 48-50;
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`EX1005, 5:40-6:5. In other words, Pasolini makes no mention of averaging
`whatsoever, what Pasolini is concerned with is the mean amplitude of the
`waveform, not an average of accelerations. EX2001, ¶ 47.
`To be clearer, a POSITA would have known that when describing a periodic
`function in the time domain, the DC bias, DC component, DC offset, or DC
`coefficient is the mean amplitude of the waveform. If the mean amplitude is zero,
`there is no DC bias, and a POSITA would understand that having a DC bias, or DC
`component is generally undesirable. Id. Pasolini itself makes clear that it is
`concerned about the mean amplitude of the acceleration waveform because it seeks
`to remove “the d.c. component of said acceleration value”:
`
`
`
`
`
`
`EX1005, 5:40-6:5 (highlighting added).
`As recited above, the procedure in Pasolini only seeks to eliminate the “d.c.
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`component”, or in other words, “determine the acceleration datum CalAcc, with
`zero mean value”. Pasolini is concerned about the acceleration datum (waveform)
`having “zero mean value” because Pasolini is concerned with removing the
`“acceleration of gravity” from its acceleration datum waveform, i.e., eliminating
`the “d.c. component” from the acceleration waveform. Therefore, Pasolini does not
`disclose any averaging, and this is further confirmed by Pasolini itself in the passage
`above.
`First, the Pasolini formulas themselves show that mathematically, there is no
`averaging: “Accm=γ•Accm+(1-γ)•CalAcc” and “CalAcc=Acc−Accm”. The only
`operations in either of the formulas of Pasolini are addition, subtraction, and
`multiplication by an undetermined constant value. See EX1005, 5:66 (“where γ is a
`constant between 0 and 1”) (emphasis added). Therefore, Petitioner’s contention
`that either of Pasolini’s formulas discloses an averaging of acceleration is
`mathematically unsupported. EX2001, ¶¶ 42-46.
`Second, besides the formulas, the definitions provided by Pasolini further
`confirms the purpose and operation of its two formulas: “Accm and CalAcc are the
`values, respectively, of the mean value and of the acceleration datum”. EX1005,
`5:67-6:1. With
`that understanding,
`looking back at Pasolini’s formula,
`“CalAcc=Acc−Accm”, it becomes clear that if there is a “d.c. component” in the
`acceleration datum waveform, or in other words, if Accm is not zero, then Pasolini’s
`formula merely seeks to subtract the non-zero “d.c. component”, Accm, from the
`acceleration datum, “Acc”. In other words: “the d.c. component of said
`acceleration value (due substantially to the acceleration of gravity) is eliminated
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`so as to determine the acceleration datum CalAcc, with zero mean value” EX1005,
`5:57-60 (emphasis added).
`Thus, Pasolini does not teach averaging of any kind, much less averaging of
`accelerations as required by the claim language, and therefore a POSITA would not
`have combined the hypothetical system of Fabio and Pasolini with Richardson. For
`this reason alone, the Petition fails and should be denied in its entirety.
`
`Pasolini Teaches Away From Averaging
`2.
`Moreover, Petitioner’s proposed combination further fails because Pasolini
`teaches away from averaging. The Federal Circuit recently reiterated that “a
`reference may be said to teach away when a person of ordinary skill, upon reading
`the reference, . . . would be led in a direction divergent from the path that was
`taken by the applicant.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056,
`1069 (Fed. Cir. 2018) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
`2004)). The Federal Circuit further reaffirmed that “even if a reference is not found
`to teach away, its statements regarding preferences are relevant to a finding
`regarding whether a skilled artisan would be motivated to combine that reference
`with another reference.” Id. (quoting Apple Inc. v. Samsung Elecs. Co., 839 F.3d
`1034, 1051 n.15 (Fed. Cir. 2016) (en banc)).
`As pointed out by Petitioner, Pasolini uses values S+ and S- to identify a step
`(EX1005, 3:35-41). And as also pointed out by Petitioner, the values S+ and S- are
`not fixed, because as Pasolini itself describes, to account for: “different profiles of
`the acceleration signal, in terms of amplitude and duration[], due, for example, to a
`different type of terrain, or to an increase in the speed of the gait.” This is precisely
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`the opposite of averaging acceleration values.
`Averaging acceleration values would negate Pasolini’s stated purpose of
`account for different profiles in the acceleration signal because averaging the
`acceleration values would homogenize the acceleration values, and thus fail to take
`into account different types of terrain or an increase in the speed of the gait. EX2001,
`¶¶ 37-41.
`Therefore, as an additional independent reason to deny the Petition in its
`entirety, a POSITA would not have been motivated to make the hypothetical
`combination because Pasolini teaches away from averaging acceleration values.
`
`C. No Prima Facie Obviousness for “assigning a dominant axis with
`respect to gravity based on an orientation of the inertial sensor”
`(Claims 1 and 14)
`The Petition relies on its argument in Claim 1 for similar limitations in Claim
`14. See Pet. 38 (“This limitation is the same as the limitation discussed in section
`[1.1]. Therefore, Fabio in view of Pasolini renders this limitation obvious as
`described in section [1.1]”). Therefore, the Petition fails to establish prima facie
`obviousness of independent Claims 1 and14 for the same reasons.
`Petitioner acknowledges, and tacitly admits that Fabio does not disclose
`“assigning a dominant axis with respect to gravity based on an orientation of the
`inertial sensor”, because Fabio can only “select[] the acceleration signal
`corresponding to the detection axis nearest to the vertical.” Pet. 25; EX1006, 8:23-
`25. Thus, the device of Fabio does not disclose “assigning a dominant axis” as
`required by the claims and furthermore, Fabio does not disclose assigning a
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`dominant axis based on an orientation of the inertial sensor, as Petitioner admits.
`Pet. 25-26.
`Recognizing that Fabio does not disclose this limitation, Petitioner relies on
`a combination of Fabio and Pasolini. However, the proposed combination fails
`because neither Fabio or Pasolini discloses “assigning a dominant axis with respect
`to gravity based on an orientation of the inertial sensor”. Instead, Fabio merely
`selects the “axis nearest to the vertical”, without any regard for orientation. Pet. 25;
`EX1006, 8:23-25. And Pasolini only contemplates determining the “main vertical
`axis” (EX1005, 8:18-19) via the “vertical detection axis z” component. EX1005,
`2:62. Whereas, the claim language requires “assigning a dominant axis with respect
`to gravity”, which allows for any direction and axis to become dominant. See also
`EX2001, ¶¶ 19-20. Thus, neither Fabio or Pasolini, alone or in combination disclose
`changing axis, and therefore does not disclose “assigning a dominant axis with
`respect to gravity based on an orientation of the inertial sensor”.
`Furthermore, “a patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently, known in the
`prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167
`L.Ed.2d 705 (2007). The obviousness analysis must focus on the knowledge and
`motivations of the skilled artisan at the time of the invention. InTouch Techs., Inc.
`v. VGO Commc'ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of
`obviousness, there must be an explanation of why a person of ordinary skill in the
`art would modify the prior art references to create the claimed invention. Cutsforth,
`Inc. v. MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re
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`Kotzab, 217 F.3d 1365, 1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359
`(Fed.Cir.1998).
`The Petition merely provides conclusory statements and speculation through
`its declarant for the proposition that “a POSITA would have understood that Fabio’s
`pedometer would assign the vertical detection axis with respect to gravity using
`Pasolini’s technique of identifying the vertical detection axis each acquisition of a
`new acceleration signal to take into account changes in the device’s orientation.”
`Pet. 26.
`However, 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). Further, the obviousness analysis must focus
`on the knowledge and motivations of the skilled artisan at the time of the invention.
`InTouch Techs, 751 F.3d at 1348. And there must be an explanation of why a person
`of ordinary skill in the art would modify the prior art reference to create the claimed
`invention. Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In
`re Rouffet, 149 F.3d at 1359.
`Petitioner speculates through its declarant, for example, that “[a] POSITA
`would have also understood that implementing Pasolini’s additional teachings into
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`Fabio’s device would result in a signal that is less susceptible to the type of errors
`that Fabio is concerned with preventing, …” Pet. 21. The Petition purports to rely
`on its declarant for support of its speculative and conclusory statements, however,
`the declaration merely parrots the exact same speculative and conclusory statements
`(compare Pet. 21 with EX1003, ¶ 57), without the required analysis or explanation.
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359.
`As another example, Petitioner cites its declarant’s testimony as allegedly
`supporting the conclusion that “[c]ombining Pasolini’s technique for identifying the
`main vertical axis at each acquisition of a new acceleration sample into Fabio’s
`pedometer would have been a relatively simple and obvious solution to solve the
`problem of Fabio’s pedometer changing orientation during use.” Pet. 22. However,
`the declaration merely parrots the exact same speculative conclusion (compare Pet.
`22 with EX1003, ¶ 59), without the required analysis or explanation. This
`conclusory approach does not and cannot establish prima facie obviousness.
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359.
`Therefore, The Petition should be denied because Fabio does not disclose
`assigning a dominant axis based on an orientation of the inertial sensor, and because
`neither Fabio or Pasolini, alone or in combination disclose changing axis, and
`therefore does not disclose “assigning a dominant axis with respect to gravity based
`on an orientation of the inertial sensor”, and because the Petition merely and
`improperly speculates through its declarant without providing any of the required
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`analysis or explanation for the proposed combination of Fabio and Pasolini.
`
`D. No Prima Facie Obviousness for “detecting a change in the
`orientation of the inertial sensor and updating the dominant axis
`based on the change” (Claims 1 and 14)
`The Petition relies on its argument in Claim 1 for similar limitations in Claims
`10 and 14. See Pet. 38 (“This limitation is the same as the limitation discussed in
`section [1.2]. Therefore, Fabio in view of Pasolini renders this limitation obvious as
`described in section [1.2].”). Therefore, the Petition fails to establish prima facie
`obviousness of independent Claims 1 and 14 for the same reasons.
`Petitioner’s proposed combination of Fabio and Pasolini cites the latter
`reference only for the alleged teaching that “the main vertical axis can be identified
`at each acquisition of a new acceleration sample.” Pet. 27. According to Petitioner,
`this alleged teaching renders obvious the requirement of “detecting a change in the
`orientation of the inertial sensor and updating the dominant axis based on that
`change.” Id.
`As described above, the proposed combination fails because neither Fabio
`nor Pasolini (either alone or in combination) discloses changing the axis, and
`therefore does not disclose updating the dominant axis. Furthermore, the Petition
`improperly relies on speculative and conclusory testimony of its declarant for the
`proposed combination of Fabio and Pasolini. Such an approach does not and cannot
`establish p
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