UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE, INC.
`
`Petitioner
`
`v.
`UNILOC LUXEMBOURG, S.A.1
`
`Patent Owner
`
`
`
`
`
`
`
`IPR2018-01028
`PATENT 7,881,902
`
`
`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
` The owner of this patent is Uniloc 2017 LLC.
`
` 1
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE, INC.
`
`Petitioner
`
`v.
`UNILOC LUXEMBOURG, S.A.1
`
`Patent Owner
`
`
`
`
`
`
`
`IPR2018-01028
`PATENT 7,881,902
`
`
`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
` The owner of this patent is Uniloc 2017 LLC.
`
` 1
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`Table of Contents
`
`2.
`
`3.
`
`INTRODUCTION .................................................................................... 1
`PETITIONER FAILS TO MEET ITS BURDEN OF PROOF ................ 1
`A. Ground 1 of the Petition Fails Because Fabio and
`Pasolini do not Disclose or Suggest “using a default step
`cadence window to identify a time frame within which to
`monitor for a next step” .................................................................. 1
`1.
`The Board correctly found Fabio’s validation
`window TV is not a default cadence window ...................... 2
`a)
`The Reply Fails to Controvert the Plain
`Disclosure of Fabio .................................................... 4
`The Petition fails to prove Fabio’s threshold time
`TS1 is a “default cadence window” as claimed ..................... 5
`The Petition fails to prove it would have been
`obvious to modify Fabio’s validation window TV
`to allegedly map onto the claimed “default
`cadence window” ................................................................. 8
`a)
`The Reply Also Fails To Show A POSITA
`Would Have Modified Fabio’s Validation
`Interval As Proposed ................................................ 10
`The Petition fails to prove obviousness of “when
`the step count is at or above the step count
`threshold, determining a dynamic step cadence
`window and using the dynamic step cadence
`window to identify the time frame within which
`to monitor for the next step” .............................................. 12
`Petitioner fails to prove obviousness of the additional
`limitations recited in dependent claim 8 ....................................... 15
`CONCLUSION ....................................................................................... 19
`
`4.
`
`B.
`
`
`
`I.
`II.
`
`III.
`
`
`ii
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to
`Petitioner’s Reply in IPR2018-01028 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,881,902 (“the ’902 Patent” or “EX1001”) filed by
`Apple, Inc. (“Petitioner”).
`
`II.
`
`PETITIONER FAILS TO MEET ITS BURDEN OF PROOF
`The Petition fails to established unpatentability for the following grounds it
`raised under 35 U.S.C. § 103:
`Ground
`Claims
`1
`2
`
`5
`8
`
`Reference(s)
`Fabio2 and Pasolini3
`Fabio, Pasolini, and Tsuji4
`
`A. Ground 1 of the Petition Fails Because Fabio and Pasolini do not
`Disclose or Suggest “using a default step cadence window to
`identify a time frame within which to monitor for a next step”
`Among other substantive deficiencies, Petitioner fails to prove that the cited
`Fabio and Pasolini references (either alone or in combination) disclose or suggest
`“using a default step cadence window to identify a time frame within which to
`monitor for a next step,” as recited in claim 5 (and claim 8 depending therefrom).
`The Petition, as well as the Reply, incorrectly defines the “cadence window”
`as a “window of time since a last step was counted that is looked at to detect a new
`step.” See Petition at 9-10; Reply at 8, 11. This definition ignores the term “cadence”
`
`1
`
`
`
` 2
`
` EX1006, U.S. Patent No. 7,698,097
`3 EX1005, U.S. Patent No. 7,463,997
`4 EX1010, U.S. Patent No. 7,297,088
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`and treat the words as though they merely reference a “window” without regard to
`a “cadence.” Both the common definition of cadence (usually referring to a
`repetitive rhythmic pattern) and the specification describe a “cadence” as looking at
`multiple motion cycles (not just a single cycle) to determine a particular rhythmic
`pattern. See e.g., Id. at 3:18-32, 38-54; 6:65-7:14. Indeed, the specification describes
`the cadence window as a rolling average of previous detected cycles. Id at 3:66-
`4:10.
`
`Assuming for the sake of argument that Petitioner’s incorrect definition were
`adopted, Fabio still does not disclose the claimed “cadence window.” This is
`because Fabio’s so-called “validation interval” TV is used to determine whether the
`last step is to be counted – not as a “window of time since a last step was counted”
`as described further below.
`
`1.
`
`The Board correctly found Fabio’s validation window TV is
`not a default cadence window
`The Board observed that the primary theory in the Petition is that “Fabio’s
`validation window TV is a default cadence window.” Paper 8 at 28. In rejecting this
`theory, the Board stated “we are not persuaded that Fabio’s validation window TV
`in first counting procedure 110 teaches or suggests using a default cadence
`window.” Id. The Board is correct that Petitioner’s attempted mapping of Fabio’s
`“validation interval” (TV) onto the claimed “default cadence window” cannot
`withstand scrutiny, particularly in view of the construction applied in the Petition.
`Fabio describes its TV with reference to its Figure 6, which is copied and
`annotated below. See, e.g., EX1006, Fig. 6 and accompanying description including,
`
`2
`
`
`
`for example, 4:28‒49.
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`
`Fabio’s TV is retrospective at least in that it is used to validate only the
`immediately preceding step (shown in Fig. 6 as K-1) (shown in Fig. 6 as K): “[m]ore
`precisely, the last step recognized is validated if the instant of recognition of the
`current step TR(K) falls within a validation interval TV[.]” Id (emphasis added).
`Unless and until the last step is validated by the current suspected step in the manner
`disclosed, the last step is not counted. Id. 5:10‒39. The current suspected step (K),
`in turn, is dependent upon the next suspected step (K+1) for validation and counting.
`Id. The final suspected step detected will not be counted because it cannot be
`validated. Id.
`Accordingly, Fabio’s validation interval TV is not “a window of time since a
`last step was counted” (as required by Petitioner’s construction) at least because
`Fabio defines its TV as necessarily starting before the last step is counted. Id.; see
`also EX2001 ¶¶ 32‒35. Indeed, Fabio’s TV is used in determining whether to count
`the last step. Id. Thus, in addition to the reasons set forth in the Institution Decision,
`the Petition should be denied because Fabio’s TV does not satisfy the construction
`
`3
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`for “cadence window” relied upon in the Petition.
`The Reply Fails to Controvert the Plain Disclosure of
`a)
`Fabio
`The Reply argues that Patent Owner supplied a flawed interpretation
`
`concerning the Fabio and its validation of a “last step.” Reply at 2-6. Petitioner is
`
`mistaken. Fabio in describing the very figures that the Reply relies upon, describes
`
`its own function as follows:
`
`
`
`EX1006, 4:22-39 (highlighting and underlining added).
`As made clear above, Fabio expressly distinguishes between the current step
`and the previous, or last step recognized. In other words, while it is the case that
`the system of Fabio executes a step validation step after a step recognition test, the
`step validation step is validating the previous step recognized, there is no
`validation of the current step in any given instant cycle. And nothing in the
`Petition or Reply shows otherwise.
`
`4
`
`
`
`2.
`
`IPR2018-01028
`U.S. Patent 7,881,902
`The Petition fails to prove Fabio’s threshold time TS1 is a
`“default cadence window” as claimed
`The Board also observed that Petitioner argues, in the alternative, that
`“Fabio’s threshold time TS1, which is the maximum time within which samples of
`acceleration data AZ can be tested to detect and validate steps in first counting
`procedure 110, is a default cadence window.” Paper 8 at 29. To suggest this
`interpretation of Fabio reads upon the claim language would require an
`unreasonably-expansive view of the “default cadence window” term that is
`untethered to the claim language. The claim language explicitly defines and limits
`the “default cadence window” at least in that it must be used “to identify a time
`frame within which to monitor for a next step.” Petitioner fails to prove that Fabio’s
`TS1 satisfies these requirements.
`Fabio does not state that its TS1 is “a timeframe within which to monitor for a
`next step.” At best, Fabio uses a current sample of acceleration data (AZ) to
`determine whether a past sample of acceleration data constitutes a valid step. See,
`e.g., EX1006, 4:22−40. Unless and until that retrospective validation occurs, the
`prior data is not and cannot be deemed a step and counted as such. See, e.g., id.,
`5:10−11. Applying this distinguishable approach in Fabio, a given threshold time
`TS1 will have long expired by the time the system ultimately determines whether the
`corresponding data constitutes a valid step. At this point, the validated step is not a
`“next step” but rather it is a necessarily a past step. The retrospective scheme in
`Fabio bears no resemblance to the claim language.
`Fabio confusingly conflates two different concepts in its use of the term
`
`5
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`“step” to mean both an actual step (that is validated as a step), and a step-like event
`that could end up being not a step (e.g., because it is not validated later). As a result,
`even though step 225 of Fabio is labeled as a “step-recognition test,” Fabio’s TS1
`does not “identify a time frame within which to monitor for a next step” as the claim
`language requires because Fabio’s TS1 precedes the step validation procedure, which
`is backwards-looking and functions to validate the previous step. As already
`discussed above in Section II.A.1, the step validating procedures of Fabio, using
`validation interval TV, is used in determining whether to count the last step. In other
`words, the “validation interval” of Fabio cannot “monitor for the next step” as
`required by the claim language because the “validation interval” TV is reactive and
`waits for the next step to occur before making its determination of whether to count
`the previous step.
`The distinction is also apparent in Figure 4 of Fabio and its corresponding
`description (including the description cited above). For the convenience of the
`Board, Figure 4 of Fabio is copied and annotated below:
`
`6
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`TS1 is involved in determining
`whether to execute procedure to
`validate the previous step-like event
`
`procedure for validating the
`previous step-like event
`
`“NO” means previous step-
`like event should not be
`counted as a not a step
`
`
`As shown in Figure 4, Fabio applies its TS1 exclusively in step 205. Long after the
`expiration of TS1, Fabio makes a determination (230) as to whether the prior
`acceleration data constitutes a valid step. The current acceleration data sampled at
`block 200 cannot be validated as containing a step unless and until new and distinct
`acceleration data is sampled and analyzed.
`This retrospective approach has the effect that the final sample of acceleration
`data that the system ultimately collects cannot be validated and is thus discarded.
`This is true even though that last sample of acceleration data may have otherwise
`constituted a “next step” if Fabio had, instead, used the forward-looking approach
`taught and claimed in the ’902 patent.
`
`7
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`Accordingly, Petitioner has failed to prove that Fabio’s threshold time TS1
`renders obvious “using a default step cadence window to identify a time frame
`within which to monitor for a next step,” as recited in claim 5.
`
`3.
`
`The Petition fails to prove it would have been obvious to
`modify Fabio’s validation window TV to allegedly map onto
`the claimed “default cadence window”
`Evidently recognizing Fabio’s validation window TV is distinguishable from
`the claimed “default cadence window,” Petitioner argues in the alternative that it
`would have been obvious to modify Fabio’s validation window TV “to a default
`value in order to increase compatibility with the user’s previous step as the user is
`beginning a new activity such as walking or running.” Pet. 28. In other words,
`Petitioner argues that it would have been obvious to abandon the specific description
`in Fabio of how the validation window TV is mathematically determined, and
`thereby depart from a central aspect of how Fabio operates. The Federal Circuit has
`repeatedly held, however, that combinations which change the basic principles
`under which a reference was designed to operate may fail to support a conclusion of
`obviousness. Plas–Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 759
`(Fed. Cir 2015) (citations omitted).
`Fabio mathematically defines its validation window TV as follows:
`
`
`
`8
`
`
`
`EX1006, 4:35−41. Based on this precise formula, Fabio graphically illustrates TV
`as follows:
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`
`EX1006, Figure 6. Thus, Fabio discloses that its TV is purposefully-defined with
`respect to the instant of recognition of the immediately-preceding step; and that the
`TV is calculated and used on a step-by-step basis to determine whether to count the
`immediately preceding step as valid or, instead, to deem the preceding step as an
`invalid “false positive” (and hence not a step at all).
`
`Petitioner argues (through its declarant) that departing from Fabio’s
`mathematical definition for TV would have been obvious “in order to increase
`compatibility with the user’s previous step as the user is beginning a new activity
`such as walking or running.” Pet. 28 (citing EX1003 pp. 38−39.). This argument is
`factually and legally flawed.
`Nothing in Fabio suggests it would be advantageous to increase the
`compatibility with the user’s previous step through use of a fixed value. On the
`contrary, Fabio is purposefully designed to discount the user’s last step data as
`invalid if it fails to satisfy mathematical conditions based on the TV presently
`
`9
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`calculated as defined. EX1006, 4:35−41. Moreover, nothing in Fabio suggests
`application of its TV as defined fails to adequately determine when the user is
`beginning a new activity, such as walking or running. Rather, Fabio describes
`applying its TV—as mathematically defined—to determine whether to transition
`from a first counting procedure (associated with a user at rest) to a second counting
`procedure (associated with the user not being at rest). See, e.g., id., Figure 4 and
`accompanying description.
`These facts invoke the case of In re Omeprazole Patent Litigation, 536 F.3d
`1361 (Fed. Cir. 2008). There, the Federal Circuit affirmed a finding of non-
`obviousness, in part, because the alleged flaws in the prior art that ostensibly
`prompted the modification had not been recognized in the art itself. Thus, there
`would have been no reason to modify as proposed, even though the modification
`could have been done.
`For at least the foregoing reasons, Petitioner has failed to prove that it would
`have been obvious to modify Fabio’s TV in any manner that renders obvious “using
`a default step cadence window to identify a time frame within which to monitor for
`a next step,” as recited in claim 5.
`The Reply Also Fails To Show A POSITA Would
`a)
`Have Modified Fabio’s Validation Interval As
`Proposed
`The Reply fails to address the Petition’s shortcomings as discussed above.
`First, the Reply does not dispute that the Petition’s proposed modification of how
`Fabio’s validation window TV is mathematically determined would depart from a
`central aspect of how Fabio operates. Instead, the Reply merely argues that
`
`10
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`Petitioner only only proposed to modify the validation interval for “the first few
`steps” or “as the user is beginning a new activity such as walking or running.” Reply
`at 10. The Reply then states in conclusory fashion that “[t]hus, there is no change of
`the basic principles under which the references was designed to operate…” Id.
`However, the Reply fails to cite to any evidence or explanation as to how modifying
`Fabio’s validation interval (TV) for “the first few steps” as proposed would not
`change “the basic principles under which the references was designed to operate.”
`Nor does the Reply or Petition show or define what would constitute “the first few
`steps” and how or why the proposed modification would hypothetically transition
`between the proposed modification to Fabio’s validation interval to whatever is
`supposed to happen after “the first few steps”, which the Petition and Reply are also
`silent on.
`Second, the Reply accuses Patent Owner of not citing any authority “that
`indicates a prior art reference must explicitly describe its inadequacies to allow for
`modifications based on teachings in other references.” Reply at 10-11. However,
`Petitioner misses the point. As an initial matter, the burden is Petitioner’s to show a
`POSITA would have made its proposed modification. As discussed above,
`Petitioner has failed to carry its burden. Additionally, the Reply sets up a straw-man:
`nowhere is there an allegation that “a prior art reference must explicitly describe its
`inadequacies…”, instead a finding of non-obviousness is appropriate, in part,
`because the alleged flaws in the prior art that ostensibly prompted the modification
`had not been recognized in the art itself. In re Omeprazole, 536 F.3d 1361.
`
`11
`
`
`
`4.
`
`IPR2018-01028
`U.S. Patent 7,881,902
`The Petition fails to prove obviousness of “when the step
`count is at or above the step count threshold, determining a
`dynamic step cadence window and using the dynamic step
`cadence window to identify the time frame within which to
`monitor for the next step”
`The Petition fails to prove its proposed combination of Fabio and Pasolini
`renders obvious “when the step count is at or above the step count threshold,
`determining a dynamic step cadence window and using the dynamic step cadence
`window to identify the time frame within which to monitor for the next step,” as
`recited in claim 5. The Petition relies solely on Fabio for the “dynamic step cadence
`window” limitation. This theory fails to prove obviousness for several independent
`reasons.
`The Board observed “Petitioner argues that Fabio teaches counting steps
`using second step counting procedure 130 when step count NVC exceeds threshold
`NT2.” Paper 8 at 31 (citing Pet. 29–30). The Board further summarized Petitioner’s
`argument as follows:
`
`Fabio’s unmodified validation window TV, which is used to
`validate steps in second step counting procedure 130, is a
`dynamic cadence window because it is “defined with respect to
`the instant of recognition of the immediately preceding step,” and
`a person skilled in the art would understand this to mean that it
`“compensates for changes in each step” and “would also change
`from step to step.” Id. at 30–31 (citing Ex. 1003, 42–43; Ex.
`1006, 4:37–39).
`
`Paper 8 at 31.
`The Petition fails to logically interconnect these two disjointed pieces of its
`theory. Use of the word “when” in the claim language logically and temporally ties
`together the expressed condition “the step count is at or above the step count
`
`12
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`threshold” with the result of “determining a dynamic step cadence window.” There
`is no such logical and temporal interconnection in Fabio and the Petition does not
`argue otherwise.
`Fabio offers the following description (with reference to block 265 of Figure
`4) of precisely what happens when the number of valid control steps is equal to the
`second threshold number NT2: “the number of invalid steps NINV and the number of
`valid control steps NVC are set to zero, where the total number of valid steps NVT is
`updated and incremented by a value equal to the second threshold number NTV
`(block 265).” EX1006, 5:32−36.
`
`
`There simply is no discussion, at this point in the Fabio process, of the
`validation that occurs when the second counting procedure is executed. Indeed,
`Petitioner essentially admits the alleged “change from step to step” of the validation
`window TV cannot occur unless and until multiple steps are first obtained and
`evaluated using the second counting procedure. This does not disclose or suggest
`the temporal and logical interrelationship between “determining a dynamic step
`cadence window” and “when the step count is at or above the step count threshold,”
`as recited in claim 5.
`
`13
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`Fabio further states that the commencement of its second counting process
`involves “evaluat[ing] whether the time interval TC that has elapsed from the last
`step recognized is higher than the first second time threshold TS2 (block 305).”
`EX1006, 6:15−17; see also id., 6:31−32; Pet. 55−56 (admitting Fabio’s “second
`validation test ‘is altogether similar to the first validation test carried out in block
`230 of FIG. 3.’”). Because Petitioner argues that Fabio’s TS1 satisfies the “default
`cadence window,” Petitioner cannot reasonably argue that the similarly-described
`TS2 used at the outset of the second counting procedure somehow satisfies, instead,
`the “dynamic cadence window” limitations. Indeed, even the Reply does not
`contend otherwise, instead the Reply only points out that the claim language requires
`both a default cadence window and a dynamic cadence window. See Reply at 13-
`14.
`
`After application of TS2, Fabio’s second counting procedure caries out a step-
`recognition test (block 315) that Fabio states is “identical to the step-recognition test
`of block 225 of Fig. 3. EX1006, 6:22−23. This involves the retrospective
`determination (summarized above) as to whether the prior acceleration data
`constitutes a valid step. This retrospective scheme in Fabio bears no resemblance to
`the claim language and corresponding teachings in the ’902 patent directed to
`proactively limiting when to even monitor for a next step in the first place.
`Even if Fabio had disclosed that its validation interval TV dynamically
`changed between first and second iterations of execution of the second counting
`procedure (and it does not), this still would not render obvious the distinguishable
`claim language, “when the step count is at or above the step count threshold,
`
`14
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`determining a dynamic step cadence window and using the dynamic step cadence
`window to identify the time frame within which to monitor for the next step.” This
`is at least because the moment in Fabio Petitioner attempts to associate with the
`“when” of the claim language (i.e., when step count NVC is determined to exceed
`threshold NT2) occurs before the second counting procedure is even initiated. This
`is also because the claim language requires “using the dynamic step cadence
`window to identify the time frame within which to monitor for the next step.” As
`detailed above (§II.A.1), Fabio does not disclose or suggest using its TV to identify
`the time frame within which to monitor for the next step. Rather, Fabio’s TV is only
`used retrospectively to validate a preceding step.
`For at least the foregoing reasons, the Petition fails to prove obviousness for
`“when the step count is at or above the step count threshold, determining a dynamic
`step cadence window and using the dynamic step cadence window to identify the
`time frame within which to monitor for the next step,” as recited in claim 5.
`
`B.
`
`Petitioner fails to prove obviousness of the additional limitations
`recited in dependent claim 8
`The deficiencies described above with respect to claim 5 apply equally to
`claim 8, which depends therefrom. The Petition also fails to prove obviousness of
`the additional claim requirements recited in dependent claim 8.
`Claim 8 further defines and restricts “determining the dynamic cadence
`window” as follows: “wherein determining the dynamic step cadence window
`comprises: computing a rolling average of stepping periods of previously counted
`steps; and setting the dynamic step cadence window based on the rolling average of
`
`15
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`stepping periods.”
`The Petition relies exclusively on Tsuji as allegedly curing the conceded
`deficiencies of Fabio and Pasolini with respect to claim 8. Specifically, Petitioner
`argues Tsuji’s walk cycle calculating portion 108 “calculates ‘a reference walk cycle
`by obtaining a moving average Ta of cycles of a predetermined number of newest
`signals . . . among signals each of which is judged to be a walk signal.’” Pet. 40.
`Petitioner further argues that “the term ‘moving average’ used in Tsuji is
`synonymous with the term ‘rolling average’ used in the ’902 patent.” Id. Petitioner’s
`challenge of claim 8 has several fatal deficiencies.
`First, the Petition itself provides no explanation for how a POSITA would
`interpret the “moving average” in Tsuji to be the same as the claimed “rolling
`average.” Petitioner has the burden of proof, yet there is no discussion in the
`Petition, for example, concerning how Tsuji calculates its “moving average” and
`why this the equivalent to the discussion in the ’902 patent directed to the “rolling
`average” applicable to the claimed “dynamic step cadence window.” And while
`Petitioner offers unexplained citations to Tusji (Pet. 33−34), those citations are not
`accompanied with citations to the attached declaration. Such conclusory attorney
`argument does not and cannot meet the burden of proof applicable here.
`Second, the Petition overlooks several distinctions between Tusji and the
`claim language. For example, Tusji relies on continually collecting and analyzing
`acceleration data when in operation. See, e.g., EX1010, 7:6−12, 39−48. Tusji
`recognizes that this scheme will result in collecting data at irrelevant times and,
`consequently, this irrelevant data must be filtered out in order to properly implement
`
`16
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`the disclosed comparison to a reference walk cycle. Id., 6:65−7:5. The claim
`language, by contrast, uses the dynamic step cadence window to identify the time
`frame within which to monitor for the next step. The claim language is
`distinguishable, therefore, at least in that its claimed monitoring is expressly limited
`to the relevant time frame recited as the “dynamic step cadence window.”
`The Reply admits that Tusji does not have the required “dynamic step cadence
`window” (Reply at 16), instead the Reply merely argues that the claim language
`“does not exclude collecting step data outside the dynamic step cadence window”.
`Reply at 16. However, the Reply misses the point – because Tusji continually
`collects acceleration data, by definition Tusji does not have the required “window”.
`And the Reply’s claim construction argument here further misses the point, indeed
`if Tusji’s continuous collection of acceleration data was interpreted as Petitioner
`proposes, it would render the claim language “dynamic step cadence window”
`superfluous. See Digital-Vending Services Int’l, LLC v. Univ. of Phoenix, Inc., 672
`F.3d 1270, 1275 (Fed. Cir. 2012) (explaining that courts should construe “claim
`terms in light of the surrounding claim language, such that words in a claim are not
`rendered superfluous.”).
`Finally, the Petition is also deficient in that it fails to prove a POSITA would
`have been motivated to make the hypothetical combination. Despite Petitioner’s
`allegations of a “simple substitution,” the Petition itself fails to show and explain
`how a POSITA would make the alleged substitution without rending Fabio
`inoperable. If such a substitution were in fact so “simple”, the lack of an express and
`concrete showing of that substitution by Petitioner and Dr. Paradiso is glaring. An
`
`17
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`obviousness determination cannot be reached where the record lacks “explanation
`as to how or why the references would be combined to produce the claimed
`invention.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). This
`requisite explanation avoids an impermissible “hindsight reconstruction,” using “the
`patent in suit as a guide through the maze of prior art references, combining the right
`references in the right way so as to achieve . . . The claims in suit.” Id.; In re NTP,
`Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
`As summarized above, and as Petitioner appears to acknowledge, Fabio
`defines its “validation window” through use of a specific formula. See EX1006,
`4:28−55; Pet. 37. The Fabio system is purposefully designed around application of
`this specific formula, which uses currently sampled acceleration data to validate
`whether the immediately preceding acceleration data constitutes a valid step. This
`is accomplished one step at a time to achieve a level of granularity deemed essential
`for the step validation described in Fabio. This single-step granularity would be
`erased if replaced, instead, with Tusji’s moving average.
`Another basis of incompatibility is that Fabio purposefully uses current data
`to retrospectively determine whether to count a last step. According to Fabio, this
`retrospective scheme has certain advantages when applied as disclosed. Fabio’s
`retrospective scheme would be reversed on its head, and its disclosed advantages
`would be erased, if replaced, instead, with Tusji’s scheme of using a moving average
`of past data in evaluating current data. Accordingly, there would have been no
`motivation to modify Fabio based on Tusji, as proposed in the Petition.
`For at least the foregoing reasons, and in addition to the deficiencies
`
`18
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`addressed above concerning the challenge of independent claim 5, the Petition fails
`to prove obviousness for “wherein determining the dynamic step cadence window
`comprises: computing a rolling average of stepping periods of previously counted
`steps; and setting the dynamic step cadence window based on the rolling average of
`stepping periods,” as recited in dependent claim 8.
`
`III. CONCLUSION
`For at least the reasons set forth above, Uniloc respectfully requests that the
`Board deny all challenges in the instant Petition.5
`
`Date: February 8, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`
` 5
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`19
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Sur-
`
`Reply to Petitioner’s Reply complies with the type-volume limitation of 37 C.F.R.
`
`§ 42.24(c) because it contains fewer than the limit of 5,600 words, as determined
`
`by the word-processing program used to prepare the brief, excluding the parts of
`
`the brief exempted by 37 C.F.R. §42.24(c).
`
`Date: February 8, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`i
`
`
`
`IPR2018-01028
`U.S. Patent 7,881,902
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`copy of the foregoing Response was served, along with any accompanying exhibits
`not previously served, via the Patent Review Processing System (PRPS) and/or via
`email to Petitioner’s counsel at the following addresses identified in the Petition’s
`consent to electronic service:
`
`Lead Counsel: Andrew S. Ehmke, Reg. No. 50,271
`andy.ehmke.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`dina.blikshteyn.ipr@haynesboone.com
`
`
`
`Date: February 8, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`
`ii
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
