`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`Uniloc Luxembourg S.A.,
`Patent Owner
`
`———————
`
`CASE NO. IPR2018-01028
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 7,881,902
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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 ....................................................................................... 2 
`
`IV.  This Petition is not redundant .......................................................................... 3 
`
`V.  NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 4 
`
`VI.  OVERVIEW OF THE ’902 PATENT ............................................................ 4 
`
`A. 
`
`B. 
`
`Summary of the Patent ......................................................................... 4 
`
`Prosecution History .............................................................................. 6 
`
`VII.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 6 
`
`VIII.  CLAIM CONSTRUCTION ............................................................................ 7 
`
`A. 
`
`“cadence window” ................................................................................ 7 
`
`IX.  RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................... 8 
`
`X. 
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ...... 8 
`
`A. 
`
`B. 
`
`C. 
`
`Challenged Claims ............................................................................... 8 
`
`Statutory Grounds for Challenges ........................................................ 8 
`
`Challenge #1: Claim 5 is unpatentable under 35 U.S.C §103 over
`Fabio in view of Pasolini ...................................................................... 9 
`
`
`
`
`–ii–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`State of the Art at the Time of the ’902 Patent .......................... 9 
`
`Summary of Fabio .................................................................... 10 
`
`Summary of Pasolini ................................................................ 13 
`
`Reasons to Combine Fabio and Pasolini .................................. 16 
`
`Claim 5 ..................................................................................... 19 
`
`D. 
`
`Challenge #2: Claim 8 is unpatentable under 35 U.S.C §103 over
`Fabio in view of Pasolini, further in view of Tsuji ............................ 32 
`
`1. 
`
`2. 
`
`3. 
`
`Summary of Tsuji..................................................................... 32 
`
`Reasons to Combine Fabio, Pasolini, and Tsuji ...................... 35 
`
`Claim 8 ..................................................................................... 39 
`
`XI.  CONCLUSION .............................................................................................. 45 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 46 
`
`CERTIFICATE OF SERVICE ................................................................................ 47 
`
`
`
`
`
`
`
`
`
`
`–iii–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`PETITIONER’S EXHIBIT LIST
`
`May 4, 2018
`
`
`Ex.1001
`
`U.S. Patent No. 7,881,902
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 7,881,902
`
`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
`
`Reserved
`
`Ex.1008
`
`Reserved
`
`Ex.1009
`
`Reserved
`
`Ex.1010
`
`U.S. Patent No. 7,297,088 to Tsuji (“Tsuji”)
`
`Ex.1011
`
`Excerpts from Robert L. Harris, INFORMATION GRAPHICS: A
`COMPREHENSIVE ILLUSTRATED REFERENCE (1996) (“Harris”)
`
`
`–iv–
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,881,902 (“the ’902 patent,” Ex.1001) is generally directed
`
`to monitoring periodic human motions, such as walking, running, biking, and other
`
`activities. To do this, the ’902 patent uses a device that includes an accelerometer,
`
`which detects acceleration associated with the periodic human motion. And, when
`
`the accelerometer fails to detect acceleration associated with the periodic motion,
`
`the monitoring device enters a low power sleep mode.
`
`As this Petition shows, the prior art renders obvious the challenged claims of
`
`the ʼ902 patent. Accordingly, the Board should institute trial and find claim 8
`
`unpatentable.
`
`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 ’902 patent has been asserted in the following cases:
`
`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.
`
`IPR2018-00424
`
`PTAB
`
`Jan. 5, 2018
`
`Uniloc USA, Inc. v. Huawei
`Devices USA, Inc.
`
`2-17-cv-00737
`
`E.D. Tx. Nov. 9, 2017
`
`
`
`–1–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`Uniloc USA, Inc. v. HTC America,
`Inc.
`
`Uniloc USA, Inc. v. LG Electronics
`USA, Inc.
`
`Uniloc USA, Inc. v. Samsung
`Electronics America, Inc.
`
`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
`
`Uniloc USA, Inc. v. Apple Inc.
`(Transferred to N.D. Cal.)
`
`C. Lead and Back-up Counsel and Service Information
`
`2-17-cv-00522
`
`E.D. Tx.
`
`Jun. 30, 2017
`
`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Michael Parsons
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Dina Blikshteyn
`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: (212) 835-4809
`Fax: (214) 200-0853
`dina.blikshteyn.ipr@haynesboone.com
`USPTO Reg. No. 63,962
`
`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 ’902 patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`
`
`–2–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`challenging the patent claims on the grounds identified in this petition. Petitioner
`
`was served with a complaint asserting infringement of the ’902 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 ’902 patent.
`
`IV. THIS PETITION IS NOT REDUNDANT
`
`On January 5, 2018, Petitioner filed IPR2018-00424 (“’424 petition)
`
`challenging claims 1-6, and 9-10 of the ’902 patent. This petition is not redundant
`
`because it seeks review with respect to only previously unchallenged claim 8.
`
`Claim 8 was not challenged in the ’424 petition because the prior art teaching the
`
`limitations of claim 8 was not located by Petitioner until after the ’424 petition was
`
`filed. And, the prior art relied upon in this petition (i.e., Tsuji, Ex.1010) is directed
`
`only to the limitations found in claim 8.
`
`Additionally, while this petition is directed toward only claim 8, claim 8
`
`depends from claim 5. As such, this petition incorporates analysis for claim 5;
`
`however, the analysis of claim 5 in this petition is verbatim identical to the analysis
`
`of claim 5 presented in the ’424 petition.1 Accordingly, even though Patent Owner
`
`
`1 Not only is the analysis of claim 5 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.
`
`
`
`–3–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`has filed its preliminary response in IPR2018-00389,2 the analysis in this petition
`
`directed to claim 5 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). Citations to the remaining exhibits use the page
`
`numbers in their original publication. Unless otherwise noted, all bold underline
`
`emphasis in any quoted material has been added.
`
`VI. OVERVIEW OF THE ’902 PATENT
`
`A.
`
`Summary of the Patent
`
`The ’902 patent is directed to an electronic device that “count[s] steps or
`
`other periodic human motions.” Ex.1001, 2:29-30. To “count” the periodic human
`
`motions, the electronic device “includes one or more inertial sensors”—such as an
`
`2 IPR2018-00389 is directed to U.S. Patent No. 8,712,723, which is a continuation
`
`of the ’902 patent.
`
`
`
`–4–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`accelerometer—that measure acceleration data to detect a motion cycle. Ex.1001,
`
`1:18, 2:25-26, 2:38-43, 3:47-48. According to the ’902 patent, a “period and/or
`
`cadence of the motion cycle may be based on a human activity,” such as
`
`rollerblading, biking, running, walking, or any other activity having a periodic set
`
`of repeated movements. Ex.1001, 3:16-17, 3:36-38.
`
`To reduce power consumption, the electronic device operates in different
`
`modes. Ex.1001, 8:20-23. In claims 1-4, one of these modes is a “sleep mode” that
`
`“reduces power consumption and prolongs battery life.” Ex.1001, 8:66-67. The
`
`electronic device enters the sleep mode when “no relevant acceleration is
`
`detected.” Ex.1001, 10:40-41. While in the sleep mode, “a sampling function is
`
`periodically executed,” where the function “samples acceleration data at a set
`
`sampling rate for a set time period.” Ex.1001, 9:5-7.
`
`Unlike claims 1-4, claims 5-10 are directed to determining a step cadence
`
`window “used to count steps.” Ex.1001, 4:21-22. The step cadence window “is a
`
`window of time since a last step was counted that is looked at to detect a new
`
`step.” Ex.1001, 3:66-4:1. “The cadence window may have a default minimum and
`
`maximum value.” Ex.1001, 4:63-66. However, “[o]nce enough steps have been
`
`detected to determine a dynamic stepping cadence or period,” the dynamic cadence
`
`window “continuously updates as a user’s cadence changes.” Ex.1001, 5:1-2, 4:24-
`
`26.
`
`
`
`–5–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`B.
`
`Prosecution History
`
`The ’902 patent issued on February 1, 2011, from the U.S Patent Application
`
`No. 12/694,135 filed January 26, 2010. The ’902 patent is a continuation of U.S.
`
`Patent No. 7,653,508, filed on December 22, 2006. On September 24, 2010, and
`
`without any previous action, the Examiner issued a Notice of Allowance for
`
`original claim 12 (issued claim 1) and original claim 25 (issued claim 5). Ex.1002,
`
`pp.5,34. Consequently, the references presented in this petition were not cited or
`
`applied by 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
`
`’902 Patent (i) a Bachelor’s degree in Electrical Engineering, Computer
`
`Engineering, and/or Computer Science, or equivalent training, and (ii)
`
`approximately two years of experience working in hardware and/or software
`
`design and development related to MEMS (micro-electro-mechanical) devices and
`
`body motion sensing systems. Ex.1003, p.8. Lack of work experience can be
`
`remedied by additional education, and vice versa. Ex.1003, p.8.
`
`
`
`
`
`–6–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`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.
`
`A.
`
`“cadence window”
`
`This term appears in at least claim 5. The specification 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, 3:66-4:1.
`
`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, p.15.
`
`
`
`–7–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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 claim 8, and cancel this claim.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Joe Paradiso,
`
`the concepts described and claimed in the ’902 patent were not new. This petition
`
`explains where each element of claim 8 is found in the prior art and why the claim
`
`would have been obvious to a POSITA before the earliest claimed priority date of
`
`the ’902 patent.
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Claim 8 of the ’902 patent are challenged in this petition.
`
`B.
`
`Statutory Grounds for Challenges
`
`Challenge
`
`Claims
`
`Challenge #1
`
`5
`
`Ground
`
`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. U.S. Patent No. 7,463,997 to Fabio
`Pasolini et al. (“Pasolini”)
`
`Challenge #2
`
`8
`
`Obvious under 35 U.S.C. § 103(a) over Fabio in view of
`Pasolini, further in view of Tsuji (“Tsuji”)
`
`Pasolini (Ex.1005) was filed on October 2, 2006, issued on December 9,
`
`2008, and is prior art under § 102(e). Fabio (Ex.1006) was filed on October 2,
`
`2006, issued on April 13, 2010, and is prior art under § 102(e). Tsuji was filed on
`
`
`
`–8–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`April 19, 2005, issued on November 20, 2007, and is prior art under 35 U.S.C. §
`
`102(e).
`
`C. Challenge #1: Claim 5 is unpatentable under 35 U.S.C §103 over
`Fabio in view of Pasolini
`
`1. State of the Art at the Time of the ’902 Patent
`
`By the time the’902 Patent was filed on 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 device that Mr. Pasolini
`
`designed use an inertial sensor, such as 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).
`
`
`
`–9–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`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
`
`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 claim 5 challenged
`
`below.
`
`2. Summary of Fabio
`
`Fabio is directed to “controlling a pedometer based on the use of inertial
`
`sensors.” Ex.1006, 1:10-11. An example of Fabio’s pedometer device 1 as
`
`
`
`–10–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`“integrated within a portable electronic device, such as a cell phone 2” (Ex.1006,
`
`2:33-36) is reproduced below:
`
`
`
`Ex.1006, Fig.1.
`
`
`
`Fabio describes that its pedometer 1 includes an “inertial sensor 3 [that]
`
`supplies at output an acceleration signal AZ, which is correlated to the accelerations
`
`undergone by the inertial sensor 3 itself along the detection axis Z.” Ex.1006, 2:56-
`
`59. Fabio’s pedometer performs step recognition by sampling the acceleration
`
`signal AZ to identify characteristics including “a positive peak, higher than a
`
`positive acceleration threshold AZP, followed by a negative peak, smaller than a
`
`negative acceleration threshold AZN.” Ex.1006, 4:12-21.
`
`Fabio notes that “there are many random events that can interfere with
`
`correct recognition of the step. Impact or other external vibrations and given
`
`
`
`–11–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`movements of the user can, in fact, give rise to so-called ‘false positives.’”
`
`Ex.1006, 1:38-41. For this reason, Fabio describes a pedometer having various
`
`features to overcome these step detection challenges. Some of these features
`
`include “checking whether sequences of the detected steps satisfy pre-determined
`
`conditions of regularity; updating a total number of valid steps if the conditions of
`
`regularity are satisfied; and preventing updating of the total number of valid steps
`
`if the conditions of regularity are not satisfied.” Ex.1006, 1:62-2:3. More precisely,
`
`Fabio explains that “the last step is validated if the instance of recognition of
`
`the current step TR(K) falls within a validation interval TV[.]” Ex.1006, 4:35-
`
`39. Fabio shows the instant of recognition of a current step occurring within the
`
`validation interval after an instant of recognition of a previous step in Figure 6
`
`(below).
`
`Instant of recognition of current step
`
`Instant of
`recognition of
`previous step
`
`Validation Interval
`
`
`
`
`
`–12–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`
`Ex.1006, Fig.6 (annotated); Ex.1003, p.19.
`
`Using this step validation technique, Fabio’s device is able to more
`
`accurately count steps and adapt to changes in the user’s pace. Ex.1003, p.20.
`
`Specifically, Fabio teaches that “[p]ossible isolated irregularities are ignored and
`
`do not interrupt or suspend updating of the count, which is, instead, interrupted
`
`when prolonged pauses occur or in the presence of significant discontinuities in
`
`locomotion.” Ex.1006, 7:16-19.
`
`Fabio additionally describes sampling the acceleration signal from a
`
`detection axis most influenced by gravity. Specifically, Fabio teaches using an
`
`inertial sensor “with two or three axes of detection” so that “step recognition can
`
`advantageously be performed by selecting the acceleration signal
`
`corresponding to the detection axis nearest to the vertical.” Ex.1006, 8:20-25.
`
`According to Fabio, “[t]he detection axis nearest to the vertical is the axis along
`
`which the contribution of gravity is greater.” Ex.1006, 8:30-32.
`
`3. Summary of Pasolini
`
`As discussed above, Pasolini shares the same inventive entity as Fabio
`
`(Fabio Pasolini and Ivo Binda) and was filed on the same day. See Ex.1005;
`
`Ex.1006. Pasolini is similarly directed to “a pedometer device and to a step
`
`detection method using an algorithm for self-adaptive computation of acceleration
`
`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.22.
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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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`4. 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.23.
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`A POSITA would have recognized that Fabio and Pasolini describe similar
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`pedometer devices while addressing different shortcomings in the known
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`technology. Ex.1003, p.23. 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.23. 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.23. 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.23.
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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, pp.23-24.
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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.24. 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.24.
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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 arranged inside it.” Ex.1003, p.24; Ex.1005,
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`8:20-24. A POSITA would have recognized that the ability of Pasolini’s pedometer
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`“to take into account variations in the orientation of the pedometer device 1, and
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`consequently the accelerometer arranged inside it” provides the distinct benefit of
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`improving the quality of the acceleration signal used for performing step
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`recognition because Pasolini’s pedometer continuously updates which axis is
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`selected as the vertical axis so that the acceleration signal used for step detection is
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`the acceleration signal aligned with gravity. Ex.1003, pp.24-25.
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`Combining Pasolini’s technique for identifying the main vertical axis at each
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`acquisition of a new acceleration sample into Fabio’s pedometer would have been
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`a relatively simple and obvious solution to solve the problem of Fabio’s pedometer
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`changing orientation during use. Ex.1003, p.25. A POSITA would have applied
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`Pasolini’s technique to Fabio with the predictable result being that Fabio’s device
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`update the axis of detection with each acceleration sample so that the acceleration
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`signal would be processed from the vertical axis that is aligned with gravity, even
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`if the orientation of Fabio’s pedometer changes. Ex.1003, p.25. This advantage
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`would have been readily recognized by a POSITA because Fabio specifically
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`instructs that “step recognition can advantageously be performed by selecting the
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`acceleration signal corresponding to the detection axis nearest to the vertical”
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`(Ex.1006, 8:20-25) and Pasolini provides a solution of the problem of determining
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`the axis of the accelerometer that is nearest to the vertical. Ex.1003, p.25.
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`The combination of Fabio and Pasolini would therefore improve Fabio’s
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`pedometer by providing more accurate step recognition, which would result in a
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`more precise step count. Ex.1003, pp.25-26. Thus, it would have been obvious to
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`combine Fabio and Pasolini as the combination is merely the use of Pasolini’s
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`known technique of determining the most vertical axis to improve Fabio’s similar
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`pedometer device in the same way. Ex.1003, p.26.
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`5. Claim 5
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`[5.0] “A method for a mobile device comprising:”
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`To the extent that this preamble is limiting, Fabio discloses it. Fabio teaches
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`“a method for controlling a pedometer.” Ex.1006, 1:58-59. The method is
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`implemented in a pedometer that is “integrated within a portable electronic
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`device.” Ex.1006, 2:34-36. The portable electronic device is a mobile device
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`because a user can wear or carry the pedometer. Ex.1006, 2:60-64. Fabio’s
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`pedometer is shown in Figure 1 (below):
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`Pedometer
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`
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`Ex.1006, Fig.1 (annotated); Ex.1003, p.27.
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`Thus, Fabio’s portable electronic device that implements a method for
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`controlling a pedometer teaches “a method for a mobile device comprising” as
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`claimed. Ex.1003, p.27.
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`[5.1] “receiving acceleration data that meets stepping criteria from an
`accelerometer included in the mobile device;”
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`Fabio discloses this limitation. First, Fabio teaches receiving acceleration
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`data … from an accelerometer included in the mobile device because its pedometer
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`includes a “control unit 5 [that] receives and processes the acceleration signal AZ”
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`supplied by the inertial sensor. Ex.1006, 2:49-2:61. The inertial sensor in Fabio’s
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`device can be “a linear accelerometer of a MEMS (micro-electromechanical
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`systems) type.” Ex.1006, 2:49. The output of the inertial sensor is an “acceleration
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`signal AZ” that comprises acceleration data because it defines “the accelerations
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`undergone by the inertial sensor 3 itself along the detection axis Z.” Ex.1006, 2:54-
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`59. Accordingly, Fabio teaches receiving acceleration data … from an
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`accelerometer included in the mobile device. Ex.1003, p.29.
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`Second, Fabio teaches that the acceleration data meets stepping criteria
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`because the control unit uses the acceleration signal AZ to count the “total number
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`of valid steps NVT made by a user wearing or carrying the pedometer.” Ex.1006,
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`2:60-64. Fabio further teaches that each step is recognized “based upon the
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`detection of a positive peak of the acceleration signal AZ followed by a negative
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`peak.” Ex.1006, 6:23-26. The positive peak followed by the negative peak used to
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`recognize a step is a stepping crit