Trials@uspto.gov
`571-272-7822
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`Paper 34
`Date: February 24, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc. (“Petitioner”) requests inter partes review of claims 1–6,
`8–25, 27–30, 46–49, and 51–53 (the “challenged claims”) of U.S. Patent
`
`
`
`
`571-272-7822
`
`Paper 34
`Date: February 24, 2020
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`INTRODUCTION
`I.
`A. Background and Summary
`Apple Inc. (“Petitioner”) requests inter partes review of claims 1–6,
`8–25, 27–30, 46–49, and 51–53 (the “challenged claims”) of U.S. Patent
`
`
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`No. 8,768,865 B2 (“the ’865 patent,” Ex. 1001) pursuant to 35 U.S.C.
`§§ 311 et seq. Paper 2 (“Petition” or “Pet.”). Qualcomm Incorporated
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Based on the record before us at that time, we instituted an inter partes
`review of all challenged claims and all grounds. Paper 7 (“Decision on
`Institution” or “Dec. on Inst.”).
`Patent Owner filed a Patent Owner’s Response (Paper 18 “PO
`Resp.”), Petitioner filed a Reply (Paper 22 “Reply”), and Patent Owner filed
`a Sur-reply (Paper 25 “Sur-reply”).
`We heard oral argument on October 30, 2019 and a transcript of that
`hearing is in the record. Paper 33.
`Upon consideration of the complete record, we determine that
`Petitioner has proven, by a preponderance of the evidence, that claims 1–3,
`5, 6, 8–22, 24, 25, 27–30, 46–49, and 51–53 are unpatentable. However,
`Petitioner has failed to show, by a preponderance of the evidence, that
`claims 4 and 23 are unpatentable.
`B. Real Parties-In-Interest and Related Matters
`Apple Inc. is identified as the sole real party-in-interest. Pet. 77. The
`parties inform us that the ’865 patent was asserted against Petitioner in the
`litigation Qualcomm Inc. v. Apple Inc., No. 3:17-cv-02402 (S.D. Cal.). Pet.
`77; Paper 4, 1. Petitioner further informs us that the above-identified
`litigation has been dismissed. Paper 17. The parties further inform us that
`the ’865 patent is at issue in inter partes review Case IPR2018-01282.
`Pet. 77; Paper 4, 1.
`
`C. The ’865 Patent
`The ’865 patent is generally directed to “machine learning of
`situations via pattern matching or recognition for use in or with mobile
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`Patent 8,768,865 B2
`communication devices.” Ex. 1001, 1:21–23. According to the ’865 patent,
`mobile communication devices (e.g., cellular and smart phones) may feature
`a number of sensors (built-in or otherwise supported) such as
`“accelerometers, gyroscopes, magnetometers, gravitometers, ambient light
`detectors, proximity sensors, thermometers, location sensors, microphones,
`cameras, etc.” Id. at 1:34–37. The ’865 patent states that a popular feature
`of such mobile devices is using such sensors to better understand what a user
`is presently doing so as to better assist the user in his/her present activity.
`Id. at 1:42–47. However, according to the ’865 patent, the growing number
`of sensors generates a high volume of data to be captured and analyzed and,
`thus, creates challenges to efficiently and effectively capture and process
`such voluminous data. Id. at 1:47–60.
`Specifically, the ’865 patent identifies challenges for such mobile
`devices as follows:
`These challenges may include, for example, detecting or
`“picking up” patterns from a large number of information
`sources with an unknown or different subset of sources being
`relevant to different situations or contexts. In other words, in
`some instances, it may be somewhat difficult to detect or
`recognize an existing pattern if such a pattern is not pre-defined
`or pre-specified in some manner for a certain information source.
`Another challenge with typical approaches may be, for example,
`identifying one or more relevant situations and learning patterns
`that are correlated with or correspond to these relevant situations.
`Consider, for example, a multi-dimensional information stream
`captured or obtained via a variety of sensors with respect to a
`typical “return-home-after-work” experience of a user.
`Id. at 7:8–21. The ’865 patent further identifies challenges of the prior art as
`follows:
`
`As seen, because of an increased dimensionality of an
`information stream due, at least in part, to a large variation of
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`Patent 8,768,865 B2
`sensor-tracked parameters indicative of user-related events or
`conditions (e.g., walking, driving, fidgeting, etc.), finding exact
`or approximate matches to a template, pre-defined or otherwise,
`may be rather difficult. In other words, at times, a relatively large
`number of varying parameters or variables associated with a
`multi-dimensional sensor information stream may be difficult to
`track, correlate, process, associate, etc., which in turn may limit
`the ability of a mobile device to react to different situations, make
`relevant inferences, or otherwise be aware of its context with
`sufficient accuracy. In addition, certain varying parameters or
`variables may be irrelevant to a particular user situation or
`context, in which case it may be important or otherwise useful to
`identify irrelevant or incidental variables so as to ignore or omit
`one or more corresponding
`irrelevant patterns
`from
`consideration, as described below.
`Id. at 7:40–57.
`The ’865 patent purports to address these challenges by monitoring
`“one or more conditions or events of interest,” rather than continuously
`monitoring all or most of the available sensor information. Id. at 7:64–8:1.
`In particular, according to the ’865 patent, a subset of parameters associated
`with a condition or event of interest may be “fixed in some manner and
`stored in a suitable database.” Id. at 8:12–15. The parameter values
`associated with the condition or event may be fixed, for example, “by
`associating corresponding parameters or variables having a particular,
`distinct, or otherwise suitable pattern to represent the condition or event.”
`Id. at 8:19–21. “A suitable processor may then look or search for a pattern
`match, exact or approximate, in one or more other signal-related patterns
`every time a condition or event-related pattern occurs, for example, by
`utilizing a ‘snapshot,’ in whole or in part, using any suitable pattern
`matching processes or algorithms.” Id. at 8:25–31.
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`Patent 8,768,865 B2
`Figure 4 of the ’865 patent is reproduced below.
`
`
`Figure 4 is a flowchart of exemplary process 400 for machine learning
`of situations in a mobile device using pattern matching or recognition. Id. at
`2:8–11. Step 402 monitors input signals from a plurality of sources
`(sensors) associated with the mobile device. Id. at 14:43–46. Step 404
`detects at least one condition or event of interest based on at least one of the
`monitored input sources. Id. at 14:54–57. At step 406, a “first pattern may
`be identified based, at least in part, on at least one detected condition or
`event,” e.g., “a distinct signal-related pattern having one or more varying
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`Patent 8,768,865 B2
`parameters or variables of interest that may be representative of or otherwise
`correspond to such a condition or event.” Id. at 14:67–15:5. Step 408 then
`fixes one or more parameters by storing them in a database or by associating
`the parameters with a pattern to represent a condition or event. Id. at 15:5–
`17. Step 410 then attempts to recognize a second pattern based on the first
`pattern. Id. at 15:18–21.
`
`D. Illustrative Claim
`Independent method claim 1, reproduced below, is illustrative of the
`challenged claims:
`1. A method comprising:
`monitoring, at a mobile device, input signals from a
`plurality of information sources associated with said mobile
`device;
`detecting at least one condition based, at least in part, on
`at least one of said monitored input signals;
`identifying a first pattern based, at least in part, on said at
`least one detected condition; and
`fixing a subset of varying parameters associated with said
`first pattern by associating at least one parameter of said subset
`of varying parameters with said first pattern to represent said at
`least one detected condition, said varying parameters derived, at
`least in part, from said monitored input signals.
`Id. at 20:62–21:8. Challenged independent claim 21 recites similar
`limitations in the style of an apparatus claim (id. at 22:24–39), and
`challenged independent claim 46 recites similar limitations in the style of an
`article of manufacture claim (a non-transitory storage medium storing
`programmed instructions) (id. at 24:20–35).
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`103(a)
`
`Wang, Nadkarni3
`
`Reference(s)/Basis
`Wang2
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`IPR2018-01281
`Patent 8,768,865 B2
`E. Prior Art and Asserted Grounds
`Petitioner asserts the challenged claims are unpatentable based on the
`following grounds (Pet. 4–5):
`Claims Challenged
`35 U.S.C. §
`1–4, 15–17, 21–23,
`102(b)1
`28, 29, 46, 47
`5, 6, 8–11, 18–20, 24,
`25, 27, 30, 48, 49,
`51–53
`Wang, Nadkarni, Greenhill4
`103(a)
`12–14
`Petitioner also relies on the declaration of James F. Allen, Ph.D.
`(Ex. 1003) in support of its assertions. Patent Owner relies on the
`declaration of John Villasenor, Ph.D. (Ex. 2004) in support of its assertions.
`II. ANALYSIS
`A. Legal Standards
`1. Anticipation
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. §§ 102
`and 103. See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). Because
`the application that resulted in the ’865 patent was filed before the effective
`date of the post-AIA amendment (March 16, 2013), the pre-AIA versions of
`§§ 102 and 103 apply.
`2 Yi Wang et al., A Framework of Energy Efficient Mobile Sensing for
`Automatic User State Recognition, Proceedings of the 7th International
`Conference on Mobile Systems, Applications and Services, pp. 179–92,
`Krakow, Poland, June 22–25, 2009 (“Wang,” Ex. 1005).
`3 US 2010/0217533 A1, issued Aug. 26, 2010 (“Nadkarni,” Ex. 1008).
`4 US 2008/0297513 A1, issued Dec. 4, 2008 (“Greenhill,” Ex. 1009).
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`Patent 8,768,865 B2
`2001). Each element of the challenged claim must be found, either
`expressly or inherently, in the single prior art reference. Verdegaal Bros.,
`Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Although
`the elements must be arranged or combined in the same way as in the claim,
`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive
`question is whether one ordinarily skilled in the art would reasonably
`understand or infer from a prior art reference that every claim element is
`disclosed in that reference. Eli Lilly v. Los Angeles Biomedical Research
`Inst. at Harbor–UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).
`Still further, “it is proper to take into account not only specific teachings of
`the reference but also the inferences which one skilled in the art would
`reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
`(CCPA 1968).
`
`2. Obviousness
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter[,] as a whole[,] would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved based on underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of skill in the art; and (4) objective evidence of non-
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`Patent 8,768,865 B2
`obviousness, i.e., secondary considerations.5 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
`The Petition does not specifically define the level of skill for a person
`of ordinary skill in the art. Dr. Allen’s expert declaration in support of the
`Petition argues a person of ordinary skill in the art at the time of the
`’865 patent “would have had a Bachelor of Science degree in either
`computer science or electrical engineering, together with at least two years
`of study in an advanced degree program in artificial intelligence, machine
`learning, or pattern recognition, or comparable work experience.” Ex. 1003
`¶ 10.
`Patent Owner argues a person of ordinary skill in the art at the time of
`the ’865 patent “would have had a Bachelor’s of science degree in electrical
`engineering, computer science, computer engineering, or a closely-related
`field, and at least 2 years of work or research experience in the field of
`machine learning or a closely related field.” PO Resp. 24 (citing Ex. 2004
`¶ 45). Patent Owner contends any differences between its definition of the
`level of ordinary skill and that of Dr. Allen “are not material to the issues to
`be decided.” Id. (citing Ex. 2004 ¶ 47).
`We discern no significant distinction between Dr. Allen’s definition of
`the level of ordinary skill and that of Patent Owner. In view of Patent
`Owner’s admission that any differences are not material to the issues we
`decide here, we discern no reason to depart from our definition of the level
`
`
`5 Patent Owner does not present arguments or evidence of such secondary
`considerations in its briefs. Therefore, secondary considerations do not enter
`into our analysis.
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`IPR2018-01281
`Patent 8,768,865 B2
`of ordinary skill as determined in our Decision on Institution. Dec. on
`Inst. 10.
`Accordingly, we adopt Dr. Allen’s definition of the level of ordinary
`skill in the art and determine that a person of ordinary skill in the art at the
`time of the invention of the ’865 patent would have had a Bachelor of
`Science degree in either computer science or electrical engineering, together
`with at least two years of study in an advanced degree program in artificial
`intelligence, machine learning, or pattern recognition, or comparable work
`experience.
`
`C. Claim Construction
`This proceeding was filed on June 29, 2018. In an inter partes review
`for a petition filed before November 13, 2018,6 a claim in an unexpired
`patent that will not expire before the issuance of a final written decision shall
`be given its broadest reasonable construction in light of the specification of
`the patent in which it appears. 37 C.F.R. § 42.100(b) (2017); see also
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016)
`(upholding the use of the broadest reasonable interpretation standard (“BRI
`standard”)); Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765,
`769 (Fed. Cir. 2018) (“In IPR, the Board gives claims their broadest
`reasonable interpretation consistent with the specification.”). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). “[A] claim
`
`6 Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340, 51,340 (Oct, 11, 2018) (to be codified at 37 C.F.R. § 42)
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`Patent 8,768,865 B2
`construction analysis must begin and remain centered on the claim language
`itself . . . .” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc.,
`381 F.3d 1111, 1116 (Fed. Cir. 2004). “In determining the meaning of the
`disputed claim limitation, we look principally to the intrinsic evidence of
`record, examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)).
`“Though understanding the claim language may be aided by the
`explanations contained in the written description, it is important not to
`import into a claim limitations that are not a part of the claim.” SuperGuide
`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
`By contrast, for a patent that has expired or will likely expire before
`this Final Written Decision is entered, or for an unexpired patent challenged
`in a petition filed on or after November 13, 2018, we apply the principles set
`forth in Phillips, 415 F.3d at 1312–17 (the “Phillips standard”). See Wasica
`Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017);
`see also Changes to the Claim Construction Standard for Interpreting Claims
`in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
`51,340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)).
`Petitioner does not indicate whether it is applying the BRI standard or
`the Phillips standard but, instead, asserts “Petitioner gives all terms their
`plain meaning.” Pet. 11. Patent Owner describes the BRI standard but does
`not clearly state that it is applying that standard for any proffered claim
`constructions. PO Resp. 16.
`On the record before us, we discern that the ’865 patent is not expired,
`the patent will not likely expire prior to entry of this Final Written Decision,
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`IPR2018-01281
`Patent 8,768,865 B2
`neither party has made a request in compliance with our rules that the
`Phillips standard be applied,7 and the Petition was filed prior to the change
`of our rules regarding claim construction effective for petitions filed on or
`after November 13, 2018. Therefore, we apply the broadest reasonable
`interpretation (BRI standard) for any needed claim construction.
`Petitioner proffers a construction of numerous claim terms including
`the terms pattern and fixing as recited in the claims. Pet. 11–14. Patent
`Owner disputes Petitioner’s construction of these two terms. PO Resp. 16–
`24. Patent Owner also provides a section of its Response entitled
`“Terminology” in which Patent Owner discusses three terms (“variables,”
`“patterns,” and “conditions”) but, apparently, does not proffer these
`discussions as express claim constructions of those terms. Id. at 5–7.
`Other than the terms discussed below, we discern no reason to
`expressly construe any other claim terms. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(“[W]e need only construe terms ‘that are in controversy, and only to the
`extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`1. “Condition”
`Claim 1 recites “identifying a first pattern based, at least in part, on
`said at least one detected condition.” Petitioner relies on disclosures of the
`’865 patent to interpret the term “condition,” and argues,
`The ’865 Patent expressly discloses that “a condition or
`event of interest may include, for example, a time of day, day of
`week, state or action of a host application, action of a user
`
`7 The applicable version of 37 C.F.R. § 42.100(b) requires that a request to
`apply the Phillips standard “must be made in the form of a motion under
`§ 42.20, within 30 days from the filing of the petition.”
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`operating a mobile device (e.g., silencing a ringer, muting a call,
`sending a text message, etc.) or the like,” and further discloses
`that “user-related events or conditions” may
`include
`“walking, driving, fidgeting, etc.” [Ex. 1001, 7:40–45, 14:60–
`64]. Accordingly, the term “condition” is broad enough to
`encompass at least the above-listed items.
`Pet. 11 (citing Ex. 1003 ¶¶ 50–51). Thus, Petitioner does not proffer an
`express construction of “condition” but, instead, contends “condition” is at
`least broad enough to encompass the above-identified examples (i.e.,
`including, for example, walking and driving).
`Patent Owner identifies examples of conditions as including “a time
`of day,” “action of a user operating a mobile device,” “walking,” and
`“driving.” PO Resp. 7 (citing Ex. 1001, 7:42–43, 8:1–6, 8:54–60). We note
`that Patent Owner discusses these exemplary “conditions” in a section of the
`Response entitled “Terminology,” a section separate from a section entitled
`“Claim Construction.” See PO Resp. 5, 16. Thus, like Petitioner, Patent
`Owner does not proffer an express construction of “condition” but, instead
`provides examples of disclosed “condition[s].”
`Both parties identify portions of the ’865 patent Specification that
`disclose exemplary conditions: “sensor-tracked parameters indicative of
`user-related events or conditions (e.g., walking, driving, fidgeting, etc.).”
`Ex. 1001, 7:42–43. “By way of example but not limitation, a condition or
`event may include, for example, a time of day, day of week, state or action
`of a host application, action of a user operating a mobile device (e.g.,
`silencing a ringer, muting a call, sending a text message, etc.) or the like, just
`to name a few examples.” Id. at 8:1–6.
`These exemplary conditions, though not defining or limiting the full
`scope of the term “condition,” at least define some examples that are
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`encompassed by the term. Although we discern no need for an express
`construction of the full scope of the term “condition” as used in the claims,
`we determine that “condition” is at least broad enough to encompass each of
`the exemplary above-identified examples disclosed in the ’865 patent—
`including, for example, “walking” and “driving.”
`2. “Pattern”
`Claim 1 includes the recitation “identifying a first pattern based, at
`least in part, on said at least one detected condition.” Claims 21 and 46 and
`their respective dependent claims include similar limitations referring to a
`“second pattern.”
`Petitioner argues “[t]he term ‘pattern’ is broad enough to encompass a
`‘collection of one or more parameter values.’” Pet. 11–13 (citing Ex. 1001,
`6:49–55, 9:63–67, 10:34–44, Fig. 3; Ex. 1003 ¶¶ 52–58).
`Patent Owner argues the “complete BRI of ‘pattern’ [is] ‘a collection
`of one or more pairs of varying parameters and corresponding parameter
`values, as well as the relationship between each pair (where the relationship
`may be implicit).’” PO Resp. 16–18 (citing Ex. 2003, 28:9–15, 31:14–
`32:17, 56:20–23, 58:9–15; Ex. 2004 ¶¶ 37–40; Ex. 1001, Fig. 3 (as
`annotated by Petitioner at Pet. 12)). In Patent Owner’s Sur-reply, Patent
`Owner contends, “[w]hile Qualcomm believes it is also accurate that a
`pattern includes the logical relationship between each pair (such as AND),
`the Board need not reach this dispute as it is not relevant to any issue to be
`decided.” Sur-reply 3–4.
`Petitioner argues Patent Owner’s interpretation is incorrect because
`requiring a “pattern” to include relationships between two or more
`parameters excludes embodiments detecting patterns that rely on the value
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`of only a single parameter. Reply 4–5 (citing Ex. 1026, 14:10–15:5, 25:20–
`26:5, 49:10–15; Ex. 1023 ¶ 114).
`Patent Owner responds,
`This issue here is that Petitioner’s proposed construction of
`“fixing . . .” is so broad that it is indistinguishable from the
`separately-recited “identifying a pattern.” For example, the
`Institution Decision notes that Petitioner pointed to learning
`patterns in a training phase as “identifying.” Decision at 21.
`Such learning of patterns, which includes linking of a varying
`parameter to a parameter value, would also be “associating”
`under
`Petitioner’s
`construction
`of
`“fixing . . . by
`associating . . . .”
`Sur-reply 5. However, Patent Owner contends that, although it stands by its
`proffered interpretation, “the Board need not reach this dispute as it is not
`relevant to any issue to be decided.” Id. at 4
`First, we determine that the portion of Patent Owner’s proffered
`interpretation that speaks to a parameter and its corresponding value as a
`“pair” is not inconsistent with Petitioner’s reference to a “parameter value.”
`In other words, we discern no meaningful difference between a “pair” that
`consists of a parameter and its corresponding value, as used in Patent
`Owner’s proffered interpretation, and a “parameter value,” as used in
`Petitioner’s proffered interpretation.
`Second, we agree with Petitioner that Patent Owner’s proffered
`interpretation, requiring a “pattern” to include relationships between two or
`more such pairs, incorrectly excludes embodiments where a “pattern” may
`be identified by the value of only a single parameter. We find nothing in the
`intrinsic evidence that supports Patent Owner’s narrow interpretation. By
`contrast, Petitioner identifies support in the ’865 patent Specification
`referring to a “pattern” being represented by “one or more” values of
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`parameters in support of its interpretation that encompasses a single
`parameter value representing a “pattern.” See Pet. 11–12 (citing Ex. 1001,
`6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony
`of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support
`the contention that a “pattern” encompasses the value of even a single
`parameter.
`[Q.] . . . So in your opinion, a pattern could include only a single
`pair of parameter and its corresponding parameter value; is that
`correct?
`A. Correct.
`Q. So, for example, using the example in paragraph 38 of your
`declaration, a pattern could be location X?
`A. Correct.
`Q. And if that’s the pattern, is there a relationship present?
`A. Well, the relationship that the X is the value corresponding to
`the parameter or the variable location.
`Q. Okay. But it doesn’t include a relationship between another
`pair of parameter and parameter values because there isn’t
`another pair?
`A. Well, yeah, if there’s only one pair, then there can’t be a
`relationship with another pair within that pattern.
`Ex. 1026, 14:10–15:5 (cited at Reply 5). Petitioner points to additional
`testimony from Dr. Villasenor.
`Q. Sure. And in this example, the second pattern is “Motion
`State” equals “Driving” and WiFi SSID changing from SSID_3
`to SSID_1?
`A. Well, I would -- I would say that the first pattern is “Motion
`State” is equal to “Driving.”
`Id. at 49:10–15 (cited at Reply 5).
`
`16
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`Based on the complete record developed through trial, we determine
`that the broadest reasonable interpretation of “pattern” encompasses, at least,
`Petitioner’s proffered interpretation that a “pattern” is “a collection of one or
`more parameters values.”
`3. “Fixing . . . by Associating”
`Challenged independent method claim 1 recites a step of “fixing a
`subset of varying parameters associated with said first pattern by associating
`at least one parameter of said subset of varying parameters with said first
`pattern to represent said at least one detected condition.” Similarly,
`challenged independent apparatus claim 21 recites a mobile device with a
`processor configured to “fix a subset of varying parameters associated with
`said first pattern by associating at least one parameter of said subset of
`varying parameters with said first pattern to represent said at least one
`detected condition.” Like claim 21, challenged independent claim 46 recites
`an article (a non-transitory storage medium) storing instructions causing a
`processor of a mobile device to “fix a subset of varying parameters
`associated with said first pattern by associating at least one parameter of said
`subset of varying parameters with said first pattern to represent said at least
`one detected condition.” We refer to these limitations collectively as the
`“fixing limitations.”
`Petitioner argues the fixing limitations encompass “associating at least
`one parameter of a subset of varying parameters with the first pattern to
`represent at least one detected condition” and contends that claim 1 of the
`’865 patent, the Specification of the ’865 patent, and Dr. Allen’s Declaration
`all support this interpretation. Pet. 13–14 (citing Ex. 1001, 15:9–12, 21:3–6
`(claim 1); Ex. 1003 ¶¶ 59–63). Furthermore, in support of its interpretation
`of “fixing,” Petitioner quotes a portion of the prosecution history of the ’865
`
`17
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`patent wherein Patent Owner remarked, in response to an Examiner
`rejection,
`
`Claims 1, 22, 32, and 48 have been amended to incorporate
`aspects of former claims 2 and 33, to clarify that “fixing a subset
`of carrying parameters” is done “by associating at least one
`parameter of said subset of varying parameters with said first
`pattern to represent said at least one detected condition.”
`Pet. 13 (quoting Ex. 1002, 40).
`In Patent Owner’s Preliminary Response, Patent Owner argued
`Petitioner’s proffered interpretation is unreasonable in that it eliminates the
`recitation of “fixing” and reduces the element to the action of “associating”
`regardless of whether the associating results in fixing. Prelim. Resp. 14–20.
`Specifically, Patent Owner argued in its Preliminary Response that the fixing
`element “is not met if ‘associating’ is performed in a context that does not
`result in ‘fixing.’” Id. at 15. Patent Owner contended in the Preliminary
`Response that, under the proper interpretation of the fixing limitations, “‘by’
`introduces a necessary sub-step that must be performed when ‘fixing.’” Id.
`at 16. Still further, Patent Owner argued the cited portion of the prosecution
`history (Exhibit 1002, 40) does not support Petitioner’s interpretation but,
`instead, asserts, “[n]othing in that passage suggests that ‘associating . . .’
`performed in a context that does not accomplish ‘fixing . . .’ would be
`sufficient to meet the claims.” Id. at 19.
`Our Decision on Institution determined:
`On the record before us for purposes of this preliminary
`decision, we are persuaded by Petitioner’s proffered construction
`of the fixing limitations. Specifically, the plain language of
`challenged independent claims 1, 21, and 46 sufficiently defines
`the scope of fixing as limited to fixing by the action of
`associating. Other actions that may result in the recited fixing
`are not within the scope of challenged claims 1, 21, and 46,
`
`18
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`which clearly recite that fixing is accomplished by a specific
`recited action, namely by associating.
`Dec. on Inst. 15. Accordingly, in our Decision on Institution, we adopted
`Petitioner’s interpretation determining, “the fixing limitations of claims 1,
`21, and 46 at least encompass associating at least one parameter of a subset
`of varying parameters with the first pattern to represent at least one detected
`condition.” Id. at 17.
`Patent Owner disputes our preliminary interpretation for a number of
`reasons. We do not agree with Patent Owner’s arguments, as discussed
`below.
`a) “Fixing” as “Setting the Scope of Analysis” is Unsupported
`In Patent Owner’s Response, Patent Owner argues,
`The BRI of “fixing … by associating …” is: “setting the
`scope of pattern recognition analysis to where a subset of
`varying parameters match parameter values associated with
`said first pattern by associating at least one parameter of said
`subset of varying parameters with said first pattern to represent
`said at least one detected condition.”
`PO Resp. 18 (citing Ex. 2004 ¶¶ 27–36, 41–44). Patent Owner further
`argues, “[t]his construction largely repeats the plain language of the claim
`and further clarifies that ‘fixing’ means setting the scope of analysis for
`pattern recognition.” Id. Patent Owner points to the use of “fixing” in the
`
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