Paper No. 7
`Trials@uspto.gov
`571-272-7822 Entered: February 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2018-01281
`Patent 8,768,865 B2
`
`I. INTRODUCTION
`
`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 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.”).
`
`Institution of an inter partes review is authorized by statute when “the
`
`information presented in the petition . . . and any response . . . shows that
`
`there is a reasonable likelihood that the petitioner would prevail with respect
`
`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`Upon consideration of the Petition and Patent Owner’s Preliminary
`
`Response, we conclude the information presented shows there is a
`
`reasonable likelihood that Petitioner would prevail in establishing the
`
`unpatentability of at least one challenged claim of the ’865 patent.
`
`Therefore, we institute review of all challenged claims and all asserted
`
`grounds.
`
`A. 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 is presently asserted against Petitioner
`
`in the litigation Qualcomm Inc. v. Apple Inc., Case No. 3:17-cv-02402 (S.D.
`
`Cal.). Pet. 77; Paper 4, 1. The parties further inform us that the ’865 patent
`
`is at issue in inter partes review Case IPR2018-01282. Pet. 77; Paper 4, 1.
`
`B. 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
`
`2
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`Patent 8,768,865 B2
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`communication devices.” Ex. 1001, 1:21–23. According to the ’865 patent,
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`mobile communication devices (e.g., cellular and smart phones) may feature
`
`a number of sensors (built-in or otherwise supported) such as
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`“accelerometers, gyroscopes, magnetometers, gravitometers, ambient light
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`detectors, proximity sensors, thermometers, location sensors, microphones,
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`cameras, etc.” Id. at 24–37. 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
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`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:
`
`3
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`Patent 8,768,865 B2
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`As seen, because of an increased dimensionality of an
`information stream due, at least in part, to a large variation of
`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
`
`4
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`Patent 8,768,865 B2
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`utilizing a ‘snapshot,’ in whole or in part, using any suitable pattern
`
`matching processes or algorithms.” Id. at 8:25–31.
`
`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
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`5
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`IPR2018-01281
`Patent 8,768,865 B2
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`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
`
`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
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`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.
`
`C. 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, and challenged independent
`
`claim 46 recites similar limitations in the style of an article claim.
`
`6
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`Patent 8,768,865 B2
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`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the challenged claims are unpatentable based on the
`
`following grounds (Pet. 14–15):
`
`Reference(s)
`
`Wang1
`
`Wang and Nadkarni2
`
`Wang, Nadkarni, and
`Greenhill3
`
`
`Basis
`
`§ 102
`
`§ 103
`
`§ 103
`
`Claims challenged
`
`1–4, 15–17, 21–23, 28,
`29, 46, 47
`5, 6, 8–11, 18–20, 24,
`25, 27, 30, 48, 49, 51–53
`12–14
`
`Petitioner relies on the testimony of James Allen, Ph.D. (Ex. 1003) in
`
`support of its assertions.
`
`II. DISCUSSION
`
`A. General Principles
`
`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.
`
`2001). Each element of the challenged claim must be found, either
`
`expressly or inherently, in the single prior art reference. Verdegaal Bros.,
`
`
`
`1 Yi Wang et al., A Framework of Energy Efficient Mobile Sensing for
`Automatic User State Recognition, 2009 (“Wang,” Ex. 1005).
`2 U.S. Patent Publication No. 2010/0217533 A1 (“Nadkarni,” Ex. 1008).
`3 U.S. Patent Publication No. 2008/0297513 A1 (“Greenhill,” Ex. 1009).
`
`7
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`IPR2018-01281
`Patent 8,768,865 B2
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`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 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 on the basis of 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 nonobviousness,
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`8
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`IPR2018-01281
`Patent 8,768,865 B2
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`i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–
`
`18 (1966).
`
`“A reference must be considered for everything it teaches by way of
`
`technology and is not limited to the particular invention it is describing and
`
`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
`
`907 (Fed. Cir. 1985). Additionally, “the question under 35 USC § 103 is not
`
`merely what the references expressly teach but what they would have
`
`suggested to one of ordinary skill in the art at the time the invention was
`
`made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed.
`
`Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
`
`“Every patent application and reference relies to some extent upon
`
`knowledge of persons skilled in the art to complement that [which is]
`
`disclosed . . . .” In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re
`
`Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons “must be
`
`presumed to know something” about the art “apart from what the references
`
`disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
`
`3.
`
`Level of Ordinary Skill in the Art
`
`Neither the Petition nor Patent Owner’s Preliminary Response
`
`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
`
`
`
`4 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, secondary considerations do not constitute part of our analysis.
`
`9
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`Patent 8,768,865 B2
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`program in artificial intelligence, machine learning, or pattern recognition,
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`or comparable work experience.” Ex. 1003 ¶ 10.
`
`On this record, we are persuaded by Dr. Allen’s definition of the level
`
`of ordinary skill in the art, and we find this definition is commensurate with
`
`the level of ordinary skill in the art as reflected in the prior art. See Okajima
`
`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of
`
`specific findings on the level of skill in the art does not give rise to
`
`reversible error where the prior art itself reflects an appropriate level and a
`
`need for testimony is not shown.”) (internal quotation marks omitted); see
`
`also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, we
`
`discern the prior art, as well as the ’865 patent, require a degree of
`
`knowledge that is specific to artificial intelligence, machine learning, or
`
`pattern recognition.
`
`Accordingly, on this record and for purposes of this preliminary
`
`decision, 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.
`
`B. Claim Construction
`
`As a step in our analysis for determining whether to institute a review,
`
`we determine the meaning of the claims for purposes of this preliminary
`
`decision. In an inter partes review for a petition filed before November 13,
`
`2018, 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
`
`10
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`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”)); see also 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 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). “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 an expired patent or an unexpired patent challenged in
`
`a petition filed on or after November 13, 2018, we apply the principles set
`
`forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en
`
`banc) (“Phillips standard”). See Wasica Fin. GmbH v. Cont’l Auto. Sys.,
`
`Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017); 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. pt. 42). “In determining the meaning of
`
`the disputed claim limitation, we look principally to the intrinsic evidence of
`
`11
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`record, examining the claim language itself, the written description, and the
`
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
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`415 F.3d at 1312–17).
`
`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 likewise fails to identify whether it
`
`is applying the BRI standard. See Prelim. Resp. 14–20.
`
`Petitioner proffers a construction of numerous claim terms including
`
`the verb fixing as recited in method claim 1 (and as similarly recited in
`
`challenged independent claims 21 and 46). Pet. 13–14. Patent Owner
`
`disputes Petitioner’s construction of fixing (Prelim. Resp. 14–20) but
`
`otherwise contends no other terms require construction at this preliminary
`
`stage of the proceeding (id. at 20).
`
`Here, we discern no reason that we would not apply the BRI standard.
`
`On the record before us, the ’865 patent is not expired, the patent will not
`
`likely expire prior to any potential final written decision, neither party has
`
`made a request in compliance with our rules that the Phillips standard be
`
`applied,5 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, for purposes of this preliminary decision, we apply the
`
`broadest reasonable interpretation for any needed claim construction.
`
`
`
`5 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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`12
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`Other than the term identified below, we discern no reason on this
`
`preliminary record and for this preliminary decision to construe any other
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`claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
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`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
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`controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`
`F.3d 795, 803 (Fed. Cir. 1999))).
`
`The “Fixing” Limitations
`
`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, and challenged independent article 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 recited 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 (citing Ex. 1001, 15:9–12, claim 1;
`
`Ex. 1003 ¶¶ 59–63). Furthermore, in support of its interpretation of fixing,
`
`13
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`Petitioner quotes a portion of the prosecution history of the ’865 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).
`
`Patent Owner argues 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 argues
`
`the fixing element “is not met if ‘associating’ is performed in a context that
`
`does not result in ‘fixing.’” Id. at 15. Patent Owner contends,
`
`By analogy, consider the language “returning home by riding the
`bus.” Nothing in this language suggests th[e] fact that one is
`“riding the bus” is sufficient to conclude that one is “returning
`home.” And, no one would suggest that riding the bus to the
`store meets the requirement of “returning home.”
`
`Id. Patent Owner counters that under the proper interpretation of the fixing
`
`limitations, “‘by’ introduces a necessary sub-step that must be performed
`
`when ‘fixing.’” Id. at 16. Patent Owner further argues the ’865 patent
`
`Specification does not use the words fixing and associating synonymously
`
`but rather as distinct operations, and argues Petitioner’s interpretation of
`
`fixing “would improperly broaden the claim to include instances of
`
`‘associating’ that do not result in fixing.” Id. at 16–17. Patent Owner
`
`asserts associating is discussed in as an aspect of context labeling, rather
`
`than fixing. Id. Still further, Patent Owner contends the cited portion of the
`
`prosecution history does not support Petitioner’s interpretation but, instead,
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`asserts, “Nothing 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.
`
`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, which clearly recite that fixing
`
`is accomplished by a specific recited action, namely by associating.
`
`Although claim construction “must begin and remain centered on the
`
`claim language itself” (Innova, 381 F.3d at 1116), the interpretation must be
`
`consistent with the Specification (Acceleration Bay, 908 F.3d at 769). We
`
`are persuaded Petitioner’s proffered interpretation is consistent with the ’865
`
`patent Specification, which discloses,
`
`Such a condition or event-related pattern 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.
`
`Ex. 1001, 8:18–21. The ’865 patent Specification also discloses,
`
`At operation 408, one or more varying parameters or variables
`may be fixed in some manner, such as in a suitable subset having
`one or more signal sample values and may be stored in a suitable
`database. In some instances, a subset may be fixed, for example,
`by associating parameters or variables with a particular, distinct,
`or otherwise suitable pattern to represent a certain detected
`condition or event, as one possible example.
`
`Id. at 15:5–12.
`
`15
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`
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`IPR2018-01281
`Patent 8,768,865 B2
`
`Furthermore, we agree with Petitioner that the prosecution history
`
`supports its proffered interpretation. Originally filed claim 1 was amended
`
`to incorporate limitations of dependent claim 2 as follows:
`
`
`
`Ex. 1002, 31. Claim 1 (and other similarly amended independent claims)
`
`were allowed in view of this amendment. Id. at 22. Under the broader,
`
`unamended, originally filed claim 1, the claim may have encompassed other
`
`approaches to fixing a subset of parameters. However, the amendment that
`
`resulted in an allowance of the claim specifically narrows the broader,
`
`originally filed claim 1 to limit the step of fixing to encompass only fixing by
`
`associating as recited.
`
`Even Patent Owner’s argument by analogy supports Petitioner’s
`
`position. Patent Owner argues “returning home by riding the bus” does not
`
`suggest that “‘riding the bus’ is sufficient to conclude that one is ‘returning
`
`home.’” Prelim. Resp. 15. We agree with Patent Owner’s point but the
`
`argument is inapposite to the claim construction analysis. Applying a
`
`similar analogy to the context of claim construction, “returning home by
`
`riding the bus” limits the method of “returning home” to the action of riding
`
`the bus and does not encompass “returning home” by plane, train, walking,
`
`etc. The phrase would be limited to only returning home by riding a bus.
`
`16
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`
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`IPR2018-01281
`Patent 8,768,865 B2
`
`Similarly, fixing by associating does not suggest associating always results
`
`in fixing, as Patent Owner correctly argues, but limits the claim to fixing the
`
`parameters only by the action of associating as recited, rather than by other
`
`actions.
`
`Therefore, for purposes of this preliminary decision, we are persuaded
`
`by the interpretation proffered by Petitioner and find that 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.
`
`C. Anticipation by Wang
`
`Petitioner argues claims 1–4, 15–17, 21–23, 28, 29, 46, and 47 are
`
`anticipated by Wang. Pet. 15–41.
`
`1. Overview of Wang (Ex. 1005)
`
`Wang is directed to an Energy Efficient Mobile Sensing System
`
`(“EEMSS”) that recognizes user states and transitions between states.
`
`Ex. 1005, 1 (col. 1 (Abstract)). Wang’s EEMSS “automatically recognizes a
`
`set of users’ daily activities in real time using sensors on an off-the-shelf
`
`high-end smart phone.” Id. Wang asserts then current mobile phones
`
`included sensor capabilities such as “WiFi, Bluetooth, GPS, audio, video,
`
`light sensors, accelerometers and so on.” Id. at 1 (col. 2). According to
`
`Wang, extracting real-time information from such sensors of a mobile phone
`
`enables application to be better adapted to user preferences and
`
`environments. Id. Wang represents the a user’s context (environment) as a
`
`user state based on features derived from the phone’s sensors such as
`
`motion, location, and background conditions. Id.
`
`17
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`
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`IPR2018-01281
`Patent 8,768,865 B2
`
`Wang asserts that determining a user context from such sensors in a
`
`mobile phone gives rise to problems of excessive battery power
`
`consumption. Id. Wang proposes to reduce excessive battery consumption
`
`by shutting down sensors that are unnecessary to sense the current or
`
`possible next states of the user’s mobile device. Id. at 2 (col. 1).
`
`“EEMSS uses a combination of sensor readings to automatically
`
`recognize user state as described by three real-time conditions; namely
`
`motion (such as running and walking), location (such as staying at home or
`
`on a freeway) and background environment (such as loud or quiet).” Id. at 2
`
`(col. 1). A sensor management aspect of EEMSS defines, in an XML
`
`formatted file, user states and potential transitions from each state to a next
`
`state, and uses that information to turn off sensors not needed for the current
`
`state or to detect a transition to any possible next state. Id.
`
`2. Independent Claims 1, 21, and 46
`
`Petitioner argues Wang teaches all elements of independent claims 1,
`
`21, and 46. Pet. 19–28. In particular, Petitioner argues Wang teaches the
`
`fixing limitations of these claims, i.e., claim 1’s 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” and the corresponding
`
`limitations of independent claims 21 and 46. Pet. 24–25. Specifically, in
`
`accord with Petitioner’s proffered construction of the fixing limitations,
`
`Petitioner contends Wang meets these limitations “by associating at least
`
`one parameter of a subset of varying parameters with the first pattern to
`
`represent said at least one detected condition.” Pet. 24. Petitioner argues
`
`“Wang discloses th[ese] limitation[s] by associating a subset of ‘state
`
`18
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`IPR2018-01281
`Patent 8,768,865 B2
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`features’ (i.e., parameters) with a pattern to represent a user state (i.e.,
`
`condition).” Id. Petitioner contends Wang’s Table 1 discloses a set of states
`
`that can be recognized by sensors providing location, motion, and
`
`background sound. Pet. 24–25 (citing Ex. 1005, 5 (col. 1)).
`
`Wang’s Table 1 is reproduced below.
`
`
`
`
`
`Wang’s Table 1 discloses exemplary states, and features values that
`
`represent the corresponding state as well as sensors monitored to determine
`
`the feature values. Ex. 1005, 5 (col. 1). Petitioner argues Wang’s Table 1
`
`discloses the fixing limitation because a user state (e.g., “Walking”) is
`
`represented by a pattern of parameter (state feature) values in which state
`
`feature “Location” is detected as “Keep on changing” and state feature
`
`“Motion” is detected as “Moving slowly.” Pet. 25 (citing Ex. 1003 ¶¶ 128–
`
`31).
`
`An excerpt of Petitioner’s annotated Table 1 is reproduced below.
`
`Id. Petitioner’s annotations of the “Walking” state of Wang’s Table 1
`
`identifies the “Walking” state as a condition, as recited, and identifies the
`
`feature values for “Location,” “Motion,” and “Background Sound” as the
`
`recited first pattern. Id. Petitioner further notes that Wang’s “Walking”
`
`19
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`
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`IPR2018-01281
`Patent 8,768,865 B2
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`state is represented by a subset of the features—namely, “Location” and
`
`“Motion,” and excluding “Background Sound.” Id.
`
`Patent Owner argues the Petition fails to identify the fixing limitations
`
`because “Petitioner relies exclusively on the proposed claim construction
`
`removing th[ose] limitation[s] from the claim[s].” Prelim. Resp. 21. Patent
`
`Owner further argues Petitioner’s reliance on Wang’s Table 1 (as annotated)
`
`“defines ‘states’ as associated with specific ‘state features,’” but contends, to
`
`the extent Wang is associating state features with states, it is unrelated to the
`
`recited fixing. Id. at 22. Patent Owner also contends Wang’s disclosure of
`
`associating state features with states “strongly resembles the ’865 Patent’s
`
`discussion of ‘context labeling,’” which is disclosed in the ’865 patent as
`
`separate from fixing as properly construed. Id. (citing Ex. 1001, 14:13–15).
`
`We disagree with Patent Owner’s argument because it is based on
`
`Patent Owner’s claim construction argument t
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