Paper 18
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`
`APPLE, INC.,
`
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`
`Patent Owner
`______________
`
`Case IPR2018-01281
`
`U.S. Patent No. 8,768,865
`______________
`
`QUALCOMM INCORPORATED’S
`PATENT OWNER RESPONSE
`
`
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`74406738.6
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`TABLE OF CONTENTS
`
`Case IPR2018-01281
`Patent 8,768,865
`
`Page
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`OVERVIEW OF U.S. PATENT NO. 8,768,865 ........................................... 4
`A.
`The ’865 Patent Discloses and Claims a Multi-Stage Approach to
`Pattern Recognition That Reduces Demands on Mobile Devices ....... 4
`Terminology ............................................................................... 5
`1.
`2. Multi-stage approach ................................................................. 8
`3.
`“Fixing” parameters sets the scope of analysis to enable
`recognition of a “second pattern” when there is a pattern
`in the fixed parameters ............................................................... 9
`The ’865 Patent Claims ...................................................................... 13
`B.
`Prosecution History ............................................................................ 15
`C.
`III. CLAIM CONSTRUCTION ......................................................................... 16
`A.
`Legal Standard .................................................................................... 16
`B.
`“Pattern” ............................................................................................. 16
`C.
`“Fixing … by Associating …” ........................................................... 18
`“Fixing” is setting the scope of analysis ................................. 18
`1.
`2.
`Petitioner’s construction fails to give meaning to all words
`of the claim, is contradicted by Petitioner’s expert, is
`contrary to the specification, and is contrary to the
`surrounding claim language .................................................... 20
`IV. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 24
`V. WANG DISCLOSES A STATE RECOGNITION PROCESS THAT
`RELIES UPON RECOGNITION OF STATE TRANSITIONS AND
`IS INCOMPATIBLE WITH THE CHALLENGED CLAIMS ................... 24
`A. Wang Discloses Detecting and Defining States Based on State
`Transitions, Not Collections of Parameter Values ............................. 25
`1. Wang discloses EEMSS performing state recognition using
`an XML state descriptor file that defines states based on
`state transitions ........................................................................ 25
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`2.
`
`3.
`
`Table 1 of Wang includes different information than the
`XML state descriptor actually used by EEMSS ....................... 25
`Petitioner’s assertions that EEMSS uses collections of
`parameter values from Table 1 are not supported by and
`are contrary to Wang ............................................................... 27
`B. Wang’s Approach Focused on Detection of State Transitions Uses
`Non-Overlapping States ..................................................................... 30
`C. Wang Discloses Setting Which Sensors to Use for Future State
`Detection in Response to Recognition of the Current State, Not
`Any “Fixing” or “Associating” .......................................................... 32
`VI. WANG DOES NOT DESCRIBE, AND IS CONTRARY TO,
`FUNCTIONALITY PETITIONER RELIES UPON FOR MULTIPLE
`CLAIM ELEMENTS ................................................................................... 33
`A. Wang Does Not Disclose “Identifying A First Pattern …” Because
`Wang Does Not Disclose Using a Collection of State Features in
`Operation of the Disclosed EEMSS System ...................................... 33
`B. Wang Does Not Disclose “Fixing … by Associating …” Even
`Under Petitioner’s Construction Because Wang Does Not Disclose
`Using a Collection of State Features in Operation of the Disclosed
`EEMSS System .................................................................................. 35
`VII. WANG DOES NOT DISCLOSE SETTING THE SCOPE OF
`ANALYSIS TO WHERE THE FIRST PATTERN IS PRESENT .............. 37
`A. Wang Does Not Disclose “Fixing … by Associating …” Under the
`Proper BRI .......................................................................................... 37
`VIII. WANG DOES NOT DISCLOSE SELECTING LIMITED SENSORS
`TO MONITOR IN RESPONSE OR DUE, IN ANY PART, TO
`PURPORTED “FIXING” ............................................................................. 39
`A. Wang Discloses Selecting a Reduced Set of Parameters Based on
`the Current State, Not In Response or Due, in Any Part, to the
`Purported Fixing ................................................................................. 39
`IX. CONCLUSION ............................................................................................. 40
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`TABLE OF AUTHORITIES
`
`Case IPR2018-01281
`Patent 8,768,865
`
` Page(s)
`
`Cases
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2017–00222, slip op. (PTAB May 23, 2018) ......................................... 20-21
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed. Cir. 2006) ............................................................................ 22
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .................................................................... 16, 21
`Wasica Finance GmbH v. Continental Automotive Sys., Inc.,
`853 F.3d 1272 (Fed. Cir. 2017) .................................................................... 22, 23
`
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`PATENT OWNER’S EXHIBIT LIST
`
`Case IPR2018-01281
`Patent 8,768,865
`
`Description
`No.
`2001 U.S. Provisional Application No. 61/434,400 (Incorporated by Reference
`by Ex. 1001)
`
`2002
`
`2003
`
`omitted
`
`Transcript of Deposition of James Allen (April 25, 2019)
`
`2004 Declaration of John Villasenor
`
`2005
`
`2006
`
`omitted
`
`CV of John Villasenor
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`
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`I.
`
`INTRODUCTION
`The ’865 Patent discloses and claims methods and apparatuses that employ a
`
`multi-stage approach to recognizing a claimed “second pattern.” This multi-stage
`
`approach does not require a mobile device to monitor all varying parameters at all
`
`times for all patterns. The independent Challenged Claims1 claim a first stage,
`
`including “detecting at least one condition” and “identifying a first pattern based, at
`
`least in part, on said at least one detected condition.” Ex. 1001 at 20:62-21:2. Those
`
`independent claims also recite setting the scope of analysis (i.e., “fixing”) for the
`
`second stage to where a subset of varying parameters have the values of the “first
`
`pattern.” Id. at 21:3-7. By “fixing” varying parameters to values of the first pattern,
`
`the system can identify what other varying parameters have patterns if there is a
`
`pattern in the fixed varying parameters. Ex. 1001 at 13:19-37; Ex. 2004 at ¶¶ 27-30.
`
`Dependent Challenged Claims (e.g., Claims 3-5) recite aspects of the second stage
`
`of attempting to recognize a “second pattern.” Id. at 21:18-33. This multi-stage
`
`approach enables recognition of complex patterns, while efficiently using the limited
`
`battery and processing power of a mobile device. Ex. 2004 at ¶ 20.
`
`
`1 Petitioner challenges Claims 1-6, 8-25, 27-30, 46-49, and 51-53 (“Challenged
`
`Claims”), each of which is or depends from one of Claims 1, 21, or 46.
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`Wang, a research paper describing a prototype system known as EEMSS, also
`
`proposes an approach to identifying user activity with the goal of saving battery
`
`power in a mobile device, but takes a fundamentally different approach. Ex. 1005
`
`at 1. First, EEMSS does not define or detect user states based on a collection of
`
`parameter values (which the parties agree constitutes, at least in part, a “pattern”).
`
`Id. at 3. Instead, the system defines and detects each state with reference to a prior
`
`state along with a state transition. See id. at 3, 5.
`
`Petitioner’s mapping of Wang to the Challenged Claims fails for several
`
`reasons. First, Petitioner’s mapping of multiple claim elements (including the
`
`“identifying …” and “fixing … by associating …” elements) relies on an incorrect
`
`assertion that EEMSS operates using a collection of parameters for state recognition.
`
`Not only does Wang never state that EEMSS uses the information to which
`
`Petitioner points, Wang lists the data fields actually used by EEMSS, and those data
`
`fields do not include that information. See id. at 3.
`
`Second, even if Petitioner’s incorrect description of the disclosure of Wang
`
`were accepted, that would, at best, be “associating” that does not also result in fixing,
`
`i.e., setting the scope of pattern recognition analysis. As discussed below, the proper
`
`BRI of the “fixing … by associating …” step is not just associating, but requires
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`fixing as consistently used in the specification.2 Rather than “fixing” as disclosed
`
`and claimed in the ’865 Patent, Wang discloses a system fundamentally built upon
`
`detecting state transitions where the second pattern cannot occur until the first
`
`pattern ends. See Ex. 2004 at ¶¶ 55-57. As Dr. Allen agrees, if the scope of analysis
`
`was set to where Petitioner’s purported first pattern is found, “you will never actually
`
`see the second pattern.” Ex. 1003 at 73:4-23. Thus, proper operation of Wang
`
`precludes setting the scope of analysis as required by the Challenged Claims.
`
`Third, Wang discloses defining a specific subset of sensors to detect each state
`
`transition, but Dr. Allen explains that this functionality “has nothing to do with
`
`fixing.” Ex. 1003 at 91:11-16 (emphasis added). Dependent Challenged Claims 4
`
`and 23 require a reduction in varying parameters “in response” or “due” “at least in
`
`
`2 The Institution Decision accepted Petitioner’s construction of “fixing … by
`
`associating …,” which was based on a grammatical reading of the claims as
`
`purportedly describing “associating” as a particular way of performing “fixing.” The
`
`now-developed evidentiary record demonstrates that this is not the case. Rather, as
`
`Dr. Allen concedes, and for numerous reasons, “the specification uses associating as
`
`a substep of the process of fixing.” Ex. 2003, 51:20-23. As such, the proper
`
`construction must give “fixing” meaning, not remove it from the claims.
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`part, to said fixing.” As Dr. Allen admits, Wang’s disclose of selecting a specific
`
`subset of sensors does not have any link to what Petitioners purport to be “fixing.”
`
`Accordingly, for multiple independent reasons, the patentability of all
`
`Challenged Claims should be affirmed.
`
`II. OVERVIEW OF U.S. PATENT NO. 8,768,865
`A. The ’865 Patent Discloses and Claims a Multi-Stage Approach to
`Pattern Recognition That Reduces Demands on Mobile Devices
`The ’865 Patent discloses a multi-stage approach that enables a mobile device
`
`to recognize patterns that are associated with user activity. Ex. 2004 at ¶ 20. The
`
`patent does not suggest that this ultimate result is new. Rather, the patent notes that
`
`in modern mobile devices “an increased dimensionality of an information stream”
`
`made it “difficult to track, correlate, process, associate, etc.” Ex. 1001 at 7:40-51.
`
`The patent therefore discloses an approach that accomplishes the result in a way that
`
`does not require “continually tracking or monitoring all or most varying parameters.”
`
`Ex. 2004 at ¶ 20 (quoting Ex. 1001 at 7:58-63). That is, while Petitioner presents
`
`various steps in isolation as purportedly known, the ’865 Patent discloses and claims
`
`various functionality in particular contexts that accomplish the overall goal of
`
`enabling a mobile device to recognize user activity associated with a “second
`
`pattern” in a particular, less resource-taxing, way. Id. Key to this approach is, after
`
`detecting a condition and identifying a first pattern based, at least in part, on said at
`
`least one detected condition, setting the scope of analysis for pattern recognition to
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`instances where the first pattern is present to ultimately find a second pattern when
`
`there is a pattern in the fixed subset. Id. at ¶¶ 27-30.
`
`Terminology
`1.
`To understand the ’865 Patent, it is helpful to discuss three related concepts.
`
`Variables / Varying Parameters
`a.
`First, “variables” or “varying parameters” are discussed interchangeably.
`
`Ex. 2004 at ¶ 26. A “varying parameter” is “derived” from information sources such
`
`as a sensor, application, or user action. Ex. 1001 at 2:27-28; 4:58-60; 9:63-10:3.
`
`The value of a given varying parameter changes over time. See, e.g., id. at Fig. 2.
`
`For example, Figure 2 shows the values of varying parameters “motion state,”
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`“brightness level,” “noise level,” and “WiFi SSID” changing over an hour:
`
`Figure 2 (Annotated)
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`As is apparent from the exemplary varying parameters described above, the
`
`process of “deriving” a varying parameter may include substantial analysis. Ex.
`
`2004 at ¶ 26. For example, the patent explains that the varying parameter “motion
`
`state” may be derived through analysis of accelerometer information to derive values
`
`such as “driving” or “walking.” Id. at 7:30-32; 13:23-26. On the other hand, less
`
`processed information may also be a varying parameter. Although not shown in
`
`Figure 2, the patent also discusses accelerometer values themselves as another
`
`example of a varying parameter. Id. at 4:8-13; Ex. 2004 at ¶ 26.
`
`Patterns
`b.
`Next, the patent discusses “patterns.” The patent discusses “several types of
`
`different patterns” that vary in complexity. Id. at 15:32-37. The patent gives a
`
`simple example of “location X AND motion state Y.” Id. at 13:8-13. The various
`
`exemplary patterns discussed include (a) one or more varying parameters (e.g.,
`
`location and motion state), (b) values (or ranges of values) linked to each of those
`
`parameters (e.g., X and Y, respectively), and (c) a relationship between the varying
`
`parameters (e.g., logical AND). These three elements collectively make up a pattern.
`
`Ex. 2004 at ¶¶ 37-39. That is, identifying a pattern necessarily entails identifying
`
`one or more pairs, each pair consisting of a parameter and a corresponding parameter
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`value or values, as well as the logical relationship between each pair. Id. at ¶ 40.
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`While Petitioner proposed a construction of “pattern” as “a collection of one
`
`or more parameter values,” Petitioner’s expert, Dr. Allen, conceded that a pattern
`
`includes each of the three elements above, i.e., 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). Ex. 2003, 28:9-15; 31:14-32:17.
`
`The ’865 Patent approach can be described with reference to two patterns,
`
`which are claimed as a “first pattern” and a “second pattern.” The ultimate goal of
`
`the approach is a more “tractable” approach to identifying the “second pattern” by
`
`setting the scope of analysis to identify the “second pattern” to where the first pattern
`
`is found in the data. Ex. 1001 at 8:54-60, 13:19-22; Ex. 2004 at ¶¶ 27-30.
`
`Conditions
`c.
`Finally, the patent discusses “conditions,” or “events of interest.” Ex. 1001
`
`at 8:54-60. Examples of conditions include “a time of day,” an “action of a user
`
`operating a mobile device,” “walking,” and “driving.” Id. at 8:1-6, 7:42-43. As
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`discussed below, the ’865 Patent approach utilizes detection of a “condition” as an
`
`alternative to a mobile device attempting to recognize all potential patterns at all
`
`times. Ex. 2004 at ¶¶ 22-24.
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`2. Multi-stage approach
`The ’865 Patent explains that, in mobile devices at the time of the invention,
`
`“an increased dimensionality of an information stream” made it “difficult to track,
`
`correlate, process, associate, etc.” Ex. 1001 at 7:40-51. That is:
`
`[C]ontinually tracking or monitoring all or most varying parameters
`or variables that may be associated with a multi-dimensional stream of
`sensor information may be a computationally intensive, resource-
`consuming, at times intractable, or otherwise less than efficient or
`effective approach for pattern matching or recognition.
`
`Id. at 7:58-63 (emphases added).
`
`The ’865 Patent discloses avoiding “continually tracking or monitoring all or
`
`most varying parameters” by using an alternate multi-stage approach. Ex. 2004 at
`
`¶ 20. First, “rather than continually tracking all or most information stream-
`
`related variables to match or recognize all or most possible or existing patterns, a
`
`mobile device may, for example, monitor one or more conditions or events of
`
`interest.” Ex. 1001 at 7:64-8:1 (emphases added). These “conditions” may be more
`
`general, but co-occur with a more detailed pattern (e.g., a “second pattern”) that may
`
`allow the device to recognize user activity.
`
`Second, upon detection of the condition, the ’865 Patent still does not attempt
`
`to recognize all patterns. Ex. 2004 at ¶ 24. Instead, the ’865 Patent discloses
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`examining what second patterns co-occur (i.e., occur at the same time) with a first
`
`pattern that represents the condition. Ex. 1001 at 8:7-11, 15:21-25.
`
`To accomplish this second stage, the ’865 Patent discloses, first, linking the
`
`condition to a first pattern to “be representative of or otherwise correspond to” the
`
`condition. Id. at 15:1-5. Then, “a subset of one or more varying parameters or
`
`variables associated with a condition or event may, for example, be fixed in some
`
`manner.” Id. at 8:12-14 (emphases added).
`
`3.
`
`“Fixing” parameters sets the scope of analysis to enable
`recognition of a “second pattern” when there is a pattern in the
`fixed parameters
`The specification of the ’865 Patent repeatedly and consistently describes
`
`“fixing” parameters as setting the scope of analysis to enable pattern recognition of
`
`additional patterns when there is a pattern in the fixed parameters. Ex. 2004 at ¶¶ 27-
`
`30. That is, as shown by the highlighting below, the patent consistently and
`
`repeatedly describes a “fixing” step (highlighted in teal) as enabling a subsequent
`
`process to match or recognize a “second pattern” (highlighted in green) not in all
`
`data, but in a specific scope of data where “there is a pattern in the fixed subset of
`
`variables” (highlighted in magenta). Accordingly, the patent describes the “fixing”
`
`step as setting the scope of analysis for subsequent pattern recognition efforts. Id.
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`First, a provisional application, which is incorporated by reference in its
`
`entirety (Ex. 1001 at 1:7-10), describes “fixing” as a “solution” that makes
`
`“[i]dentifying the relevant subset of variables” “feasible”:
`
`■ Monitor variables individually for patterns
`
`■ Fix one subset of variables and identify patterns in a second subset of
`
`variables when there is a pattern in the fixed subset of variables
`
`
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`■ E.g., observe what other variables have patterns when motion
`
`state corresponds to “driving”
`
`Ex. 2001 at 153. Similarly:
`
`At least one subset of variables of interest may be fixed, as discussed
`above, and one or more patterns in a second subset of variables may be
`identified, for example, if there is a pattern in the fixed subset of
`variables.
`
`Id. at 13:19-22.
`
`And in yet another passage, the ’865 Patent explains that by “fixing one
`
`variable associated with or corresponding to ‘driving’,” i.e., fixing parameter
`“motion state” = parameter value “driving”, “an application
`processor associated with a mobile device may observe what other variables have
`
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`3 Pagination referenced as 2001.015 within Dr. Villasenor’s declaration (Ex. 2004).
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`patterns if a motion state corresponds, for example, to ‘driving.’” Id. at 13:36-37,
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`13:23-26.
`
`“Fixing …by associating …” can be illustrated with reference to Figure 2 of
`
`the ’865 Patent. Ex. 2004 at ¶¶ 33-36. Fixing sets the scope of analysis to the red
`
`box in the Context Plot of Figure 2, which reflects data where “Motion State” =
`
`“Driving.” Id. at ¶¶ 33-34. Associating “Motion State” with “Driving” is part of
`
`this process, but on its own does not accomplish fixing. Id. Rather, “fixing”
`
`encompasses setting the scope of analysis consistent with the “associating.”
`
`‘865 Patent Figure 2 (Annotated to Show “Fixing”)
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`Based on the “fixing … by associating …,” the system can then attempt to
`
`recognize a second pattern when motion state corresponds to “driving.” Ex. 2001 at
`
`15. That is, the process of recognizing the second pattern takes place within the
`
`scope of analysis set by “fixing … by associating ….” Ex. 2004 at ¶ 35. As shown
`
`below, a second pattern shown in the Context Plot of Figure 2 is “Motion State” =
`
`“Driving” + “Change in Location” from “SSID_3” to “SSID_1.” Id.
`
`‘865 Patent Figure 2 (Annotated to Show “Recognize Second Pattern”)
`
`
`
`Finally, the ’865 Patent explains that by “fixing,” “a set of variables associated
`
`with a multi-dimensional sensor information stream may be advantageously
`
`reduced.” Ex. 1001 at 8:45-50. As the patent explains, “fixing” is not reducing
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`variables, but such reduction may be a result of the “fixing” process. Ex. 2004 at
`
`¶ 36. As shown in the annotated version of Figure 2, below, within the scope of
`
`analysis set in the fixing step, the variable “Brightness Level” remains unchanged.
`
`Id. As a result, that variable can be disregarded, thereby reducing the variables to
`
`be analyzed to recognize the second pattern. Id.
`
`‘865 Patent Figure 2 (Annotated to Show “Variable Disregarded”)
`
`
`
`The ’865 Patent Claims
`B.
`By way of example, Claims 1 and 3-5 of the ’865 Patent reflect the multi-
`
`stage approach discussed above as follows:
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`Ex. 1001 at Claims 1, 3-5 (annotated).
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`Prosecution History
`C.
`Petitioner’s prosecution history discussion omits the key fact that the
`
`Applicants consistently treated the “fixing . . .” and “associating . . .” recitations as
`
`separate aspects. As filed, original Claim 1 included the limitation “fixing a subset
`
`of varying parameters associated with said first pattern, said varying parameters
`
`derived, at least in part, from said monitored input signals.” Ex. 1002 at 237.
`
`Dependent Claim 2, as originally filed, recited:
`
`2. The method of claim 1, wherein fixing said subset of varying
`parameters comprises associating at least one parameter of said subset
`of varying parameters with said first pattern to represent said at least
`one detected condition.
`
`Id. (emphasis added). Thus, the claims, as originally filed, separately recited
`
`“associating . . .” as a separate element and a separate sub-step of “fixing . . . .”
`
`In amending Claim 1, the Applicants specifically stated:
`
`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 varying
`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.”
`
`Id. at 40 (emphasis added). Contrary to Petitioner’s argument, nothing in this
`
`passage, nor the amended claim language, suggests that the “associating” recitation
`
`subsumed or replaced “fixing.” Applicants did not remove the “fixing” element.
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`Applicants’ statement that “‘fixing . . .’ is done ‘by associating . . .’” is fully
`
`consistent with “associating . . .” being a distinct sub-step of “fixing . . .”
`
`Importantly, nothing in that passage (or any other part of the ’865 Patent) suggests
`
`that “associating . . .” without “fixing . . .” would be sufficient to meet the claims.
`
`Thus, the prosecution history of the ’865 Patent is entirely consistent with
`
`“associating . . .” being a distinct sub-step of “fixing.”
`
`III. CLAIM CONSTRUCTION
`A. Legal Standard
`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).
`
`“Pattern”
`B.
`Petitioner proposed a construction of “pattern” as “a collection of one or more
`
`parameter values.” Pet. at 11-13. Patent Owner agrees that Petitioner’s construction
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`fairly reflects part of the BRI of “pattern.”
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`The complete BRI of “pattern,” as Dr. Allen concedes, is: “a collection of one
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`or more pairs of varying parameters and corresponding parameter values, as well as
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`the relationship between each pair (where the relationship may be implicit).” Ex.
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`2003, 28:9-15; 31:14-32:17; see also Ex. 2004 at ¶¶ 37-40. This is shown in, for
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`example, Petitioner’s highlighted version of Figure 3 of the ’865 Patent:
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`’865 Patent Figure 3 Highlighted by Petitioner
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`
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`Pet. at 12. As indicated by Petitioner’s own highlighting, the pattern is not just
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`parameter values (here, “Loud” and “Running”), but pairs of parameters with
`corresponding, or linked, parameter values (here, Parameter “Sound
`Intensity” = Value “Loud” and Parameter “PeriodicMovement”
`= “Running”). Ex. 2004 at ¶ 39.
`This distinction is important in rejecting Petitioner’s attempt to justify its
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`construction of “fixing … by associating …,” as will be discussed below. As Dr.
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`Allen also concedes, the claimed step of “identifying a first pattern” necessarily
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`includes identifying not only “one or more parameter values,” but the parameters
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`and the link with the relevant parameter value. Ex. 2003 at 56:20-23, 58:9-15. With
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`that clarification, and as discussed below, Petitioner’s improper rewrite of the
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`separately-recited “fixing … by associating … ” step is indistinguishable from the
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`“identifying …” step.
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`C.
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`“Fixing … by Associating …”
`“Fixing” is setting the scope of analysis
`1.
`The BRI of “fixing … by associating …” is: “setting the scope of pattern
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`recognition analysis to where a subset of varying parameters match parameter
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`values associated with said first pattern by associating at least one parameter of said
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`subset of varying parameters with said first pattern to represent said at least one
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`detected condition.” Ex. 2004 at ¶¶ 41-44; see also id. at ¶¶ 27-36.
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`This construction largely repeats the plain language of the claim and further
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`clarifies that “fixing” means setting the scope of analysis for pattern recognition. As
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`discussed above, this is consistent with the repeated and consistent usage of “fixing”
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`in the specification: “Fix one subset of variables and identify patterns in a second
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`subset of variables when there is a pattern in the fixed subset of variables.” Ex. 2001
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`(Provisional Application incorporated by reference) at 15; see also Ex. 1001 at
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`13:36-37, 13:23-26; see also Section II.A.3, above; Ex. 2004 at ¶¶ 27-36.
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`To be clear, Patent Owner does not suggest that Claim 1 requires performing
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`pattern recognition—that is recited separately in dependent Claim 3. Rather, as the
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`specification repeatedly and consistently explains, fixing is setting the scope of
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`analysis such that, when a pattern recognition process is later initiated, recognition
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`process recognizes “patterns in a second subset of variables when there is a pattern
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`in the fixed subset of variables.” Ex. 2001 at 15.
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`Further, because this construction repeats the “by associating…” clause
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`without alteration, it is equally consistent with the specification and file history
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`citations relied upon for Petitioner’s proposed construction. Ex. 1001 at 15:9-12;
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`Ex. 1002 at 40. That is, Petitioner (and the Institution Decision) rely on specification
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`statements such as “[i]n some instances, a subset may be fixed, for example, by
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`associating … .” Pet. at 13 (citing Ex. 1001 at 15:9-12). Patent Owner’s proposed
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`construction is equally consistent with this language. But Patent Owner’s
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`construction is also consistent with all other uses of “fixing” in the specification
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`while Petitioner’s construction fails to require the result of “fixing” consistently
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`described by the specification. Ex. 2004 at ¶ 43.
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`2.
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`Petitioner’s construction fails to give meaning to all words of
`the claim, is contradicted by Petitioner’s expert, is contrary to
`the specification, and is contrary to the surrounding claim
`language
`In contrast to Patent Owner’s proposed construction, Petitioner’s proposed
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`construction of “fixing … by associating …” removes “fixing …” as a claim
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`limitation, as is apparent from comparing in redline to the actual claim language:
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`fixing a subset of varying parameters associated with said first
`pattern by associating at least one parameter of a said subset of
`varying parameters with said first pattern to represent said at least one
`detected condition
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`Petitioner justifies this deletion by interpreting the grammatical structure of
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`the claim language “fixing ... by associating ...” (and similar language in the
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`specification and file history) as indicating that “associating” is a specific way to
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`accomplish “fixing.” If this were true, then perhaps there would be some
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`justification in removing a full 12-word phrase from the claim. But that same
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`grammatical structure equally supports an interpretation of the plain language as
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`indicating that “associating” is a specific way of performing a substep of “fixing,”
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`but is not itself synonymous with or sufficient to perform fixing. In this “substep”
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`interpretation, removing the “fixing...” clause materially alters the plain language
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`and cannot be justified. See Apple Inc. v. Uniloc Luxembourg S.A., IPR2017–00222,
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`slip op. at 15 (PTAB May 23, 2018) (Paper 29) (rejecting, under the BRI standard,
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`Apple’s proposed construction “because otherwise, the word ‘each’ would be
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`meaningless”). Here, the evidentiary record demonstrates in numerous ways that
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`the “substep” interpretation is the only defensible interpretation as the claim would
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`be understood by one of ordinary skill in the art in the context of the entire
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`disclosure. In re Translogic Tech., Inc., 504 F.3d at 1257.
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`First, Dr. Allen concedes that “the specification uses associating as a substep
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`of the process of fixing.” Ex. 2003, 51:20-23. Patent Owner’s expert, Dr.
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`Villasenor, agrees. Ex. 2004 at ¶¶ 32, 43. Dr. Allen further agrees that the
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`specification uses “associating” as a substep of not only “fixing,” but also a different
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`process—“context labelling”—and that “fixing” and “context labelling” are not the
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`same. Ex. 2003, 52:12-18. In fact, Dr. Allen further characterizes “associating” as
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`an action that “can be used in many different applications” to “achieve many
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`different goals.” Id. at 49:25-50:9. Thus, “fixing …” and “associating …” are not
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`synonymous and “associating …” is not a special case of “fixing ….” Ex. 2004 at
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`¶¶ 32, 43. Therefore, deleting the 12-word “fixing …” clause” materially alters the