`
`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
`
`______________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`
`
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`

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`Proceeding No.: IPR2018-01281
` Attorney Docket: 39521-0042IP1
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................1
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`
`
`I.
`
`II.
`
`CLAIM CONSTRUCTION ..................................................................3
`
`A.
`B.
`
`“Pattern” ......................................................................................3
`“Fixing … by Associating …” ...................................................6
`1. Qualcomm imports a dependent limitation into independent
`claims ..........................................................................................7
`
`2. Qualcomm’s construction lacks specification support .........8
`
`3. Qualcomm’s construction imports extraneous limitations 11
`
`4. Qualcomm’s proposed construction contradicts its
`litigation positions .................................................................... 14
`
`5. Petitioner’s construction is fully supported by the intrinsic
`evidence and does not render any claim term superfluous ...... 15
`
`III. WANG-BASED GROUNDS INVALIDATE THE CHALLENGED
`CLAIMS ....................................................................................................... 16
`
`A. Wang Discloses Detecting and Defining States Based on
`Collections of Parameter Values, in Addition to State Transitions ... 18
`B. Wang discloses using collections of state features, which
`describes “identifying a first pattern …,” if Wang is correctly read . 26
`C. Wang discloses the “fixing…” limitation under the correct
`construction ........................................................................................ 27
`D. Wang discloses
`“fixing…”
`even under Qualcomm’s
`unreasonably narrow constructions ................................................... 27
`E. Wang discloses disputed features in dependent Claims 4 &
`23
` .................................................................................................. 32
`IV. CONCLUSION .................................................................................. 36
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`UPDATED EXHIBIT LIST
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`APPLE-1001
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`U.S. Patent No. 8,768,865 to Narayanan, et al. (“the ‘865
`patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ‘865 Patent (“the
`Prosecution History”)
`
`APPLE-1003
`
`Declaration of Dr. James Allen
`
`APPLE-1004
`
`Curriculum Vitae of Dr. James Allen
`
`APPLE-1005
`
`APPLE-1006
`
`
`
`APPLE-1007
`
`
`
`APPLE-1008
`
`
`APPLE-1009
`
`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. 179-192 , Kraków, Poland — June 22 - 25, 2009
`(“Wang”)
`
`“Qualcomm Incorporated Compliant for Patent Infringement,”
`filed on November 29th, 2017, from Case No. 3:17-cv-02402-
`WQH-MDD filed in S.D. CA. (“Compliant”)
`
`Exhibit 865 of “Qualcomm Inc.’s Patent Initial Infringement
`Contentions,” filed on March 2nd, 2018, from Case No. 3:17-cv-
`02402-WQH-MDD filed in S.D. CA. (“Infringement
`Contentions”)
`
` U.S. Patent Application Publication No. 2010/0217533 to
`Nadkarni et al. (“Nadkarni”)
`
`U.S. Patent Application Publication No. 2008/0297513 to
`Greenhill et al. (“Greenhill”)
`
`APPLE-1010
`
`Webpage of “Nokia N95 8GB - Full phone specifications”
`(Archive.org version dated 05/26/2009,
`
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`http://web.archive.org/web/20090526054459/http://www.gsmar
`ena.com:80/nokia_n95_8gb-2088.php) (“Nokia N95”)
`
`APPLE-1011
`
`U.S. Patent No. US 8,676,224 to Louch (“Louch”)
`
`APPLE-1012
`
`U.S. Patent Application Publication No. 2011/0066383 to
`Jangle et al. (“Jangle”)
`
`APPLE-1013
`
`U.S. Patent No. 9575776 to De Andrade Cajahyba et al. (“De
`Andrade Cajahyba”)
`
`APPLE-1014
`
`U.S. Patent Application Publication No. 2011/0081634 to
`Kurata (“Kurata”)
`
`APPLE-1015
`
`Declaration of Mr. Chris Butler for Nokia N95/APPLE-1010
`
`APPLE-1016
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`Declaration of Mr. Scott Delman for Wang/APPLE-1005
`
`APPLE-1017
`
`APPLE-1018
`
`APPLE-1019
`
`Cohn, D., Caruana, R., & McCallum, A. Semi-supervised
`clustering with user feedback in Constrained Clustering:
`Advances in Algorithms, Theory, and Applications, 4(1), 17-32
`(2009). (“Cohn”)
`
`Ruzzelli, A., Nicolas, C. Schoofs, A., O;”Hare, G. Real-time
`recognition and profiling of appliances through a single
`electricity sensor, Proc. 7th Annual IEEE Conference on Sensor
`Mesh (SECON), Boston. MA 2010. (“Ruzzelli”)
`
`Cilla, R., Particio, M., Garcia, J., Berlanga, A., and Molina, J.
`Recognizing Human Activities from Sensors Using Hidden
`Markov Models Constructed by Feature Selection, Algorithms
`2009, 2: pp282-300. (“Cilla”)
`
`APPLE-1020
`
`The Seventh Edition of the Authoritative Dictionary of IEEE
`Standards Terms (2000)
`
`APPLE-1021
`
`RESERVED
`
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`Proceeding No.: IPR2018-01281
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`APPLE-1022
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`Declaration of Noah C. Graubart
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`APPLE-1023
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`Declaration of John Villasenor in Qualcomm, Incorporated vs.
`Apple, Incorporated, Document161-3
`
`APPLE-1024
`
`Joint Claim Construction Hearing Statement Pursuant to Patent
`L.R 4.2. In Qualcomm Incorporated versus Apple Incorporated,
`Document 125
`
`APPLE-1025
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`Qualcomm Incorporated’s Amended Patent L.R. 3.1 and 3.2
`Disclosures
`
`APPLE-1026
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`Deposition transcript of John Villasenor
`
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`I.
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`INTRODUCTION
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`Petitioner submits this Reply to Patent Owner’s (“Qualcomm’s”) Response
`
`(“POR”). Qualcomm alleges the ’865 Patent discloses and claims “a multi-stage
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`approach to recognizing a claimed ‘second pattern’” and further alleges that
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`challenged ‘865 patent claims are therefore distinguished from the instituted
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`grounds. POR, p4. Qualcomm’s arguments fail. The independent claims recite only
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`identifying a single pattern; an attempt to recognize a second pattern only appears
`
`in dependent claims. Once the Board rejects Qualcomm’s improper attempt to
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`redefine the independent claims to cover features not recited by the independent
`
`claims, the unpatentability of the Challenged Claims is plain.1
`
`To illustrate the supposed “multi-stage approach,” Qualcomm annotates
`
`Claims 1 and 3-5, as reproduced below. POR, p14. As Qualcomm admits, only
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`“Dependent Challenged Claims (e.g., Claims 3-5) recite aspects of the second stage
`
`of attempting to recognize a ‘second pattern’” (POR, p1):
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`
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`1 Petitioner challenges Claims 1-6, 8-25, 27-30, 46-49, and 51-53 (“Challenged
`
`Claims”).
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`1
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`Proceeding No.: IPR2018-01281
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`To shoehorn a “second stage”/“second pattern” into the independent claims,
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`Qualcomm seeks to construe the “fixing” limitation as “setting the scope” of
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`analysis for the second stage (POR, pp1, 14), despite a dearth of support in the
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`intrinsic record. Next, because even adding a second stage is insufficient to save
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`the independent claims, Qualcomm further construes the “fixing” phrase to require
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`the recognized second pattern and the identified first pattern “co-occur[]” or
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`“overlap in time.” POR, pp9, 22, 30-32. See Section II-B-3. Again, Qualcomm
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`finds no support in the intrinsic record for this drastic re-definition of the “fixing”
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`phrase.
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`Qualcomm’s remaining arguments rest on a flawed understanding of the prior
`
`art and Petitioner’s arguments. For instance, even with respect to dependent claims
`
`requiring a “second pattern,” Wang adequately discloses such a feature.
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`II.
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`CLAIM CONSTRUCTION
`
`A.
`
`“Pattern”
`
`Despite previously agreeing with Petitioner as to this term’s meaning (see
`
`Ex.1024, p32 (p16 of Ex.A thereto); Ex.1026, 25:20-26:5; Ex.1023, ¶114),
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`Qualcomm now insists this term requires a convoluted three-part construction: “a
`
`collection of one or more pairs of [(1)] varying parameters and [(2)] corresponding
`
`parameter values, as well as [(3)] the relationship between each pair (where the
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`relationship may be implicit).” POR, p16.
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`3
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`During litigation in the Southern District of California—applying the
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`narrower, Phillips 2 claim construction standard—Qualcomm argued that “no
`
`construction [was] necessary,” and the “term should be given its plain and ordinary
`
`meaning.” Ex.1024, p33 (p16 of Ex.A thereto). Explaining his understanding of the
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`term’s “plain and ordinary meaning,” Qualcomm’s expert, Dr. Villasenor, then
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`offered almost precisely the same construction Petitioner urges in the instant
`
`proceeding: “a particular or distinct collection of parameter values that may
`
`correspond to the detected condition.” Ex.1026, 25:20-26:5; Ex.1023, ¶114.
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`Nowhere did Qualcomm or Dr. Villasenor suggest “pattern’s” plain and ordinary
`
`meaning requires the convoluted three-part construction it urges now. That
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`Qualcomm now seeks this narrower construction under the BRI standard, despite
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`previously arguing no construction was necessary under Phillips, highlights
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`Qualcomm’s attempt to rewrite the claims to avoid the prior art.
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`Even ignoring Qualcomm’s past positions, Qualcomm’s construction is
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`necessarily incorrect because it requires “pattern” to include components that its own
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`expert admits are not present in an exemplary “pattern.” As Dr. Villasenor concedes,
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`when a pattern includes “only one pair [of (1) varying parameter and (2)
`
`corresponding parameter value], then there can’t be a [(3)] relationship with another
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`
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`2 See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`4
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`pair within that pattern.” Ex.1026, 15:3-5. Yet, Dr. Villasenor agrees that a “pattern”
`
`may have only one pair [...] of a parameter and value and identifies one such single-
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`pair “pattern” that he believes the patent discloses. Ex.1026, 14:10-15:5; 49:10-15
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`(describing pattern in ’865 patent’s Fig.2 consisting solely of motion state
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`(parameter) = driving (value)). Thus, Qualcomm’s construction of “pattern”
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`impermissibly narrows its scope to exclude the patent’s embodiments.
`
`Qualcomm also incorrectly argues Petitioner’s construction of “pattern”
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`renders the “identifying…” step indistinguishable from the later “fixing …” step,
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`but Qualcomm’s argument fails for at least two reasons. POR, pp17-18. First, as
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`the Board correctly appreciated and Petitioner’s expert explained, the “identifying”
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`step can occur in “a training phase of a classification algorithm,” which
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`distinguishes the “fixing” step that can occur later in a recognition/matching phase.
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`Institution Decision (ID), p21; Petition, p24 ((describing training phase and noting
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`that “the classification algorithm later performs condition detection by recognizing
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`user states (i.e., conditions) if the sensor readings matches respective collection of
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`parameter values (i.e., the patterns).”). See also id. p25; Ex.1003, ¶¶123-131, 24-31;
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`Ex.2003, 148:7-18. Petitioner’s constructions of “pattern” and “fixing… by
`
`associating …” maintain distinction between the “identifying” and “fixing” steps.
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`Second, even accepting arguendo Qualcomm’s (incorrect) argument that
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`Petitioner’s construction of “pattern” would render it identical to the “fixing” step,
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`the alleged overlap would be the result of Qualcomm’s proposed construction, not
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`Petitioner’s. That is, Qualcomm uses its re-definition of “pattern” to manufacture
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`an alleged overlap with the “fixing” step, and thus to promote further re-definition
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`of the “fixing” step. But, once the Board rejects Qualcomm’s redefinition of
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`“pattern,” no alleged overlap with “fixing” exists. Any alleged overlap between the
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`“identifying” and “fixing” steps counsels towards rejecting, not adopting,
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`Qualcomm’s construction of “pattern.”
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`B.
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`“Fixing … by Associating …”
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`Qualcomm urges the Board to materially alter the “fixing…by associating…”
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`phrase as follows:
`
`fixing setting the scope of pattern recognition analysis to where a
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`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.
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`POR, p18.
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`
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`Qualcomm’s construction thus (1) changes the action of “fixing…” into
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`“setting the scope of…,” (2) introduces a new concept of “the scope of pattern
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`recognition analysis,” and (3) imposes extraneous limitations prescribing the scope
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`to be “where a subset of varying parameters match parameter values associated
`
`with said first pattern.” Id. The Board should reject Qualcomm’s vast claim rewrite,
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`as it contradicts the claim language, lacks support in intrinsic evidence, and
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`improperly imports extraneous limitations.
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`1.
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`Qualcomm imports a dependent limitation into independent claims
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`Qualcomm seeks to augment the independent claims with a concept—
`
`recognizing a second pattern—that is not recited until dependent Claim 3. Among
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`other problems, Qualcomm’s approach introduces antecedent basis error.
`
`Qualcomm insists the “fixing” steps “set[] the scope of pattern recognition
`
`analysis” even though “a pattern recognition analysis” is not part of Claim 1. The
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`claims do not introduce “a recognition of a second pattern” until dependent Claim
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`3. The Board keenly recognized this in the Institution Decision, noting “the
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`identification of a second pattern is recited in dependent claims and not in the
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`challenged independent claims,” and Qualcomm’s attempt to then distinguish Wang
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`from the independent claims based on recognition of a second pattern were flatly
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`rejected. ID, p22.
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`While Qualcomm’s construction avoids expressly reciting “a second pattern,”
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`Qualcomm’s POR makes plain that the “pattern recognition analysis” it seeks to
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`import into the independent claims is for “a second pattern.” See, e.g., POR, p9
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`(“‘Fixing’ parameters sets the scope of analysis3 to enable recognition of a ‘second
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`3 Bold and italic represent emphasis added by Petitioner, unless otherwise specified.
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`pattern’ when there is a pattern in the fixed parameters” ). Thus, by construing
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`“fixing” as “setting the scope of pattern recognition analysis [of a second pattern],”
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`Qualcomm seeks improperly to import limitations from dependent claims into the
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`independent claim. Ex.1001, Claims 1, 3.
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`Qualcomm’s construction also yields an indefinite claim with terms lacking
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`antecedent basis. Because the “pattern recognition analysis” to which Qualcomm’s
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`construction refers does not appear until claim 3, requiring the method of claim 1 to
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`“set[] the scope of pattern recognition analysis” merely begs the question, “the scope
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`of what pattern recognition analysis?” The answer is the recognition of a second
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`pattern—which the Board correctly identified as only part of a subsequent
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`dependent claim. Qualcomm’s construction would thus render the independent
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`claims indefinite.
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`2.
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`Qualcomm’s construction lacks specification support
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`The language at the crux of Qualcomm’s proposed construction—“setting the
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`scope of pattern recognition analysis”—appears nowhere in the ’865 patent.
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`Ex.1001; Ex.1026, 27:15-21. Consequently, Qualcomm’s proposed construction
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`relies on the patent’s provisional application and an annotation of the patent’s Fig.2.
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`Neither source supports Qualcomm’s position.
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`Like the specification, the provisional application fails to mention “setting
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`the scope.” Ex.2001. The provisional application describes attempting to identify
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`a second pattern, i.e., the subject matter of claim 3, which Qualcomm is trying to
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`import into claim 1. See POR at 9-10 (e.g., describing “identify[ing] patterns in a
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`second subset of variables”). But, the passages nowhere suggest recognizing a
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`second pattern or setting its scope is required to practice the independent claims. Id.
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`Qualcomm’s reliance on its annotation of Fig.2 further illustrates the patent’s
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`lack of support for Qualcomm’s construction. The red box Qualcomm
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`superimposed on an arbitrary portion of Fig.2 supposedly depicts an example of the
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`“scope” of subsequent pattern recognition that has been “set” in claim 1. POR, pp9-
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`13; Ex.1026, 37:15-18, 46:23-47:5. But the ’865 Patent never describes Fig.2 in
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`connection with “fixing,” let alone as “setting the scope.” Ex.1001, 7:22-57;
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`Ex.1026, 58:25-64:12. Contrarily, Qualcomm arbitrarily created the allegedly set
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`“scope,” the red box in Fig.2 (reproduced below), without citation to the patent.
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`POR, pp11-13.
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`Proceeding No.: IPR2018-01281
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`Qualcomm’s annotated FIG.2 the ’865 Patent (highlighted)
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`Qualcomm’s red box is so arbitrary that it results in perplexing and
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`contradictory conclusions as to whether and why some parameters are included in
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`the red box. Qualcomm’s red box plainly includes a portion devoted to the symbols
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`for “driving” and “walking.” Yet, Qualcomm’s expert insisted that the “scope” set
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`via the red box does not include both “walking” and “driving.” Compare Ex.1026,
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`53:25-54:4 (testifying “Motion State” of “Driving” is within set “scope”), with id.,
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`54:5-55:14 (“Q.…So does the scope of analysis include ‘Motion State’ equals
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`‘Walking’? A. No, it doesn’t.”). But, at the same time, Dr. Villasenor maintains
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`the symbol for “WiFi SSID” equals “SSID_3” is within the scope that has been set,
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`even though less of that symbol is within the red box than is the symbol for
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`“walking.” Id. at 53:9-12. Fig.2 Dr. Villasenor also claims the set scope does not
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`include both “fidgeting” and “driving,” despite the red box’s obvious inclusion of
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`both symbols. Id., 56:8-14, 58:13-17.
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`3.
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`Qualcomm’s construction imports extraneous limitations
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`Qualcomm’s proposed construction also imposes an unsupported temporal
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`requirement on the second pattern—requiring the searched-for “second pattern” “co-
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`occur[]” or “overlap in time” with the first pattern. POR, pp18-19, 22. No support
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`exists for this drastic departure from the claim language.
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`Perhaps recognizing a “co-occurrence” limitation would contradict the
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`Board’s admonishment that “none of the challenged claims refer to a second pattern
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`co-occurring with the first pattern,” ID, p22, Qualcomm avoids using temporal
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`terms in its actual proposed construction. Instead, Qualcomm restricts the allegedly
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`set scope to “where a subset of varying parameters match parameter values
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`associated with said first pattern.” But, Qualcomm admits elsewhere that it intends
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`for “where” to mean “when,” or more specifically, “co-occurring” or “overlapping
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`in time”:
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`[(1)] fixing is setting the scope of analysis such that, when a
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`pattern recognition process is later initiated, recognition process
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`recognizes “patterns in a second subset of variables when there is a
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`pattern in the fixed subset of variables.” POR, p19.
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`[(2)] “fixing” parameters of the first pattern as enabling the
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`system to identify other patterns that are present when there is a pattern
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`in the fixed variables of the first pattern... This process of recognizing
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`“what other” patterns co-occur along with the first pattern does not
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`happen without first setting the scope of pattern recognition analysis to
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`where that first pattern matches. POR, p22.
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`[(3)] In either case, the purported second pattern cannot overlap
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`in time with the purported first pattern. POR, p30.
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`Dr. Villasenor agrees. Ex.1026,38:18-22 (“Q. [W]hen you get to claim three,
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`searching for the second pattern would have to be a second pattern that co-occurs
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`with the first pattern? A. I think it had has to be….”).
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`Lacking claim language support for its “co-occurring” requirement,
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`Qualcomm argues the specification repeatedly and consistently supports it. POR,
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`p9, 18-19, 21-22. Even if so, a repeated and consistent description is insufficient to
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`create a clear disavowal of claim scope. See Thorner v. Sony Comput. Entm’t Am.
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`LLC, 669 F.3d 1362, 1366-7 (Fed. Cir. 2012) .
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`Moreover, Qualcomm struggles to prove the alleged repeated and consistent
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`description. Qualcomm does not cite a single passage of the as-issued ’865 patent
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`describing a co-occurrence requirement. Instead, Qualcomm again relies on isolated
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`passages from the provisional application and the arbitrarily annotated version of the
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`patent’s Fig.2 with open-ended, exemplary phrases. POR, pp9-13.
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`POR, p10.
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`As to the annotated Fig.2, the same contradictions described above (e.g.,
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`“driving” and “fidgeting” supposedly do not co-occur within the red box, while
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`“driving” and “SSID_1” supposedly do) equally undermine any suggestions that
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`Fig.2 supports a co-occurrence requirement.
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`Proceeding No.: IPR2018-01281
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`Qualcomm impermissibility seeks to alter the claim language to prescribe “the
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`scope” to “where a subset of varying parameters match parameter values associated
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`with said first pattern.” As Dr. Villasenor contends, Qualcomm’s construction
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`requires all parameters associated with the first pattern be matched “because
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`otherwise you would no longer have that first pattern.” Ex.1026, 42:14-43:13. But,
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`claim 1’s plain language requires only “fixing a subset of varying parameters
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`associated with said first pattern.” Qualcomm thus unjustifiably rewrites “subset”
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`to “full set.” POR, pp18-19.
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`4.
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`Qualcomm’s proposed construction contradicts its litigation
`positions
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`Qualcomm’s previous positions regarding “fixing” cast still further doubt on
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`its current proposed construction. In district court/Phillips standard, Qualcomm
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`argued no construction of “fixing” was necessary. Ex.1026, 70:18-71:5; Ex.1024,
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`Ex.C, p6. Qualcomm does not explain how the BRI of “fixing” can require a lengthy
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`construction that imports concepts from dependent claims, translates “fixing” to
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`“setting the scope,” and imposes a new temporal requirement, while the limitation
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`simultaneously needs no construction under Phillips. Qualcomm’s new proposed
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`construction also contradicts its own infringement allegations. In Qualcomm’s
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`infringement theory, none of the allegedly fixed parameters in Apple’s accused
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`products co-occurred with those in the alleged first pattern, as Qualcomm now
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`contends. Ex.1025, Ex.865, pp53-54.
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`14
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`5.
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`Petitioner’s construction is fully supported by the intrinsic
`evidence and does not render any claim term superfluous
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`As acknowledged, “Petitioner’s proffered construction is expressly supported
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`by the claim language per se[; and] is consistent with both the ’865 patent
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`Specification and the prosecution history of the ’865 patent.” ID, p20.
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`Even if, in a vacuum, “associating” could be a sub-step of “fixing,” as
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`Qualcomm contends, that does not make Petitioner’s construction any less correct.
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`The claimed “fixing could encompass a variety of actions beyond associating, but
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`the claims, the ’865 patent Specification, and the ’865 patent prosecution history all
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`support Petitioner’s narrower proffered interpretation.” ID, p21. “Petitioner’s
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`proffered construction does not remove ‘fixing’ from the claim but, instead, limits
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`the scope of the term fixing to be fixing by associating, as recited in the claims.” ID,
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`pp20-21. By amending its claims to require fixing “by associating …,” Qualcomm
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`limited the claim scope accordingly. Id.
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`Qualcomm incorrectly urges “Petitioner’s interpretation is contrary to the
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`specification because merely ‘associating’ does not achieve what the specification
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`repeatedly and consistently describes [-] ‘fixing’ parameters of the first pattern as
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`having a particular result.” POR, p21. As discussed in Section-II-B, contrary to
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`Qualcomm’s assertions, the specification does not “repeatedly and consistently”
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`describe departure from the plain claim language, let alone mandate such departure.
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`15
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`The claims expressly recite that fixing is done by associating. Id.; Ex.1001, claim
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`1.
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`Qualcomm further mistakenly argues Petitioner’s construction is duplicative
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`of the separately-recited “identifying” step. POR, p22. Qualcomm ignores that the
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`Board addressed similar arguments raised in Qualcomm’s POPR, acknowledging
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`the “identifying” step can occur in a training phase of a classification algorithm,
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`which distinguishes the “fixing” step that can occur later in a recognition phase. ID,
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`p21; Petition, p24. Qualcomm tellingly fails to respond to the Board’s reasoning.
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`ID, p21. Moreover, Qualcomm’s “superfluous” argument also depends on its
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`erroneous construction of “pattern.” Should the Board reject Qualcomm’s new
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`construction of “pattern,” no alleged overlap between the “identifying” and “fixing”
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`steps would exist. See Section-II-A.
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`For at least these reasons, the Board should reject Qualcomm’s construction.
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`III. WANG-BASED GROUNDS INVALIDATE THE CHALLENGED
`CLAIMS
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`Qualcomm’s arguments against Wang-based grounds rest primarily on a
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`flawed understanding of Wang, improper claim constructions, and inapposite
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`arguments divorced from the claim language. POR, pp24-40.
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`Attempting to deny Wang’s satisfaction of “identifying a first pattern…”
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`feature, Qualcomm mischaracterizes Wang as not disclosing detecting/defining
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`states based on parameter values collections. POR, pp34-36. Qualcomm
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`16
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`
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`acknowledges that Wang describes “a novel design framework” for “a prototype
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`system known as [Energy Efficient Mobile Sensing System (EEMSS)].” POR, pp2,
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`24. However, Qualcomm improperly ignores most of Wang’s EEMSS disclosure
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`and argues Wang’s disclosure is limited to only a state-transition embodiment.
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`Qualcomm’s own expert disagrees with Qualcomm, acknowledging disclosure by
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`Wang of multiple approaches to detecting and defining states (corresponding to
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`“patterns”). Compare Ex.2004, ¶53 (acknowledging “Wang defines states … based
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`on the groups of ‘State Features’ and linked values shown in Table 1”) with POR,
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`p25 (asserting incorrectly “Wang Discloses Detecting and Defining States Based on
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`State Transitions, Not Collections of Parameter Values”). Viewed in its entirety,
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`Wang plainly discloses the subject matter of the Challenged Claims. See Section-
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`III-A; Section-III-B-C.
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`As to whether Wang satisfies the “fixing…” limitation, Qualcomm relies
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`primarily on its unreasonably narrow constructions, which should be rejected as
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`discussed in Section-II. However, even under Qualcomm’s proposed constructions,
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`Wang still satisfies the Challenged Claims because Wang discloses setting the scope
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`of analysis and recognizing a second pattern that “co-occurs”/”overlaps in time”
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`with a first pattern. Section-III-D.
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`17
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`Finally, as to claims 4 & 23, Qualcomm impermissibly swaps the term
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`“varying parameters” with “sensors” and incorrectly faults Wang as not disclosing
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`this unclaimed feature. POR, pp39-40. Section-III-E.
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`Accordingly, Wang-based Grounds satisfy all the Challenged Claims, and all
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`the Challenged Claims should be canceled.
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`A. Wang Discloses Detecting and Defining States Based on
`Collections of Parameter Values, in Addition to State
`Transitions
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`Wang discloses detecting and defining states (i.e., patterns) based on
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`collections of parameter values in multiple ways including not only in Table 1 but
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`also in XML file, thus meeting the “identifying…” limitation, even under
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`Qualcomm’s narrow reading of Wang. Most prominently, Wang discloses detecting
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`and defining states based on collections of parameter values in Table 1. Relying on
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`an incorrect proposition—“Wang discloses defining and detecting states based on
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`state transitions, not collection of parameter values”—Qualcomm concludes that
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`Wang does not disclose the claimed “identifying” or “fixing” steps. POR, p25
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`(capitalizations altered). But Qualcomm’s description of Wang is flatly wrong, as
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`evidenced both by the testimony of Qualcomm’s expert and Wang’s repeated
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`disclosures of detecting user states “as well as” state transitions. See e.g., Ex.2004,
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`¶53; Ex.1005, p1c1, p2c1.
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`
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`Dr. Villasenor rightly acknowledges that “Wang defines states [ ]—based on
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`the groups of ‘State Features’ and linked values shown in Table 1.” Ex.2004, ¶53.
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`Properly construed, a “pattern” is a collection of parameter values, rendering this
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`term undoubtedly satisfied by the groups of state features, which Wang dubs, “user
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`states”. Dr. Villasenor confirms what Table 1 plainly shows – that Wang discloses
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`defining states based on a collection of parameter values, regardless of whether it
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`also describes doing so via state transitions. See Ex.1005, Table 1, p1c1. Id.
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`Because Wang discloses state detection apart from state transitions,
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`Qualcomm is wrong in contending that, “[b]ecause Wang focuses on identifying
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`state transitions, the states do not overlap in time.” POR, pp30-32. Qualcomm’s
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`argument is both irrelevant and incorrect. Properly construed, the claims do not
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`require co-occurrence. ID, pp23-24; Section-II-B-C. And, even accepting
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`Qualcomm’s
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`flawed co-occurrence
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`requirement, Wang
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`includes multiple
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`disclosures of co-occurring patterns. Section-III-D.
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`Qualcomm also mischaracterizes Wang’s EEMSS, arguing Wang does “not
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`disclose EEMSS using the combination of ‘State Features’ and corresponding
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`values.” POR, p27. Again, Qualcomm’s position is directly refuted by its own
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`expert’s deposition testimony: “Wang says EEMSS monitors the characteristic
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`features defining that state.” Ex.2026, 84:20-23.
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`19
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`
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`Qualcomm repeatedly glosses over or ignores Wang’s numerous, express
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`disclosures of EEMSS defining/detecting user states “as well as” state transitions,
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`including several passages which Qualcomm cites in its POR (reproduced below),
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`all of which make plain that EEMSS not only detects “state transitions” but also
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`“defines” and recognizes user states. POR, pp24-25.
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`Screenshots of portions of Qualcomm’ quotations from Wang (highlighted)
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`These passages confirm Wang expressly discloses the EEMSS prototype system
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`detecting and defining states apart from the use of state transitions. Id.; see also
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`Ex.1005, p2c1; p5c1.
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`20
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`Proceeding No.: IPR2018-01281
`Attorney Docket: 39521-0042IP1
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`Qualcomm likewise incorrectly claims “Wang never discloses the EEMSS
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`system using collections of state features from Table 1 to identify state[sic].” POR,
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`pp33-34. Qualcomm argues (1) EEMSS uses “an XML state descriptor file that
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`defines states based on state transition” and (2) “Table 1 of Wang includes different
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`information than the XML state descriptor actually used by EEMSS.” POR, pp25-
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`27