Paper 25
`
`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
`______________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`
`
`98543453.2
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`

`

`TABLE OF CONTENTS
`
`Case IPR2018-01281
`Patent 8,768,865
`
`Page
`
`3. 
`
`4. 
`
`5. 
`
`B. 
`
`C. 
`
`I. 
`II. 
`
`III. 
`
`V. 
`
`INTRODUCTION .......................................................................................... 1 
`CLAIM CONSTRUCTION ........................................................................... 3 
`A. 
`“Pattern” ............................................................................................... 3 
`B. 
`“Fixing … by Associating …” ............................................................. 5 
`Petitioner Cannot Justify Deleting the “Fixing” Phrase .......... 5 
`1. 
`2. 
`Qualcomm’s Construction Sets Forth the Meaning of
`“Fixing” Used by the Specification ........................................... 7 
`Petitioner Identifies No Legitimate Criticism of
`Qualcomm’s Construction ......................................................... 8 
`Subsequent Pattern Recognition Efforts May Indicate that
`Fixing Did Not Occur .............................................................. 12 
`Qualcomm’s Construction Does Not Contradict Its
`Litigation Positions .................................................................. 13 
`PETITIONER RELIES UPON ALLEGED EEMSS USE OF TABLE
`1 OF WANG NOT DISCLOSED IN WANG .............................................. 14 
`A.  Wang Does Not Disclose EEMSS Using “Both” the XML State
`File and Table 1 to Identify States ..................................................... 14 
`Petitioner’s New Reliance on the EEMSS XML File is Untimely
`and Fails to Present a Complete Mapping .......................................... 19 
`Petitioner Therefore Fails to Demonstrate Both “Identifying a First
`Pattern …” and “Fixing … by Associating” Under Any
`Construction ....................................................................................... 20 
`IV.  PETITIONER FAILS TO DEMONSTRATE “FIXING … BY
`ASSOCIATING …” UNDER QUALCOMM’S CONSTRUCTION ......... 20 
`PETITIONER FAILS TO SHOW CAUSATION BETWEEN
`ALLEGED FIXING AND REDUCTION OF VARYING
`PARAMETERS ............................................................................................ 24 
`VI.  CONCLUSION ............................................................................................. 28 
`
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`TABLE OF AUTHORITIES
`
`Case IPR2018-01281
`Patent 8,768,865
`
` Page(s)
`
`Cases
`Apple Inc. v. Papst Licensing GMBH & CO. KG,
`IPR2016-01842, Paper 35, 2018 ......................................................................... 15
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 16
`Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc.,
`222 F.3d 951 (Fed. Circ. 2000) ........................................................................... 10
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) .......................................................................... 19
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 10
`
`
`
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`Case IPR2018-01281
`Patent 8,768,865
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`
`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
`2007
`
`omitted
`
`CV of John Villasenor
`omitted
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`Case IPR2018-01281
`Patent 8,768,865
`
`I.
`
`INTRODUCTION
`Petitioner’s Reply does not—and cannot—dispute the key factual points that
`
`demonstrate that: (1) Petitioner’s construction of “fixing … by associating …” is
`
`wrong (and Qualcomm’s is correct) and (2) Petitioner’s mapping of the Challenged
`
`Claims to Wang is based on functionality Wang does not actually disclose. Unable
`
`to dispute these key facts, Petitioner resorts to making inaccurate characterizations
`
`of Qualcomm’s Response and proposing new, untimely, mappings that are, again,
`
`grounded in functionality Wang does not actually disclose.
`
`First, Petitioner does not dispute its own expert’s testimony that “the
`
`specification uses ‘associating’ as a substep of the process of fixing” and that
`
`“associating” can be used to “achieve many different goals.” Ex. 2003 at 49:25-
`
`50:9; 51:20-23. These facts, not in the record at the time of the Institution Decision,
`
`lead to the conclusion the recited “associating …” need not result in “fixing ….” As
`
`the Institution Decision explained, the plain claim language “limits the claim to
`
`fixing the parameters only by the action of associating.” Decision at 17 (emphasis
`
`omitted). Petitioner’s construction does not “limit[] the claims to fixing” and is,
`
`therefore, wrong.
`
`Thus, it is necessary to assign meaning to “fixing”—and Qualcomm is the
`
`only party offering any meaning. Petitioner does not—and cannot—identify any
`
`portion of the ’865 Patent Specification that is inconsistent with Qualcomm’s
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`construction. Petitioner instead repeatedly mischaracterizes Qualcomm’s Response
`
`as not providing sufficient cites to the specification—a contention easily refuted.
`
`The specification repeatedly explains that the system is able to identify patterns that
`
`co-occur with the fixed varying parameters as a result of the fixing. This goal is
`
`achieved by “setting the scope of analysis” as recited in Qualcomm’s construction
`
`and is not by merely “associating.”
`
`Second, Petitioner does not—and cannot—refute that Wang explains that the
`
`EEMSS system detects states using an XML state descriptor file that defines states
`
`based on prior state and state transition. Unable to dispute this, Petitioner pivots and
`
`argues that Wang should be read to disclose detecting states “both” based not only
`
`on what Wang actually describes, but also based on the Table 1 to which Petitioner
`
`points. Such an assertion makes no logical sense but, more importantly, is
`
`inconsistent with Wang, which never describes detecting states based on Table 1. In
`
`fact, Petitioner goes so far as to insert in brackets references to Table 1 in quotations
`
`from Wang that, in actuality, includes no reference to Table 1 as purported proof of
`
`its position. Petitioner’s reliance on Table 1 is fatal to Petitioner’s mappings of
`
`multiple elements of the challenged independent claims without reaching claim
`
`construction. And, Petitioner’s attempts to present a new mapping to the XML file
`
`are both untimely and fail to present a mapping of all relevant claim elements.
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`Third, Petitioner continues to fail to identify any causal relationship between
`
`the identified functionality for dependent Challenged Claims 4 and 23 and what
`
`Petitioner alleges is “said fixing,” as required by those claims. Unable to engage on
`
`this point, Petitioner instead argues that Qualcomm’s Response should be ignored
`
`because it references causation of limiting “sensors,” rather than “varying
`
`parameters.” But Qualcomm’s reference to “sensors” is a restatement of Petitioner’s
`
`own mapping of these claim elements. The original Petition asserts that the
`
`functionality allegedly meeting these elements is “in response to” determining user
`
`state, not “fixing.” This is dispositive.
`
`Accordingly, for multiple independent reasons, the patentability of all
`
`Challenged Claims should be affirmed.
`
`II. CLAIM CONSTRUCTION
`A.
`“Pattern”
`Qualcomm seeks construction of this term solely to clarify that “identifying a
`
`pattern” includes linking varying parameters in the pattern to their corresponding
`value (such as Parameter “Sound Intensity” = Value “Loud” and
`Parameter “PeriodicMovement” = Value “Running”). Petitioner
`
`does not—and cannot—dispute this point. See Reply at 4-5; see also Ex. 2003 at
`
`56:20-23, 58:9-15 (Dr. Allen agreeing to same). While Qualcomm believes it is also
`
`accurate that a pattern includes the logical relationship between each pair (such as
`
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`AND), the Board need not reach this dispute as it is not relevant to any issue to be
`
`decided.1
`
`Because Petitioner does not—and cannot—dispute that “identifying” a pattern
`
`includes linking parameters to parameter values, Petitioner has no legitimate basis
`
`to dispute that that Petitioner’s construction of “fixing … by associating …” renders
`
`that step
`
`indistinguishable from
`
`the separately-recited “identifying” step.
`
`Specifically, Dr. Allen testified that “defining a link between two data items” “would
`
`certainly be one way of associating.” Ex. 2003 at 48:9-13. But that is exactly what
`
`identifying a pattern also encompasses. Thus, “associating at least one parameter of
`
`said subset of varying parameters with said first pattern” and “identifying a first
`
`pattern” are indistinguishable under Petitioner’s construction, demonstrating the
`
`incorrectness of Petitioner’s “fixing … by associating …” construction.
`
`
`1 Petitioner’s arguments that Dr. Villasenor has taken inconsistent positions (Reply
`
`at 5) is irrelevant given Petitioner does not dispute the relevant portion of the
`
`construction. It is also incorrect for the reasons Dr. Villasenor explained at his
`
`deposition: “[T]o eliminate any chance of [] ambiguity, or at least eliminate any
`
`chance in any ambiguity regarding what I was saying, I provided an expanded
`
`definition in Exhibit 2005; but to me they mean the same thing.” Ex. 2026 at 137:8-
`
`19; see also 136:2-20.
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`Petitioner offers no legitimate explanation. Petitioner attempts to dismiss the
`
`exercise as illegitimate because “Qualcomm uses its re-definition of ‘pattern’”
`
`(Reply at 6), but Petitioner does not dispute the relevant portion of that definition.
`
`Petitioner also points to the Institution Decision’s conclusion that Petitioner had
`
`mapped “identifying” and “associating” to different functionality. See Reply at 5.
`
`But the issue addressed in the Institution Decision—whether Petitioner mapped to
`
`the same functionality—is a different issue. This issue here is that Petitioner’s
`
`proposed construction of “fixing …” is so broad that it is indistinguishable from the
`
`separately-recited “identifying a pattern.” For example, the Institution Decision
`
`notes that Petitioner pointed to learning patterns in a training phase as “identifying.”
`
`Decision at 21. Such learning of patterns, which includes linking of a varying
`
`parameter to a parameter value, would also be “associating” under Petitioner’s
`
`construction of “fixing … by associating ….”
`
`B.
`
`“Fixing … by Associating …”
`1.
`Petitioner Cannot Justify Deleting the “Fixing” Phrase
`The Institution Decision held that the language “fixing … by associating …”
`
`“limits the claim to fixing the parameters only by the action of associating as
`
`recited, rather than by other actions.” Decision at 17 (emphasis in original). The
`
`Decision did not suggest that it is permissible to remove “fixing …” as a limitation;
`
`rather, the Decision did not accept Qualcomm’s argument, under the record at the
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`time, that Petitioner’s construction actually removed “fixing.” See id. Now, the
`
`evidentiary record has substantially evolved, and the unanimous evidence shows that
`
`Petitioner’s construction does remove “fixing ….”
`
`Petitioner does not—and cannot—dispute the testimony of its own expert that
`
`“the specification uses ‘associating’ as a substep of the process of fixing.” Ex. 2003
`
`at 51:20-23; see also Reply at 15 (“Even if, in a vacuum, ‘associating’ could be a
`
`sub-step of ‘fixing,’ …”). Nor does Petitioner even address Dr. Allen’s testimony
`
`that “associating” is an action that “can be used in many different applications” to
`
`“achieve many different goals.” Ex. 2003 at 49:25-50:9. As Dr. Villasenor
`
`explained, “fixing …” and “associating …” are not synonymous, nor is “associating
`
`…” a special case of “fixing ….” Ex. 2004 at ¶¶ 32, 43.
`
`Thus, the undisputed record demonstrates that “associating” need not result in
`
`fixing. Accordingly, if Petitioner is permitted to delete the 12-word “fixing …”
`
`phrase, the claims no longer require “fixing.” Ex. 2004 at ¶ 43. Such a deletion
`
`would be improper under any circumstanced, but particularly here where the ’865
`
`Patent emphasizes the role of “fixing” in achieving the goals of the invention. See,
`
`e.g., Ex. 1001 at 8:45-60.
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`2. Qualcomm’s Construction Sets Forth the Meaning of “Fixing”
`Used by the Specification
`Qualcomm’s construction of “fixing” as “setting the scope of analysis” stands
`
`as the only construction that actually assigns meaning to “fixing.”2 While Petitioner
`
`criticizes Qualcomm’s construction, it fails to offer any alternative meaning for
`
`“fixing” beyond “associating.”
`
`The correctness of Qualcomm’s construction—and
`
`incorrectness of
`
`Petitioner’s—can be seen by substituting both into the specification passages that
`
`describe what “fixing” enables. For example, the ’865 Patent states that the act of
`
`“fixing one variable associated with or corresponding to ‘driving’” results in “an
`
`application processor associated with a mobile device” being able to “observe what
`
`other variables have patterns if a motion state corresponds, for example, to
`
`‘driving.’” Ex. 1001 at 13:36-37, 13:23-26.
`
`Substituting in Qualcomm’s construction, it remains a true statement that
`
`“setting the scope of analysis to where motion state is equal to driving” enables
`
`an application processor to “observe what other variables have patterns if a motion
`
`state corresponds, for example, to ‘driving.’” Id. at 13:23-26. In contrast, merely
`
`
`2 Qualcomm has thus addressed the Institution Decision’s observation that
`
`Qualcomm had not proposed an alternative construction. Decision at 20.
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`“associating the varying parameter motion state with the parameter value
`
`driving” would not enable an application processor to “observe what other variables
`
`have patterns if a motion state corresponds, for example, to ‘driving.’” Id.
`
`Petitioner’s construction is also consistent with the fact that “associating” is a
`
`subset of “fixing” because the scope of analysis can be set using the “association”
`
`of “motion state” with “driving.” But, again, merely performing the “associating”
`
`without using the “associating” to set the scope of analysis would not assist
`
`subsequent pattern recognition.
`
`Additional specification passages describe “fixing” as enabling this same
`
`result. See, e.g., id. at 13:19-22 (“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”),
`
`Ex. 2001 at 15 (“observe what other variables have patterns when motion state
`
`corresponds to “driving””). In each case, “fixing” sets the scope of analysis to where
`
`the fixed parameters match the fixed parameter values.
`
`3.
`
`Petitioner Identifies No Legitimate Criticism of Qualcomm’s
`Construction
`Petitioner does not identify any portion of the specification that is inconsistent
`
`with Qualcomm’s construction. See Reply at 8-13. Instead, Petitioner makes a
`
`series of arguments that either provide no legal basis to dispute Qualcomm’s
`
`construction or are factually incorrect.
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`Case IPR2018-01281
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`First, Petitioner incorrectly asserts that Qualcomm relies solely on the
`
`provisional application and annotations of Figure 2. Reply at 8. To the contrary,
`
`Qualcomm cites to and analyzes numerous instances in the specification that use the
`
`word “fixing” in the same context as the claim language. See Response at 10-11
`
`(citing ’865 Patent3 at 13:19-22, 13:36-27, 13:23-26). Moreover, given that the ’865
`
`Patent incorporates its provisional application by reference (Ex. 1001 at 1:7-10),
`
`Petitioner is incorrect to suggest text from that provisional application is any less
`
`part of the specification than any other passage.
`
`Second, Petitioner argues that the specific words “setting the scope of pattern
`
`recognition analysis” do not appear in the specification. See Reply at 8. Petitioner
`
`cites no case law that the words of a construction must appear in the specification,
`
`nor does such a requirement have any logical basis. 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
`
`
`3 Qualcomm’s citation on page 10 to 13:19-22 should have referred to “Ex. 1001”
`
`rather than “id.” Given that citations to the ’865 Patent are by column and line and
`
`citations to the provisional application are by page, that citation—and those that
`
`follow—are plainly directed to column and line numbers of the ’865 Patent.
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`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). Qualcomm’s construction does so.
`
`Third, Petitioner argues that consistent use of the term in the specification is
`
`not enough because “a repeated and consistent description is insufficient to create a
`
`clear disavowal of claim scope.” Reply at 12. This argument is irrelevant because
`
`Qualcomm has not asserted any claim scope disavowal or sought to narrow the
`
`claims to less than the plain and ordinary meaning in view of the entire disclosure.
`
`Petitioner has offered no alternative plain and ordinary meaning of “fixing.” It seeks
`
`to remove the term from the claim.
`
`Fourth, Petitioner criticizes Dr. Villasenor’s annotations of Figure 2 of the
`
`’865 Patent. Reply at 9-11. To be clear, Qualcomm does not suggest that Figure 2
`
`provides independent support for the meaning of “fixing.” Rather, Dr. Villasenor
`
`simply used the illustration of Figure 2 as a background upon which to illustrate the
`
`concept of “fixing” as described in the specification passages discussed above. See
`
`Ex. 2004 at ¶ 33. In any event, Petitioner’s criticisms of the annotations are all based
`
`on attempts to interpret the spacing of elements on the timeline of Figure 2 in a way
`
`that Dr. Villasenor explained is contrary to how a POSITA would interpret the
`
`figure: “And, again, this is an illustrative figure, it’s not one that’s intended to be
`
`analyzed with calipers measuring tenth of a millimeter distances. I think it’s clear
`
`to one who’s skilled in the art.” Ex. 1026 at 58:20-24; see also Hockerson-
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`Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Circ. 2000) (“it
`
`is well established that patent drawings do not define the precise proportions of the
`
`elements and may not be relied on to show particular sizes if the specification is
`
`completely silent on the issue.”). Petitioner offers no evidence to the contrary.
`
`Fifth, Petitioner argues that Qualcomm’s construction requires recognizing a
`
`second pattern in Claim 1. See Reply at 7. As Qualcomm already explained—and
`
`Petitioner does not address—“Patent Owner does not suggest that Claim 1 requires
`
`performing pattern recognition—that is recited separately in dependent Claim 3.”
`
`Response at 19. Rather, fixing is setting the scope of analysis such that, when a
`
`pattern recognition process is later initiated, that later analysis is performed within
`
`the scope set by “fixing.”
`
`Sixth, Petitioner argues that the phrase “setting the scope of pattern
`
`recognition analysis” renders the claim indefinite because “Qualcomm’s approach
`
`introduces antecedent basis error.” Reply at 7. Qualcomm disagrees that this phrase
`
`leads to an antecedent basis issue in the same way “the side of a box” does not
`
`introduce any antecedent basis issues. In any event, this is a not a basis to
`
`substantively challenge the construction. If the Board believes “setting a scope of
`
`pattern recognition analysis” is more appropriate, Qualcomm is not opposed to that
`
`modification of the construction.
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`4.
`
`Subsequent Pattern Recognition Efforts May Indicate that
`Fixing Did Not Occur
`Petitioner argues that Qualcomm improperly reads a “co-occurring” limitation
`
`into the claim. Reply at 11-14. This does not accurately state Qualcomm’s position.
`
`As Qualcomm has stated, and as reflected in the proposed construction, “fixing” sets
`
`the scope of subsequent pattern recognition analysis to where the fixed varying
`
`parameters match their fixed value(s). It logically follows that, during the time the
`
`scope of pattern recognition analysis is set, only patterns that co-occur with the fixed
`
`varying parameters having their fixed value(s) can be recognized. This is because
`
`pattern recognition efforts would not include analyzing an instance of data where the
`
`fixed values are not met.
`
`Again, Qualcomm does not assert that “fixing” itself involves pattern
`
`recognition. But, where a reference describes a pattern recognition analysis that
`
`identifies patterns that include a value other than the fixed value(s) of a fixed
`
`varying parameter (i.e., does not co-occur with the fixed pattern), then it can be
`
`concluded that fixing did not occur. That is, the scope of pattern recognition was
`
`not set to where the fixed values are true for that pattern recognition analysis.
`
`The specification’s description of identifying patterns that “co-occur” after
`
`“fixing” further supports Qualcomm’s construction. Petitioner incorrectly asserts
`
`that “Qualcomm does not cite a single passage of the as-issued ’865 patent
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`describing a co-occurrence requirement.” Reply at 12. To the contrary, Qualcomm
`
`cites multiple portions of the ’865 Patent describing identifying a second pattern that
`
`“co-occurs” with the fixed varying parameters as a result of the “fixing.” Response
`
`at 8-9 (citing Ex. 1001 at 8:7-11, 15:21-25).
`
`5. Qualcomm’s Construction Does Not Contradict Its Litigation
`Positions
`Petitioner also argues that Qualcomm has contradicted its litigation positions.
`
`Reply at 14. To the contrary, Qualcomm disputed Petitioner’s construction of
`
`“fixing” throughout the district court claim construction process, stating:
`
`“Qualcomm believes Apple’s construction fails to give meaning to all words of the
`
`claim, which may be relevant to validity.” Ex. 1024 at 86. Moreover, Qualcomm’s
`
`construction is consistent with Qualcomm’s description of the meaning of “fixing”
`
`in the district court. For example, in opposition to a Section 101 motion filed by
`
`Petitioner, Qualcomm again emphasized that Petitioner was ignoring the “fixing”
`
`requirement of the claim. See, e.g., D.I. 1294 at 10 (“By performing this ‘fixing,’ a
`
`‘mobile device may then search for a pattern that co-occurs’ with the condition
`
`represented by the fixed parameters.”) (citing Ex. 1001 at 8:41-45).
`
`
`4 To the extent the Board would like Qualcomm to file this document as an exhibit,
`
`Qualcomm can do so.
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`Finally, Petitioner asserts that Qualcomm’s infringement contentions are
`
`inconsistent with its claim construction, but offers no actual explanation of this
`
`inconsistency. Reply at 14. Qualcomm’s infringement contentions are consistent
`
`with its construction of fixing. On page 53 of the claim chart (page 90 of Ex. 1025),
`
`Qualcomm identifies headphone status (i.e., whether headphones are plugged in) as
`
`an example of a varying parameter with plugged in as an example of a value that can
`
`be fixed. Then, on page 68 of the claim chart (page 105 of Ex. 1025), Qualcomm
`
`explains that a second pattern representing a user listening to music at the gym is
`
`identified based on the first identified, and co-occurring, pattern of “a user desiring
`
`to listen to audio upon plugging in headphones” that includes the varying parameter
`
`headphone status fixed to the value of plugged in.
`
`III. PETITIONER RELIES UPON ALLEGED EEMSS USE OF TABLE 1
`OF WANG NOT DISCLOSED IN WANG
`A. Wang Does Not Disclose EEMSS Using “Both” the XML State File
`and Table 1 to Identify States
`Petitioner does not—and cannot—refute the showing in Qualcomm’s
`
`Response (pages 25-30) that Wang explains that the EEMSS system detects states
`
`using the XML state descriptor file, which defines states based on prior state and
`
`state transition. See Reply at 21. Instead, Petitioner pivots and argues that Wang
`
`should be interpreted as disclosing “EEMSS using both” the XML state descriptor
`
`file and Table 1. Id.; see also id. (“As used in Wang, ‘alternative’ does not equal
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`‘mutually exclusive.’”). But Petitioner identifies no citation in Wang suggesting use
`
`of “both” approaches, nor does Petitioner explain why “both” would be needed or
`
`how they would be combined or selected. More importantly, Petitioner still
`
`identifies no citation in Wang stating that EEMSS uses the patterns in Table 1 to
`
`detect states. Petitioner points to numerous statements on other topics, presumably
`
`arguing that the reader should infer Petitioner’s conclusion, but any such inference
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`is rebutted by the explicit disclosure that EEMSS uses different criteria to detect
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`states. Moreover, this pivot is inconsistent with Dr. Allen’s original declaration, and
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`Petitioner offers no new expert testimony.
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`First, Petitioner’s assertion that Wang teaches EEMSS using “both” the XML
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`state file and Table 1 to perform the same task of detecting states is inconsistent with
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`the nature of Wang. Wang is an academic paper describing a prototype system—
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`EEMSS. Ex. 1005 at 1. It is not a patent or theoretical paper that seeks to teach
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`many alternative approaches. Wang describes the actual functionality of the
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`prototype EEMSS and how it recognizes states. See id. at 5. Once Wang explains
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`the actual way EEMSS recognizes states, there is no logical reason and no technical
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`basis to interpret Wang as teaching EEMSS as doing anything else to accomplish
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`the same goal. See Apple Inc. v. Papst Licensing GMBH & CO. KG, IPR2016-
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`01842, Paper 35, 2018 Pat. App. LEXIS 4314, *15-16 (PTAB April 26, 2018)
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`(“[T]he Court cautions us against ‘the temptation to read into the prior art the
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`Patent 8,768,865
`teachings of the invention in issue.’”) (citing Graham v. John Deere Co., 383 U.S.
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`1, 17-18 (1966)).
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`Further, Petitioner offers no explanation—let alone citation to Wang—on how
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`EEMSS could even use “both” the XML file and Table 1, which define the same
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`states in different ways, to detect states. Does EEMSS combine the two separate
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`criteria in some way? And, if so, how? Does EEMSS switch between the two
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`criteria? And, if so, when, how, and on what basis? Petitioner offers no answer to
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`these questions, and Wang does not address them, which again confirms that Wang
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`does not describe EEMSS using the patterns in Table 1 to detect states.
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`Second, Petitioner, once again, fails to identify a single quotation from Wang
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`that ever states that EEMSS uses Table 1 to detect states. Reply at 21-24. Moreover,
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`a simple word search for “Table 1” makes clear Wang never says that EEMSS uses
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`“Table 1.” Ex. 1005.
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`Petitioner quotes tangential references to Table 1 that do not explicitly discuss
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`the criteria EEMSS uses to detect states. For example, Petitioner quotes: “Table 1
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`illustrates the set of user states to be recognized by EEMSS and three characteristic
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`features that define each of these states.” Reply at 22 (quoting Ex. 1005 at 5)
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`(emphasis in original). But nothing in this quote states that EEMSS uses the “three
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`characteristic features” to detect those states, which is the relevant question here.
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`Even to the extent a POSITA might initially infer such a conclusion from this
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`passage, such inference can be dismissed by testing the inference against the actual
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`explicit disclosure of Wang.
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`If Petitioner’s proposed inference that EEMSS used the patterns in Table 1 to
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`detect states were correct, then EEMSS would detect the state “Vehicle” by detecting
`a pattern of Feature “Location” = “Keep on changing” + Feature
`“Motion” = “Moving Fast”. But Wang does not so state. Instead, Wang
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`explicitly states that EEMSS detects the “Vehicle” state based on being in the state
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`“Walking” and detecting a state transition: “If a significant amount of increase is
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`found on both user speed and recent distance of travel, a state transition will happen
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`and the user will be considered riding a vehicle.” Ex. 1005 at 5. This explicit
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`disclosure demonstrates Petitioner’s asserted inference is not true.
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`Petitioner also argues that “Wang flatly contradicts” Qualcomm’s expert and
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`quotes two portions of Wang as allegedly showing EEMSS’s use of Table 1. Reply
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`at 23-24. But in each quotation Petitioner provides in support, Petitioner modifies
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`the text of Wang to insert references to Table 1 not actually in Wang. Below shows
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`Petitioner’s Reply with the language Petitioner added that is not actually found in
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`Wang highlighted in yellow.
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`
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`Reply at 23
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`Reply at 23
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`The fact that Petitioner was forced to modify the actual disclosure of Wang to
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`insert nonexistent references to “Table 1” again confirms Wang does not say what
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`Petitioner asserts. Moreover, Petitioner offers no explanation as to why a POSITA
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`would be seeking a “hidden” teaching in Wang as to how EEMSS detects states
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`when Wang explicitly states how EEMSS does so.
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`At bottom, because Petitioner cannot point to what Wang actually teaches, it
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`speculates on what could have been, but is not actually, disclosed: “Qualcomm
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`identifies nothing in Wang disclaiming EEMSS’s use of Table 1.” Reply at 22.
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`Whether Wang “disclaimed” building a system different from what Wang actually
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`disclosed is irrelevant to Petitioner’s anticipation argument.
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`B.
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`Petitioner’s New Reliance on the EEMSS XML File is Untimely
`and Fails to Present a Complete Mapping
`Petitioner also argues that “the EEMSS XML file itself defines states based
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`on collections of parameter values.” Reply at 25-26. Petitioner then provides a
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`series of words colored yellow and green. Id. As an initial matter, the original
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`Petition does not include any mapping of the claimed “first pattern” or “second
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`pattern” to the XML file; Petitioner relied exclusively on Table 1. See Pet. at 17-18,
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`22-25, 29-31. Petitioner’s attempt now to rely on the XML file is untimely and
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`should be rejected. 37 CFR § 42.23(b); see also Intelligent Bio-Systems, Inc. v.
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`Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
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`importance that petitioners in the IPR proceedings adhere to the requirement that the
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`initial petition identify ‘with particularity’ the ‘evidence that supports the grounds
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`for the challenge to each claim.’”) (citing 35 U.S.C. § 312(a)(3)). The need to reject
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`this new theory is not merely formal; if credited, Qualcomm would be prejudiced by
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`the inability to adequately address this new theory, which has only been introduced
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`after Qualcomm’s last opportunity to introduce new documentary evidence or
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`analysis from Qualcomm’s expert.
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`Case IPR2018-01281
`Patent 8,768,86