Paper No. 6
`
`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 PRELIMINARY RESPONSE
`
`
`
`
`
`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 PRELIMINARY RESPONSE
`
`
`
`
`
`Case IPR2018-01281
`Patent 8,768,865
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`V.
`
`INTRODUCTION .......................................................................................... 1
`OVERVIEW OF U.S. PATENT NO. 8,768,865 ........................................... 3
`A.
`Structured Approach Reduces Demands on Mobile Devices .............. 3
`1.
`Terminology ............................................................................... 3
`2.
`Two-Phase Approach ................................................................. 6
`3.
`“Fixing” to Enable Recognizing or Matching a “Second
`Pattern” ....................................................................................... 7
`The ’865 Patent Claims ........................................................................ 9
`B.
`Prosecution History ............................................................................ 11
`C.
`III. OVERVIEW OF THE CITED ART ............................................................ 13
`IV. CLAIM CONSTRUCTION ......................................................................... 14
`A.
`“Fixing . . .” ........................................................................................ 14
`B.
`Other Terms ........................................................................................ 20
`THERE IS NO REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL ON ANY OF THE CHALLENGED CLAIMS ............... 20
`A.
`Petitioner Does Not Show That Wang Discloses “Fixing . . .” ......... 20
`VI. CONCLUSION ............................................................................................. 24
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`i
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`TABLE OF AUTHORITIES
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`Case IPR2018-01281
`Patent 8,768,865
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` Page(s)
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`Cases
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2017–00222, slip op. (PTAB May 23, 2018) (Paper 29) ............................. 16
`Avid Tech., Inc. v. Harmonic, Inc.,
`812 F.3d 1040 (Fed. Cir. 2016) .......................................................................... 20
`Biogen Idec, Inc. v. GlaxoSmithKline LLC,
`713 F.3d 1090 (Fed. Cir. 2013) .......................................................................... 20
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) .......................................................................... 20
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 16
`Power Mosfet Techs., L.L.C. v. Siemens AG,
`378 F.3d 1396 (Fed. Cir. 2004) .......................................................................... 16
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`ii
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`Patent 8,768,865
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Qualcomm Incorporated
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`(“Qualcomm”) submits this Preliminary Response to Apple, Inc.’s Petition for Inter
`
`Partes Review (“IPR”) of U.S. Patent 8,768,865 (the “’865 Patent”) (Paper 1).
`
`I.
`
`INTRODUCTION
`The Petition fails to address all elements of the Challenged Claims.
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`Specifically, Petitioner fails to allege that any cited art discloses “fix[ing] a subset
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`of varying parameters associated with said first pattern,” which appears in each of
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`the independent Challenged Claims.1 Petitioner avoids addressing this limitation by
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`removing it from the claims under the guise of claim construction.
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`Petitioner’s proposed construction does not interpret the claim language.
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`Rather, it leaves the plain language unchanged—other than deleting a limitation that
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`Petitioner cannot show is in the prior art—as is apparent from comparing in redline
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`the proposed “construction” 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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`1 Petitioner challenges Claims 1-10, 12-30, and 46-53, each of which is or depends
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`from one of Claims 1, 21, or 46.
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`Petitioner’s “construction” is not a reasonable interpretation. It violates the
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`basic claim construction doctrine of giving meaning to all words in a claim. It also
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`ignores the intrinsic record, which emphasizes “fixing” as a key concept, and uses
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`“associating” as a basic computer science operation that could be used in countless
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`contexts. The plain language of the claim requires both that “fixing” is performed
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`and that “associating” be used in performing the “fixing.” There is no basis for
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`Petitioner’s neglect of the first requirement. Petitioner’s construction materially
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`alters the claim by removing the first requirement, such that any association—even
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`one that does not result in “fixing”—would be sufficient. It is not.
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`Petitioner does not purport to show “fix[ing] a subset of varying parameters
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`associated with said first pattern” in the prior art. Instead, the Petition relies
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`exclusively on the removal of “fixing” via its proposed claim construction: “As
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`construed above, [the fixing] limitation is met by associating. . . .” Petition at 24
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`(emphases added); see also id. at 25 (“Wang discloses the fixing limitation because
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`it discloses associating. . .”) (emphasis added). Nothing in the Petition suggests
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`Wang discloses “fix[ing] a subset of varying parameters associated with said first
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`pattern,” nor does it. Thus, Petitioner fails to show all claim elements are met by the
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`prior art. Institution should therefore be denied.
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`II. OVERVIEW OF U.S. PATENT NO. 8,768,865
`Structured Approach Reduces Demands on Mobile Devices
`A.
`The ’865 Patent discloses a structured two-phase approach that enables a
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`mobile device to recognize patterns that are associated with user activity. The patent
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`does not suggest that this ultimate result is new. Rather, the patent notes that in
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`modern mobile devices “an increased dimensionality of an information stream”
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`made it “difficult to track, correlate, process, associate, etc.” APPLE-1001 at 7:40-
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`51. The patent therefore discloses an approach that accomplishes the result in a way
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`that does not require a mobile device to monitor all variables at all times for all
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`patterns. That is, while Petitioner presents various steps in isolation as purportedly
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`known, the ’865 Patent discloses and claims related objects of each step that
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`accomplish the overall goal of enabling a mobile device to recognize user activity in
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`a particular, less resource-taxing, way. Key to this approach is focusing the data set
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`to enable pattern recognition or matching efforts in that focused data set through
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`“fixing.” Wang includes no such disclosure.
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`Terminology
`1.
`To understand the approach of the ’865 Patent, it is helpful to first discuss
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`three related concepts.
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`First, the ’865 Patent discusses “variables” or “varying parameters,” using
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`those terms interchangeably. A “varying parameter” is “derived” from information
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`sources such as a sensor, application, or user action. APPLE-1001, 2:27-28; 4:58-
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`60. The value of a given varying parameter changes over time. See, e.g., id. at Fig.
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`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:
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`Figure 2 (Annotated)
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`
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`As is apparent from the exemplary varying parameters described above, the
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`process of “deriving” a varying parameter may include substantial analysis. For
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`example, the patent explains that the varying parameter “motion state” may be
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`derived through analysis of accelerometer information to derive values such as
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`“driving” or “walking.” Id. at 7:30-32; 13:23-26. On the other hand, less processed
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`information may also be a varying parameter. Although not shown in Figure 2, the
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`patent also discusses accelerometer values themselves as another example of a
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`varying parameter. APPLE-1001 at 4:8-13.
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`Next, the patent discusses “patterns.” The patent discusses “several types of
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`different patterns” that vary in complexity. Id. at 15:32-37. The patent gives a
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`simple example of “location X AND motion state Y.” Id. at 13:8-13. The various
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`exemplary patterns discussed include (a) one or more varying parameters (e.g.,
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`location and motion state), (b) values (or ranges of values) for each of those
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`parameters (e.g., X and Y, respectively), and (c) a relationship between the varying
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`parameters (e.g., logical AND). As will be discussed further below, the ’865 Patent
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`approach involves two patterns, which are referenced in the claims as a “first
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`pattern” and a “second pattern.” The ultimate goal of the approach is a more
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`“tractable” approach to identifying the “second pattern.”
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`Finally, the patent discusses “conditions,” or “events of interest.” Id. at 8:54-
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`60. Examples of conditions include “a time of day,” an “action of a user operating
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`a mobile device,” “walking,” and “driving.” Id. at 8:1-6, 7:42-43. As discussed
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`below, the ’865 Patent approach utilizes detection of a “condition” as an alternative
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`to a mobile device attempting to recognize all potential patterns at all times.
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`Two-Phase Approach
`2.
`The ’865 Patent explains that, in mobile devices at the time of the invention,
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`“an increased dimensionality of an information stream” made it “difficult to track,
`
`correlate, process, associate, etc.” APPLE-1001 at 7:40-51. That is:
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`[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 the need to monitor all variables for all
`
`possible patterns by using an alternate two-phase approach. First, “rather than
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`continually tracking all or most information stream-related variables to match or
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`recognize all or most possible or existing patterns, a mobile device may, for example,
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`monitor one or more conditions or events of interest.” Id. at 7:64-8:1 (emphases
`
`added). These “conditions” may be more general, but co-occur with a more detailed
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`pattern (e.g., a “second pattern”) that may allow the device to recognize user activity.
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`Second, upon detection of the condition, the ’865 Patent still does not attempt
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`to recognize all patterns. Instead, the ’865 Patent discloses examining what second
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`patterns co-occur (i.e., occur at the same time) with a first pattern that represents the
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`condition. Id. at 8:7-11, 15:21-25.
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`To accomplish this second phase, the ’865 Patent discloses, first, linking the
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`condition to a first pattern to “be representative of or otherwise correspond to” the
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`condition. APPLE-1001 at 15:1-5. Then, “a subset of one or more varying
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`parameters or variables associated with a condition or event may, for example, be
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`fixed in some manner.” Id. at 8:12-14 (emphases added).
`
`“Fixing” to Enable Recognizing or Matching a “Second Pattern”
`3.
`The specification of the ’865 Patent describes “fixing” as focusing the data set
`
`to enable pattern recognition or matching efforts in that focused data set. Passages
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`are color coded below to highlight references to fixing, the focused data set, and the
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`subsequent pattern recognition or matching process. Specifically, the patent
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`repeatedly describes the “fixing” step (highlighted in teal) as enabling a subsequent
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`process to match or recognize a “second pattern” (highlighted in green) not in all
`
`data, but where “there is a pattern in the fixed subset of variables” (highlighted in
`
`magenta).
`
`First, the ’865 Patent generally explains:
`
`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.
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`One example includes “fixing one variable associated with or corresponding
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`to ‘driving’,” i.e., fixing the varying parameter “motion state” to the value “driving:”
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`[A]n application processor associated with a mobile device may
`observe what other variables have patterns if a motion state
`corresponds, for example, to “driving,” as one possible illustration.
`
`APPLE-1001 at 13:36-37, 13:23-26.
`
`The patent discusses an example of a pattern that co-occurs with a first pattern
`
`of “motion state” equals “driving.” Specifically, the patent describes a “relational
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`pattern” in which (1) motion state corresponds to driving and (2) “‘location’ may
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`continually change from X X' during the context ‘driving.’” Id. at 12:30-35. This
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`can be seen in Figure 2 (in which the ID of the WiFi SSID indicates a location):
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`Figure 2 (Annotated)
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`Thus, this “relational” pattern includes a “location” change from the location
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`of SSID_3 to the location of SSID_1. The patent explains this pattern can be labeled
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`“driving from home to work.” APPLE-1001 at 12:40-43.
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`As discussed above, using the prior art, recognizing or matching this pattern
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`would have involved “continually tracking or monitoring all or most varying
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`parameters or variables,” which “may be a computationally intensive, resource-
`
`consuming, at times intractable, or otherwise less than efficient or effective approach
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`for pattern matching or recognition.” Id. at 7:58-63. But using the approach
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`disclosed and claimed in the ’865 Patent, a mobile device may begin by monitoring
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`for conditions, detect the condition “driving,” link that condition to a pattern “motion
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`state” is “driving,” and then fix “motion state” to “driving.” By doing so,
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`recognizing patterns such as “driving from home to work” that “occurs in connection
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`with” with driving makes “pattern matching more tractable or otherwise allow for a
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`more effective or efficient pattern recognition.” Id. at 8:51-52.
`
`The ’865 Patent Claims
`B.
`By way of example, claims 1 and 3-5 of the ’865 Patent reflect the two-phase
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`approach discussed above as follows:
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`APPLE-1001, Claims 1, 3-5 (annotated).
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`Prosecution History
`C.
`Petitioner’s prosecution history discussion omits the key fact that the
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`Applicants consistently treated the “fixing . . .” and “associating . . .” recitations as
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`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.” APPLE-1002 at 237.
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`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.
`
`Moreover, in that same response, the Applicants made clear that the
`
`“associating” language of Claim 2 remained different than “fixing:”
`
`In its rejection of claim 2, the Office Action claims FIG. 6 discloses
`“associating at least one parameter . . . with said first pattern to
`represent said at least one detected condition” because “matching
`signatures involves fixing input signals to a relative statistical range to
`see if there is an approximate match with known/stored signatures that
`represent known conditions.” But even if it were true that Jangle
`indeed discloses “fixing input signals to a relative statistical range,”
`this is entirely unrelated to the language of claim 2.
`
`APPLE-1002 at 41 (emphasis added).2 Thus, the prosecution history of the ’865
`
`Patent confirms that “associating . . .” is a distinct sub-step of “fixing,” and requires
`
`“associating . . .” in a way that actually fixes the subset of varying parameters.
`
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`2 The context of this passage was the Applicants successfully arguing that the
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`Examiner’s mapping of the former Claim 2 language, which was “incorporate[d]”
`
`into Claim 1, was inconsistent with the Examiner’s mapping of overlapping claim
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`III. OVERVIEW OF THE CITED ART
`Wang discloses detecting “states” and “state transitions” using “GPS, WiFi
`
`detector, accelerometer, and embedded microphone” on a Nokia N95 cell phone.
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`See APPLE-1005 at 5. Wang discloses monitoring different sensors for state
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`transitions depending on the current state based on “three characteristic features that
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`define each of these states:”
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`
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`Id. at 5-6. Wang discloses determining the current “state” by using a “hierarchical”
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`definition in which states are identified by a transition from another state. Id. at 4.
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`This “sensor management scheme” is stored in an XML file that contains the “state
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`descriptors.” Id. The XML file contains tags for “StateName,” as well as
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`“NextState.” Id.
`
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`terms (varying parameters, condition, and first pattern) in the Examiner’s mapping
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`of the prior art to Claim 1. APPLE-1002 at 41.
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`Wang provides a specific example of detecting a transition from “walking” to
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`“driving” based on monitoring GPS in the walking “state” and determining that
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`“motion” has transitioned from “moving slowly” to “moving fast.” See APPLE-
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`1005 at 5 (“If a significant amount of increase is found on both user speed and recent
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`distance of travel, a state transition will happen and the user will be considered riding
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`a vehicle.”).
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`Contrary to the approach disclosed and claimed in the ’865 Patent, Wang
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`proposes detecting patterns that explicitly do not co-occur with the first pattern. That
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`is, Wang proposes detecting states based on transitions between states. Fixing is
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`thus contrary to, and would prevent, the process Wang proposes from occurring.
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`IV. CLAIM CONSTRUCTION
`“fixing . . .”
`A.
`Petitioner’s proposed construction of the “fixing . . .” step is not reasonable
`
`and wholly removes a limitation of the claim. This is apparent from comparing in
`
`redline the proposed “construction” to the actual claim language:
`
`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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`The plain claim language, which recites “fixing . . .” by “associating . . . ,” is not met
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`if “associating” is performed in a context that does not result in “fixing.” Yet, by
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`deleting the 12-word “fixing” phrase, that is what Petitioner’s construction would
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`improperly accomplish. By analogy, consider the language “returning home by
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`riding the bus.” Nothing in this language suggests that fact that one is “riding the
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`bus” is sufficient to conclude that one is “returning home.” And, no one would
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`suggest that riding the bus to the store meets the requirement of “returning home.”
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`Yet, that is what Petitioner proposes. Accordingly, Petitioner’s construction fails to
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`meet basic grammatical logic. It also violates basic claim construction doctrine, and
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`is inconsistent with the use of “fixing” and “associating” in the intrinsic record.
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`First, Petitioner seeks support for its construction in the claim language,
`
`arguing:
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`[T]he issued claims themselves state that “fixing a subset of varying
`parameters associated with said first pattern” is satisfied “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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`Petition at 13-14 (emphasis added). Petitioner’s assertion that the claim language
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`should be interpreted to mean that the first twelve words of the claim are
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`“satisfied”—even if not actually met—if the remainder of the phrase is performed
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`is not credible. Nothing in the claim language supports such a conclusion.
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`Moreover, such an interpretation violates the basic claim construction doctrine of
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`giving meaning to all words in a claim. See Apple Inc. v. Uniloc Luxembourg S.A.,
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`IPR2017–00222, slip op. at 15 (PTAB May 23, 2018) (Paper 29) (rejecting, under
`
`the BRI standard, Apple’s proposed construction “because otherwise, the word
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`‘each’ would be meaningless”) (citing Merck & Co. v. Teva Pharm. USA, Inc., 395
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`F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all
`
`the terms of the claim is preferred over one that does not do so.”); see also Power
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`Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004)
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`(“[I]nterpretations that render some portion of the claim language superfluous are
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`disfavored.”).
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`The correct, and more straight-forward, reading of the claim language is that
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`the term “by” introduces a necessary sub-step that must be performed when “fixing.”
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`As discussed below, this is entirely consistent with the specification and file history.
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`Second, the specification does not use “fixing . . .” and “associating . . .”
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`synonymously. The patent describes “associating” as a general-purpose computer
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`science building block that may be employed in countless situations, not just fixing.
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`For example, the patent states: “An example of context labeling may include
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`associating a specific accelerometer pattern with the context ‘surfing.’” Id. APPLE-
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`1001 at 14:13-15 (emphasis added). Thus, the patent separately describes
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`“associating” as a tool to perform “context labeling,” in addition to “fixing.” See id.
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`Nothing in this discussion of “context labeling” by “associating” suggests this
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`“associating” accomplishes “fixing.”
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`Confirming the general-purpose use of “associating,” the patent specifically
`
`includes “associating” in a list of high-level processes:
`
`Specification discussions utilizing terms such as “processing,”
`“computing,”
`“calculating,”
`“determining,”
`“ascertaining,”
`“identifying,” “associating,” “measuring,” “performing,” or the like
`refer to actions or processes of a specific apparatus, such as a special
`purpose computer or a similar special purpose electronic computing
`device.
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`APPLE-1001 at 20:22-27 (emphases added). Thus, Petitioner’s construction
`
`removing “fixing” would improperly broaden the claim to include instances of
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`“associating” that do not result in fixing.
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`As discussed in Section II.A.3, above, the patent repeatedly and consistently
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`describes “fixing” a subset of variables associated with a pattern as enabling a
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`process to match or recognize a second pattern not in all data, but where “there is a
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`pattern in the fixed subset of variables.” For example, where a first pattern consists
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`of varying parameter “motion state” having value “driving,” fixing that varying
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`parameter enables a mobile device to “observe what other variables have patterns if
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`a motion state corresponds, for example, to ‘driving.’” APPLE-1001 at 13:23-26.
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`Again, Petitioner’s construction removing “fixing” would improperly broaden the
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`claim to include instances of “associating” that do not result in fixing.
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`Petitioner points to the specification passage below, without comment or
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`explanation, as justifying removal of the “fixing . . .” limitation:
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`In some instances, a subset may be fixed, for example, by associating
`parameters or variables with a particular, distinct, or otherwise suitable
`pattern to represent a certain detected condition or event, as one
`possible example.
`
`Petition at 13 (citing APPLE-1001 at 15:9-12) (emphasis added). Nothing in this
`
`passage supports Petitioner’s construction. Rather, it is consistent with the use of
`
`“associating” as a general-purpose computer science process that may be used as a
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`sub-step in performing fixing.
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`Third, nothing in the file history justifies deleting the 12-word fixing phrase
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`from the claims. Petitioner argues “[d]uring prosecution of the ’865 Patent, the
`
`applicant incorporated this embodiment of ‘fixing’ directly into the claim language.”
`
`Petition at 13. Petitioner’s reference to “associating” as an “embodiment of ‘fixing’”
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`is disingenuous and inconsistent with Petitioner’s proposed construction and
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`invalidity assertions. Petitioner’s construction does not recite an “embodiment” of
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`fixing—it completely removes “fixing” from the claims. As discussed below,
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`Petitioner does not even attempt to show “fixing” in the prior art.
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`18
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`Further, the passage Petitioner cites, which describes Applicants’ amendment
`
`of Claim 1, does not support Petitioner’s construction:
`
`Claims 1, 22, 32, and 48 have been amended to incorporate aspects of
`former claims 2 and 33, to clarify that “fixing a subset of carrying
`parameters” is done “by associating at least one parameter of said
`subset of varying parameters with said first pattern to represent said at
`least one detected condition.”
`
`APPLE-1002 at 40 (emphasis added). Applicants’ statement that “‘fixing . . .’ is
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`done ‘by associating . . .’” is consistent with “associating . . .” being a separately-
`
`recited sub-step of “fixing . . .,” just as it was in original Claim 2, which was being
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`“incorporated” into Claim 1. See id. Nothing in that passage suggests that
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`“associating . . .” performed in a context that does not accomplish “fixing . . .”
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`would be sufficient to meet the claims. If Applicants wanted to simply delete
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`“fixing . . .” and replace it with “associating . . .,” they could have done so, but did
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`not. Rather, Applicants kept both phrases and argued them separately, stating “even
`
`if it were true that Jangle indeed discloses ‘fixing input signals to a relative statistical
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`range,’ this is entirely unrelated to the language of claim 2” incorporated into
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`Claim 1. Id. at 41.
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`Even to the extent Petitioner’s interpretation were one plausible interpretation
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`(which Patent Owner does not concede), that is still well short of the necessary “clear
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`and unmistakable” disavowal necessary to justify deleting a 12-word limitation. See
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`19
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`Patent 8,768,865
`Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013).
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`“Where the alleged disavowal is ambiguous, or even ‘amenable to multiple
`
`reasonable interpretations,’ we have declined to find prosecution disclaimer.” Avid
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`Tech., Inc. v. Harmonic, Inc., 812 F.3d 1040, 1045 (Fed. Cir. 2016) (quoting Cordis
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`Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1359 (Fed. Cir. 2003)).
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`Thus, there is no basis for Petitioner’s proposed deletion of the 12-word
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`“fixing . . .” limitation. Patent Owner believes no further construction of
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`“fixing . . .” is needed beyond rejecting Petitioner’s attempted deletion. This is
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`consistent with the fact that Petitioner’s proposed construction does not change any
`
`of the plain language beyond wholesale deletions.
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`B. Other Terms
`Patent Owner does not believe that claim construction of any other terms is
`
`necessary for any of the issues raised at this stage of these proceedings, but expressly
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`reserves the right to address any claim construction issues raised at trial if Inter
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`Partes Review is instituted on the ’865 Patent.
`
`V. THERE IS NO REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL ON ANY OF THE CHALLENGED CLAIMS
`Petitioner Does Not Show That Wang Discloses “Fixing . . .”
`A.
`Rejecting Petitioner’s attempt to remove “fixing” from the Challenged Claims
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`is dispositive of the Petition. Petitioner’s sole challenge to the independent
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`20
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`Patent 8,768,865
`Challenged Claims, which each contains a “fixing . . .” limitation, is Ground 1A
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`alleging anticipation by Wang. But Petitioner does not purport to show “fix[ing] a
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`subset of varying parameters associated with said first pattern” in Wang. Instead,
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`Petitioner relies exclusively on the proposed claim construction removing that
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`limitation from the claim: “As construed above, [the fixing] limitation is met by
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`associating . . .” Petition at 24 (emphases added). Nothing in the Petition suggests
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`Wang discloses “fix[ing] a subset of varying parameters associated with said first
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`pattern,” nor does Wang.
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`Petitioner points exclusively to Table 1 in Wang, which “illustrates the set of
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`user states to be recognized by EEMSS and three characteristic features that define
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`each of these states.” Petition at 24-25 (quoting APPLE-1005 at 5). Petitioner
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`provides an annotated version of Table 1 and asserts: “Wang discloses the fixing
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`limitation because it discloses associating a subset of parameters (‘Location’ and
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`‘Motion’) with a pattern (‘Keep on changing’ together with ‘Moving Slowly’) to
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`represent a condition (‘Walking’).” Id. at 25.
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`Patent 8,768,865
`
`Petitioner’s Annotation of Wang Table 1
`
`Nothing in Petitioner’s argument mentions fixing, nor does any of the
`
`identified disclosure of Wang relate to fixing. Rather, Petitioner merely points to
`
`the disclosure in Wang of a table that defines “states” as associated with specific
`
`“state features.” To the extent this disclosure of Wang is “associating,” it is
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`“associating” unrelated to “fixing.” In fact, this disclosure strongly resembles the
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`’865 Patent’s discussion of “context labeling,” in which the ’865 Patent describes
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`“associating a specific accelerometer pattern with the context ‘surfing.’” APPLE-
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`1001 at 14:13-15 (emphases added). As discussed above, the ’865 Patent describes
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`“context labeling” and “fixing” separately.
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`Further demonstrating the flaw in Petitioner’s mapping, Petitioner points to
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`the exact same disclosure for the “fixing” step as the prior step of “identify[ing] a
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`first pattern based, at least in part, on said at least one detected condition,” right
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`down to the same annotated version of Table 1 of Wang. See Petition at 23-24.
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`22
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`Case IPR2018-01281
`Patent 8,768,865
`Moreover, the very nature of Wang is contrary to “fixing.” As discussed in
`
`Section III, above, Wang relates to detecting state transitions. That is, Wang
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`proposes detecting patterns that explicitly do not co-occur with the first pattern. In
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`contrast, the ’865 Patent explains that “by fixing a
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