`Trials@uspto.gov
`571-272-7822 Entered: February 25, 2019
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01282
`Patent 8,768,865 B2
`____________
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`IPR2018-01282
`Patent 8,768,865 B2
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`I. INTRODUCTION
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`Apple Inc. (“Petitioner”) requests inter partes review of claims 1–10,
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`12–30, and 46–53 (the “challenged claims”) of U.S. Patent No. 8,768,865
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`B2 (“the ’865 patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq.
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`Paper 2 (“Petition” or “Pet.”). Qualcomm Incorporated (“Patent Owner”)
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`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
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`Institution of an inter partes review is authorized by statute when “the
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`information presented in the petition . . . and any response . . . shows that
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`there is a reasonable likelihood that the petitioner would prevail with respect
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`to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Upon consideration of the Petition and Patent Owner’s Preliminary
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`Response, we conclude the information presented shows there is a
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`reasonable likelihood that Petitioner would prevail in establishing the
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`unpatentability of at least one challenged claim of the ’865 patent.
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`Therefore, we institute review of all challenged claims and all asserted
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`grounds.
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`A. Real Parties-In-Interest and Related Matters
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`Apple Inc. is identified as the sole real party-in-interest. Pet. 69. The
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`parties inform us that the ’865 patent is presently asserted against Petitioner
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`in the litigation Qualcomm Inc. v. Apple Inc., Case No. 3:17-cv-02402 (S.D.
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`Cal.). Pet. 69; Paper 4, 1. The parties further indicate that the ’865 patent is
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`at issue in another inter partes review (Case IPR2018-01281). Pet. 69;
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`Paper 4, 1.
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`2
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`IPR2018-01282
`Patent 8,768,865 B2
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`B. The ’865 Patent
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`The ’865 patent is generally directed to “machine learning of
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`situations via pattern matching or recognition for use in or with mobile
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`communication devices.” Ex. 1001, 1:21–23. According to the ’865 patent,
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`mobile communication devices (e.g., cellular and smart phones) may feature
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`a number of sensors (built-in or otherwise supported) such as
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`“accelerometers, gyroscopes, magnetometers, gravitometers, ambient light
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`detectors, proximity sensors, thermometers, location sensors, microphones,
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`cameras, etc.” Id. at 24–37. The ’865 patent states that a popular feature of
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`such mobile devices is using such sensors to better understand what a user is
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`presently doing so as to better assist the user in his/her present activity. Id.
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`at 1:42–47. However, according to the ’865 patent, the growing number of
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`sensors generates a high volume of data to be captured and analyzed and,
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`thus, creates challenges to efficiently and effectively capture and process
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`such voluminous data. Id. at 1:47–60.
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`Specifically, the ’865 patent identifies challenges for such mobile
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`devices as follows:
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`These challenges may include, for example, detecting or
`“picking up” patterns from a large number of information
`sources with an unknown or different subset of sources being
`relevant to different situations or contexts. In other words, in
`some instances, it may be somewhat difficult to detect or
`recognize an existing pattern if such a pattern is not pre-defined
`or pre-specified in some manner for a certain information source.
`Another challenge with typical approaches may be, for example,
`identifying one or more relevant situations and learning patterns
`that are correlated with or correspond to these relevant situations.
`Consider, for example, a multi-dimensional information stream
`captured or obtained via a variety of sensors with respect to a
`typical “return-home-after-work” experience of a user.
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`3
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`IPR2018-01282
`Patent 8,768,865 B2
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`Id. at 7:8–21. The ’865 patent further identifies challenges of the prior art as
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`follows:
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`As seen, because of an increased dimensionality of an
`information stream due, at least in part, to a large variation of
`sensor-tracked parameters indicative of user-related events or
`conditions (e.g., walking, driving, fidgeting, etc.), finding exact
`or approximate matches to a template, pre-defined or otherwise,
`may be rather difficult. In other words, at times, a relatively large
`number of varying parameters or variables associated with a
`multi-dimensional sensor information stream may be difficult to
`track, correlate, process, associate, etc., which in turn may limit
`the ability of a mobile device to react to different situations, make
`relevant inferences, or otherwise be aware of its context with
`sufficient accuracy. In addition, certain varying parameters or
`variables may be irrelevant to a particular user situation or
`context, in which case it may be important or otherwise useful to
`identify irrelevant or incidental variables so as to ignore or omit
`one or more corresponding
`irrelevant patterns
`from
`consideration, as described below.
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`Id. at 7:40–57.
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`The ’865 patent purports to address these challenges by monitoring
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`“one or more conditions or events of interest,” rather than continuously
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`monitoring all or most of the available sensor information. Id. at 7:64–8:1.
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`In particular, according to the ’865 patent, a subset of parameters associated
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`with a condition or event of interest may be “fixed in some manner and
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`stored in a suitable database.” Id. at 8:12–15. The parameter values
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`associated with the condition or event may be fixed, for example, “by
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`associating corresponding parameters or variables having a particular,
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`distinct, or otherwise suitable pattern to represent the condition or event.”
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`Id. at 8:19–21. “A suitable processor may then look or search for a pattern
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`match, exact or approximate, in one or more other signal-related patterns
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`4
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`IPR2018-01282
`Patent 8,768,865 B2
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`every time a condition or event-related pattern occurs, for example, by
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`utilizing a ‘snapshot,’ in whole or in part, using any suitable pattern
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`matching processes or algorithms.” Id. at 8:25–31.
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`Figure 4 of the ’865 patent is reproduced below.
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`
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`Figure 4 is a flowchart of exemplary process 400 for machine learning
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`of situations in a mobile device using pattern matching or recognition. Id. at
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`2:8–11. Step 402 monitors input signals from a plurality of sources
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`(sensors) associated with the mobile device. Id. at 14:43–46. Step 404
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`detects at least one condition or event of interest based on at least one of the
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`5
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`IPR2018-01282
`Patent 8,768,865 B2
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`monitored input sources. Id. at 14:54–57. At step 406, a “first pattern may
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`be identified based, at least in part, on at least one detected condition or
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`event,” e.g., “a distinct signal-related pattern having one or more varying
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`parameters or variables of interest that may be representative of or otherwise
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`correspond to such a condition or event.” Id. at 14:67–15:5. Step 408 then
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`fixes one or more parameters by storing them in a database or by associating
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`the parameters with a pattern to represent a condition or event. Id. at 15:5–
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`17. Step 410 then attempts to recognize a second pattern based on the first
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`pattern. Id. at 15:18–21.
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`C. Illustrative Claim
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`Independent method claim 1, reproduced below, is illustrative of the
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`challenged claims:
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`1. A method comprising:
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`monitoring, at a mobile device, input signals from a
`plurality of information sources associated with said mobile
`device;
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`detecting at least one condition based, at least in part, on
`at least one of said monitored input signals;
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`identifying a first pattern based, at least in part, on said at
`least one detected condition; and
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`fixing a subset of varying parameters associated with said
`first pattern by associating at least one parameter of said subset
`of varying parameters with said first pattern to represent said at
`least one detected condition, said varying parameters derived, at
`least in part, from said monitored input signals.
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`Id. at 20:62–21:8. Challenged independent claim 21 recites similar
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`limitations in the style of an apparatus claim, and challenged independent
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`claim 46 recites similar limitations in the style of an article claim.
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`6
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`Patent 8,768,865 B2
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`D. Asserted Grounds of Unpatentability
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`Petitioner asserts the challenged claims are unpatentable based on the
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`following grounds (Pet. 14–15):
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`Reference(s)
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`Basis
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`Claims challenged
`
`Louch1
`Louch and Nadkarni2
`Louch, Nadkarni, and
`Greenhill3
`
`
`§ 102
`§ 103
`§ 103
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`1–4, 15–17, 21–23, 28, 29, 46, 47
`5–10, 18–20, 24–27, 30, 48–53
`12–14
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`Petitioner relies on the testimony of James Allen, Ph.D. (Ex. 1021) in
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`support of its assertions.
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`II. DISCUSSION
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`A. General Principles
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`1.
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`Anticipation
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`To establish anticipation, each and every element in a claim, arranged
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`as recited in the claim, must be found in a single prior art reference. Net
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`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
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`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
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`2001). Each element of the challenged claim must be found, either
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`expressly or inherently, in the single prior art reference. Verdegaal Bros.,
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`Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Although
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`the elements must be arranged or combined in the same way as in the claim,
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`
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`1 U.S. Patent No. 8,676,224 B2 (“Louch,” Ex. 1011).
`2 U.S. Patent Publication No. 2010/0217533 A1 (“Nadkarni,” Ex. 1008).
`3 U.S. Patent Publication No. 2008/0297513 A1 (“Greenhill,” Ex. 1009).
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`7
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`Patent 8,768,865 B2
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`“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
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`terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
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`2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Thus, the dispositive
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`question is whether one skilled in the art would reasonably understand or
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`infer from a prior art reference that every claim element is disclosed in that
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`reference. Eli Lilly v. Los Angeles Biomedical Research Inst. at Harbor–
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`UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017). Still further, “it
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`is proper to take into account not only specific teachings of the reference but
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`also the inferences which one skilled in the art would reasonably be
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`expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
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`2.
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`Obviousness
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`A patent claim is unpatentable under 35 U.S.C. § 103 if the
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`differences between the claimed subject matter and the prior art are “such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including (1) the scope and content of the prior art;
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`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
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`i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–
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`18 (1966).
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`
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`4 Patent Owner does not present arguments or evidence of such secondary
`considerations in its Preliminary Response. Therefore, at this preliminary
`stage, secondary considerations do not constitute part of our analysis.
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`8
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`“A reference must be considered for everything it teaches by way of
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`technology and is not limited to the particular invention it is describing and
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`attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
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`907 (Fed. Cir. 1985). Additionally, “the question under 35 USC § 103 is not
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`merely what the references expressly teach but what they would have
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`suggested to one of ordinary skill in the art at the time the invention was
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`made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed.
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`Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
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`“Every patent application and reference relies to some extent upon
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`knowledge of persons skilled in the art to complement that [which is]
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`disclosed . . . .” In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re
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`Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons “must be
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`presumed to know something” about the art “apart from what the references
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`disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
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`3.
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`Level of Ordinary Skill in the Art
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`Neither the Petition nor Patent Owner’s Preliminary Response
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`specifically define the level of skill for a person of ordinary skill in the art.
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`Dr. Allen’s expert declaration in support of the Petition argues a person of
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`ordinary skill in the art at the time of the ’865 patent “would have had a
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`Bachelor of Science degree in either computer science or electrical
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`engineering, together with at least two years of study in an advanced degree
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`program in artificial intelligence, machine learning, or pattern recognition,
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`or comparable work experience.” Ex. 1021 ¶ 10.
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`On this record, we are persuaded by Dr. Allen’s definition of the level
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`of ordinary skill in the art, and we find this definition is commensurate with
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`the level of ordinary skill in the art as reflected in the prior art. See Okajima
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`9
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`IPR2018-01282
`Patent 8,768,865 B2
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`v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of
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`specific findings on the level of skill in the art does not give rise to
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`reversible error where the prior art itself reflects an appropriate level and a
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`need for testimony is not shown.”) (internal quotation marks omitted); see
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`also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, we
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`discern the prior art, as well as the ’865 patent, require a degree of
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`knowledge that is specific to artificial intelligence, machine learning, or
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`pattern recognition.
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`Accordingly, on this record and for purposes of this preliminary
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`decision, we adopt Dr. Allen’s definition of the level of ordinary skill in the
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`art and determine that a person of ordinary skill in the art at the time of the
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`invention of the ’865 patent would have had a Bachelor of Science degree in
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`either computer science or electrical engineering, together with at least two
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`years of study in an advanced degree program in artificial intelligence,
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`machine learning, or pattern recognition, or comparable work experience.
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`B. Claim Construction
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`As a step in our analysis for determining whether to institute a review,
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`we determine the meaning of the claims for purposes of this preliminary
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`decision. In an inter partes review for a petition filed before November 13,
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`2018, a claim in an unexpired patent that will not expire before the issuance
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`of a final written decision shall be given its broadest reasonable construction
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`in light of the specification of the patent in which it appears.
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`37 C.F.R. § 42.100(b) (2017); see also Cuozzo Speed Techs., LLC v. Lee,
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`136 S. Ct. 2131, 2142–46 (2016) (upholding the use of the broadest
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`reasonable interpretation standard (“BRI standard”)); see also Acceleration
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`Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 769 (Fed. Cir. 2018) (“In
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`10
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`Patent 8,768,865 B2
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`IPR, the Board gives claims their broadest reasonable interpretation
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`consistent with the specification.”). Under the broadest reasonable
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`interpretation standard, claim terms generally are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
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`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
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`F.3d 1249, 1257 (Fed. Cir. 2007). “[A] claim construction analysis must
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`begin and remain centered on the claim language itself . . . .” Innova/Pure
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`Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
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`Cir. 2004). “Though understanding the claim language may be aided by the
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`explanations contained in the written description, it is important not to
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`import into a claim limitations that are not a part of the claim.” SuperGuide
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`Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
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`By contrast, for an expired patent or an unexpired patent challenged in
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`a petition filed on or after November 13, 2018, we apply the principles set
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`forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en
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`banc) (“Phillips standard”). See Wasica Fin. GmbH v. Cont’l Auto. Sys.,
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`Inc., 853 F.3d 1272, 1279 (Fed. Cir. 2017); Changes to the Claim
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`Construction Standard for Interpreting Claims in Trial Proceedings Before
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`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct, 11,
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`2018) (to be codified at 37 C.F.R. pt. 42). “In determining the meaning of
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`the disputed claim limitation, we look principally to the intrinsic evidence of
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`record, examining the claim language itself, the written description, and the
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`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
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`415 F.3d at 1312–17).
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`11
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`Patent 8,768,865 B2
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`Petitioner does not indicate whether it is applying the BRI standard or
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`the Phillips standard but, instead, asserts “Petitioner gives all terms their
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`plain meaning.” Pet. 11. Patent Owner likewise fails to identify whether it
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`is applying the BRI standard. See Prelim. Resp. 16–22.
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`Petitioner proffers a construction of numerous claim terms including
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`the verb fixing as recited in method claim 1 (and as similarly recited in
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`challenged independent claims 21 and 46). Pet. 13–14. Patent Owner
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`disputes Petitioner’s construction of fixing (Prelim. Resp. 16–21) but
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`otherwise contends no other terms require construction at this preliminary
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`stage of the proceeding (id. at 22).
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`Here, we discern no reason that we would not apply the BRI standard.
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`On the record before us, the ’865 patent is not expired, the patent will not
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`likely expire prior to any potential final written decision, neither party has
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`made a request in compliance with our rules that the Phillips standard be
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`applied,5 and the Petition was filed prior to the change of our rules regarding
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`claim construction effective for petitions filed on or after November 13,
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`2018. Therefore, for purposes of this preliminary decision, we apply the
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`broadest reasonable interpretation for any needed claim construction.
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`Other than the term identified below, we discern no reason on this
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`preliminary record and for this preliminary decision to construe any other
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`claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
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`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that
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`
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`5 The applicable version of 37 C.F.R. § 42.100(b) requires that a request to
`apply the Phillips standard “must be made in the form of a motion under
`§ 42.20, within 30 days from the filing of the petition.” Petitioner’s
`suggestion that the Phillips standard be applied is not compliant with this
`rule.
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`12
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`are in controversy, and only to the extent necessary to resolve the
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`controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
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`F.3d 795, 803 (Fed. Cir. 1999))).
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` The “Fixing” Limitations
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`Challenged independent method claim 1 recites a step of “fixing a
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`subset of varying parameters associated with said first pattern by associating
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`at least one parameter of said subset of varying parameters with said first
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`pattern to represent said at least one detected condition.” Similarly,
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`challenged independent apparatus claim 21 recites a mobile device with a
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`processor configured to, and challenged independent article claim 46 recites
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`an article (a non-transitory storage medium) storing instructions causing a
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`processor of a mobile device to, “fix a subset of varying parameters
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`associated with said first pattern by associating at least one parameter of said
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`subset of varying parameters with said first pattern to represent said at least
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`one detected condition.” We refer to these limitations collectively as the
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`fixing limitations.
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`Petitioner argues the recited limitations encompass “associating at
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`least one parameter of a subset of varying parameters with the first pattern to
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`represent at least one detected condition” and contends that claim 1 of the
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`’865 patent, the Specification of the ’865 patent, and Dr. Allen’s Declaration
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`all support this interpretation. Pet. 13–14 (citing Ex. 1001, 15:9–12, claim 1;
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`Ex. 1021 ¶¶ 59–63). Furthermore, in support of its interpretation of fixing,
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`Petitioner quotes a portion of the prosecution history of the ’865 patent
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`wherein Patent Owner remarked, in response to an Examiner rejection,
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`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
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`13
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`parameter of said subset of varying parameters with said first
`pattern to represent said at least one detected condition.”
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`Pet. 13 (quoting Ex. 1002, 40).
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`Patent Owner argues Petitioner’s proffered interpretation is
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`unreasonable in that it eliminates the recitation of “fixing” and reduces the
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`element to the action of “associating” regardless of whether the associating
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`results in fixing. Prelim. Resp. 16–21. Specifically, Patent Owner argues
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`the fixing element “is not met if ‘associating’ is performed in a context that
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`does not result in ‘fixing.’” Id. at 16. Patent Owner contends,
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`By analogy, consider the language “returning home by riding the
`bus.” Nothing in this language suggests th[e] fact that one is
`“riding the bus” is sufficient to conclude that one is “returning
`home.” And, no one would suggest that riding the bus to the
`store meets the requirement of “returning home.”
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`Id. Patent Owner counters that under the proper interpretation of the fixing
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`limitations, “‘by’ introduces a necessary sub-step that must be performed
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`when ‘fixing.’” Id. at 18. Patent Owner further argues the ’865 patent
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`Specification does not use the words fixing and associating synonymously
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`but rather as distinct operations, and argues Petitioner’s interpretation of
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`fixing “would improperly broaden the claim to include instances of
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`‘associating’ that do not result in fixing.” Id. at 18–19. Patent Owner
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`asserts associating is discussed in as an aspect of context labeling, rather
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`than fixing. Id. Still further, Patent Owner contends the cited portion of the
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`prosecution history does not support Petitioner’s interpretation but, instead,
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`asserts, “Nothing in that passage suggests that ‘associating . . .’ performed in
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`a context that does not accomplish ‘fixing . . .’ would be sufficient to meet
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`the claims.” Id. at 20–21.
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`14
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`On the record before us for purposes of this preliminary decision, we
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`are persuaded by Petitioner’s proffered construction of the fixing limitations
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`is persuasive. Specifically, the plain language of challenged independent
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`claims 1, 21, and 46 sufficiently defines the scope of fixing as limited to
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`fixing by the action of associating. Other actions that may result in the
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`recited fixing are not within the scope of challenged claims 1, 21, and 46,
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`which clearly recite that fixing is accomplished by a specific recited action,
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`namely by associating.
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`Although claim construction “must begin and remain centered on the
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`claim language itself” (Innova, 381 F.3d at 1116), the interpretation must be
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`consistent with the Specification (Acceleration Bay, 908 F.3d at 769). We
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`are persuaded Petitioner’s proffered interpretation is consistent with the ’865
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`patent Specification, which discloses,
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`Such a condition or event-related pattern may be fixed, for
`example, by associating corresponding parameters or variables
`having a particular, distinct, or otherwise suitable pattern to
`represent the condition or event.
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`Ex. 1001, 8:18–21. The ’865 patent Specification also discloses,
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`At operation 408, one or more varying parameters or variables
`may be fixed in some manner, such as in a suitable subset having
`one or more signal sample values and may be stored in a suitable
`database. In some instances, a subset may be fixed, for example,
`by associating parameters or variables with a particular, distinct,
`or otherwise suitable pattern to represent a certain detected
`condition or event, as one possible example.
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`Id. at 15:5–12.
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`Furthermore, we agree with Petitioner that the prosecution history
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`supports its proffered interpretation. Originally filed claim 1 was amended
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`to incorporate limitations of dependent claim 2 as follows:
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`Ex. 1002, 31. Claim 1 (and other similarly amended independent claims)
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`were allowed in view of this amendment. Id. at 22. Under the broader,
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`unamended, originally filed claim 1, the claim may have encompassed other
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`approaches to fixing a subset of parameters. However, the amendment that
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`resulted in an allowance of the claim specifically narrows the broader,
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`originally filed claim 1 to limit the step of fixing to encompass only fixing by
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`associating as recited.
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`Even Patent Owner’s argument by analogy supports Petitioner’s
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`position. Patent Owner argues “returning home by riding the bus” does not
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`suggest that “‘riding the bus’ is sufficient to conclude that one is ‘returning
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`home.’” Prelim. Resp. 16. We agree with Patent Owner’s point but the
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`argument is inapposite to the claim construction analysis. Applying a
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`similar analogy to the context of claim construction, “returning home by
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`riding the bus” limits the method of “returning home” to the action of riding
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`the bus and does not encompass “returning home” by plane, train, walking,
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`etc. The phrase would be limited to only returning home by riding a bus.
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`Similarly, fixing by associating does not suggest associating always results
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`in fixing, as Patent Owner correctly argues, but limits the claim to fixing the
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`parameters only by the action of associating as recited, rather than by other
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`actions.
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`Therefore, for purposes of this preliminary decision, we are persuaded
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`by the interpretation proffered by Petitioner and find that the fixing
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`limitations of claims 1, 21, and 46 at least encompass associating at least one
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`parameter of a subset of varying parameters with the first pattern to
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`represent at least one detected condition.
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`C. Anticipation by Louch
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`Petitioner argues claims 1–4, 15–17, 21–23, 28, 29, 46, and 47 are
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`anticipated by Louch. Pet. 19–41.
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`1. Overview of Louch (Ex. 1011)
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`Louch is directed to control of a speakerphone system of a mobile
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`device. Ex. 1011, Title (54), Abstract (57). “A speakerphone system
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`integrated in a mobile device is automatically controlled based on the current
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`state of the mobile device. In one implementation, the mobile device is
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`controlled based on an orientation or position of the mobile device.” Id. at
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`Abstract (57). According to Louch, a typical speakerphone feature in a
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`mobile device is controlled by hardware and/or software of the device that
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`require the user to physically contact the phone to enable or disable the
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`speakerphone function of the device. Id. at 1:22–25. When attempting to
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`use the mobile device in a hands-free mode, the user needs to manually
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`activate and deactivate the speakerphone function by physically contacting
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`some feature on the phone to control the device. Id. at 1:25–31.
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`Louch discloses an improved mobile device in which the device is
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`automatically controlled based on an orientation or position of the mobile
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`device. Id. at 1:35–42. The position or orientation state of the device may
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`be determined relative to a reference frame using one or more sensors such
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`as an accelerometer, gyroscope, light sensor, proximity sensor, etc. Id. at
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`2:16–24. The mobile device may utilize a state machine to maintain the
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`current state of the device. Id. at 2:52–54. The state machine may detect
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`changes of state based on combinations of input signals and can cause a
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`control action to be performed based on a detected state change. Id. at 2:54–
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`58. “A control action can be activating or deactivating the speakerphone
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`system, generating or adjusting a graphical user interface and/or any other
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`suitable control action.” Id. at 2:58–61.
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`2. Independent Claims 1, 21, and 46
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`Petitioner argues Louch teaches all elements of independent claims 1,
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`21, and 46. Pet. 19–31. In particular, Petitioner argues Louch teaches the
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`fixing limitations of these claims, i.e., claim 1’s step of “fixing a subset of
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`varying parameters associated with said first pattern by associating at least
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`one parameter of said subset of varying parameters with said first pattern to
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`represent said at least one detected condition” and the corresponding
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`limitations of independent claims 21 and 46. Pet. 28–30. Specifically, in
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`accord with Petitioner’s proffered construction of the fixing limitations,
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`Petitioner contends Louch meets these limitations “by disclosing that the
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`mobile device ‘“learns,” particular characteristics or patterns of the state of
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`the device,’ where, as explained above, the pattern comprises one or more
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`parameter values (e.g., representing proximity to an object or sensed
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`movement).” Pet. 28 (quoting Ex. 1011, 10:3–4). Petitioner argues patterns
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`in Louch may include instantaneous values of various sensors as well
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`signatures or trajectories of changing parameter values and further argues
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`such patterns are stored in the mobile device. Pet. 28–29 (citing Ex. 1011,
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`2:63–3:25, 10:10–20; Ex. 1021 ¶¶ 126–30). Therefore, Petitioner contends,
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`“Accordingly, Louch discloses associating at least one parameter (e.g.,
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`acceleration and/or proximity) with a pattern (a collection of parameters
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`including, for example, acceleration and/or proximity instantaneous values
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`or signatures over time) to represent a condition (e.g., a state of the mobile
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`device).” Pet. 29 (citing Ex. 1021 ¶¶ 128–30). Furthermore, Petitioner
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`argues Louch discloses that the associated parameters defining a state may
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`be a subset of the available parameters (available sensor inputs, signatures,
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`and trajectories). Pet. 29–30 (citing Ex. 1011, 2:20–22, 2:62–3:25; Ex. 1021
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`¶¶ 131–37).
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`In response, Patent Owner argues Petitioner equates fixing with
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`simply storing or recording a detected pattern of a sensed parameter. Prelim.
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`Resp. 23 (quoting Pet. 18). The quoted portion of the Petition states,
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`“Claim 1 of Louch also makes it clear that one or more varying parameters
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`or variables are fixed and may be stored in a suitable database as it recites
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`‘recording a first movement pattern of a mobile device.’” Pet. 18.
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`We disagree with Patent Owner’s characterization of this argument of
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`the Petition as somehow equating fixing with storing or recording. We
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`understand the portion of the Petition cited by Patent Owner as merely
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`noting that in Louch, parameters that have been fixed, in accord with
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`Petitioner’s proffered construction, may also be stored or recorded for later
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`use. The cited portion of the Petition also relies on Dr. Allen’s Declaration
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`wherein Dr. Allen further clarifies, “In other words, the first movement
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`pattern is fixed in some manner, such as in a suitable subset of parameters
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`having sample signal values and stored in a data storing device such as a
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`database.” Ex. 1021 ¶ 102. Thus, the cited portion of the Petition and
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`Dr. Allen’s testimony relied upon by Petitioner are merely noting