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 IPR2018-01282
`
`U.S. Patent No. 8,768,865
`______________
`
`QUALCOMM INCORPORATED’S
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`

`

`Case IPR2018-01282
`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 ............................................................................... 4
`2.
`Two-Phase Approach ................................................................. 6
`3.
`“Fixing” to Enable Recognizing or Matching a “Second
`Pattern” ....................................................................................... 7
`The ’865 Patent Claims ...................................................................... 10
`B.
`Prosecution History ............................................................................ 11
`C.
`III. OVERVIEW OF THE CITED ART ............................................................ 13
`IV. CLAIM CONSTRUCTION ......................................................................... 16
`A.
`“Fixing . . .” ........................................................................................ 16
`B.
`Other Terms ........................................................................................ 22
`THERE IS NO REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL ON ANY OF THE CHALLENGED CLAIMS ............... 22
`A.
`Petitioner Does Not Show That Louch Discloses “Fixing . . .” ......... 22
`VI. THE PETITION SHOULD BE DENIED PURSUANT TO 35 U.S.C.
`§ 325(D) ........................................................................................................ 25
`A.
`The Prior Art, Arguments, and Challenged Claims are
`Substantially the Same between the 1281 and 1282 Petition ............ 26
`Petitioner Failed to Demonstrate the 1281 Petition is Non-
`Redundant ........................................................................................... 29
`VII. CONCLUSION ............................................................................................. 31
`
`
`B.
`
`
`
`
`
`
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`TABLE OF AUTHORITIES
`
`Case IPR2018-01282
`Patent 8,768,865
`
` Page(s)
`
`Cases
`Apple Inc. v. Uniloc Luxembourg S.A.,
`IPR2017–00222, slip. op. (PTAB May 23, 2018) (Paper 29) ............................ 17
`Avid Tech., Inc. v. Harmonic, Inc.,
`812 F.3d 1040 (Fed. Cir. 2016) .......................................................................... 21
`Biogen Idec, Inc. v. GlaxoSmithKline LLC,
`713 F.3d 1090 (Fed. Cir. 2013) .......................................................................... 21
`Cordis Corp. v. Medtronic AVE, Inc.,
`339 F.3d 1352 (Fed. Cir. 2003) .......................................................................... 21
`EMC Corporation v. Personal Web Technologies LLC,
`IPR2013-00085, slip op. (PTAB June 5, 2013) (Paper 28) ................................ 29
`Google LLC v. Uniloc Lux. S.A.,
`IPR2017-02081, slip op. (PTAB Mar. 29, 2018) (Paper 10) ............................. 27
`Great West Casualty Co. v. Intellectual Ventures II LLC,
`IPR2016-01534, slip op. (PTAB Feb. 15, 2017) (Paper 13) ................................ 3
`LG Elecs, Inc. v. ATI Techs, ULC,
`IPR2015-00327, slip op. (PTAB Sept. 2, 2015) (Paper 15) ............................... 28
`Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
`CBM2012-00003 (PTAB Oct. 25, 2012) (Paper 7)............................................ 30
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) .......................................................................... 17
`Power Mosfet Techs., L.L.C. v. Siemens AG,
`378 F.3d 1396 (Fed. Cir. 2004) .......................................................................... 17
`Samsung Elecs. Co., Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015-00555, slip op. (PTAB June 19, 2015) ................................................ 30
`
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`Case IPR2018-01282
`Patent 8,768,865
`
`Cases
`Samsung Elecs. Co., Ltd. v. Rembrandt Wireless Techs., LP,
`IPR2015-00555, slip op. (PTAB June 19, 2015) (Paper 20) .............................. 27
`Sketchers USA, Inc., v. Adidas, AG.,
`IPR2017-00322, slip op. (PTAB May 30, 2017) (Paper 9) ................................ 25
`Toyota Motor Company v. Adaptive Headlamp Technologies, Inc.,
`IPR2016-01740, slip op. (PTAB March 10, 2017) (Paper 7) ....................... 25, 27
`Toyota Motor Corp. v. Cellport Sys., Inc.,
`IPR2015-01422, slip op. (PTAB Dec. 16, 2015) (Paper 8) ................................ 30
`Rules and Statutes
`35 U.S.C.§ 314(a) ...................................................................................................... 3
`35 U.S.C. § 325(d) ............................................................................. 2, 25, 27, 28, 30
`Other Authorities
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
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`Case IPR2018-01282
`Patent 8,768,865
`Pursuant to 37 C.F.R. § 42.107, Patent Owner Qualcomm Incorporated
`
`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
`Petitioner fails to address all elements of the Challenged Claims. Specifically,
`
`Petitioner fails to allege that any cited art discloses “fix[ing] a subset of varying
`
`parameters associated with said first pattern,” which appears in each of the
`
`independent Challenged Claims.1 Petitioner avoids addressing this limitation by
`
`removing it from the claims under the guise of claim construction.
`
`Petitioner’s proposed construction does not interpret the claim language.
`
`Rather, it leaves the plain language unchanged—other than deleting a limitation that
`
`Petitioner cannot show is in the prior art—as 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
`
`
`1 Petitioner challenges Claims 1-10, 12-30, and 46-53, each of which is or depends
`
`from one of Claims 1, 21, or 46.
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`Patent 8,768,865
`Petitioner’s “construction” is not a reasonable interpretation. It violates the
`
`basic claim construction doctrine of giving meaning to all words in a claim. It also
`
`ignores the intrinsic record, which emphasizes “fixing” as a key concept, and uses
`
`“associating” as a basic computer science operation that could be used in countless
`
`contexts. The plain language of the claim requires both that “fixing” is performed
`
`and that “associating” be used in performing the “fixing.” There is no basis for
`
`Petitioner’s neglect of the first requirement. Petitioner’s construction materially
`
`alters the claim by removing the first requirement, such that any association—even
`
`one that does not result in “fixing”—would be sufficient. It is not.
`
`Petitioner does not purport to show “fix[ing] a subset of varying parameters
`
`associated with said first pattern” in the prior art. Instead, the Petition relies
`
`exclusively on the removal of “fixing” via its proposed claim construction: “As
`
`construed above, [the fixing] limitation is met by associating . . . .” Petition at 28
`
`(emphases added). Nothing in the Petition suggests Louch discloses “fix[ing] a
`
`subset of varying parameters associated with said first pattern,” nor does it. Thus,
`
`Petitioner fails to show all claim elements are met by the prior art. Institution should
`
`therefore be denied.
`
`Further, in the interest of judicial economy, the Petition should be denied
`
`pursuant to 35 U.S.C. § 325(d) because it is a serial petition with cumulative grounds
`
`that would needlessly burden the Board and Patent Owner with multiple proceedings
`
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`Patent 8,768,865
`involving the same patent. See, e.g., Great West Casualty Co. v. Intellectual
`
`Ventures II LLC, IPR2016-01534, slip op. at 2, 9 (PTAB Feb. 15, 2017) (Paper 13)
`
`(denying institution for reasons of judicial economy stating that “considerations of
`
`[certain] provisions from Sections 315(c), 315(d), and 325(d) in the aggregate
`
`informs our discretionary authority under 35 U.S.C.§ 314(a).”).
`
`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
`
`mobile device to recognize patterns that are associated with user activity. The patent
`
`does not suggest that this ultimate result is new. Rather, the patent notes that in
`
`modern mobile devices “an increased dimensionality of an information stream”
`
`made it “difficult to track, correlate, process, associate, etc.” APPLE-1001 at 7:40-
`
`51. The patent therefore discloses an approach that accomplishes the result in a way
`
`that does not require a mobile device to monitor all variables at all times for all
`
`patterns. That is, while Petitioner presents various steps in isolation as purportedly
`
`known, the ’865 Patent discloses and claims related objects of each step that
`
`accomplish the overall goal of enabling a mobile device to recognize user activity in
`
`a particular, less resource-taxing, way. Key to this approach is focusing the data set
`
`to enable pattern recognition or matching efforts in that focused data set through
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`“fixing.” Louch includes no such disclosure, instead describing the prior art of
`
`monitoring all sensors at all times while attempting to detect all patterns.
`
`1. Terminology
`To understand the approach of the ’865 Patent, it is helpful to first discuss
`
`three related concepts.
`
`First, the ’865 Patent discusses “variables” or “varying parameters,” using
`
`the terms interchangeably. A “varying parameter” is “derived” from information
`
`sources like a sensor, application, or user action. APPLE-1001 at 2:27-28; 4:58-60.
`
`The value of a given varying parameter changes over time. See, e.g., id. at Fig. 2.
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`For example, Figure 2 shows the values of varying parameters “motion state,”
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`“brightness level,” “noise level,” and “WiFi SSID” changing over an hour:
`
`Figure 2 (Annotated)
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`As is apparent from the exemplary varying parameters described above, the
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`process of “deriving” a varying parameter may include substantial analysis. For
`
`example, the patent explains that the varying parameter “motion state” may be
`
`derived through analysis of accelerometer information to derive values such as
`
`“driving” or “walking.” APPLE-1001 at 7:30-32; 13:23-26. On the other hand, less
`
`processed information may also be a varying parameter. Although not shown in
`
`Figure 2, the patent also discusses accelerometer values themselves as another
`
`example of a varying parameter. Id. at 4:8-13.
`
`Next, the patent discusses “patterns.” The patent discusses “several types of
`
`different patterns” that vary in complexity. Id. at 15:32-37. The patent gives a
`
`simple example of “location X AND motion state Y.” Id. at 13:8-13. The various
`
`exemplary patterns discussed include (a) one or more varying parameters (e.g.,
`
`location and motion state), (b) values (or ranges of values) for each of those
`
`parameters (e.g., X and Y, respectively), and (c) a relationship between the varying
`
`parameters (e.g., logical AND). As will be discussed further below, the ’865 Patent
`
`approach involves two patterns, which are referenced in the claims as a “first
`
`pattern” and a “second pattern.” The ultimate goal of the approach is a more
`
`“tractable” approach to identifying the “second pattern.”
`
`Finally, the patent discusses “conditions,” or “events of interest.” Id. at 8:54-
`
`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.” APPLE-1001 at 8:1-6, 7:42-43. As
`
`discussed below, the ’865 Patent approach utilizes detection of a “condition” as an
`
`alternative to a mobile device attempting to recognize all potential patterns at all
`
`times.
`
`2. Two-Phase Approach
`The ’865 Patent explains that, in mobile devices at the time of the invention,
`
`“an increased dimensionality of an information stream” made it “difficult to track,
`
`correlate, process, associate, etc.” Id. at 7:40-51. That is:
`
`[C]ontinually tracking or monitoring all or most varying parameters
`or variables that may be associated with a multi-dimensional stream of
`sensor information may be a computationally intensive, resource-
`consuming, at times intractable, or otherwise less than efficient or
`effective approach for pattern matching or recognition.
`
`Id. at 7:58-63 (emphases added).
`
`The ’865 Patent discloses avoiding the need to monitor all variables for all
`
`possible patterns by using an alternate two-phase approach. First, “rather than
`
`continually tracking all or most information stream-related variables to match or
`
`recognize all or most possible or existing patterns, a mobile device may, for example,
`
`monitor one or more conditions or events of interest.” 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 (a “second pattern” in the claims) that may allow the device to recognize user
`
`activity.
`
`Second, upon detection of the condition, the ’865 Patent still does not attempt
`
`to recognize all patterns. 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
`
`condition. APPLE-1001 at 8:7-11, 15:21-25.
`
`To accomplish this second phase, the ’865 Patent discloses, first, linking the
`
`condition to a first pattern to “be representative of or otherwise correspond to” the
`
`condition. Id. at 15:1-5. Then, “a subset of one or more varying parameters or
`
`variables associated with a condition or event may, for example, be fixed in some
`
`manner.” Id. at 8:12-14 (emphases added).
`
`“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
`
`are color coded below to highlight references to fixing, the focused data set, and the
`
`subsequent pattern recognition or matching process. Specifically, the patent
`
`repeatedly describes the “fixing” step (highlighted in teal) as enabling a subsequent
`
`process to match or recognize a “second pattern” (highlighted in green) not in all
`
`data, but where “there is a pattern in the fixed subset of variables” (highlighted in
`
`magenta).
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`
`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.
`
`APPLE-1001 at 13:19-22.
`
`The patent provides an example of “fixing one variable associated with or
`
`corresponding to ‘driving’,” i.e., fixing the varying parameter “motion state” to the
`
`value “driving:”
`
`[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.
`
`Id. 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
`
`pattern” in which (1) motion state corresponds to driving and (2) “‘location’ may
`
`continually change from X  X' during the context ‘driving.’” Id. at 12:30-35. This
`
`can be seen in Figure 2 (in which the ID of the WiFi SSID indicates a location):
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`Figure 2 (Annotated)
`
`
`
`Thus, this “relational” pattern includes a “location” change from the location
`
`of SSID_3 to the location of SSID_1. The patent explains this pattern can be labeled
`
`“driving from home to work.” APPLE-1001 at 12:40-43.
`
`As discussed above, using the prior art, recognizing or matching this pattern
`
`would have involved “continually tracking or monitoring all or most varying
`
`parameters or variables,” which “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. But using the approach
`
`disclosed and claimed in the ’865 Patent, a mobile device may begin by monitoring
`
`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,
`
`recognizing patterns such as “driving from home to work” that “occurs in connection
`
`with” with driving makes “pattern matching more tractable or otherwise allow for a
`
`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
`
`approach discussed above as follows:
`
`
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`
`
`
`APPLE-1001, Claims 1, 3-5 (annotated).
`
`Prosecution History
`C.
`Petitioner’s prosecution history discussion omits the key fact that the
`
`Applicants consistently treated the “fixing . . .” and “associating . . .” recitations as
`
`separate aspects. As filed, original Claim 1 included the limitation “fixing a subset
`
`of varying parameters associated with said first pattern, said varying parameters
`
`derived, at least in part, from said monitored input signals.” APPLE-1002 at 237.
`
`Dependent Claim 2, as originally filed, recited:
`
`2. The method of claim 1, wherein fixing said subset of varying
`parameters comprises associating at least one parameter of said subset
`of varying parameters with said first pattern to represent said at least
`one detected condition.
`
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`Patent 8,768,865
`APPLE-1002 (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.
`
`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
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`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.
`
`III. OVERVIEW OF THE CITED ART
`Louch discloses a “speakerphone system integrated in a mobile device is
`
`automatically controlled based on the current state of the mobile device.” APPLE-
`
`1011 at Abstract. Nothing in Louch’s description of state detection suggests state
`
`detection is phased or focused in any way, let alone based on detection of a condition.
`
`Rather, Louch just describes the prior art of monitoring all sensors at all times while
`
`attempting to detect all patterns.
`
`
`2 The context of this passage was the Applicants successfully arguing that the
`
`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
`
`terms (varying parameters, condition, and first pattern) in the Examiner’s mapping
`
`of the prior art to Claim 1. APPLE-1002 at 41.
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`Louch discloses example “states” that may be detected, including a “first
`
`state” defined by a proximity sensor on the back of the phone sensing proximity to
`
`an object and a motion sensor sensing no motion, as well as a “second state” of a
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`motion sensor sensing motion, and a “third state” in which a front proximity sensor
`
`senses proximity to an object and a motion sensor sensing no motion. APPLE-1011
`
`at 2:63-3:21. Louch also discloses “enhanc[ing] accuracy of the state determination”
`
`by using “detection of time in combination with a transition distance of the mobile
`
`device 100.” Id. at 5:21-24. Based on a detected state, the mobile device takes a
`
`“control action,” e.g., “activating or deactivating a speakerphone.” Id. at 8:40-48.
`
`Louch also discusses a “learning mode:”
`
`In some implementations, the mobile device 100 “learns” particular
`characteristics or patterns of the state of the device and/or the user’s
`interactions with the device 100 in view of the state to determine which
`control action should be issued. By way of illustration, the mobile
`device 100 can have a learning mode, where the device 100 can “learn”
`by recording a detected state of the device 100, e.g., a trajectory of a
`motion, or a signature of proximity. Further, the device 100 can
`compare its state detected from the sensor input to the one or more
`patterns already stored in the device 100, e.g., a signature of a bouncing
`motion while the user is walking, a signature of a change in orientation,
`a trajectory while the user is picking up and raising the device 100, etc.
`If the detected state matches one of the patterns, the mobile device 100
`can apply to the speakerphone system and/or graphical user interface
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`the corresponding control action to the matching pattern. In some
`scenarios, the device 100 can apply the control action based on the
`closest pattern determined from the comparison.
`
`APPLE-1011 at 10:3-20.
`
`Thus, the “learning mode” in Louch relates to modifying stored patterns that
`
`can be used in later, unrelated pattern matching activities. Again, nothing in this
`
`disclosure of “learning mode” suggests the pattern recognition in Louch involves
`
`anything other the prior art of monitoring all sensors at all times while attempting to
`
`detect all patterns.
`
`In fact the disclosure of Louch closely resembles the “typical” prior art
`
`approach to pattern matching discussed as background the ‘865 Patent:
`
`Typical approaches to pattern matching or recognition may include, for
`example, utilizing or otherwise considering a relatively rigid
`specification of a particular pattern to be found. For example, at times,
`a match may imply that an identical pattern is found or located in one
`or more testing or training datasets, suitable information repositories,
`or the like. In addition, one or more suitable distance metrics may, for
`example, be applied in some manner, in whole or in part, to facilitate or
`support approximate pattern matching or recognition.
`
`APPLE-1001 at 6:60-7:2.
`
`In sum, Louch just describes the prior art of monitoring all sensors at all times
`
`while attempting to detect all patterns. Louch does not describe any sort of two-
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`phase approach, nor does Louch describe any fixing to focus a data set, let alone
`
`based on detection of a condition.
`
`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
`
`The plain claim language, which recites “fixing . . .” by “associating . . . ,” is not met
`
`if “associating” is performed in a context that does not result in “fixing.” Yet, by
`
`deleting the 12-word “fixing” phrase, that is what Petitioner’s construction would
`
`improperly accomplish. By analogy, consider the language “returning home by
`
`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
`
`suggest that riding the bus to the store meets the requirement of “returning home.”
`
`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 cites 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 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
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`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
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`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
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`includes “associating” in a list of high-level processes:
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`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
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`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.
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`Petition at 13-14 (citing APPLE-1001 at 15:9-12) (emphasis added). Nothing in this
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`passage supports Petitioner’s construction. Rather, it is consistent with the use of
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`“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
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`Applicant incorporated this embodiment of ‘fixing’ directly into the claim
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`language.” Petition at 14. Petitioner’s reference to “associating” as an “embodiment
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`of ‘fixing’” is disingenuous and inconsistent with Petitioner’s proposed construction
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`and invalidity assertions. Petitioner’s construction does not recite an “embodiment”
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`of 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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`Further, the passage Petitioner cites, which describes Applicants’ amendment
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`of Claim 1, does not support Petitioner’s construction:
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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 parameter of said
`subset of varying parameters with said first pattern to represent said at
`least one detected condition.”
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`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-