`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`____________________
`
`APPLE INC., SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner
`_________________________
`
`———————
`
`U.S. Patent No. 8,872,646
`
`_________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,872,646
`
`SAMSUNG EXHIBIT 1015
`
`Page 1 of 83
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`

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`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`TABLE OF CONTENTS
` I. INTRODUCTION ................................................................................................ 1
` II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ...................................... 1
` A. Real Party-in-Interest ................................................................................ 1
` B. Related Matters ....................................................................................... 12
`C.Lead and Back-up C. Counsel and Service Information ............................. 2
` III. GROUNDS FOR STANDING .......................................................................... 2
` IV. THE ’646 PATENT ........................................................................................... 3
` A. State of the Art beforeBefore the ’646 Patent ......................................... 3
` B. Overview of the ’646 Patent ..................................................................... 4
` C. Prosecution History ................................................................................... 5
` D. Claim Construction ................................................................................. 67
`1.
`“glitch” .................................................................................... 78
`2.
`“a change in the dominant axis” ............................................... 8
`3.
`“dominant axis logic to determine an idle sample value
`for a dominant axis of the mobile device based on the
`motion data” .............................................................................. 8
`“dominant axis logic … to compare a difference between
`a current sample value along the dominant axis
`determined based on the motion of the device and the idle
`sample value of the dominant axis against a threshold
`value” ..................................................................................... 910
`“computation logic to determine whether the motion
`caused a change in the dominant axis” ................................... 11
`“power logic to wake up the device when the motion of
`the device indicates a change in the dominant axis of the
`device” ................................................................................. 1112
`“power logic to move the device from the inactive state
`to an active state upon detection of a change in the
`dominant axis which is the axis experiencing the largest
`effect of gravity” ...................................................................... 13
`
`7.
`
`
`
`
`
`i
`
`
`
`4.
`
`5.
`
`6.
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`Page 2 of 83
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`9.
`
`8.
`
`Petition for Inter Partes Review of U.S. – Patent No. 8,872,646
`
`“long average logic to calculate an average of
`accelerations over a sample period” ....................................... 14
`“device state logic to restore the device to a last active
`state” ........................................................................................ 15
` V. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF ......................................................................................................... 17
` VI. IDENTIFICATION OF CHALLENGES .................................................... 1718
` A. Challenged Claims .............................................................................. 1718
` B. Statutory Grounds for Challenges ........................................................... 18
` VII. IDENTIFICATION OF HOW THE CLAIMS ARE
`UNPATENTABLE ....................................................................................... 19
` A. Challenge #1: Claims 1, 3, 5-7, 9-11, 13-15, 17, and 20 are
`unpatentable under 35 U.S.C § 103 over Pasolini in view of
`Goldman, McMahan, and Mizell ....................................................... 19
`1.
`Summary of Pasolini ................................................................ 19
`2.
`Summary of Goldman .............................................................. 22
`3. Reasons to combine Pasolini and Goldman ........................ 2223
`4.
`Summary of McMahan ........................................................ 2425
`5.
`Reasons to combine McMahan with Pasolini and
`Goldman ............................................................................... 2526
`Summary of Mizell .............................................................. 2627
`6.
`Reasons to combine Mizell with Pasolini and Goldman ......... 27
`7.
`Detailed Analysis ..................................................................... 28
`8.
` B. Challenge #2: Claims 8, 16, and 18 are unpatentable under 35
`U.S.C § 103 over Pasolini in view of Goldman, McMahan,
`Mizell, and Park ................................................................................ 64
`1.
`Summary of Park ..................................................................... 64
`2.
`Reasons to Combine Park with Pasolini and Goldman ........... 64
`3.
`Detailed Analysis ..................................................................... 65
` VIII. CONCLUSION ......................................................................................... 7069
`
`
`
`
`
`
`ii
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`
`LIST OF EXHIBITS
`
`Ex. 1001
`
`U.S. Patent No. 8,872,646.
`
`Ex. 1002
`
`Prosecution History of U.S. Patent No. 8,872,646.
`
`Ex. 1003
`
`U.S. Patent No. 7,409,291 to Pasolini et al. (“Pasolini”)
`
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Using the LIS3L02AQ Accelerometer, Ron Goldman, Sun
`Microsystems Inc. Dated February 23, 2007. (“Goldman”)
`U.S. Patent No. 7,204,123 to McMahan et al. (“McMahan”)
`U.S. Patent Publication No. 2006/0161377 to Rakkola et al.
`(“Rakkola”)
`Using Gravity to Estimate Accelerometer Orientation, David Mizell,
`Proceedings of the Seventh IEEE International Symposium on
`Wearable Computers (ISWC ’03) 2003. (“Mizell”)
`
`Ex. 1008
`
`Declaration of Chris Butler, Under 37 C.F.R. § 1.68.
`
`Ex. 1009
`
`Dictionary of Scientific and Technical Terms, McGraw-Hill.
`
`Ex. 1010
`
`Declaration of Joe Paradiso, Ph.D, Under 37 C.F.R. § 1.68.
`
`Ex. 1011
`
`Curriculum Vitae of Joe Paradiso.
`
`Ex. 1012
`
`Declaration of Ingrid Hsieh-Yee, Under 37 C.F.R. § 1.68.
`
`Ex. 1013
`
`Reserved.
`
`Ex. 1014
`
`U.S. Patent No. 7,028,220 to Park et al. (“Park”)
`
`Ex. 1015
`
`
`
`Comparison between the Current Petition and Petition in IPR2018-
`00289
`
`iii
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`

`

`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`
`I.
`
`INTRODUCTION
`U.S. Patent No. 8,872,646 (“the ’646 Patent,” APPL-Ex. 1001) is generally
`
`directed to waking a device from a low power state in response to detected
`
`acceleration. Specifically, the claims of the ’646 Patent recite well-known
`
`accelerometer techniques that involve (i) removing glitches, (ii) capturing
`
`accelerometer samples while at rest, (iii) measuring the current acceleration, and
`
`(iv) waking the device from the low power state in response to detecting
`
`acceleration. However, before the ’646 Patent, POSITAs were already using such
`
`techniques.
`
`Accordingly, the evidence in this petitionPetition demonstrates that claims 1,
`
`3, 5- 11, 13-18, and 20 of the ’646 Patent are unpatentable under (pre-AIA) 35
`
`U.S.C. § 103. Apple Inc. Samsung Electronics America, Inc. (“Petitioner”)
`
`therefore respectfully requests that claims 1, 3, 5-11, 13-18, and 20 be held invalid
`
`and cancelled.
`
`This Petition is being submitted concurrently with a Motion for Joinder.
`
`Specifically, Petitioner requests institution and joinder with Apple Inc. v. Uniloc
`
`Luxembourg SA, IPR2018-00289 (“the Apple IPR Proceeding”), which the Board
`
`instituted on June 11, 2018.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-in-Interest
`
`1
`
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`

`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`ThePetitioner identifies Samsung Electronics Co., Ltd. and Samsung
`
`Electronics America, Inc. as the real partyparties-in-interest is Apple Inc..
`
`B. Related Matters
`As of the filing date of this petition, the ‘646The ’646 Patent has been
`
`assertedis at issue in the following district court proceedings:
`
`
`
`
`
`Uniloc USA, Inc. et al. v. Apple Inc., 2:17-cv-00470 (E.D. Tex. 2017)
`(consolidated lead case). The ‘646 patent is also involved in Case No.
`4:18-cv-00361 (N.D. Cal.)
`
`Uniloc USA, Inc. et al v. LG ElectronicsHuawei Device USA, Inc. et
`al., 4-., Case No. 2:17-cv-00830 (N00746 (E.D. Tex. 2017) and .)
`
`
`
`Uniloc USA, Inc. et al. v. Samsung Electronics America,Elecs. Am.,
`Inc. et al.,., Case No. 2-:17-cv-00652 (E.D. Tex. 2017)..)
`Lead and Back-up Also, as noted above, the ’646 Patent has been challenged
`
`in the Apple IPR Proceeding. Petitioner has concurrently filed a motion to join this
`
`proceeding.
`
`C. Counsel and Service Information
`Lead Counsel: Naveen Modi (Reg. No. 46,224). Backup Counsel: (1) Joseph E.
`Palys (Reg. No. 46,508), (2) Phillip W. Citroën (Reg. No. 66,541), and (3) Michael
`A. Wolfe (Reg. No. Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Thomas W. Kelton
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`
`Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
`
`Phone: (972) 739-6923
`Fax: (214) 200-0853
`thomas.kelton.ipr@hayne sboone.com
`
`2
`
`Page 6 of 83
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`

`

`Dallas, TX 75219
`
`Calmann J. Clements
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`USPTO Reg. No. 54,214
`
`Phone: (972) 739-8638
`Fax: (214) 200-0853
`calmann.clements.ipr@haynesboone.com
`USPTO Reg. No. 66,910
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service via email.
`
`71,922). Service Information: Paul Hastings LLP, 875 15th Street NW,
`
`Washington, DC 20005; Tel: (202) 551-1700; Fax: (202) 551-1705; E-mail: PH-
`
`Samsung-Uniloc-IPR@paulhastings.com. Petitioner consents to electronic service.
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ’646 Patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this petitionPetition.
`
`Petitioner was served with a complaint asserting infringement of the ‘646 Patent on
`
`June 2, 2017, which is not more than one year before the filing of this Petition.
`
`Petitioner has not filed a civil action challenging the validity of any claim of the
`
`‘646 Patent.
`
`3
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`
`IV. THE ’646 PATENT
`A.
`State of the Art beforeBefore the ’646 Patent
`Modern day accelerometers are typically small, micro electro-mechanical
`
`systems (MEMS) that may be fabricated into an integrated circuit. (See APPL-Ex.
`
`1006, [0004]). A common type of accelerometer is a triaxial accelerometer that
`
`measures acceleration along three different orthogonal axes. (APPL-Ex. 1010 ¶24).
`
`A triaxial accelerometer at rest will measure acceleration due to the force of
`
`gravity along at least one axis. A triaxial accelerometer in motion will measure
`
`both acceleration due to the force of gravity and acceleration due to any movement
`
`being experienced by the accelerometer. (See APPL-Ex. 1003, 3:4-7). However,
`
`for many applications it is desirable to distinguish between static acceleration (due
`
`to the force of gravity) and dynamic acceleration (due to motion). (APPL-Ex. 1010
`
`¶24).
`
`Various techniques for distinguishing between static acceleration and
`
`dynamic acceleration were used and known to POSITAs before the filing of the
`
`’646 patent. In particular, such techniques were used to detect motion and wake an
`
`electronic device from a sleep state. For example, U.S. Patent No. 7,409,291 to
`
`Pasolini et al. (“APPL-Ex. 1003”) uses low pass filters to create a representation of
`
`gravity along each axis. The signals from the low pass filters, which represent
`
`gravity, can then be subtracted from the current acceleration values measured by
`
`4
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`the accelerometer. (See APPL-Ex. 1003, 4:38-50). Then, these acceleration values
`
`are used to wake the device from a sleep state. (See APPL-Ex. 1003, 1:66-2:4;
`
`3:17-23). In addition, Sun Microsystems published a detailed technical description
`
`of a portable electronic device that samples an accelerometer while at rest to obtain
`
`a rest value and to perform other processing on the accelerometer signals (See
`
`APPL-Ex. 1004, p. 2). (APPL-Ex. 1010 ¶25).
`
`B. Overview of the ’646 Patent
`The ’646 patent relates to a method and system for waking a device from a
`
`low power state in response to detecting motion. Specifically, the ’646 patent
`
`describes a device that goes into a low power state after a period of inactivity. The
`
`device also has a motion sensor to detect motion. In response to detecting motion,
`
`the device will “wake” from the low power state.
`
`More specifically, the claimed invention uses a motion sensor to collect a
`
`sample value while the device is at rest. This sample value is referred to as the
`
`“idle sample value.”1 The claimed invention also wakes the device from idle mode
`
`when it is determined that the device experiences motion along a “dominant axis.”
`
`The claims define the dominant axis as the axis most affected by gravity. However,
`
`
`1 Claim 1 only recites that the idle sample value is obtained. No use for the idle
`
`sample value is recited in the independent claims.
`
`5
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`use of the term “dominant axis” brings a superficial aura of complexity to the
`
`claims because any triaxial system has an axis that is more aligned with gravity
`
`than the others at a given time. (APPL-Ex. 1010 ¶29). It is noted that the claims do
`
`not require determining which of the three axes is the dominant axis. Moreover,
`
`during prosecution of the ’646 patent, the Examiner was not persuaded by the
`
`Applicant’s patentability arguments for the dominant axis. (See e.g., APPL-Ex.
`
`1002, 230). (APPL-Ex. 1010 ¶¶26-29).
`
`C.
`Prosecution History
`The ’646 patent issued on October 28, 2014, from U.S. Patent Application
`
`No. 12/247,950 filed October 8, 2008.
`
`The Office issued the first Action on May 12, 2011. (See APPL-Ex. 1002,
`
`106). In that Action, the claims were rejected under 35 U.S.C. 112, second
`
`paragraph, for indefiniteness. Specifically, the terms “long average” and “dominant
`
`axis” were deemed indefinite. Additionally, independent claim 1 was rejected
`
`under 35 U.S.C. 102 as being anticipated by Rakkola (U.S. 2006/0161377), and
`
`independent claims 25 and 33 were rejected under 35 U.S.C. 103 as being rendered
`
`obvious by Rakkola and Mattice (U.S. 2007/0259716). In response to the first
`
`Action, the Applicant argued that the term “dominant axis” was defined in the
`
`specification as “the axis most impacted by gravity” and therefore was not
`
`indefinite. (See APPL-Ex. 1002, 149). Additionally, the Applicant argued that the
`
`6
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`term “long average” was defined in the specification as “averaging of a plurality of
`
`acceleration measurements over the sample period” and therefore was not
`
`indefinite. (See APPL-Ex. 1002, 148). The Applicant also challenged the
`
`anticipation and obviousness rejections for the independent claims without
`
`amendments. (See APPL-Ex. 1002, 149- 50). However, the Examiner determined
`
`that these arguments were not persuasive.
`
`Similar arguments were made regularly throughout prosecution but were not
`
`persuasive to the Office. Several additional Office Actions were issued by the
`
`Office. The Applicant’s responses to such Office Actions made little changes to the
`
`claims and rehashed similar arguments.
`
`After receiving Applicant’s response to the seventh Office Action, there was
`
`an Examiner’s amendment that added the phrases “verifying whether the motion
`
`data includes one or more glitches and removing the one or more glitches from the
`
`motion data” and “the idle sample value comprising an average of accelerations
`
`over a sample period along the dominant axis recorded when the devices goes to
`
`idle mode after a period of inactivity.” (See APPL-Ex. 1002, 1358). Applicant
`
`accepted these proposed amendments and the application was allowed. (APPL-Ex.
`
`1010 ¶¶30-40).
`
`7
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`
`D. Claim Construction2
`This petitionPetition presents claim analysis in a manner that is consistent
`
`with the broadest reasonable construction in light of the specification. See 37
`
`C.F.R. § 42.100(b). Under the broadest reasonable construction, claim terms are
`
`given their ordinary and accustomed meaning as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, because the claim
`
`constructions proposed herein are based on the broadest reasonable construction,
`
`they do not necessarily apply to other proceedings that use different claim
`
`construction standards. See Samsung Elecs. Co. v. Virginia Innovation Sci., Inc.,
`
`IPR2013-00569, Paper 9 at 2 (PTAB 2013). Therefore, Petitioner reserves the right
`
`to pursue different claim constructions in other proceedings. For terms not
`
`addressed below, Petitioner submits that no specific construction is necessary for
`
`this proceeding.3
`
`
`2 Where alternative constructions are proposed below, Petitioner addresses
`
`unpatentability under both possible constructions.
`
`3 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`8
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`
`1.
`“glitch”
`This term is used in claims 1, 13, and 20. According to the specification of
`
`the ‘’646 patent: “a glitch is a datum that indicates a motion outside an acceptable
`
`range. For example, it is extremely unlikely that a device would go from idle (e.g.,
`
`no motion) to moving at an acceleration of 64 feet per second squared (equivalent
`
`to 2 g).” (APPL-Ex. 1001, 6:36-40).
`
`Thus, for the purposes of this petitionPetition, the broadest reasonable
`
`interpretation of a “glitch” includes a datum that is outside of an acceptable range.
`
`(See APPL-Ex. 1010, ¶42).
`
`2.
`“a change in the dominant axis”
`This term is used in claims 1, 13, and 20. Claim 7 gives an example of a
`
`specific feature for the term “change in the dominant axis” as recited in claim 1.
`
`Specifically, claim 7 recites: “wherein the change in the dominant axis comprises a
`
`change in acceleration along the dominant axis.” Thus, for the purposes of this
`
`petitionPetition, the broadest reasonable interpretation of “a change in the
`
`dominant axis” includes at least a change in acceleration measured along the
`
`dominant axis. (See APPL-Ex. 1010, ¶43).
`
`3.
`
`“dominant axis logic to determine an idle sample value for a
`dominant axis of the mobile device based on the motion data”
`The specification describes dominant axis logic 245 that performs the
`
`claimed function. (See APPL-Ex. 1001, 3:13-27). Additionally, block 515
`
`9
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`describes logic that “receives data for the dominant axis DA1 of the idle device and
`
`accelerations along DA1 over a sampling period.” (APPL-Ex. 1001, 5:48-50). And,
`
`block 520 describes logic that “assigns the long average of accelerations along
`4 The
`DA1 over a period to Idle Sample (IS).” (APPL-Ex. 1001, 5:53-55).
`
`specification further describes that the logic may be executed by a processor. (See
`
`APPL-Ex. 1001, 7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`determines an idle sample value for a dominant axis of the mobile device based on
`
`the motion data.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: determine an idle sample value for a dominant axis of the
`
`mobile device based on the motion data;
`
`
`4 While blocks 515 and 520 are described in the ’646 specification as being
`
`performed by computation logic 500, the actions described in blocks 515 and 520
`
`correspond to the claim limitations associated with the “dominant axis logic.”
`
`10
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`Structure: software, hardware, or combination thereof to perform the
`
`actions in blocks 515 and 520. (See APPL-Ex. 1001, 7:46-59) (APPL-
`
`Ex. 1001, 5:48-55). (See APPL-Ex. 1010, ¶¶44-46). 5
`
`4.
`
`“dominant axis logic … to compare a difference between a current
`sample value along the dominant axis determined based on the
`motion of the device and the idle sample value of the dominant axis
`against a threshold value”
`The specification describes dominant axis logic 245 that performs the
`
`claimed function. (See APPL-Ex. 1001, 3:13-27). Additionally, block 540
`
`describes logic that determines “if the difference between the Current Sample
`
`value and the Idle Sample value is larger than the threshold value.” (APPL-Ex.
`1001, 6:12-14).6 The specification further describes that the logic may be executed
`
`by a processor. (See APPL-Ex. 1001, 7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`compares a difference between a current sample value along the dominant axis
`
`
`5 Petitioner addresses unpatentability under both possible constructions.
`
`6 While block 540 is described in the ’646 specification as being performed by
`
`computation logic 500, the actions described in block 540 correspond to the claim
`
`limitations associated with the “dominant axis logic.”
`
`11
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`determined based on the motion of the device and the idle sample value of the
`
`dominant axis against a threshold value.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: compare a difference between a current sample value along the
`
`dominant axis determined based on the motion of the device and the idle
`
`sample value of the dominant axis against a threshold value;
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions in block 540. (See APPL-Ex. 1001, 7:46-59) (APPL-Ex. 1001, 6:12-
`14). (See APPL-Ex. 1010, ¶¶47-49).7
`5.
`
`“computation logic to determine whether the motion caused a
`change in the dominant axis”
`The specification describes computation logic 255 that performs the claimed
`
`function. (See APPL-Ex. 1001, 4:6-24). Additionally, block 540 describes logic
`
`that “determines if the long average along the dominant axis has changed by more
`
`than a threshold value.” (APPL-Ex. 1001, 6:9-11). The specification further
`
`
`7 Petitioner addresses unpatentability under both possible constructions.
`
`12
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`describes that the logic may be executed by a processor. (See APPL-Ex. 1001,
`
`7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`determines whether the motion caused a change in the dominant axis.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: determine whether the motion caused a change in the dominant
`axis;
`Structure: software, hardware, or combination thereof to perform the
`actions in block 540. (See APPL-Ex. 1001, 7:46-59) (APPL-Ex. 1001, 6:9-
`11). (See APPL-Ex. 1010, ¶¶50-52). 8
`
`6.
`
`“power logic to wake up the device when the motion of the device
`indicates a change in the dominant axis of the device”
`The specification describes power logic 265 that performs the claimed
`
`function. (See APPL-Ex. 1001, 4:14-24). In one example, block 545 describes
`
`
`8 Petitioner addresses unpatentability under both possible constructions.
`
`13
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`logic to “start up the device.” (APPL-Ex. 1001, 6:24).9 The specification further
`
`describes that the logic may be executed by a processor. (See APPL-Ex. 1001,
`
`7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that wakes
`
`up the device when the motion of the device indicates a change in the dominant
`
`axis of the device.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: wake up the device when the motion of the device indicates a
`
`change in the dominant axis of the device;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`block 545. (See APPL-Ex. 1001, 7:46-59) (APPL-Ex. 1001, 6:24) (See
`
`APPL-Ex. 1010, ¶¶53-55). 10
`
`9 While block 545 is described in the ’646 specification as being performed by
`
`computation logic 500, the actions described in block 545 correspond to the claim
`
`limitations associated with the “power logic.”
`
`10 Petitioner addresses unpatentability under both possible constructions.
`
`14
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`of U.S. Patent No. 8,872,646
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`7.
`
`“power logic to move the device from the inactive state to an active
`state upon detection of a change in the dominant axis which is the
`axis experiencing the largest effect of gravity”
`The specification describes power logic 265 that performs the claimed
`
`function. (See APPL-Ex. 1001, 4:14-24). In one example, block 545 describes
`
`logic to “start up the device.” (APPL-Ex. 1001, 6:24).11 The specification further
`
`describes that the logic may be executed by a processor. (See APPL-Ex. 1001,
`
`7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that wakes
`
`up the device when the motion of the device indicates a change in the dominant
`
`axis of the device or moves the device form the inactive state to an active state
`
`upon detection of a change in the dominant axis which is the axis experiencing the
`
`largest effect of gravity.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`
`11 While block 540 is described in the ’646 specification as being performed by
`
`computation logic 500, the actions described in block 540 correspond to the claim
`
`limitations associated with the “power logic.”
`
`15
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`of U.S. Patent No. 8,872,646
`Function: move the device from the inactive state to an active state upon
`
`detection of a change in the dominant axis which is the axis experiencing the
`
`largest effect of gravity;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`block 545. (See APPL-Ex. 1001, 7:46-59) (APPL-Ex. 1001, 6:24) (See
`
`APPL-Ex. 1010, ¶¶56-58).12
`
`8.
`
`“long average logic to calculate an average of accelerations over a
`sample period”
`The specification describes long average logic 270 that performs the claimed
`
`function. (See APPL-Ex. 1001, 3:38-51). In one example, block 410 describes
`
`logic to receive “motion data from the accelerometer.” (APPL-Ex. 1001, 5:19).
`
`Block 415 describes logic to add “the sampled motion data to the long average, to
`
`create an updated long average of accelerations.” (APPL-Ex. 1001, 5:24-26). The
`
`specification further describes that the logic may be executed by a processor. (See
`
`APPL-Ex. 1001, 7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`calculates an average of accelerations over a sample period.”
`
`
`12 Petitioner addresses unpatentability under both possible constructions.
`
`16
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`of U.S. Patent No. 8,872,646
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: calculate an average of accelerations over a sample period;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`blocks 410 and 415. (See APPL-Ex. 1001, 7:46-59) (APPL-Ex. 1001,
`
`5:19-26). (See APPL-Ex. 1010, ¶¶59-61). 13
`
`9.
`“device state logic to restore the device to a last active state”
`The specification describes device state logic 270 that performs the claimed
`
`function. (See APPL-Ex. 1001, 4:14-20). In one example, block 340 describes a
`
`process that “configures the device to restore the last device state when the device
`
`was active.” (APPL-Ex. 1001, 5:7-9). The specification further describes that the
`
`logic is stored in memory and accessible to a processor. (See APPL-Ex. 1001,
`
`7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`restores the device to a last active state.”
`
`
`13 Petitioner addresses unpatentability under both possible constructions.
`
`17
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`Petition for Inter Partes Review
`of U.S. Patent No. 8,872,646
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: restore the device to a last active state;
`
`Structure: software, hardware, or combination thereof to perform actions of
`
`block 340. (See APPL-Ex. 1001, 7:46-60) (APPL-Ex. 1001, 5:7-9). (See
`
`APPL-Ex. 1010, ¶¶62-64). 14
`
`Petitioner may assert in this same district court litigation that, under the
`
`narrower Phillips standard, these claim limitations invoke § 112 ¶6 but fail to meet
`
`the definiteness requirement of § 112 ¶2. The District CourtNo district court has
`
`not yet issued itsa claim construction under Phillips.
`
`Petitioner recognizes that inter partes review proceedings cannot be used to
`
`challenge definiteness under § 112. (See 35 U.S.C. § 311(b)). However, for
`
`purposes of this proceeding, the broadest reasonable interpretation of these claim
`
`terms encompasses software, hardware, or a combination thereof for performing
`
`the recited function, as explained by the ’646 Patent.
`
`In addition, regardless of whether the recited “logic” is a nonce word
`
`requiring the disclosure of an algorithm, the Board may still find that the claims are
`
`14 Petitioner addresses unpatentability under both possible constructions.
`
`18
`
`Pa