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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`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
`
`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`4.
`
`5.
`
`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 ..................................................................................... 2
`C.
`Counsel and Service Information ......................................................... 2
`III. GROUNDS FOR STANDING ....................................................................... 2
`IV. THE ’646 PATENT ........................................................................................ 3
`A.
`State of the Art Before the ’646 Patent ................................................ 3
`B.
`Overview of the ’646 Patent ................................................................. 4
`C.
`Prosecution History .............................................................................. 5
`D.
`Claim Construction .............................................................................. 7
`1.
`“glitch” ...................................................................................... 8
`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” ........... 10
`“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” ..................................................................................... 12
`“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
`“long average logic to calculate an average of
`accelerations over a sample period” ....................................... 14
`i
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`6.
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`7.
`
`8.
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`
`
`
`
`

`

`9.
`
`V.
`
`VI.
`
`Petition for Inter Partes Review – Patent No. 8,872,646
`
`“device state logic to restore the device to a last active
`state” ........................................................................................ 15
`RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................ 17
`IDENTIFICATION OF CHALLENGES ..................................................... 18
`A.
`Challenged Claims ............................................................................. 18
`B.
`Statutory Grounds for Challenges ...................................................... 18
`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 ............................. 23
`4.
`Summary of McMahan ............................................................ 25
`5.
`Reasons to combine McMahan with Pasolini and
`Goldman ................................................................................... 26
`Summary of Mizell .................................................................. 27
`6.
`Reasons to combine Mizell with Pasolini and Goldman ......... 27
`7.
`Detailed Analysis ..................................................................... 28
`8.
`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 ............................................................................................. 69
`
`VII.
`
`B.
`
`
`
`
`
`ii
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`

`

`Petition for Inter Partes Review
`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
`Patent No. 8,872,646
`
`I.
`
`INTRODUCTION
`U.S. Patent No. 8,872,646 (“the ’646 Patent,” 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 Petition 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. 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
`Petitioner identifies Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc. as the real parties-in-interest.
`
`1
`
`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`B. Related Matters
`The ’646 Patent is at issue in the following district court proceedings:
`
`
`
`
`
`Uniloc USA, Inc. v. Apple Inc., Case No. 4:18-cv-00361 (N.D. Cal.)
`
`Uniloc USA, Inc. v. Huawei Device USA, Inc., Case No. 2:17-cv-
`00746 (E.D. Tex.)
`
`
`
`Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., Case No. 2:17-cv-
`00652 (E.D. Tex.)
`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. 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
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`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 Petition.
`
`2
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`IV. THE ’646 PATENT
`A.
`State of the Art Before the ’646 Patent
`Modern day accelerometers are typically small, micro electro-mechanical
`
`systems (MEMS) that may be fabricated into an integrated circuit. (See Ex. 1006,
`
`[0004]). A common type of accelerometer is a triaxial accelerometer that measures
`
`acceleration along three different orthogonal axes. (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 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). (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. (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 the
`
`accelerometer. (See Ex. 1003, 4:38-50). Then, these acceleration values are used to
`
`3
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`wake the device from a sleep state. (See 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 Ex. 1004, p. 2).
`
`(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
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`device also has a motion sensor to detect motion. In response to detecting motion,
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`the device will “wake” from the low power state.
`
`More specifically, the claimed invention uses a motion sensor to collect a
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`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,
`
`use of the term “dominant axis” brings a superficial aura of complexity to the
`
`
`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.
`
`4
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`claims because any triaxial system has an axis that is more aligned with gravity
`
`than the others at a given time. (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., Ex. 1002, 230). (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 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 Ex.
`
`1002, 149). Additionally, the Applicant argued that the term “long average” was
`
`defined in the specification as “averaging of a plurality of acceleration
`
`5
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`measurements over the sample period” and therefore was not indefinite. (See Ex.
`
`1002, 148). The Applicant also challenged the anticipation and obviousness
`
`rejections for the independent claims without amendments. (See 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 Ex. 1002, 1358). Applicant accepted
`
`these proposed amendments and the application was allowed. (Ex. 1010 ¶¶30-40).
`
`6
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`D. Claim Construction2
`This Petition 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.
`
`7
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`

`

`Petition for Inter Partes Review
`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).” (Ex. 1001, 6:36-40).
`
`Thus, for the purposes of this Petition, the broadest reasonable interpretation
`
`of a “glitch” includes a datum that is outside of an acceptable range. (See 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
`
`Petition, the broadest reasonable interpretation of “a change in the dominant axis”
`
`includes at least a change in acceleration measured along the dominant axis. (See
`
`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 Ex. 1001, 3:13-27). Additionally, block 515 describes logic
`
`8
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`that “receives data for the dominant axis DA1 of the idle device and accelerations
`
`along DA1 over a sampling period.” (Ex. 1001, 5:48-50). And, block 520 describes
`
`logic that “assigns the long average of accelerations along DA1 over a period to
`4 The specification further describes that the
`Idle Sample (IS).” (Ex. 1001, 5:53-55).
`
`logic may be executed by a processor. (See 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.”
`
`9
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`Structure: software, hardware, or combination thereof to perform the
`
`actions in blocks 515 and 520. (See Ex. 1001, 7:46-59) (Ex. 1001, 5:48-
`
`55). (See Ex. 1010, ¶¶44-46).
`
`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 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.” (Ex. 1001, 6:12-14).5 The
`
`specification further describes that the logic may be executed by a processor. (See
`
`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
`
`determined based on the motion of the device and the idle sample value of the
`
`dominant axis against a threshold value.”
`
`5 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.”
`
`10
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`

`

`Petition for Inter Partes Review
`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: 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 Ex. 1001, 7:46-59) (Ex. 1001, 6:12-14). (See Ex.
`1010, ¶¶47-49).
`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 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.” (Ex. 1001, 6:9-11). The specification further describes that the
`
`logic may be executed by a processor. (See 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.”
`
`11
`
`

`

`Petition for Inter Partes Review
`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: 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 Ex. 1001, 7:46-59) (Ex. 1001, 6:9-
`11). (See Ex. 1010, ¶¶50-52).
`
`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 Ex. 1001, 4:14-24). In one example, block 545 describes logic to
`
`“start up the device.” (Ex. 1001, 6:24).6 The specification further describes that the
`
`logic may be executed by a processor. (See 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
`
`
`6 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.”
`
`12
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`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 Ex. 1001, 7:46-59) (Ex. 1001, 6:24) (See Ex. 1010, ¶¶53-
`
`55).
`
`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 Ex. 1001, 4:14-24). In one example, block 545 describes logic to
`
`“start up the device.” (Ex. 1001, 6:24).7 The specification further describes that the
`
`logic may be executed by a processor. (See Ex. 1001, 7:46-59).
`
`
`7 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.”
`
`13
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`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:
`
`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 Ex. 1001, 7:46-59) (Ex. 1001, 6:24) (See Ex. 1010, ¶¶56-
`
`58).
`
`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 Ex. 1001, 3:38-51). In one example, block 410 describes logic to
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`receive “motion data from the accelerometer.” (Ex. 1001, 5:19). Block 415
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`describes logic to add “the sampled motion data to the long average, to create an
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`updated long average of accelerations.” (Ex. 1001, 5:24-26). The specification
`
`further describes that the logic may be executed by a processor. (See Ex. 1001,
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`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.”
`
`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 Ex. 1001, 7:46-59) (Ex. 1001, 5:19-26). (See
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`Ex. 1010, ¶¶59-61).
`
`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 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
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`active.” (Ex. 1001, 5:7-9). The specification further describes that the logic is
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`stored in memory and accessible to a processor. (See Ex. 1001, 7:46-59).
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`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.”
`
`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 Ex. 1001, 7:46-60) (Ex. 1001, 5:7-9). (See Ex. 1010, ¶¶62-
`
`64).
`
`Petitioner may assert in 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. No district court has issued a 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.
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`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
`
`obvious in view of the software and hardware disclosed in the prior art cited in this
`
`Petition. (See, e.g., Vibrant Media, Inc. v. Gen’l Elec. Co., IPR2013-00172, Paper
`
`50 at 10-11 (PTAB Jul. 28, 2014) (“an indefiniteness determination in this
`
`proceeding would not have prevented us from deciding whether the claims would
`
`have been obvious over the cited prior art”); Microsoft Corp. v. Enfish, IPR2013-
`
`00560, Paper 14 at 9-10 (PTAB Mar. 4, 2014) (instituting review and directing
`
`patent owner to identify structure in its Patent Owner Response)). As detailed
`
`herein, the prior art teaches software, hardware, or a combination thereof
`
`performing the claimed function. Therefore, any indefiniteness determination
`
`would not prevent the Board from deciding that these claims are obvious.
`
`V. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for Inter Partes review of claims 1, 3, 5-11, 13-18, and 20
`
`of the ’646 Patent, and cancel those claims as invalid.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Joseph
`
`Paradiso, the concepts described and claimed in the ’646 Patent were not new. This
`
`Petition explains where each element of claims 1, 3, 5-11, 13-18, and 20 is found
`
`in the prior art and why the claims would have been obvious to a person of
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`ordinary skill in the art (“POSITA”) before the earliest claimed priority date of the
`
`’646 Patent.
`
`VI.
`
`IDENTIFICATION OF CHALLENGES
`A. Challenged Claims
`Claims 1, 3, 5-11, 13-18, and 20 of the ’646 Patent are challenged in this
`
`Petition.
`
`B.
`Statutory Grounds for Challenges
`Claims
`Ground
`Challenge
`Challenge #1 1, 3, 5-7, 9-
`35 U.S.C. § 103 over U.S. Patent No. 7,409,291
`11, 13-15,
`to Pasolini et al. (“Pasolini”) in view of Using
`17, and 20
`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”), and Using
`Gravity to Estimate Accelerometer Orientation,
`David Mizell, Proceedings of the Seventh IEEE
`International Symposium on Wearable
`Computers (ISWC ’03) 2003. (“Mizell”)
`35 U.S.C. § 103 over Pasolini, Goldman,
`McMahan, Mizell, and U.S. Patent No. 7,028,220
`to Park et al. (“Park”)
`
`Challenge #2 8, 16, and
`18
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`
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`Pasolini was filed on February 26, 2004, issued on August 5, 2008, and is
`
`prior art under at least pre-AIA 35 U.S.C. 102(e). Goldman was publicly available
`
`as of July 20, 2007, and is thus prior art under at least pre-AIA 35 U.S.C. 102(b).
`
`Ex. 1008 is a declaration by Chris Butler of the Internet Archive showing
`
`that Goldman was publically available no later than July 20, 2007. (See Ex. 1008,
`
`¶¶2-6) (See also Ex. 1012, ¶¶23-26, further demonstrating first public availability
`
`no later than July 20, 2007). McMahan was filed March 27, 2007, and published on
`
`March 27, 2008. McMahan is thus prior art under at least pre-AIA 35 U.S.C.
`
`102(e). Mizell was first publically available no later than March 2006 and is thus
`
`prior art under at least pre-AIA 35 U.S.C.