`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`LG ELECTRONICS, INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioners
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`———————
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,712,723
`
`
`
`
`
`
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,712,723
`Case IPR No.: IPR2018-01458
`
`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 1
`
`A.
`
`Real Party-in-Interest ........................................................................... 1
`
`B.
`
`Related Matters ..................................................................................... 2
`
`C.
`
`Lead and Back-up Counsel and Service Information .......................... 3
`
`III. GROUNDS FOR STANDING ........................................................................ 4
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 4
`
`V. OVERVIEW OF THE ’723 PATENT ............................................................ 4
`
`A.
`
`Summary of the Patent ......................................................................... 4
`
`B.
`
`Prosecution History .............................................................................. 7
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 9
`
`VII. CLAIM CONSTRUCTION ............................................................................ 9
`
`A.
`
`“dominant axis” .................................................................................. 10
`
`B.
`
`“cadence window” .............................................................................. 11
`
`C.
`
`D.
`
`“a dominant axis logic to determine an orientation of a device with
`respect to gravity, to assign a dominant axis, and to update the
`dominant axis when the orientation of the device changes” .............. 11
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis by counting the
`periodic human motions when accelerations showing a motion
`cycle that meets motion criteria is detected within a cadence
`window” ............................................................................................. 13
`
`E.
`
`“a cadence logic to update the cadence window as actual cadence
`changes” ............................................................................................. 14
`
`ii
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`F.
`
`Note Regarding the Claim Terms directed to “Logic” ...................... 15
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................16
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....17
`
`A.
`
`Challenged Claims ............................................................................. 17
`
`B.
`
`Statutory Grounds for Challenge........................................................ 17
`
`C.
`
`State of the Art at the Time of the ’723 Patent .................................. 17
`
`D.
`
`Summary of Fabio .............................................................................. 19
`
`E.
`
`F.
`
`Summary of Pasolini .......................................................................... 22
`
`Reasons to Combine Fabio and Pasolini ............................................ 25
`
`G. Detailed Analysis ............................................................................... 28
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 1 ..................................................................................... 28
`
`Claim 2 ..................................................................................... 39
`
`Claim 3 ..................................................................................... 41
`
`Claim 5 ..................................................................................... 43
`
`Claim 6 ..................................................................................... 48
`
`Claim 7 ..................................................................................... 50
`
`Claim 10 ................................................................................... 51
`
`Claim 11 ................................................................................... 58
`
`Claim 12 ................................................................................... 58
`
`10. Claim 13 ................................................................................... 61
`
`11. Claim 14 ................................................................................... 63
`
`iii
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`12. Claim 15 ................................................................................... 65
`
`13. Claim 16 ................................................................................... 66
`
`14. Claim 17 ................................................................................... 66
`
`15. Claim 18 ................................................................................... 67
`
`X.
`
`CONCLUSION ..............................................................................................69
`
`CERTIFICATE OF WORD COUNT ......................................................................70
`
`CERTIFICATE OF SERVICE ................................................................................71
`
`
`
`
`
`iv
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`PETITIONERS’ EXHIBIT LIST
`
`July 27, 2018
`
`Ex.1001
`
`U.S. Patent No. 8,712,723
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 8,712,723
`
`Ex.1003
`
`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
`
`Ex.1004
`
`Curriculum Vitae of Joe Paradiso
`
`Ex.1005
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
`
`Ex.1006
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
`
`v
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 8,712,723 (“the ’723 Patent,” Ex.1001) is generally directed
`
`to a device for “monitoring human activity, and more particularly to counting
`
`periodic human motions.” Ex.1001, 1:13-15. The claims of the ’723 Patent are
`
`directed to two separate step detection concepts. The first concept is a known
`
`technique for determining which of three axes in a tri-axial accelerometer is a
`
`“dominant axis with respect to gravity.” The second concept is a known technique
`
`for updating a “cadence window” corresponding to a user’s steps. As shown
`
`below, these concepts were known in the prior art before the priority date of the
`
`’723 Patent.
`
`Accordingly, this Petition and the cited evidence demonstrates that claims 1-
`
`3, 5-7, and 10-18 of the ’723 Patent are unpatentable under (pre-AIA) 35 U.S.C. §
`
`103(a). LG Electronics, Inc. (“LG”), as well as, HTC Corporation and HTC
`
`America, Inc. (together “HTC”) (collectively “Petitioners”) therefore respectfully
`
`request that these claims be held unpatentable and cancelled.
`
`This Petition is substantively the same as IPR2018-00389, which was
`
`instituted on June 27, 2018, and is being filed concurrently with a motion for
`
`joinder with respect to that proceeding.
`
`II. MANDATORY NOTICES
`
`A. Real Party-in-Interest
`
`1
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm USA, Inc., as well as HTC Corporation and HTC America, Inc., are
`
`the real parties-in-interest to this inter partes review petition.
`
`B. Related Matters
`
`As of the filing date of this Petition and to the best knowledge of the
`
`Petitioners, the ’723 Patent has been asserted in the following cases:
`
`Heading
`
`Number
`
`Court
`
`Filed
`
`Uniloc USA, Inc. v. Huawei
`Devices USA, Inc.
`
`Uniloc USA, Inc. v. HTC
`America, Inc.
`
`Uniloc USA, Inc. v. LG
`Electronics USA, Inc.
`
`Uniloc USA, Inc. v. LG
`Electronics USA, Inc.
`
`2-17-cv-
`00737
`
`2-17-cv-
`01629
`
`4-12-cv-
`00832
`
`4:18-cv-
`02918
`
`Uniloc USA, Inc. v. Samsung
`Electronics America, Inc.
`
`2-17-cv-
`00650
`
`Uniloc USA, Inc. v. Apple
`Inc.
`
`Uniloc USA, Inc. v. Apple
`Inc.
`
`2-17-cv-
`00522
`
`4:18-cv-
`00364
`
`E.D.
`Tex.
`
`W.D.
`Wash.
`
`N.D.
`Tex.
`
`N.D.
`Cal.
`
`E.D.
`Tex.
`
`E.D.
`Tex.
`
`N.D.
`Cal.
`
`Nov. 9,
`2017
`
`Nov. 1,
`2017
`
`Oct. 13,
`2017
`
`May 17,
`2018
`
`Sep. 15,
`2017
`
`Jun. 30,
`2017
`
`Jan. 17,
`2018
`
`Additionally, the ’723 Patent is the subject of two pending requests for inter
`
`partes review: IPR2018-00389 filed by Apple Inc. on December 22, 2017
`
`(instituted on June 27, 2018), and IPR2018-01027 filed by Apple Inc. on May 4,
`
`2018. The real parties-in-interest herein are not parties to the above listed petitions
`
`2
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`and were not involved in the preparation of those petitions.
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Anand K. Sharma
`901 New York Avenue, NW
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Washington, DC 20001
`
`Back-Up Counsel
`Minjae Kang
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`Joshua L. Goldberg
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`Cory C. Bell
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`2 Seaport Ln
`Boston, MA 02210
`
`Bradford C. Schulz
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`Todd E. Landis
`Vinson & Elkins LLP
`2001 Ross Avenue, Suite 37000
`Dallas, TX 75201
`
`Phone: (202) 408-4446
`Fax: (202) 408-4400
`anand.sharma@finnegan.com
`USPTO Reg. No. 43,916
`
`
`
`Phone: (571) 203-2318
`Fax: (202) 408-4400
`minjae.kang@finnegan.com
`USPTO Reg. No. 67,054
`
`
`Phone: (202) 408-6092
`Fax: (202) 408-4400
`joshua.goldberg@finnegan.com
`USPTO Reg. No. 59,369
`
`
`Phone: (617) 646-1641
`Fax: (202) 408-4400
`cory.bell@finnegan.com
`USPTO Reg. No. 75,096
`
`
`Phone: (571) 203-2739
`Fax: (202) 408-4400
`bradford.schulz@finnegan.com
`USPTO Reg. No. 75,006
`
`
`Phone: (214) 220-7700
`Fax: (214) 220-7716
`tlandis@velaw.com
`USPTO Reg. No. 44,200
`
`3
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`
`Mario A. Apreotesi
`Vinson & Elkins LLP
`2801 Via Fortuna, Suite 100
`Austin, TX 78746
`
`
`
`Phone: (512) 542-8433
`Fax: (512) 542-8612
`mapreotesi@velaw.com
`USPTO Reg. No. 65,293
`
`Please address all correspondence to lead and back-up counsel. Petitioners
`
`consent to electronic service via email directed to the above addresses and
`
`HTCCounselUniloc@velaw.com.
`
`III. GROUNDS FOR STANDING
`
`Petitioners certify that the ’723 patent is available for inter partes review
`
`and that the Petitioners are not barred or otherwise estopped from requesting inter
`
`partes review on the grounds identified herein.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioners’ citation to Ex.1002 uses the page numbers added for compliance
`
`with 37 C.F.R. § 42.63(d)(2)(ii). Petitioners’ citations to the remaining exhibits use
`
`the page numbers in their original publication. All bold underline emphasis in any
`
`quoted material has been added.
`
`V. OVERVIEW OF THE ’723 PATENT
`
`A.
`
`Summary of the Patent
`
`The ’723 Patent is directed to “a method of monitoring human activity, and
`
`more particularly, to counting periodic human motions such as steps.” Ex.1001,
`
`1:13-15. The monitoring of human activity is performed using “inertial sensors
`
`4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`(e.g., accelerometers)” found in commercial electronic devices such as “cellular
`
`phones, portable music players, pedometers, game controllers, and portable
`
`computers.” Ex.1001, 1:20-26. As noted in the background of the ’723 Patent,
`
`“[s]tep counting devices are used to monitor an individual's daily activity by
`
`keeping track of the number of steps that he or she takes.” Ex.1001, 1:27-29. The
`
`background section also identifies the known problem that “[s]tep counting devices
`
`are often confused by motion noise [that] … causes false steps to be measured and
`
`actual steps to be missed in conventional step counting devices.” Ex.1001, 1:35-39.
`
`The claims of the ’723 Patent are directed to two separate concepts that are
`
`alleged improvements over conventional step counting devices. The first concept
`
`relates to “assigning a dominant axis with respect to gravity.” See, e.g., Ex.1001,
`
`claim 1. In the ’723 Patent, the dominant axis is “the axis most aligned with
`
`gravity,” which “may change over time (e.g. as the electronic device is rotated).”
`
`Ex.1001, 6:20-25. Figure 8 of the ’723 Patent, reproduced below in part, provides a
`
`method for assigning a dominant axis based on taking measurements of
`
`acceleration data:
`
`5
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`
`
`Ex.1001, Fig. 8, in part.
`
`The second concept relates to updating a “cadence window” corresponding
`
`to the user’s step cadence. See, e.g., Ex.1001, claim 1. In the ’723 Patent, “[a]
`
`cadence window is a window of time since a last step was counted that is looked at
`
`to detect a new step.” Ex.1001, 4:5-7. Figure 6, reproduced below, shows an
`
`example method for setting a cadence window, including recognizing a step in the
`
`cadence window then adding one to the step count:
`
`6
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`
`
`Ex.1001, Fig. 6.
`
`The “dominant axis” and “cadence window” concepts claimed in the ’723
`
`Patent were not novel. As shown in this Petition, (1) U.S. Patent No. 7,698,097 to
`
`Fabio Pasolini et al. (“Fabio”) describes a validation interval (cadence window)
`
`that is a window of time since a last step was counted that is looked at to detect a
`
`new step and (2) both Fabio and U.S. Patent No. 7,463,997 to Fabio Pasolini et al.
`
`(“Pasolini”) describe detecting steps using a dominant axis of a tri-axial
`
`accelerometer, or, in other words, using the axis most influenced by gravity.
`
`B.
`
`Prosecution History
`
`7
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`The ’723 Patent issued on April 29, 2014 from U.S Patent Application No.
`
`13/018,321 filed on January 31, 2011. The ’723 Patent is a continuation of U.S.
`
`Application No. 12/694,135, filed on January 26, 2010, which is a continuation of
`
`U.S. Application No. 11/644,455, filed on December 22, 2006.
`
`In a first Office action, the Examiner rejected claims 1, 2, 11, 12, 14, and 16
`
`under 35 U.S.C. 102 (e) as anticipated by U.S. Patent Application Publication No.
`
`2007/0143068 to Fabio Pasolini et al. Ex.1002, p.200. This application later issued
`
`as U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”), and is cited in
`
`this Petition as a secondary reference (Ex.1005).
`
`In the first Office action, the Examiner states that Pasolini disclosed
`
`“assigning a dominant axis based on an orientation of the inertial sensor,”
`
`“detecting a change in the orientation of the inertial sensor and updating the
`
`dominant axis based on the change,” and “counting periodic human motions by
`
`monitoring accelerations relative to the dominant axis based upon acceleration
`
`measurements along only the dominant axis to count steps.” Ex.1002, p.201.
`
`In its response to the first Office action, the Applicant amended the claims to
`
`further recite “by counting the periodic human motions when accelerations
`
`showing a motion cycle that meets motion criteria within a cadence window” and
`
`“updating the cadence window as actual cadence changes.” Ex.1002, pp.138-41.
`
`The Applicant argued in its response that “Pasolini does not teach or suggest the
`
`8
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`use of cadence windows, much less the comparison of a motion cycle to a cadence
`
`window which is adjusted as the user’s motion is detected.” Ex.1002, p.201.
`
`In Notice of Allowance, the Examiner quoted the amended claims and
`
`indicated that the amended claims were allowable over Pasolini (among others).
`
`Ex.1002, pp.34-36. However, U.S. Patent No. 7,698,097 to Fabio Pasolini et al.
`
`(“Fabio”), which is the primary prior art reference relied on in this Petition, does
`
`not appear to have been cited or otherwise considered by the Examiner during
`
`prosecution.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re
`
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, a person of ordinary skill in
`
`the art (“POSITA”) would include someone who had, at the priority date of the
`
`’723 Patent (i) a Bachelor’s degree in Electrical Engineering, Computer
`
`Engineering, and/or Computer Science, or equivalent training, and (ii)
`
`approximately two years of experience working in hardware and/or software
`
`design and development related to MEMS (micro-electro-mechanical) devices and
`
`body motion sensing systems. Ex.1003, p.8. Lack of work experience can be
`
`remedied by additional education, and vice versa. Ex.1003, p.8.
`
`VII. CLAIM CONSTRUCTION
`
`9
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`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. Cuozzo Speed Techs., LLC v. Lee,
`
`579 U.S. ___, slip op. at 17 (2016); 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). For terms not addressed below, Petitioners submit that no specific
`
`construction is necessary for this proceeding.1
`
`A.
`
`“dominant axis”
`
`This term appears in at least claims 1, 2, 10, 11, 14, and 15. In the
`
`specification of the ’723 Patent, the dominant axis is determined based on the
`
`accelerometer’s alignment with gravity. Ex.1003, pp.17-18. For example, the
`
`specification states that “[i]n one embodiment, the dominant axis is assigned after
`
`identifying a gravitational influence. The gravitational influence may be identified
`
`
`1 Petitioners do not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`10
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`by calculating total acceleration based upon the acceleration on each axis.”
`
`Ex.1001, 14:37-41. The specification also states that “[i]n one embodiment, once
`
`the orientation is determined, a dominant axis is assigned based upon the
`
`orientation. Determining an orientation of the electronic device 100 may include
`
`identifying a gravitational influence.” Ex.1001, 6:20-23. In other words, the
`
`dominant axis in the specification is “the axis most influenced by gravity, which
`
`may change over time (e.g., as the electronic device is rotated).” Ex.1001, 6:24-26.
`
`Thus, for the purposes of this proceeding, the term “dominant axis” as used
`
`in the claims includes “the axis most influenced by gravity.” Ex.1003, p.18.
`
`B.
`
`“cadence window”
`
`This term appears in at least claims 1, 5, 6, 10, 12, 14, 16 and 17. The
`
`specification of the ’723 Patent specifically defines this term as “a window of time
`
`since a last step was counted that is looked at to detect a new step.” Ex.1001, 4:4-5.
`
`Thus, for the purposes of this proceeding, the term “cadence window” as
`
`used in the claims includes “a window of time since a last step was counted that is
`
`looked at to detect a new step.” Ex.1003, pp.18-19.
`
`C.
`
`“a dominant axis logic to determine an orientation of a device
`with respect to gravity, to assign a dominant axis, and to update
`the dominant axis when the orientation of the device changes”
`
`This term appears in at least claim 10. The specification of the ’723 Patent
`
`describes that “dominant axis logic 127 is used to determine an orientation of the
`
`11
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`electronic device 100 and/or an inertial sensor within the electronics device 100.”
`
`Ex.1001, 3:13-17. The specification further describes that “[a]t processing block
`
`812, in one embodiment the inertial sensor is oriented by assigning a dominant
`
`axis. Assigning a dominant axis may include calculating rolling averages of
`
`acceleration and assigning the dominant axis based on the rolling averages of
`
`acceleration.” Ex.1001, 12:45-49. The specification further describes that the
`
`present invention may be performed by hardware, software, or a combination of
`
`both. See Ex.1001, 14:53-59.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to
`
`determine an orientation of a device, to assign a dominant axis, and to update the
`
`dominant axis as the orientation of the device changes.” Ex.1003, p.19.
`
`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: to determine an orientation of a device with respect to
`
`gravity, to assign a dominant axis, and to update the dominant axis
`
`when the orientation of the device changes;
`
`12
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions described with respect to block 812. Ex.1001, 3:13-17, 12:45-
`
`49, 14:53-59. Ex.1003, p.20.
`
`D.
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis by counting the
`periodic human motions when accelerations showing a motion
`cycle that meets motion criteria is detected within a cadence
`window”
`
`This term appears in at least claim 10. The specification of the ’723 Patent
`
`describes “step counting logic 130” that is used “to determine if a step has
`
`occurred” and indicate if “a step may be counted.” Ex.1001, 6:45-50, 7:7-10. In
`
`one example, at block 615 “measurement data is checked to determine whether an
`
`additional step is recognized.” Ex.1001, 11:19-21. At block 620, “[i]f an additional
`
`step is recognized, then it is added to the final or actual step count.” Ex.1001,
`
`11:21-22. The specification further describes that the present invention may be
`
`performed by hardware, software, or a combination of both. See Ex.1001, 14:53-
`
`59.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to count
`
`periodic human motions by monitoring accelerations relative to the dominant axis
`
`by counting the periodic human motions when accelerations showing a motion
`
`13
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`cycle that meets motion criteria is detected within a cadence window.” Ex.1003,
`
`p.21.
`
`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:
`
`to count periodic human motions by monitoring
`
`accelerations relative to the dominant axis by counting the periodic
`
`human motions when accelerations showing a motion cycle that meets
`
`motion criteria is detected within a cadence window;
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions described with respect to blocks 615 and 620. Ex.1001, 6:45-50, 7:7-10,
`
`11:19-22, 14:53-59; Ex.1003, p.21.
`
`E.
`
`“a cadence logic to update the cadence window as actual cadence
`changes”
`
`This term appears in at least claim 10. The specification of the ’723 Patent
`
`describes “cadence logic 132 [that] detects a period and/or cadence of a motion
`
`cycle. The period and/or cadence of a motion cycle may be based upon user
`
`activity (e.g. rollerblading, biking, running, walking, etc.).” Ex.1001, 3:21-25. In
`
`one example, “a new cadence window is set (block 574) based on a stepping
`
`cadence of the M steps measured.” Ex.1001, 10:61-62. The specification further
`
`14
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`describes that the present invention may be performed by hardware, software, or a
`
`combination of both. See Ex.1001, 14:53-59.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to update
`
`the cadence window as actual cadence changes.” Ex.1003, p.22.
`
`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: to update the cadence window as actual cadence changes;
`
`Structure: software, hardware, or combination thereof to perform the
`
`actions described with respect to block 574. Ex.1001, 3:21-25, 10:61-
`
`62, 14:53-59; Ex.1003, p.22.
`
`F. Note Regarding the Claim Terms directed to “Logic”
`
`Petitioners may assert in this same district court litigation that, under the
`
`narrower Phillips standard, the claim limitations directed to “logic” invoke § 112
`
`¶6 but fail to meet the definiteness requirement of § 112 ¶2. As of the filing of this
`
`petition, the district court has not yet issued a claim construction order.
`
`Petitioners recognize 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
`
`15
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`encompasses software, hardware, or a combination thereof for performing the
`
`recited function, as explained by the ’723 Patent.
`
`Additionally, 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 July 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 in light of
`
`the provided prior art.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioners ask that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-3, 5-7, and 10-18 of the
`
`’723 Patent, and cancel those claims as invalid.
`
`As explained below and in the declaration of Petitioners’ expert, Dr. Joe
`
`16
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Paradiso, the concepts described and claimed in the ’723 Patent were not new. This
`
`Petition explains where each element of claims 1-3, 5-7, and 10-18 is found in the
`
`prior art and why the claims would have been obvious to a person of ordinary skill
`
`in the art (“POSITA”) before the earliest claimed priority date of the ’723 Patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
`
`Claims 1-3, 5-7, and 10-18 of the ’723 Patent are challenged in this petition.
`
`B.
`
`Statutory Grounds for Challenge
`
`Claims 1-3, 5-7, and 10-18 of the ’723 Patent obvious under 35 U.S.C §
`
`103(a) over U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”) in view of
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”). Both Fabio and
`
`Pasolini were filed on October 2, 2006, which is before the ’723 Patent’s earliest
`
`claimed effective filing date of December 22, 2006. Accordingly, Fabio and
`
`Pasolini qualify as prior art under at least pre-AIA 35 U.S.C. § 102(e).
`
`C.
`
`State of the Art at the Time of the ’723 Patent
`
`Before the earliest claimed priority date of December 22, 2006, others were
`
`actively working on pedometer devices that monitored a user’s steps. One such
`
`developer was Fabio Pasolini, who designed motion detection systems using
`
`MEMS that could be implemented in phones or other portable electronic devices.
`
`See Ex.1006, 2:33-36; Ex.1005, 8:31-34. The pedometers devices that Mr. Pasolini
`
`17
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`designed use an inertial sensor, such an accelerometer, to count steps of the user
`
`while the user is carrying the device. Ex.1006, 1:10-11, 2:49-64; Ex.1005, 3:30-35.
`
`To detect and identify the user’s steps, Mr. Pasolini’s devices analyze
`
`positive and negative acceleration peaks provided by the accelerometer. Ex.1006,
`
`4:12-21; Ex.1005, 3:35-41. In this way, Mr. Pasolini’s devices provide features
`
`that help avoid “false positives” with respect to the step recognition. Ex.1006,
`
`7:16-19; Ex.1005, 1:61-2:3. These step-recognition features are described in two of
`
`Mr. Pasolini’s issued patents—U.S. Patent No. 7,698,097 (“Fabio”) and U.S.
`
`Patent No. 7,463,997 (“Pasolini”)—that were both filed on October 2, 2006 and
`
`share the same inventive entity (Fabio Pasolini and Ivo Binda).
`
`Both of Mr. Pasolini’s patents describe a number of features in common
`
`with the pedometer devices. These features include, for example, an accelerometer
`
`with multiple axes of detection, so that step recognition is advantageously
`
`performed using the accelerations measured by the axis that is most aligned with
`
`gravity. Ex.1006, 8:20-32; Ex.1005, 8:15-24.
`
`The references differ in that the Pasolini reference provides additional detail
`
`regarding step detection using linear and multi-axes accelerometers, including
`
`describing that the pedometer updates the vertical axis with each acquisition of an
`
`acceleration sample to take into account variations of the orientation of the
`
`pedometer device during use. Ex.1005, 8:20-24. The Fabio reference, on the other
`
`18
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`hand, describes applying a regularity condition to the detected step data so that a
`
`step is counted when it occurs within a “validation interval,” which is identified as
`
`a window of time since a previous step was counted. Ex.1006, 4:35-39, 7:16-19,
`
`FIG. 6.
`
`As described in more detail below, the disclosures provided in the Fabio and
`
`Pasolini references render obvious each and every element of the challenged
`
`claims.
`
`D.
`
`Summary of Fabio
`
`Fabio is directed to “controlling a pedometer based on the use of inertial
`
`sensors.” Ex.1006, 1:10-11. An example of Fabio’s pedometer device 1 as
`
`“integrated within a portable electronic device, such as a cell phone 2” (Ex.1006,
`
`2:33-36) is reproduced below:
`
`
`
`19
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,712,723
`
`Ex.1006, Fig. 1.
`
`
`
`Fabio describes that its pedometer 1 includes an “inertial sensor 3 [that]
`
`supplies at output an acceleration signal AZ, which is correlated to the accelerations
`
`undergone by the inertial sensor 3 itself along the detection axis Z.” Ex.1006, 2:56-
`
`59. Fabio’s pedometer performs step recognition by sampling the acceleration
`
`signal AZ to identify characteristics including “a positive peak, higher than a
`
`positive acceleration threshold AZP, followed by a negative peak, smaller than a
`
`negative acceleration threshold AZN.” Ex.1006, 4:12-21.
`
`Fa