UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC., HTC CORPORATION, AND HTC AMERICA,
`INC.
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`Petitioners
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`v.
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`UNILOC LUXEMBOURG S. A.1
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`Patent Owner
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`IPR2018-01458
`PATENT 8,712,723
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
`
`
`LG ELECTRONICS, INC., HTC CORPORATION, AND HTC AMERICA,
`INC.
`
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG S. A.1
`
`Patent Owner
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`IPR2018-01458
`PATENT 8,712,723
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` 1
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` The owner of this patent is Uniloc 2017 LLC.
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`IPR2018-01458
`U.S. Patent 8,712,723
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`ii
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`IPR2018-01458
`U.S. Patent 8,712,723
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`Table of Contents
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`
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`I.
`II.
`III.
`IV.
`V.
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`INTRODUCTION .................................................................................... 1
`THE ’723 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 4
`A.
`Claim Construction ......................................................................... 4
`1.
`“dominant axis” .................................................................... 5
`2.
`“cadence window” ................................................................ 9
`3.
`“logic” terms ......................................................................... 9
`The Pasolini Reference Was Already Considered by the
`USPTO .......................................................................................... 14
`The Applied References Fail to Disclose a “Cadence
`Window” ....................................................................................... 15
`The Applied References Fail to Disclose Detected
`Motions “Within a Cadence Windows” ........................................ 19
`The Applied References Fail to Disclose an Update to
`the Cadence Window as “Actual Cadence” or
`“Cadence” Changes ...................................................................... 20
`The Applied References Fail to “Assigning a Dominant
`axis with Respect to Gravity Based on an Orientation of
`the Inertial Sensor” ....................................................................... 20
`The Applied References Fail to Disclose “Detecting a
`Change in the Orientation of the Inertial Sensor and
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`iii
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`IPR2018-01458
`U.S. Patent 8,712,723
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`H.
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`Updating the Dominant Axis Based on the Change” ................... 27
`The Applied Reference Fail to Disclose Challenged
`Dependent Claims 2-3, 5-7, 11-13, and 15-18. ............................ 30
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 30
`CONCLUSION ....................................................................................... 31
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`VI.
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`VII.
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`
`
`
`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom (previously filed)
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`iv
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`IPR2018-01458
`U.S. Patent 8,712,723
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC ( “Uniloc” or “Patent Owner”) submits this Response to
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`Petition IPR2018-014582 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 8,712,723 (“the ’723 patent” or “EX1001”) filed by LG
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`Electronics, Inc., HTC Corporation, and HTC America, Inc. (“Petitioners”). The
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`instant Petition is procedurally and substantively defective for at least the reasons
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`set forth herein.
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`II. THE ’723 PATENT
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`The ’723 patent is titled “Human activity monitoring device.” The ʼ723 patent
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`issued April 29, 2014, from U.S. Patent Application No. 13/018,321 filed January
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`31, 2011.
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`The inventors of the ’723 patent observed that, at the time, step counting
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`devices that utilize an inertial sensor to measure motion to detect steps generally
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`required the user to first position the device in a limited set of orientations. In some
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`devices, the required orientations are dictated to the user by the device. In other
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`devices, the beginning orientation is not critical, so long as this orientation can be
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` 2
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` The instant Petition and Petitioners seek joinder to IPR2018-00389. See Paper 10.
`Furthermore, as Petitioners state, the instant Petition is a “carbon copy” of the
`original petition in IPR2018-00389. Id., at 1.
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`1
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`U.S. Patent 8,712,723
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`maintained. EX1001, 1:29-34. Further, the inventors observed that devices at the
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`time were often confused by motion noise experienced by the device throughout a
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`user's daily routine. The noise would cause false steps to be measured and actual
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`steps to be missed in conventional step counting devices. Conventional step counting
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`devices also failed to accurately measure steps for individuals who walk at a slow
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`pace. Id., 1:35-40. Accordingly, the inventors introduced determining a rhythmic
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`cadence and a correspondence cadence window concept that could anticipate when
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`an expected periodic user activity is expected to occur. Id., 3:46-4:4.
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`According to the invention of the ’723 Patent, a device to monitor human
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`activity using an inertial sensor assigns a dominant axis after determining the
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`orientation of an inertial sensor. The orientation of the inertial sensor is continuously
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`determined, and the dominant axis is updated as the orientation of the inertial sensor
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`changes. Id., 2:14-19. Periodic user activity in a cadence window is counted and the
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`cadence is updated. Id., 3:46-4:4.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 8,712,723 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
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`2
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`
`
`Uniloc USA, Inc. et al. v.
`Apple Inc.
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Apple Inc. v. Uniloc 2017 LLC
`et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple Inc. v. Uniloc
`Luxembourg SA et al
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`Samsung Electronics America,
`Inc. et al v. Uniloc 2017 LLC
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`IPR2018-01458
`U.S. Patent 8,712,723
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`TXED
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`June 30, 2017
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`2-17-cv-00522
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`2-17-cv-00650
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`TXED
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`Sept. 15,
`2017
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`4-17-cv-00832
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`TXND Oct. 13, 2017
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`2-17-cv-01629 WAWD Nov. 1, 2017
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`2-17-cv-00737
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`TXED Nov. 9, 2017
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`IPR2018-00389
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`PTAB Dec. 22, 2017
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`IPR2018-01027
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`PTAB
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`5/4/2018
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`4-18-cv-02918
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`CAND
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`5/17/2018
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`IPR2018-01757
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`PTAB
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`9/18/2018
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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` The Petition alleges that a person of ordinary skill in the art (“POSITA”)
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`would include someone who had, at the priority date of the ‘723 Patent (i) a
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`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
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`Computer Science, or equivalent training, and (ii) approximately two years of
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`experience working in hardware and/or software design and development related to
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`MEMS (micro-electro-mechanical) devices and body motion sensing systems.
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`Mr. Easttom disagrees with the definition of POSITA offered in the Petition,
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`3
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`U.S. Patent 8,712,723
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`specifically, instead of requiring two years of experience in working in “hardware
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`and/or software design and development related to MEMS (micro-electro-
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`mechanical) devices and body motion sensing systems”, Mr. Easttom specifies two
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`years of experience “related to accelerometers or similar devices.” EX2001, ¶ 13.
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`Mr. Easttom, however, recognizes that the difference is inconsequential to the
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`dispute here. Regardless of which definition the Board adopts, Mr. Easttom is
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`sufficiently qualified in the pertinent art. Id., ¶ 3.
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioners have the burden of proof to establish entitlement to relief. 37
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`C.F.R. §42.108(c) (“review shall not be instituted for a ground of unpatentability
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`unless . . . there is a reasonable likelihood that at least one of the claims
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`challenged . . . is unpatentable”). The Petition fails to meet this burden.
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`The Petition challenges claims 1-3, 5-7, 10-18 under 35 U.S.C. § 103 over
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`4
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`Fabio3 and Pasolini.4
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`A. Claim Construction
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` 3
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` EX1006, U.S. Patent No. 7,698,097
`4 EX1005, U.S. Patent No. 7,463,997
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`As explained below, Petitioners base their patentability challenges on
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`erroneous constructions, which provides an independent and fully-dispositive basis
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`to deny the Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc.,
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`IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015),
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`aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed.
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`Cir. 2016) (finding Petitioner’s claim construction unreasonable in light of the
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`specification, and therefore, denying Petition as tainted by reliance on an incorrect
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`claim construction).
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`1.
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`“dominant axis”
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`Petitioners’ proposed construction violates the well-established rule against
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`reading limitations from the specification into the claim language. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
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`teachings from the specification, Petitioners seek to limit the claim term “dominant
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`axis” to mean “the axis most influenced by gravity”. Pet. 9. However, the teachings
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`of the specification cited by Petitioners clearly state that they are only example
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`embodiments and are not meant to be limiting. See e.g., Pet. 10-11 quoting EX1001,
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`14:37-41 (“[i]n one embodiment…”) (emphasis added). The specification
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`specifically anticipates that multiple different types of activities may avail from the
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`disclosure, some of which will not use gravity as the dominant axis. FIGURE 2 is
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`5
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`but one example of selecting one of three axis measurements that will be the
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`“dominant axis” for determining a periodic movement and corresponding cadence.
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`Each axis has the effect of gravity; however, one is dominant due to the particular
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`activity encountered.
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`Petitioners expressly acknowledge that the ’723 Patent specifically provides
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`for different ways to determine the “dominant axis” in other embodiments. For
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`example, in one embodiment, the “dominant axis” is determined by orientation of
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`the device. See EX1001, 6:15-29. And here, while the orientation “may include
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`identifying a gravitational influence…” (EX1001, 6:21-23) (emphasis added), by
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`definition, that means the “dominant axis” is not limited to just gravitational
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`influence.
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`As a further example, in the same section, the specification also states that
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`“[t]herefore, a new dominant axis may be assigned when the orientation of the
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`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
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`electronic device 100 changes.” Id., 6:26-29 (emphasis added). Thus, the
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`specification recites yet another example of a different way to determine the
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`“dominant axis”. Another non-limiting example from the specification states: “[i]n
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`one embodiment, the dominant axis corresponds to a virtual axis that is a
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`component of a virtual coordinate system.” Id., 6:35-37 (emphasis added).
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`Petitioners’ proposed construction would impermissibly exclude preferred
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`6
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`embodiments, and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
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`embodiment is rarely, if ever, correct and would require highly persuasive
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`evidentiary support).
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`In IPR2018-00389, the Institution Decision further supports rejecting
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`Petitioner’s proposed construction. While the Institution Decision in IPR2018-
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`00389 states that the specification purportedly “supports Petitioner’s proposal”
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`(IPR2018-00389, Paper 7 at 9), in fact the example cited by the Institution Decision
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`in
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`IPR2018-00389 supports rejecting Petitioners’ proposed construction.
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`Specifically, the Institution Decision in IPR2018-00389 cites to the specification for
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`stating: “[i]n alternative embodiments, the dominant axis does not correspond to
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`one of the actual axes of the inertial sensor(s) in a current orientation, but rather to
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`an axis that is defined as approximately aligned to gravity”. IPR2018-00389, Paper
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`7 at 9-10 citing EX1001, 6:32-35 (emphasis added). The above recitation merely
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`confirms Petitioners’ proposed construction is one of numerous alternative
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`embodiments, and therefore it confirms that Petitioners’ proposed construction
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`would impermissibly exclude preferred embodiments, and should be rejected.
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`Vitronics, 90 F.3d at 1584–85. The fact that the specification supports one of many
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`alternative embodiments is both unsurprising and insignificant.
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`Further, the Institution Decision in IPR2018-00389 points to the claim
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`7
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`language as allegedly “expressly requires the assignment of the dominant axis based
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`on gravity.” IPR2018-00389, Paper 7 at 10. There, however, the Board is mistaken.
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`The claim language merely requires that the dominant axis be assigned “with respect
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`to gravity”, for example, Claim 1 in relevant part recites: “assigning a dominant axis
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`with respect to gravity based on an orientation of the inertial sensor”. The claim
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`language does not “expressly require [] the assignment of the dominant axis based
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`on gravity” as the Institution Decision in IPR2018-00389 states, instead it merely
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`requires assigning a dominant axis and providing gravity as a point of reference.
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`According to the claim language, the dominant axis may be assigned with
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`respect to gravity in the sense that the dominant axis is orthogonal to gravity, or
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`opposing gravity, or in any configuration with respect to gravity. The claim
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`language certainly doesn’t require assigning the dominant axis to be aligned with
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`gravity, or be the axis “most influenced by gravity” as Petitioners propose.
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`Petitioners’ proposed construction would
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`impermissibly exclude preferred
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`embodiments, and should be rejected. Vitronics, 90 F.3d at 1584–85.
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`Petitioners have not and cannot establish prima facie obviousness through
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`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
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`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
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`Synopsys, 669 Fed. Appx. 569. In any event, Petitioners fail to present a case of
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`prima facie obviousness even under its own construction.
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`8
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`2.
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` “cadence window”
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`The Institution Decision in IPR2018-00389 indicates that this term does not
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`U.S. Patent 8,712,723
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`need construction. See IPR2018-00389, Paper 7 at 10. However, as discussed below
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`in the context of the claims, both “cadence” and “cadence window” as used in the
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`claims have particular meaning. That meaning is ignored by the Petitioners.
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`3.
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`“logic” terms
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`The Institution Decision in IPR2018-00389 determined that “the presumption
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`against application of § 112 ¶ 6 has not been overcome, and that no construction is
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`necessary”. IPR2018-00389, Paper 7 at 8. However, Patent Owner addresses each
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`of Petitioners’ proposed constructions for the “logic” terms below.
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`a)
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`“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”
`The recitation “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” is not governed by 35 U.S.C. § 112(6),
`and no construction of this phrase is necessary. The claim language provides its own
`definition, as evidenced by Petitioners’ proposed definition, which repeats the claim
`language verbatim with the exceptions that (1) Petitioner substitutes the phrase
`“dominant axis logic” with the phrase “hardware, software, or both” and (2)
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`9
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`Petitioner deletes, without explanation, the phrase “with respect to gravity”.
`Petitioners’ revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “dominant axis logic” by reciting that it “determine[s]
`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”.
`Petitioners’ proposed construction of the word “logic” itself leaves it unclear
`if Petitioners are seeking to exclude things like firmware or Field-Programmable
`Gate Arrays. And Petitioners’ proposed substitution of “dominant axis logic” with
`“hardware, software, or both” injects ambiguity by reducing claim language to
`virtually anything within the universe of hardware and/or software. Moreover, a
`POSITA would understand that such a determination cannot be done in software
`alone, as permitted by Petitioners’ unreasonably broad construction. Rather, the
`determination, at a minimum, must require some form of hardware, such as an
`accelerometer. See EX2001, ¶7.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),5 and Patent Owner contends that it is not. For at
`
`
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` 5
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 12.
`But Petitioners provide no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere do Petitioners contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioners’
`conjectures.
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`10
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`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioners’
`hypotheticals.
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`b)
`
`“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”
`The Petition takes the same erroneous approach to the term “counting logic”
`that it does with the “dominant axis logic” term addressed in the preceding section
`above. Accordingly, the proposed construction in the Petition should be rejected for
`analogous reasons, which are repeated below for completeness and clarity.
`Uniloc submits that “counting logic” is not governed by 35 U.S.C. § 112(6),
`and no construction is necessary. The claim language provides its own definition,
`as evidenced by Petitioners’ proposed definition, which repeats the claim language
`verbatim with the exception that Petitioner substitutes the term “counting logic”
`with the phrase “hardware, software, or both”.
`Petitioners’ revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “counting logic” by reciting that it “count[s] 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”.
`Petitioners’ proposed construction of the word “logic” itself leaves it unclear
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`11
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`if Petitioners are seeking to exclude things like firmware or Field-Programmable
`Gate Arrays. And Petitioners’ proposed substitution of “counting logic” with
`“hardware, software, or both” injects ambiguity by reducing claim language to
`virtually anything within the universe of hardware and/or software. Moreover, a
`POSITA would understand that such a determination cannot be done in software
`alone, as permitted by Petitioners’ unreasonably broad construction. Rather, the
`determination, at a minimum, must require some form of hardware, such as an
`accelerometer. See EX2001, ¶8.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),6 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioners’
`hypotheticals.
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`c)
`
`“a cadence logic to update the cadence window as
`actual cadence changes”
`The Petition takes the same erroneous approach to the term “cadence logic”
`that it does with the “dominant axis logic” and “counting logic” terms addressed
`above. Accordingly, the proposed construction in the Petition should be rejected for
`
`
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` 6
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet.14.
`But Petitioners provide no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere do Petitioners contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioners’
`conjectures.
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`12
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`analogous reasons, which are repeated below for completeness and clarity.
`Uniloc submits that “cadence logic” is not governed by 35 U.S.C. § 112(6),
`and no construction is necessary. The claim language provides its own definition,
`as evidenced by Petitioners’ proposed definition, which repeats the claim language
`verbatim with the exception that Petitioners’ substitute the term “cadence logic”
`with the phrase “hardware, software, or both”.
`Petitioners’ revisions serve no purpose, impermissibly omit limiting claim
`language, and only inject ambiguity. Here, the claim language itself provides
`definitional context for the “cadence logic” by reciting that it “update[s] the cadence
`window as actual cadence changes”.
`Petitioners’ proposed construction of the word “logic” itself leaves it unclear
`if Petitioners are seeking to exclude things like firmware or Field-Programmable
`Gate Arrays. And Petitioners’ proposed substitution of “cadence logic” with
`“hardware, software, or both” injects ambiguity by reducing claim language to
`virtually anything within the universe of hardware and/or software. Moreover, a
`POSITA would understand that such a determination cannot be done in software
`alone, as permitted by Petitioners’ unreasonably broad construction. Rather, the
`determination, at a minimum, must require some form of hardware to detect “actual
`cadence changes.”
`
`B.
`
`Finally, the Petition does not expressly contend that this claim
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`13
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`U.S. Patent 8,712,723
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`term is governed by 35 U.S.C. § 112(6),7 and Patent Owner
`contends that it is not. For at least those reasons, Patent Owner
`does not address 35 U.S.C. § 112(6) or Petitioners’
`hypotheticals.The Pasolini Reference Was Already Considered by
`the USPTO
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`In its petition, Petitioners are silent in regards to whether U.S. Patent No.
`
`7,463,997 to Fabio Pasolini et al. (“Pasolini”)(EX1005) was already considered by
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`the Patent Office. An inspection of the Prosecution History (EX1002) reveals that it
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`was, indeed, already considered. In particular, one of the applied references in the
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`prosecution history of the ‘723 Patent was U.S. Patent Application No.
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`2007/0143068 (Pasolini), which is the printed publication version of the now applied
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`
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` 7
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 15.
`But Petitioners provide no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere do Petitioners contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioners’
`conjectures.
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`14
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`
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`Pasolini reference (Ex. 1005).
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`IPR2018-01458
`U.S. Patent 8,712,723
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`EX1005 at 1. Stated more succinctly, the exact same disclosure was already
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`considered by the Patent Office in the prosecution of the ‘723 Patent.
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`The following was one the of final substantive arguments made before the
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`‘723 Patent was allowed:
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`EX1002 at pg. 142 of 454 (Emphasis Added).
`C. The Applied References Fail to Disclose a “Cadence Window”
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`Each of the challenged claims requires a “cadence window.” As recognized
`
`by the Examiner in the prosecution history of the ‘723 Patent, Pasolini (EX1005)
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`fails to disclose such a cadence window. See EX1002 at 35-36 (indicating in notice
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`of allowance that prior art fails to disclose the now-challenged claims). Likewise,
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`U.S. Patent 8,712,723
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`the other Pasolini reference, Fabio (EX1006)8 also fails to disclose anything
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`resembling such a cadence window.
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`As explained in the ‘723 Specification, a “cadence window” corresponds to
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`the time allowable for a particular motion to occur. See e.g., EX1001 at 3:9-17, 56-
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`59; 3:64-6:6; 11:13-28; 12:45-50. To determine the “cadence” itself, motion criteria
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`is examined to determine whether a motion cycle corresponds to a particular motion.
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`See e.g., Id. at 3:18-32, 38-54; 6:65-7:14. The motion cycle itself is not limited to
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`walking, but also can be any user activity having a periodic set of movements. Id.at
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`3:43-44. Non-limiting examples include rollerblading, biking, running, and walking.
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`Id. at 3:23-25. In one configuration, the cadence window is described as a rolling
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`average of previous detected cycles. Id at 3:66-4:10. The independent claims must
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`encompass such a “cadence window” being based on “rolling averages” because
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`dependent claims (e.g., Claim 4 and 19) narrow the updating of the “cadence
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`window” to being based on rolling averages.
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`The Petition points to Fabio (EX1006)’s “validation interval TV” as allegedly
`
`corresponding to the claimed “cadence window.” See e.g., Petition at 35-37.
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`
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` 8
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` The last name of the inventor is actually Pasolini; however, to maintain consistency
`with petitioners’ nomenclature, Fabio (the first name) is used. Both EX1005 and
`EX1006 share the same inventors and have the same filing dates.
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`However, such a validation interval TV has nothing to do with a “cadence” or the
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`claimed “cadence window.” Rather, Fabio (EX1006)’s validation interval TV is part
`
`of validation logic used in a pedometer. This TV logic simply validates whether the
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`time between a current detected step and a prior detected step is within a 50%
`
`variance of an immediately preceding period. If so, the prior (but not the current
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`step) is validated and counted. If not, the prior step is disregarded. This happens
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`regardless of (a) the time interval between steps, (b) whether a false positive is
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`detected, or (c) the time interval between other detected steps (e.g., steps preceding
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`the immediate step). Such a concept cannot reasonably correspond to a “cadence” or
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`“cadence window” as claimed, which can be based a rolling average of previous
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`detected cycles.
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`FIGURE 6 of Fabio (EX1006) is repeated below with annotations for values
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`of TA and TB from Col. 4, lines 45-50 provided. The sum of TA and TB yield TV
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`validation value.
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`IPR2018-01458
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`Following the red arrow, TA is ½ the prior measured difference in time between
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`detected steps, or ½ DTK-1. Following the green arrow, TB is the prior measured
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`time difference, DTK-1. Simplified, as recognized by Fabio, the validation amount is
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`150% (or 3/2) of the prior measured time difference, DTK-1. (EX1006 at 4:50-52).
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`Stated differently, only two inputs are used – current time difference and prior time
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`difference. The current time must be within a 50% variance of the prior time. This
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`TV logic is a backward looking in that the prior step is counted if the next step is
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`within the 50% variance timewise of the prior step. The process can repeat for the
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`next detected step with a similar look-back.
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`Fabio (EX1006)’s discussion of validation logic mentions nothing of trying
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`to figure out a cadence or considering whether a step occurs within a cadence
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`window. One cannot reasonably dispute that even under the broadest reasonable
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`interpretation of the term “cadence” and “cadence window” (in a manner consistent
`
`with the specification), one of ordinary skill in the art would not view a 50%
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`validation check to a prior step as corresponding to a “cadence” or a “cadence
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`window” for an activity, which looks to an expected rhythm of a cadence (e.g., that
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`may be based on rolling averages) to determine a cadence window in which the next
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`step is expected to occur.
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`IPR2018-01458
`U.S. Patent 8,712,723
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`To further illustrate this point, according to Fabio (EX1006), an irregular
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`very-short step may not only invalidate a prior regular step (e.g., because the time
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`for the irregular step is not within the 50% variance), but also invalidate the very-
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`short step itself on the next validation step (e.g., because the 50% validation is really
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`small). Fabio explains that “[i] events and sequence of steps that are in any case too
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`short are thus advantageously ignored” (EX1006, 5:56-57) and that “[s]tep
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`sequences that are shorter and not very significant in relation to the activity
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`performed can be ignored.” EX1006, 6:9-11. The problem with this approach is that
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`a legitimate regular step is invalidated. This is because of Fabio (EX1006)’s inability
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`to consider a cadence/cadence window and its interest in the timing between the
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`current and prior steps only.
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`D. The Applied References Fail to Disclose Detected Motions “Within
`a Cadence Windows”
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`Assuming for the sake of argument that Fabio (EX1006)’s “validation interval
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`TV” were a cadence window (which it is not), Fabio (EX1006) still does not disclose
`
`the claims because of its backward-looking validation. Fabio (EX1006)’s TV
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`validation process uses a time period of a current step to determine whether a prior
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`step is counted. However, the claims require counting with respective to steps
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`“within a cadence window.” None of the counting in Fabio (EX1006) is with respect
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`IPR2018-01458
`U.S. Patent 8,712,723
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`to a step within the validation interval TV. Rather, the counted steps occur before
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`the validation interval TV being examined.
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`E.
`
`The Applied References Fail to Disclose an Update to the Cadence
`Window as “Actual Cadence” or “Cadence” Changes
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` The challenged claims all recite an update to the cadence window as either
`
`an “actual cadence” or a “cadence” changes. The applied reference fail to disclose
`
`such an update. Fabio (EX1006)’s “validation interval TV” for a particular step
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`considers only an immediately preceding step and time period and cannot account,
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`for example, for a rolling average of previous detected cycles. One cannot
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`reasonably dispute that a singular measurement by itself could not be considered a
`
`cadence change.
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`To the extent Petitioners argues that “within” doesn’t actually mean “within,”
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`Patent Owner directs the Board to the specification, for example, FIGURE 2 and its
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`corresponding discussion in which counting of a step considers whether such a step
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`is “within” its respective cadence window. There is no indication (and Petitioners
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`have cited none) where a step is counted if another step falls within a different
`
`cadence window.
`
`F.
`
`The Applied References Fail to “Assigning a Dominant axis with
`Respect to Gravity Based on an Orientation of the Inertial
`Sensor”
`The Petitioners argue that the dominant axis must be vertical (direction of
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`IPR2018-01458
`U.S. Patent 8,712,723
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`gravity) and hence, Polisnelli (EX1005)’s selection of the gravitational axis meets
`the claim features. However, the ‘723 Patent recognizes that multiple activities may
`occur and that the dominant axis may be other than vertical (gravity) – hence the
`reference to “dominant axis.” FIGURE 2 of the ‘723 Paten
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