`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,653,508
`
`Case IPR No.: IPR2018-01577
`
`
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`TABLE OF CONTENTS
`
`I. 
`
`INTRODUCTION ........................................................................................... 1 
`
`II.  MANDATORY NOTICES ............................................................................. 1 
`
`A. 
`
`B. 
`
`C. 
`
`Real Party-in-Interest ........................................................................... 2 
`
`Related Matters ..................................................................................... 2 
`
`Lead and Back-up Counsel and Service Information .......................... 3 
`
`III.  GROUNDS FOR STANDING ........................................................................ 4 
`
`IV.  NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 4 
`
`V. 
`
`THE ’508 PATENT ......................................................................................... 4 
`
`A. 
`
`B. 
`
`Summary of the ’508 patent ................................................................. 4 
`
`Prosecution History of the ’508 Patent ................................................ 6 
`
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7 
`
`VII.  CLAIM CONSTRUCTION ............................................................................ 7 
`
`A. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`“dominant axis” .................................................................................... 8 
`
`“cadence window” ................................................................................ 9 
`
`“a dominant axis logic to continuously determine an orientation of
`a device, to assign a dominant axis, and to update the dominant
`axis as the orientation of the device changes” ..................................... 9 
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis” ....................................... 11 
`
`“a counting logic to identify and count periodic human motions” .... 12 
`
`“a cadence logic to continuously update a dynamic cadence
`window” ............................................................................................. 13 
`
`
`
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`ii
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`G. 
`
`“a mode logic, to switch the device from a non-active mode to an
`active mode after a number of periodic human motions are
`detected within appropriate cadence windows by the counting
`logic” .................................................................................................. 14 
`
`H.  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 .... 16 
`
`A. 
`
`B. 
`
`C. 
`
`Challenged Claims ............................................................................. 17 
`
`Statutory Grounds for Challenges ...................................................... 17 
`
`State of the art at the time of the ’508 Patent ..................................... 17 
`
`1. 
`
`2. 
`
`Summary of Pasolini ................................................................ 19 
`
`Summary of Fabio .................................................................... 21 
`
`D. 
`
`Challenge #1: Claims 1-2 and 11-12 are obvious under 35 U.S.C §
`103(a) over Pasolini............................................................................ 25 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`Claim 1 ..................................................................................... 25 
`
`Claim 2 ..................................................................................... 32 
`
`Claim 11 ................................................................................... 33 
`
`Claim 12 ................................................................................... 38 
`
`E. 
`
`Challenge #2: Claims 6-8, 15-16, and 19 are obvious under 35
`U.S.C §103(a) over Fabio. ................................................................. 38 
`
`1. 
`
`2. 
`
`3. 
`
`Claim 6 ..................................................................................... 39 
`
`Claim 7 ..................................................................................... 50 
`
`Claim 8 ..................................................................................... 52 
`
`
`
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`4. 
`
`5. 
`
`6. 
`
`Claim 15 ................................................................................... 53 
`
`Claim 16 ................................................................................... 58 
`
`Claim 19 ................................................................................... 60 
`
`F. 
`
`Challenge #3: Claims 3-4 and 13-14 are unpatentable under 35
`U.S.C §103 over Pasolini in view of Fabio. ....................................... 62 
`
`1. 
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Reasons to Combine Pasolini and Fabio .................................. 62 
`
`Claim 3 ..................................................................................... 65 
`
`Claim 4 ..................................................................................... 67 
`
`Claim 13 ................................................................................... 70 
`
`Claim 14 ................................................................................... 71 
`
`X. 
`
`CONCLUSION .............................................................................................. 74 
`
`CERTIFICATE OF WORD COUNT ...................................................................... 75 
`
`CERTIFICATE OF SERVICE ................................................................................ 76 
`
`
`
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`
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`iv
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`PETITIONER’S EXHIBIT LIST
`
`August 23, 2018
`
`Ex.1001 U.S. Patent No. 7,653,508
`
`Ex.1002
`
`Prosecution History of U.S. Patent No. 7,653,508
`
`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
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,653,508 (“the ’508 patent,” Ex.1001) is generally directed
`
`to “monitoring human activity, and more particularly to counting periodic human
`
`motions.” Ex.1001, 1:5-6. The claims of the ’508 patent are directed to two
`
`separate concepts. The first concept is a well-known technique for determining
`
`which of three axes in a tri-axial accelerometer is directed to a “dominant axis” and
`
`counting a user’s steps along that axis. The second concept is a well-known
`
`technique for counting periodic human motions using two different operating
`
`modes. In the first mode, periodic human motions are detected but not added to the
`
`total count until validated. In the second mode, detected periodic human motions
`
`are counted and added to the total count. As shown below, these concepts were
`
`already taught in the prior art before the priority date of the ’508 patent.
`
`Accordingly, this petition and the cited evidence demonstrates that claims 1-
`
`4, 6-8, 11-16, and 19 of the ’508 patent are unpatentable under (pre-AIA) 35
`
`U.S.C. § 103(a). LG Electronics, Inc. (“LG” or “Petitioner”) therefore respectfully
`
`requests that these claims be held unpatentable and cancelled.
`
`This Petition is substantively the same as IPR2018-00387, which was
`
`instituted on July 23, 2018, and is being filed concurrently with a motion for
`
`joinder with respect to that proceeding.
`
`II. MANDATORY NOTICES
`
`
`
`
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`A. Real Party-in-Interest
`
`LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics
`
`MobileComm USA, Inc., are the real parties-in-interest to this inter partes review
`
`petition.
`
`B. Related Matters
`
`As of the filing date of this petition, the ’508 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. Samsung
`Electronics America, Inc.
`
`2-17-cv-00737 E.D. Tx. Nov. 9, 2017
`
`2-17-cv-01629 W.D. Wa. Nov. 1, 2017
`
`4-12-cv-00832 N.D. Tx. Oct. 13, 2017
`
`2-17-cv-00650 E.D. Tx. Sep. 15, 2017
`
`Uniloc USA, Inc. v. Apple Inc.
`
`2-17-cv-00522 E.D. Tx.
`
`Jun. 30, 2017
`
`Uniloc USA, Inc. v LG Electronics
`USA, Inc.
`
`Uniloc USA, Inc. v. Apple Inc.
`
`
`4:18-cv-02918 N.D. Cal. May 17, 2018
`
`3:18-cv-00364 N.D. Cal.
`
`Jan. 17, 2018
`
`Additionally, the ’508 patent is subject to other pending requests for inter
`
`partes review, IPR2018-00387 filed by Apple Inc. on December 22, 2017
`
`(instituted on July 23, 2018), and IPR2018-01026 filed by Apple Inc. on May 7,
`
`
`
`
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`2018. The real parties-in-interest herein are not parties to the above listed petitions
`
`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
`
`
`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
`
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`
`
`
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`consents to electronic service via email.
`
`III. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’508 patent is available for inter partes review
`
`and that the Petitioner is not barred or otherwise estopped from requesting inter
`
`partes review on the grounds identified herein.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioner’s citation to Ex.1002 uses the page numbers added for compliance
`
`with 37 C.F.R. § 42.63(d)(2)(ii). Petitioner’s citations to the remaining exhibits use
`
`the page numbers in their original publication. Unless otherwise noted, all bold
`
`underline emphasis in any quoted material has been added.
`
`V. THE ’508 PATENT
`A.
`
`Summary of the ’508 patent
`
`The ‘508 patent is directed to “a method of monitoring human activity, and
`
`more particularly, to counting periodic human motions such as steps.” Ex.1001,
`
`1:5-7. As admitted by the Applicant, “inertial sensors (e.g., accelerometers)” are
`
`commonly used in commercial electronic devices such as “cellular phones,
`
`portable music players, pedometers, game controllers, and portable computers.”
`
`Ex.1001, 1:13-18. These conventional “[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, 1:19-21. These devices, however, “are often confused by motion
`
`
`
`
`
`4
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`noise experienced by the device throughout a user's daily routine. This noise causes
`
`false steps to be measured and actual steps to be missed in conventional step
`
`counting devices.” Ex.1001, 1:27-31.
`
`The claims of the ’508 parent are directed to two separate concepts that
`
`allegedly improve conventional step counting devices. The first concept
`
`(associated with independent claims 1 and 11) relates to determining and assigning
`
`a “dominant axis,” and counting steps along that axis. See Ex.1001, claim 1. In the
`
`’508 patent, the dominant axis is the axis “with the largest absolute rolling average
`
`… most influenced by gravity, which may change over time (e.g. as the electronic
`
`device is rotated). Therefore, a new dominant axis may be assigned when the
`
`orientation of the electronic device … changes.” Ex.1001, 6:16-21.
`
`The second concept (associated with independent claims 6 and 15) relates to
`
`counting steps in two different modes—a non-active mode and an active mode. In
`
`the non-active mode, steps are detected but not yet added to the total step count.
`
`Instead, such steps are buffered until the device switches to the active mode, which
`
`occurs when a certain number of steps have been detected and validated. Steps are
`
`determined to be valid if they fall within a particular time interval, referred to in
`
`the ’508 patent as a “cadence window.” The cadence window is based on a user’s
`
`motion cycle or stepping period: “once a stepping period (or other motion cycle
`
`period) is determined, that period may be used to set the cadence window (the
`
`
`
`
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`allowable time window for steps to occur).” Once in the active mode, the detected
`
`steps are added to the total step count as they are detected.
`
`The concepts described and claimed in the ’508 patent were not new at the
`
`time the ’508 patent was filed. Before the’508 Patent was filed, a developer named
`
`Fabio Pasolini was actively working on pedometer devices that included the
`
`concepts described and claimed in the ’508 patent. Mr. Pasolini filed two patent
`
`applications (issued as U.S. Patent No. 7,698,097 (“Fabio”) and U.S. Patent No.
`
`7,463,997 (“Pasolini”)) before the ’508 patent was filed. The Pasolini reference
`
`describes a 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
`
`hand, describes applying a regularity condition to the detected step data so that a
`
`step is counted when it occurs within a “validation interval.” The disclosures
`
`provided in the Fabio and Pasolini references render obvious each and every
`
`element of the challenged claims.
`
`B.
`
`Prosecution History of the ’508 Patent
`
`The ’508 patent issued on January 26, 2010 from U.S Patent Application No.
`
`11/644,455 filed on December 22, 2006.
`
`The first Office Action issued on August 31, 2009, and included no prior art
`
`rejections. See Ex.1002, 70. The Action did, however, include multiple objections
`
`
`
`
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`to the drawings and other informalities. On October 9, 2009, the Applicant filed a
`
`response to replace drawings and amended the specification to address the other
`
`objections. See Ex.1002, 54. A Notice of Allowance then issued on November 30,
`
`2009. See Ex.1002, 16. In the Allowance, the Examiner did not provide any
`
`specific reason but instead quoted the independent claims and merely stated that a
`
`few cited references did not teach the limitations of the claims. See Ex.1002, 22.
`
`Accordingly, the prior art presented in this petition was not cited or applied
`
`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
`
`’508 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
`
`
`
`
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`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, Petitioner submits that no specific
`
`construction is necessary for this proceeding.1
`
`A.
`
`“dominant axis”
`
`This term appears in at least claims 1 and 11. In the specification of the ’508
`
`patent, the dominant axis is determined based on the accelerometer’s alignment
`
`with gravity. Ex.1003, p.14. 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 by calculating total
`
`1 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`
`
`
`
`8
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`acceleration based upon the acceleration on each axis.” Ex.1001, 14:34-38. 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, 6:12-15. In other words, the dominant axis is “the axis most
`
`influenced by gravity, which may change over time (e.g., as the electronic device is
`
`rotated).” Ex.1001, 6:16-18.
`
`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.15.
`
`B.
`
`“cadence window”
`
`This term appears in at least claims 3, 6, 7, 10, 13, 15, 16, and 19. The
`
`specification 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, 3:64-65.
`
`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, p.15.
`
`C.
`
`“a dominant axis logic to continuously determine an orientation of
`a device, to assign a dominant axis, and to update the dominant
`axis as the orientation of the device changes”
`
`This term appears in at least claim 11. The specification describes that
`
`“dominant axis logic 127 is used to determine an orientation of the electronic
`
`
`
`
`
`9
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`device 100 and/or an inertial sensor within the electronics device 100.” See
`
`Ex.1001, 3:4-8. “At 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, 12:42-43. The specification
`
`further describes that the present invention may be performed by hardware,
`
`software, or a combination of both. See Ex.1001, 14:50-56.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to
`
`continuously determine an orientation of a device, to assign a dominant axis, and to
`
`update the dominant axis as the orientation of the device changes.”
`
`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: continuously determine an orientation of a device, to assign
`
`a dominant axis, and to update the dominant axis as the orientation of
`
`the device changes;
`
`Structure: software, hardware, or combination thereof to perform
`
`actions in block 812. See Ex.1001, 12:42-43, 14:50-56; Ex.1003,
`
`pp.15-17.
`
`
`
`
`
`10
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`D.
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis”
`
`This term appears in at least claim 11. The specification 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, 6:40-45, 7:2. 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, 14:50-56.
`
`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,
`
`or identify and count periodic human motions.”
`
`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: count periodic human motions by monitoring accelerations
`
`relative to the dominant axis;
`
`
`
`
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`Structure: software, hardware, or combination thereof to perform
`
`actions in blocks 615 and 620. See Ex.1001, 7:46-60, 14:50-56;
`
`Ex.1003, pp.17-18.
`
`E.
`
`“a counting logic to identify and count periodic human motions”
`
`This term appears in at least claim 15. The specification 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, 6:40-45, 7:2. 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, 14:50-56.
`
`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,
`
`or identify and count periodic human motions.”
`
`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: identify and count periodic human motions;
`
`
`
`
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`12
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`Structure: software, hardware, or combination thereof to perform
`
`actions in blocks 615 and 620. See Ex.1001, 7:46-60, 14:50-56;
`
`Ex.1003, pp.18-19.
`
`F.
`
`“a cadence logic to continuously update a dynamic cadence
`window”
`
`This term appears in at least claim 13. The specification 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, 3:9-16. In one example, at
`
`block 574 “a new cadence window is set (block 574) based on a stepping cadence
`
`of the M steps measured.” Ex.1001, 10:56-57. The specification further describes
`
`that the present invention may be performed by hardware, software, or a
`
`combination of both. See Ex.1001, 14:50-56.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to
`
`continuously update a dynamic cadence window.”
`
`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: continuously update a dynamic cadence window;
`
`
`
`
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`Structure: software, hardware, or combination thereof to perform
`
`actions in block 574. See Ex.1001, 10:56-57, 14:50-56; Ex.1003, p.19.
`
`G.
`
`“a mode logic, to switch the device from a non-active mode to an
`active mode after a number of periodic human motions are
`detected within appropriate cadence windows by the counting
`logic”
`
`This term appears in at least claim 15. The specification describes mode
`
`logic 190 that determines the “operating mode that the electronic device is in.”
`
`Ex.1001, 7:23-24. In one example, block 580 describes logic to check “whether
`
`there are N steps in the buffered step count.” Ex.1001, 10:63-64. At block 584, “a
`
`stepping [active] mode is entered into.” Ex.1001, 11:2-3. The specification further
`
`describes that the present invention may be performed by hardware, software, or a
`
`combination of both. See Ex.1001, 14:50-56.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to switch
`
`the device from a non-active mode to an active mode after a number of periodic
`
`human motions are detected within appropriate cadence windows by the counting
`
`logic.”
`
`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:
`
`
`
`
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`14
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`Function: switch the device from a non-active mode to an active
`
`mode after a number of periodic human motions are detected within
`
`appropriate cadence windows by the counting logic;
`
`Structure: software, hardware, or combination thereof to perform
`
`actions in blocks 580 and 584. See Ex.1001, 10:63-11:3, 14:50-56;
`
`Ex.1003, pp.20-21.
`
`H. Note Regarding the Claim Terms directed to “Logic”
`
`Petitioner 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.
`
`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 ’508 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
`
`
`
`
`
`15
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`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 in light of
`
`the provided prior art.
`
`VIII. 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 1-4, 6-8, 11-16, and 19 of
`
`the ’508 patent, and cancel those claims as invalid.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Joe
`
`Paradiso, the concepts described and claimed in the ’508 patent were not new. This
`
`petition explains where each element of claims 1-4, 6-8, 11-16, and 19 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 ’508
`
`patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`
`
`
`
`16
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`A. Challenged Claims
`
`Claims 1-4, 6-8, 11-16, and 19 of the ’508 patent are challenged in this
`
`petition.
`
`B.
`
`Statutory Grounds for Challenges
`
`Challenge
`
`Claims
`
`Ground
`
`Challenge #1 1-2 and 11-
`12
`
`Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”).
`
`Challenge #2 6-8, 15-16,
`and 19
`
`Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`No. 7,698,097 to Fabio Pasolini et al. (“Fabio”).
`
`Challenge #3 3-4 and 13-
`14
`
`Obvious under 35 U.S.C. § 103(a) over Pasolini in
`view of Fabio.
`
`
`Both Pasolini and Fabio were filed on October 2, 2006, which is before the
`
`December 22, 2006 filing date of the earliest filed application upon which the ’508
`
`Patent claims priority. Accordingly, Pasolini and Fabio are each at least pre-AIA
`
`35 U.S.C. § 102(e) prior art based on their filing dates.
`
`C.
`
`State of the art at the time of the ’508 Patent
`
`By the time the’508 Patent was filed on 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 Fabio and Pasolini references
`
`disclose pedometer devices that use an inertial sensor, such an accelerometer, to
`
`
`
`
`
`17
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`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.
`
`Both of Mr. P