UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2018-01577
`PATENT 7,653,508
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`I.
`II.
`III.
`IV.
`V.
`VI.
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`VII.
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`IPR2018-01577
`U.S. Patent 7,653,508
`
`Table of Contents
`
`INTRODUCTION .................................................................................... 1
`THE ’508 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 3
`PROSECUTION HISTORY ..................................................................... 3
`CLAIM CONSTRUCTION ...................................................................... 5
`A.
`“cadence window” .......................................................................... 5
`B.
`“dominant axis” .............................................................................. 6
`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” .......................................................................................... 9
`“a counting logic to count periodic human motions by
`monitoring accelerations relative to the dominant axis” .............. 10
`“a counting logic to identify and count periodic human
`motions” ........................................................................................ 10
`“a cadence logic to continuously update a dynamic
`cadence window” .......................................................................... 10
`“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” ................................................... 11
`PETITIONER FAILS TO MEET ITS BURDEN OF
`PROVING OBVIOUSNESS .................................................................. 11
`A.
`Petitioner fails to prove Fabio renders obvious the
`“cadence window” limitations of independent claim 6 ................ 11
`
`G.
`
`ii
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`D.
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`E.
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`F.
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`

`

`1.
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`2.
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`IPR2018-01577
`U.S. Patent 7,653,508
`Petitioner fails to prove Fabio’s validation
`interval (TV) maps onto the distinct definition
`Petitioner offers for “cadence window” ............................. 12
`Petitioner has not and cannot cure Fabio’s
`deficiencies by offering a new, undefended, and
`inconsistent definition for “cadence window” ................... 13
`Petitioner has not proven obviousness for the
`“switching” step introducing the “cadence
`window” term ..................................................................... 15
`Petitioner has not proven obviousness for the
`“counting” step as applied to the “cadence
`window” term ..................................................................... 19
`Petitioner fails to prove Fabio itself renders obvious the
`“cadence window” limitations of independent claim 15 .............. 20
`Petitioner fails to prove Fabio renders obvious the
`“cadence window” limitations recited in certain
`dependent claims .......................................................................... 20
`Petitioner fails to prove Pasolini renders obvious
`“assigning a dominant axis” as recited in claim 1 ........................ 21
`Petitioner fails to prove Pasolini renders obvious the
`“updating the dominant axis as the orientation of the
`inertial sensor changes” as recited in claim 1 ............................... 25
`The Petition fails to prove obviousness of “counting
`periodic human motions by monitoring accelerations
`relative to the dominant axis” as recited in claim 1 ..................... 27
`Petitioner fails to prove Pasolini renders obvious the
`“dominant axis” terms recited in independent claim 11............... 28
`The Petition fails to prove obviousness of “a counting
`logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis,” as recited in
`claim 11 ........................................................................................ 29
`The Petition fails to prove obviousness of any dependent
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`3.
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`4.
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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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`H.
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`I.
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`iii
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`IPR2018-01577
`U.S. Patent 7,653,508
`claim.............................................................................................. 29
`VIII. THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 29
`CONCLUSION ....................................................................................... 30
`
`IX.
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`
`
`List of Exhibits
`
`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
`
`iv
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`

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`IPR2018-01577
`U.S. Patent 7,653,508
`
`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
`Response to Petition IPR2018-015771 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,653,508 (“the ’508 patent” or “EX1001”) filed by LG
`Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm
`USA, Inc. (“Petitioner”). The Petition is procedurally and substantively defective for
`at least the reasons set forth herein.
`II. THE ’508 PATENT
`The ’508 patent is titled “Human activity monitoring device.” The ʼ508 patent
`issued January 26, 2010, from U.S. Patent Application No. 11/644,455 filed
`December 22, 2006.
`The inventors of the ’508 patent observed that, at the time, step counting
`devices that utilize an inertial sensor to measure motion to detect steps generally
`required the user to first position the device in a limited set of orientations. In some
`devices, the required orientations are dictated to the user by the device. In other
`devices, the beginning orientation is not critical, so long as this orientation can be
`maintained. EX1001, 1:19‒26. Further, the inventors observed that devices at the
`time were often confused by motion noise experienced by the device throughout a
`user's daily routine. The noise would cause false steps to be measured and actual
`
`
`
` 1
`
` The instant Petition and Petitioner seek joinder to IPR2018-00387. See Paper 9.
`Furthermore, as Petitioners state, the instant Petition is a “carbon copy” of the
`original petition in IPR2018-00387. Id., at 1.
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`1
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`IPR2018-01577
`U.S. Patent 7,653,508
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`steps to be missed in conventional step counting devices. Conventional step counting
`devices also failed to accurately measure steps for individuals who walk at a slow
`pace. Id., 1:27‒34.
`According to the invention of the ’508 Patent, a device to monitor human
`activity using an inertial sensor assigns a dominant axis after determining the
`orientation of an inertial sensor. he orientation of the inertial sensor is continuously
`determined, and the dominant axis is updated as the orientation of the inertial sensor
`changes. Id., 2:8‒15.
`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 7,653,508 (EX1001).
`
`Case Caption
`
`Case Number
`
`District Case Filed
`
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple Inc. v. Uniloc 2017 LLC
`et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`
`4-17-cv-00832
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`2-17-cv-00737
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`2-17-cv-01629 WAWD November 1,
`2017
`TXND October 13,
`2017
`TXED November 9,
`2017
`September
`15, 2017
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`2-17-cv-00650
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`TXED
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`2-17-cv-00522
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`TXED
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`June 30, 2017
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`IPR2018-00387
`
`PTAB Dec. 22, 2017
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
`
`2
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`

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`Apple Inc. v. Uniloc
`Luxembourg SA
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`HTC Corporation et al v.
`Uniloc Luxembourg SA et al
`Samsung Electronics America,
`Inc. et al v. Uniloc 2017 LLC
`et al
`
`IPR2018-01026
`
`4-18-cv-02918
`
`IPR2018-01589
`
`IPR2018-01756
`
`IPR2018-01577
`U.S. Patent 7,653,508
`PTAB May 4, 2018
`
`CAND
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`May. 17,
`2018
`Aug. 23,
`2018
`PTAB Sep. 18, 2018
`
`PTAB
`
`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “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.” Pet.
`7. Given that Petitioner fails to meet its burden of proof when purportedly applying
`its own definition of a person of ordinary skill in the art, Patent Owner does not offer
`a competing definition for purposes of this proceeding.
`PROSECUTION HISTORY
`V.
`The Petition neglects to mention it relies upon a reference the U.S. Patent
`Office has already found to be distinguishable from certain limitations also recited
`in the challenged claims. The ’508 patent is part of a family of related patents
`including U.S. Patent Nos. 8,712,723 and 7,881,902 (the ’723 and ’902 patents,
`respectively). These patents all share a common specification.
`During prosecution of the application that issued as the related ’723 patent,
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`IPR2018-01577
`U.S. Patent 7,653,508
`the Examiner cited the same Pasolini reference2 either exclusively or primarily relied
`upon in the challenges presented in instant Petition. As the prosecution history
`reveals, Applicant successfully distinguished Pasolini and all other references of
`record from the claims that ultimately issued, including on the basis of certain claim
`limitations which are also cited in the ’508 patent.3
`The instant Petition relies exclusively on Pasolini in challenging claims 1‒2
`and 11‒12; and it also relies exclusively on Pasolini for the remainder of the
`challenged claims when addressing certain limitations. For those claim limitations
`in which the Petition asserts only the Fabio reference (e.g., the “cadence window”
`limitations), Fabio is distinguishable for analogous reasons addressed during
`prosecution of the related ’723 patent, as will be shown. Consequently, Fabio does
`not cure the acknowledged deficiencies of Pasolini already recognized by the U.S.
`Patent Office.
`The interest of finality weighs against revisiting the deficiencies of Pasolini
`and whether the cumulative disclosure in Fabio renders obvious what Pasolini
`admittedly fails to disclose. See, e.g., Shire LLC v. Amneal Pharm., LLC, 802 F.3d
`1301, 1307 (Fed. Cir. 2015) (holding a patent challenger has “the added burden of
`
`
`
` 2
`
` The prosecution history of the ’723 patent references the printed publication (U.S.
`Serial App. Pub. No. 2007/0143068) of the same Pasolini reference that ultimately
`issued as U.S. Patent No. 7,463,997. The Petition opted to cite the issued patent in
`lieu of the printed publication.
`3 See Public File Wrapper of ’723 patent, Response dated Jan. 29, 2013 (at p. 6 of 9)
`to Office Action dated Sept. 26, 2012 (also filed as Exhibit 1002 in related-matter
`IPR2018-00389, at pp. 142 of 454).
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`4
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`U.S. Patent 7,653,508
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`overcoming the deference that is due to a qualified government agency presumed to
`have properly done its job, which includes one or more examiners who are assumed
`to have some expertise in interpreting the references and to be familiar from their
`work with the level of skill in the art and whose duty it is to issue only valid
`patents.”); Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir.
`2004) (upholding claim construction of the district court in limiting the scope of the
`earlier, already issued patent based on statements offered during prosecution of a
`related application that issued later).
`
`VI. CLAIM CONSTRUCTION
`The petition should be rejected as relying upon incorrect claim constructions
`which are unreasonable in light of the intrinsic evidence. See Mentor Graphics
`Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11
`(P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp.,
`669 Fed. Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction
`unreasonable in light of the specification, and therefore, denying Petition as tainted
`by reliance on an incorrect claim construction).
`
`“cadence window”
`A.
`The Petition argues that the ’508 patent specification provides but one
`definition for “cadence window” as follows: “[a] cadence window is a window of
`time since a last step was counted that is looked at to detect a new step.” Pet. 9.
`Regardless whether this statement fully captures all disclosed embodiments of
`“cadence windows” disclosed in the ’508 patent (and Patent Owner does not
`concede that it does), its application here as a claim construction for “cadence
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`5
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`IPR2018-01577
`U.S. Patent 7,653,508
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`window” only confirms that the Petition must be denied as failing to prove
`obviousness. This is because Petitioner relies exclusively on Fabio’s validation
`interval TV, which Fabio defines as necessarily starting before the last step is
`counted. A window of time that necessarily starts before the last step is counted is
`definitively not “a window of time since a last step was counted” (as required by
`Petitioner’s construction).
`
` “dominant axis”
`B.
`Petitioner first offers an incorrect claim construction for “dominant axis” and
`then applies another in relying solely on Pasolini for the “dominant axis” limitations.
`The Petition proposes construing “dominant axis” to mean “the axis most influenced
`by gravity.” Pet. 8-9. In doing so, the Petition incorrectly conflates certain
`description directed to determining an orientation of the electronic device with,
`instead, assigning a dominant axis. The claim language itself and the remainder of
`the intrinsic evidence proscribe such an interpretation.
`Claim 1, for example, expressly distinguishes “continuously determining an
`orientation of the initial sensor” from the separately-recited step of “assigning a
`dominant axis.” Accordingly, the written description corresponding to one step
`cannot be attributed, instead, to the other. But that is precisely what the Petition
`attempts to do.
`The ’508 patent uses the phrase “the axis most influenced by gravity” only in
`describing an example embodiment for determining orientation. EX1001, 6:7‒21.
`That description states “[t]he orientation may be determined based upon the rolling
`averages of accelerations created by the rolling average logic 125.” Id. at 6:9‒11
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`6
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`IPR2018-01577
`U.S. Patent 7,653,508
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`(emphasis added). A few lines down, that same paragraph states “[d]etermining an
`orientation of the electronic device 100 may include identifying a gravitational
`influence. The axis with the largest absolute rolling average may be the axis most
`influenced by gravity.” Id. at 6:13‒17 (emphasis added). Notably, the Petition uses
`ellipses in place of the word “may” when quoting the above passage, presumably
`because Petitioner recognized that the qualifying word kills Petitioner’s proposed
`construction and, hence, the underlying basis for the challenge. Pet. 5 (quoting
`EX1001, 6:16‒21); see also Pet. 9 (again offering a partial quotation that omits the
`word “may”).
`There simply is no unambiguous lexicography in the cited passage (or
`elsewhere) that states the assigned “dominant axis” must be the one that is most
`influenced by gravity. Rather, this passage observes that the rolling-average process
`used to determine orientation may, and hence may not, coincidentally be the axis
`most influenced by gravity. Petitioner’s proposed construction would impermissibly
`exclude those instances where the axis determined by a rolling-average process is
`not the axis most influenced by gravity.
`In the Institution Decision in IPR2018-00387, the Board points to a separate
`description addressing an alternative embodiment (which the specification expressly
`distinguishes from the rolling-average process) as allegedly supporting the
`proposition that “a dominant axis, whether virtual axis or otherwise, is assigned on
`the basis of gravity: ‘most influenced by gravity’ and ‘approximately aligned to
`gravity.’” IPR2018-00387, Paper 8 at 9‒10 (citing EX1001, 6:24‒27). This too is
`
`7
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`IPR2018-01577
`U.S. Patent 7,653,508
`incorrect.4 As a counter example, and as explained above, the ’508 patent reveals
`that using a rolling-average process to determine orientation does not necessarily
`result in assigning a dominant axis that is most influenced by gravity. EX1001, 6:7‒
`21.
`
`The Board’s emphasis of the statements “most influenced by gravity” and
`“approximately aligned to gravity” reveals another flaw in Petitioner’s proposed
`construction. The specification uses those phrases in describing distinct axis of
`expressly-distinguished embodiments. Id. at 6:24‒27 (“In alternative embodiments,
`the dominant axis does not correspond to …, but rather to ….”). Thus, a construction
`that focuses only on one embodiment (as Petitioner proposes) would impermissibly
`exclude the other. This error is compounded by the fact that Petitioner’s construction
`requires the dominant axis to be the one that is most influenced by gravity, while the
`description of the rolling-average embodiment reveals that is not required.
`The Petition has not and cannot prove obviousness through application of an
`incorrect construction for “dominant axis.” See Mentor Graphics Corp. v. Synopsys,
`Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11,
`2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569
`(Fed. Cir. 2016). This provides an independent basis to deny the Petition.
`Even if the Board were to apply Petitioner’s proposed construction for
`
`
` 4
`
` Neither party has offered and defended construing “assigning a dominant axis” to
`mean “a dominant axis . . . is assigned on the basis of gravity.” This would not be a
`proper definition for what is recited, but rather it would be an impermissible rewrite
`of the claim language that merely inserts additional words.
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`8
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`IPR2018-01577
`U.S. Patent 7,653,508
`
`“dominant axis,” however, the Petition should nevertheless be denied for failing to
`apply such a construction in presenting its challenges, as explained further below in
`addressing specific claim language.
`
`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”
`No construction is necessary here for the recitation “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.”
`The Petition proposes a construction that substitutes the phrase “dominant
`axis logic” with the phrase “hardware, software, or both.” Petitioner’s rewrite of the
`claim language serves no purpose, impermissibly omits limiting claim language,
`and unnecessarily injects ambiguity. Here, the claim language itself provides
`definitional context for the “dominant axis logic” by reciting, for example, that it
`“continuously determine[s] an orientation of a device, to assign a dominant axis,
`and to update the dominant axis as the orientation of the device changes.”
`No party has requested that the Board construe this term here under 35 U.S.C.
`§ 112(6).5 Accordingly, Patent Owner does not address 35 U.S.C. § 112(6) or
`Petitioner’s hypotheticals.
`
`
`
` 5
`
` While the Petition repeatedly offers the statement “to the extent Patent Owner
`overcomes the presumption against construction under 35 U.S.C. 112, sixth
`paragraph…” (e.g., Pet. 10), the Petitioner provides no authority or evidence for its
`alleged “presumption” or its implicit shifting of its burden of proof here.
`
`9
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`D.
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`IPR2018-01577
`U.S. Patent 7,653,508
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis”
`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 as
`unnecessary for analogous reasons. To be clear, no party has requested that the
`Board construe this term under 35 U.S.C. § 112(6).6 Accordingly, Patent Owner
`does not address 35 U.S.C. § 112(6) or Petitioner’s hypotheticals.
`
`“a counting logic to identify and count periodic human motions”
`E.
`The proposed construction in the Petition should be rejected as unnecessary
`for analogous reasons presented above. See §VI.C, supra. To be clear, no party has
`requested that the Board construe this term under 35 U.S.C. § 112(6).7 Accordingly,
`Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s hypotheticals.
`
`F.
`
` “a cadence logic to continuously update a dynamic cadence
`window”
`The proposed construction in the Petition should be rejected as unnecessary
`for analogous reasons presented above. See §VI.C, supra. To be clear, no party has
`requested that the Board construe this term here under 35 U.S.C. § 112(6).8
`Accordingly, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
`10
`
`
`
` 6
`
` See n.6, supra.
`7 See n.6, supra.
`8 See n.6, supra.
`
`

`

`G.
`
`IPR2018-01577
`U.S. Patent 7,653,508
` “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”
`The proposed construction in the Petition should be rejected as unnecessary
`for analogous reasons presented above. See §VI.C, supra. To be clear, no party has
`requested that the Board construe this term under 35 U.S.C. § 112(6).9 Accordingly,
`Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s hypotheticals.
`
`VII. PETITIONER FAILS TO MEET ITS BURDEN OF PROVING
`OBVIOUSNESS
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless …
`there is a reasonable likelihood that at least one of the claims challenged … is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges:
`
`Ground
`1
`2
`3
`
`Claims
`1‒2 and 11‒12
`6‒8, 15‒16, and 19
`3‒4 and 13‒14
`
`Reference(s)
`
`Pasolini10
`Fabio11
`Pasolini and Fabio
`
`A.
`
`Petitioner fails to prove Fabio renders obvious the “cadence
`window” limitations of independent claim 6
`The Petitioner fails to prove the obviousness of “switching the device from
`
`11
`
`
`
` 9
`
` See n.6, supra.
`10 EX1005, U.S. Patent No. 7,463,997.
`11 EX1006, U.S. Patent No. 7,698,097.
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`IPR2018-01577
`U.S. Patent 7,653,508
`
`the non-active mode to an active mode, after identifying a number of periodic human
`motions within appropriate cadence windows; and counting a periodic human
`motion when an acceleration measurement that meets motion criteria is within the
`cadence window,” as recited in independent claim 6.
`
`1.
`
`Petitioner fails to prove Fabio’s validation interval (TV) maps
`onto the distinct definition Petitioner offers for “cadence
`window”
`The Petition relies exclusively on Fabio’s validation interval (sometimes
`abbreviated as “TV”) as allegedly mapping onto the claimed “cadence window”
`limitations. Pet. 44. Several independently-fatal deficiencies arise from Petitioner’s
`exclusive reliance on Fabio’s TV, particularly under the construction for “cadence
`window” relied upon in the Petition (i.e., “a window of time since a last step was
`counted that is looked at to detect a new step”).
`Fabio describes its TV with reference to its Figure 6, which is copied and
`annotated below. See, e.g., EX1006, Fig. 6 and accompanying description including,
`for example, 4:28‒49.
`
`
`last step
`
`current step detected
`
`
`
`
`
`
`
`
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`12
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`IPR2018-01577
`U.S. Patent 7,653,508
`
`Fabio’s TV is retrospective at least in that it is used to validate only the
`immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current step
`detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
`validated if the instant of recognition of the current step TR(K) falls within a
`validation interval TV[.]” Id. Unless and until the last step is validated by the current
`step in the manner disclosed, the last step is not counted. Id. 5:10‒39. The current
`step (K), in turn, is dependent upon the next step (K+1) for validation and counting.
`Id. The final step detected will not be counted because it cannot be validated. Id.
`Accordingly, Fabio’s validation interval TV is not “a window of time since a
`last step was counted” (as required by Petitioner’s construction) at least because
`Fabio defines its TV as necessarily starting before the last step is counted. Id.; see
`also EX2001 ¶¶ 32‒35. Indeed, Fabio’s TV is used in determining whether to count
`the last step. Id. The Petition should therefore be denied because Fabio’s TV does
`not satisfy the construction for “cadence window” relied upon in the Petition. This
`deficiency is independently fatal to the challenge of independent claim 6 and all
`challenged claims depending therefrom.
`
`2.
`
`Petitioner has not and cannot cure Fabio’s deficiencies by
`offering a new, undefended, and inconsistent definition for
`“cadence window”
`Evidently recognizing this deficiency, the Petition appears to abandon its own
`construction for “cadence window” by inconsistently arguing instead, that “the ’508
`patent’s ‘cadence window’ and Fabio’s ‘validation interval’ are both defined with
`respect to the time that an immediately preceding step was recognized.” Pet. 47
`(emphasis added); cf. id. at 9. This inconsistent theory is itself independently fatal.
`
`13
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`IPR2018-01577
`U.S. Patent 7,653,508
`
`Petitioner cannot have it both ways. The “cadence window” cannot be defined
`by alleged lexigraphy in the specification in terms of “since a last step was counted”
`and yet be applied, inconsistently, in terms of when “an immediately preceding step
`was recognized.” As explained above (in §VII.A.1, supra), Fabio’s retrospective
`validation process expressly distinguishes the moment when the last step is
`detected/recognized from when that step is later ultimately counted (if at all). See,
`e.g., EX1006, 5:10‒39. This explicit distinction in terms of timing cannot be glossed
`over by simply rewriting the alleged lexicography in the ’508 patent specification
`which Petitioner identifies and relies upon for the “cadence window” term.
`Even if the Board were to apply Petitioner’s inconsistent and undefended
`rewrite of the alleged lexicography the Petition identifies, this too would fail to
`prove obviousness. Fabio further defines its TV as necessarily excluding at least the
`time interval (indicated by a red block-arrow annotation to Fig. 6 copied above)
`commencing since detection of the last step (K-1) but before commencement of TV.
`Although this interval is excluded by Fabio’s design, it nevertheless would satisfy a
`modified construction that redefines the timing aspect in terms of “since the last step
`[K-1] was recognized.” See, e.g., EX1006, Fig. 6 and accompanying description
`including, for example, 4:28‒49.
`Fabio also recognizes that in certain instances its system might detect a “false
`positive” step. Id. 1:39‒44. This might occur, for example, where the system detects
`an irregularity resulting, for example, from the user tripping or otherwise making a
`quick stutter step. See, e.g., id. at 1:47‒51; 5:56‒61; 6:9‒11; 7:16. If such a “false
`positive” detection occurs since detection of the last step (K-1) but before TV
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`commences, then the last step would not be counted. This is true even if the last step
`was in fact a “true positive” detection that had occurred sometime within the TV
`used to detect that step. This retrospective aspect of Fabio’s system, which results
`in excluding certain “true positive” detections, bears no resemblance to any of the
`inconsistent constructions of “cadence window” offered by Petitioner, much less to
`the description of that term and its associated real-time counting offered in the
`specification and reflected in the claims.
`Thus, even under the inconsistent and undefended construction “a window of
`time since a last step was [recognized] that is looked at to detect a new step,” there
`is no proof of obviousness by Fabio’s TV at least because certain “true positive”
`steps occurring within TV would not be counted. This would further run afoul of
`the recited “counting” step, which also references and limits the “cadence window”
`term.
`
`3.
`
`Petitioner has not proven obviousness for the “switching” step
`introducing the “cadence window” term
`The Petition relies solely on Fabio’s alleged transitioning from the “first
`counting procedure” to the “second counting procedure” for the “switching” step
`recited in independent claim 6. Pet. 44. In doing so, Petitioner fails to prove that the
`alleged transitioning involves “switching the device from the non-active mode to an
`active mode,” much less that such a step must occur after “identifying a number of
`human motions within appropriate cadence windows.”
`First, Petitioner fails to prove that Fabio’s first counting procedure is a “non-
`active mode” as claimed. The only attempted defense the Petition offers for its
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`mapping is that Fabio allegedly describes its first counting procedure as “motion is
`detected but the steps are buffered not counted.” Pet 41.12 If the claimed “non-active
`mode” requires buffering but not counting steps, as Petitioner alleges, then
`Petitioner’s mapping must fail because Fabio’s first counting procedure clearly
`involves counting steps, which is not surprising given the name of that procedure.
`Petitioner’s theory is further undermined by the declaration it cites. The
`declaration offers an alleged summary of Fabio’s first counting procedure that
`includes the following statement: “if steps meet regularity threshold, add buffered
`steps to total steps and move to the second counting procedure.” EX1003, p. 52; see
`also id. at p. 27 (same). The summary also provides annotations to Figure 4 of Fabio
`emphasizing that NTV is a count variable that is updated during the first counting
`procedure. Id.; see also EX1006, 5:32‒36. The Petition repeats this summary
`verbatim. Pet. 43 (citing EX1003, p. 52). The Petition and its attached declaration,
`therefore, admit that steps are indeed counted as part of the first counting procedure,
`and that this occurs before moving to the second counting procedure. This defeats
`the contrary assertion in the Petition—identified as the underlying basis for the
`mapping—that Fabio’s describes its first counting procedure as “motion is detected
`but the steps are buffered not counted.” Pet 41.
`
`
`
`12 In addressing the “switching” step, as the sole alleged support for the mapping of
`Fabio’s first counting procedure onto is the claimed “non-active mode,” Petition
`cites to the discussion at Section 6.1 of the Petition. Pet. 44.
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`Second, the Petition is deficient because it fails to prove that Fabio discloses
`“switching” from the first counting procedure to the second counting procedure,
`much less “switching the device from the non-active mode to an active mode,” as
`claimed. Fabio does not disclose such a device switch. Rather, as shown in Figure 3
`of Fabio (copied and annotated below), the first counting procedure is included as a
`part of every process flow, while the second counting procedure is simply included
`as a secondary process in certain instances.
`
`
`EX1006, Fig. 3 (red-a