`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`———————
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,653,508
`Case IPR No.: IPR2018-01577
`
`
`
`Declaration of Joseph A. Paradiso, PhD
`under 37 C.F.R. § 1.68
`
`
`
`
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`LGE v. Uniloc 2017 LLC
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`Page 1 of 95
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`LGE Ex. 1003
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`Paradiso Decl.
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`Inter Partes Review of U.S. 7,653,508
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 2
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`
`IV. RELEVANT LEGAL STANDARDS ............................................................. 9
`
`A. Anticipation ........................................................................................... 9
`
`B. Obviousness ......................................................................................... 10
`
`V. OVERVIEW OF THE ‘508 PATENT .......................................................... 11
`
`A.
`
`B.
`
`Summary of the Patent ........................................................................ 11
`
`Prosecution History ............................................................................. 13
`
`VI. BROADEST REASONABLE INTERPRETATION ................................... 14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`“dominant axis” ................................................................................... 14
`
`“cadence window” ............................................................................... 15
`
`“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” ................................................ 16
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis” ........................................ 17
`
`“a counting logic to identify and count periodic human motions” ..... 18
`
`“a cadence logic to continuously update a dynamic cadence window”
` ............................................................................................................. 19
`
`“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” ............. 20
`
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`VII.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 21
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`State of the Art at the Time of the ‘508 Patent ................................... 21
`
`Summary of Pasolini ........................................................................... 23
`
`Summary of Fabio ............................................................................... 25
`
`Challenge #1: Claims 1-2 and 11-12 are obvious under 35 U.S.C §
`103(a) over Pasolini............................................................................. 29
`
`Challenge #2: Claims 6-8, 15-16, and 19 are obvious under 35 U.S.C
`§103(a) over Fabio. ............................................................................. 44
`
`Challenge #3: Claims 3-4 and 13-14 are unpatentable under 35 U.S.C
`§103 over Pasolini in view of Fabio. .................................................. 76
`
`1.
`
`2.
`
`Reasons to Combine Pasolini and Fabio ................................... 76
`
`Detailed Analysis ...................................................................... 78
`
`VIII. CONCLUSION .............................................................................................. 92
`
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`Paradiso Decl.
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`Inter Partes Review of U.S. 7,653,508
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`I.
`
`INTRODUCTION
`
`1.
`
`I am making this declaration at the request of LG Electronics, Inc.
`
`(“LG”) in the matter of the Inter Partes Review of U.S. Patent No. 7,653,508 (“the
`
`‘508 Patent”) to Kahn et al.
`
`2.
`
`I am being compensated for my work in this matter at the rate of
`
`$500/hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent on the outcome of this matter or the specifics of my testimony. I
`
`hold no direct interest in LG Electronics, Inc., LG Electronics U.S.A., Inc., or LG
`
`Electronics MobileComm USA, Inc., or the Patent Owner Uniloc 2017 LLC.
`
`3.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`4, 6-8, 11-16, and 19 of the ‘508 Patent are unpatentable, either because they are
`
`anticipated or would have been obvious to a person having ordinary skill in the art
`
`(“POSITA”) at the time of the alleged invention, in light of the prior art. It is my
`
`opinion that all of the limitations of claims 1-4, 6-8, 11-16, and 19 would have
`
`been either anticipated or obvious to a POSITA.
`
`4.
`
`In the preparation of this declaration, I have studied:
`
`a)
`
`b)
`
`The ‘508 Patent, Ex. 1001;
`
`The prosecution history of the ‘508 Patent, Ex. 1002;
`
`
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`c)
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”),
`
`Ex. 1005; and
`
`d)
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”),
`
`Ex.1006.
`
`5.
`
`In forming the opinions expressed below, I have considered:
`
`a)
`
`The documents listed above, and
`
`b) My own knowledge and experience based upon my work in the
`
`field of wireless communications, as described below.
`
`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`6. My complete qualifications and professional experience are described
`
`in my Curriculum Vitae, a copy of which can be found in Ex. 1004. The following
`
`is a brief summary of my relevant qualifications and professional experience.
`
`7.
`
`As shown in my curriculum vitae, I have devoted my career to various
`
`fields of physical, electrical, and computer science with more than two decades
`
`focused on embedding sensing, including wearable and wireless sensors. I have 20
`
`years of experience in wearable devices and computing, during which I invented
`
`and fielded many types of wearable activity tracking devices that utilized a variety
`
`of power management and wakeup protocols.
`
`8.
`
`I am the Alexander W. Dreyfoos (1954) Professor in Media Arts and
`
`Sciences at the Massachusetts Institute of Technology (MIT), where I direct the
`
`
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`Responsive Environments Group, which explores how sensor networks augment
`
`and mediate human experience, interaction and perception. I also have served as
`
`co-director of the Things That Think Consortium, a group of MIT Media Lab
`
`researchers and industrial partners focused on the future of embedded computation
`
`and sensing, and am now serving as our Associate Department Head.
`
`9.
`
`I received my B.S. in electrical engineering and physics summa cum
`
`laude from Tufts University in 1977 and my Ph.D. in physics from MIT in 1981.
`
`From 1981 to 1984, I did post-doctoral research at the Swiss Federal Institute of
`
`Technology (ETH) in Zurich, working on sensor technology for high-energy
`
`particle physics. From 1984-1994, I was a physicist at the Draper Laboratory in
`
`Cambridge, Massachusetts, where, as a member of the NASA Systems and
`
`Advanced Sensors and Signal Processing Directorates, my research included
`
`spacecraft control systems and sensor technology for both sonar systems and high-
`
`energy physics. I also worked at Draper Lab as an undergraduate (1974-1978) on
`
`software for advanced strategic inertial measurement units and guidance systems.
`
`From 1992-1994, I directed the development of precision alignment sensors for the
`
`GEM muon detector at the Superconducting Supercollider, and worked on design
`
`of particle detectors at the CERN Large Hadron Collider (LHC).
`
`10.
`
`I joined the MIT Media Lab in 1994. The MIT Media Lab was
`
`founded in 1985 to actively promote a unique, anti-disciplinary culture that focuses
`
`
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`on research projects joining different technological and academic fields. As
`
`described further below, researchers at the MIT Media Lab have pioneered areas
`
`such as wearable computing, tangible interfaces, and affective computing.
`
`Examples of products or platforms spun off Media Lab research include electronic
`
`ink readers such as the Amazon Kindle and Barnes & Noble Nook, the popular
`
`video game Guitar Hero, the MPEG-4 structured audio format, the first bionic
`
`lower-leg system for amputees, wireless mesh networks developed by Nortel, and
`
`the Mercury RFID Reader, commercialized by spin-off ThingMagic. Today, the
`
`Lab is supported by more than 70 sponsors/members, comprising some of the
`
`world’s leading corporations and representing the fields of electronics,
`
`entertainment, fashion, health care, greeting cards, and telecommunications, among
`
`others. Faculty members, research staff, and students at the Lab work in more than
`
`25 research groups on more than 350 projects that range from digital approaches
`
`for treating neurological disorders, to a stackable, electric car for sustainable cities,
`
`to advancing imaging technologies that can see around corners.
`
`11. Upon joining the Media Lab, I focused on developing new sensing
`
`modalities for human-computer interaction, then by 1997 evolved my research into
`
`wearable wireless sensing and distributed sensor networks. This work anticipated
`
`and influenced transformative products and industries that have blossomed in
`
`recent years. For example, the sensor-laden wireless shoe I developed for
`
`
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`interactive dance in 1997 is recognized as a watershed in the field of wearable
`
`wireless sensing and was an inspiration for the Nike+, one of the very first activity
`
`trackers and the first commercial product to integrate dynamic music with
`
`monitored exercise. My team went on to pioneer clinical gait analysis with
`
`wearable wireless sensors in collaboration with the Massachusetts General
`
`Hospital (MGH) in 2002, and then broke new ground in sports medicine with
`
`another MGH collaboration that developed an ultra-wide-range wireless inertial
`
`measurement unit system for evaluating professional baseball pitchers in 2007. My
`
`team and I have also been leaders on wearable sensing for Human-Computer
`
`Interfaces, over the past decade fielding, for example, wristbands to measure finger
`
`position, wristbands to enable pointing interaction and control of heating and
`
`lighting, and even a wireless touchpad mounted on a fingernail.
`
`12. Leading to over 300 publications, 17 issued patents, and a string of
`
`awards in the Pervasive Computing, Human Computer Interaction, and sensor
`
`network communities, my research has become the basis for widely established
`
`curricula. Many of these publications are directed to wearables. I have also advised
`
`over 55 graduate (MS and PhD) theses for students who have done their work in
`
`my research group, and served as a reader for roughly 100 MS and PhD students in
`
`other groups and at other universities. Some of my own students have gone on to
`
`prominence in their own careers that have involved wearables—for example, Dr.
`
`
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`Nan-Wei Gong (PhD 2013) was the R&D lead of Project Jacquard (integrating
`
`electronics and textiles) at Google ATAP before becoming founder and CEO of
`
`her own companies with a wearable focus ‘Circular2’ and ‘Figure8', and Dr. Stacy
`
`Morris Bamberg (PhD 2004) became a tenured professor at the University of Utah
`
`doing wearable gait analysis, then started a company in this space (Veristride). I
`
`have given over 300 invited talks, panel appearances, and seminars worldwide,
`
`recently keynoting on topics relating to ubiquitous sensing and the Internet of
`
`Things (IoT) for prestigious venues ranging from the Sensors Expo (the main
`
`industrial sensors conference) to the World Economic Forum. I am frequently
`
`asked to address industrial groups on wearables and IoT, and often engage with the
`
`Media Lab’s extensive list of industrial partners in strategizing these areas.
`
`13.
`
`I belong to and participate in various professional organizations. I am
`
`a senior member of the IEEE (Institute of Electrical and Electronics Engineers),
`
`and also belong to the ACM (Association for Computer Machinery). I also belong
`
`to the APS American Physical Society (the major professional society in physics),
`
`and am a senior member in the AIAA (the American Institute of Aeronautics and
`
`Astronautics). Within the IEEE, I belong to the Signal Processing Society, the
`
`Controls Society, and the Computer Society. As detailed in my CV, I have served
`
`on many Technical Program Committees (TPCs, which solicit, review, and select
`
`papers for academic conferences) and journal editorial boards, plus have organized
`
`
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`academic conferences in areas such as wireless sensor networks, wearable
`
`computing and wearable sensing, human-computer interfaces, ubiquitous
`
`computing, etc.
`
`14. One of the themes of my research has been on low-power embedded
`
`systems and energy harvesting. I have written several well-regarded papers on
`
`these topics that well predate the ‘508 Patent—for example, the review article that
`
`I wrote for IEEE Pervasive Computing in 2005, ‘Energy Scavenging for Mobile
`
`and Wireless Electronics’ has become their most popular article and is widely
`
`cited. My work on smart wakeup systems (e.g., as described in my papers such as
`
`‘A Framework for the Automated Generation of Power-Efficient Classifiers for
`
`Embedded Sensor Nodes’ and ‘CargoNet: A Low-Cost MicroPower Sensor Node
`
`Exploiting Quasi-Passive Wakeup for Adaptive Asynchronous Monitoring of
`
`Exceptional Events,’ both presented at SenSys 2007), are also of relevance here.
`
`III.
`
` LEVEL OF ORDINARY SKILL IN THE ART
`
`15.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`
`
`7
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`16.
`
`I am familiar with accelerometers (including those found in portable
`
`devices such as mobile phones). I am also aware of the state of the art at the time
`
`the application resulting in the ‘508 Patent was filed. I have been informed by
`
`LG’s counsel that the earliest alleged priority date for the ‘508 Patent is December
`
`22, 2006. Based on the technologies disclosed in the ‘508 Patent, I believe 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, Computer Science, or equivalent training,
`
`as well as (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. Lack of work experience
`
`could have been remedied by additional education, and vice versa. Such
`
`academic and industry experience would be necessary to appreciate what was
`
`obvious and/or anticipated in the industry and what a POSITA would have
`
`thought and understood at the time. Based on this criteria, as of the relevant
`
`time frame for the ‘508 Patent, I possessed at least such experience and
`
`knowledge of a POSITA, as well as trained many of them by then, hence am
`
`qualified to opine on the ‘508 Patent.
`
`17. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my statements and opinions, such as those regarding my experience and the
`
`
`
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`understanding of a POSITA generally (and specifically related to the references I
`
`consulted herein), reflect the knowledge that existed in the field as of December
`
`22, 2006. Unless otherwise stated, when I provide my understanding and analysis
`
`below, it is consistent with the level of a POSITA prior to the priority date of the
`
`‘508 Patent.
`
`IV. RELEVANT LEGAL STANDARDS
`
`18.
`
`I understand that prior art to the ‘508 Patent includes patents and
`
`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ‘508 Patent. For purposes of this Declaration, I have been
`
`asked to apply December 22, 2006, the earliest alleged priority date, as the priority
`
`date.
`
`19.
`
`I am not an attorney. In preparing and expressing my opinions and
`
`considering the subject matter of the ‘508 Patent, I am relying on certain basic
`
`legal principles that counsel have explained to me. These principles are discussed
`
`below.
`
`20.
`
`I understand that a claim is unpatentable if it is anticipated under 35
`
`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
`
`A. Anticipation
`
`21.
`
`I have been informed by counsel that a patent claim is unpatentable as
`
`anticipated if each element of that claim is present either explicitly or inherently in
`
`
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`a single prior art reference. I have also been informed that, to be an inherent
`
`disclosure, the prior art reference must necessarily disclose the limitation, and the
`
`fact that the reference might possibly practice or contain a claimed limitation is
`
`insufficient to establish that the reference inherently teaches the limitation.
`
`B. Obviousness
`
`22.
`
`I have been informed that a claimed invention is unpatentable under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which the subject
`
`matter pertains. I have also been informed by counsel that the obviousness analysis
`
`takes into account factual inquiries including the level of ordinary skill in the art,
`
`the scope and content of the prior art, and the differences between the prior art and
`
`the claimed subject matter.
`
`23.
`
`I have been informed by counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. Some of these rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`
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`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
`
`in the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`V. OVERVIEW OF THE ‘508 PATENT
`A.
`
`Summary of the Patent
`
`24. 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 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.
`
`
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`25. The claims of the ‘508 patent 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.
`
`26. 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 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.
`
`
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`27. 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.” In my opinion, the disclosures provided in
`
`the Fabio and Pasolini references either anticipate or render obvious each and
`
`every element of the claims discussed below.
`
`B.
`
`Prosecution History
`
`28. The ‘508 patent issued on January 26, 2010 from U.S Patent
`
`Application No. 11/644,455 filed on December 22, 2006.
`
`29. The first Office Action issued on August 31, 2009, and included no
`
`prior art rejections. See Ex. 1002, p.70. The Action did, however, include multiple
`
`objections 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, p.54. A Notice of Allowance then
`
`
`
`13
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`Ex. 1003
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`Paradiso Decl.
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`Inter Partes Review of U.S. 7,653,508
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`issued on November 30, 2009. See Ex. 1002, p.16. In the Allowance, the Examiner
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`did not provide any specific reason but instead quoted the independent claims and
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`merely stated that a few cited references did not teach the limitations of the claims.
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`See Ex. 1002, p.22. As can be observed from the prosecution history, the Fabio and
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`Pasolini references discussed below were not cited or applied by the Examiner.
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`VI. BROADEST REASONABLE INTERPRETATION
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`30.
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`It is my understanding that in order to properly evaluate the ‘508
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`Patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claims are to be given their
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`broadest reasonable interpretation in light of the specification. It is my further
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`understanding that claim terms are given their ordinary and accustomed meaning
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`as would be understood by one of ordinary skill in the art, unless the inventor has
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`set forth a special meaning for a term. In order to construe the following claim
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`terms, I have reviewed the entirety of the ‘508 Patent, as well as its prosecution
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`history.
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`A.
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`“dominant axis”
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`31. This term appears in at least claims 1 and 11. In the specification of
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`the ‘508 patent, the dominant axis is determined based on the accelerometer’s
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`alignment with gravity. For example, the specification states that “[i]n one
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`embodiment, the dominant axis is assigned after identifying a gravitational
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`14
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`influence. The gravitational influence may be identified by calculating total
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`acceleration based upon the acceleration on each axis.” Ex. 1001, 14:34-38. The
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`specification also states that “[i]n one embodiment, once the orientation is
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`determined, a dominant axis is assigned based upon the orientation. Determining
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`an orientation of the electronic device 100 may include identifying a gravitational
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`influence.” Ex. 1001, 6:12-15. In other words, the dominant axis is “the axis most
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`influenced by gravity, which may change over time (e.g., as the electronic device is
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`rotated).” Ex. 1001, 6:16-18.
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`32. Thus, for the purposes of this proceeding, it is my opinion that a
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`POSITA would understand the broadest reasonable interpretation of the term
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`“dominant axis” to include “the axis most influenced by gravity.”
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`B.
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`“cadence window”
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`33. This term appears in at least claims 3, 6, 7, 10, 13, 15, 16, and 19. The
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`specification specifically defines this term as “a window of time since a last step
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`was counted that is looked at to detect a new step.” Ex. 1001, 3:64-65.
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`34. Thus, for the purposes of this proceeding, it is my opinion that a
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`POSITA would understand the broadest reasonable interpretation of the term
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`“cadence window” to include “a window of time since a last step was counted that
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`is looked at to detect a new step.”
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`15
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`Paradiso Decl.
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`C.
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`“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”
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`35. This term appears in at least claim 11. The specification describes that
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`“dominant axis logic 127 is used to determine an orientation of the electronic
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`device 100 and/or an inertial sensor within the electronics device 100.” See Ex.
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`1001, 3:4-8. “At processing block 812, in one embodiment the inertial sensor is
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`oriented by assigning a dominant axis. Assigning a dominant axis may include
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`calculating rolling averages of acceleration and assigning the dominant axis based
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`on the rolling averages of acceleration.” Ex. 1001, 12:42-43. The specification
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`further describes that the present invention may be performed by hardware,
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`software, or a combination of both. See Ex. 1001, 14:50-56.
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`36. Accordingly, it is my opinion that a POSITA would have understood
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`the broadest reasonable interpretation of this claim term to include “hardware,
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`software, or both to continuously determine an orientation of a device, to assign a
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`dominant axis, and to update the dominant axis as the orientation of the device
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`changes.”
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`37. However, to the extent that Patent Owner overcomes the presumption
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`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
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`have understood the claim itself and the specification to provide:
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`Function: continuously determine an orientation of a device, to assign
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`a dominant axis, and to update the dominant axis as the orientation of
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`the device changes;
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`Structure: software, hardware, or combination thereof to perform
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`actions in block 812. See Ex. 1001, 12:42-43, 14:50-56;
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`D.
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`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis”
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`38. This term appears in at least claim 11. The specification describes
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`“step counting logic 130” that is used “to determine if a step has occurred” and
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`indicate if “a step may be counted . . . .” Ex. 1001, 6:40-45, 7:2. In one example, at
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`block 615, “measurement data is checked to determine whether an additional step
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`is recognized.” Ex. 1001, 11:19-21. At block 620, “[i]f an additional step is
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`recognized, then it is added to the final or actual step count.” Ex. 1001, 11:21-22.
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`The specification further describes that the present invention may be performed by
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`hardware, software, or a combination of both. See Ex. 1001, 14:50-56.
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`39. Accordingly, it is my opinion that a POSITA would have understood
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`the broadest reasonable interpretation of this claim term to include “hardware,
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`software, or both to count periodic human motions by monitoring accelerations
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`relative to the dominant axis, or identify and count periodic human motions.”
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`17
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`Paradiso Decl.
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`Inter Partes Review of U.S. 7,653,508
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`40. However, to the extent that Patent Owner overcomes the presumption
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`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
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`have understood the claim itself and the specification to provide:
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`Function: count periodic human motions by monitoring accelerations
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`relative to the dominant axis;
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`Structure: software, hardware, or combination thereof to perform
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`actions in blocks 615 and 620. See Ex. 1001, 7:46-60, 14:50-56.
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`E.
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`“a counting logic to identify and count periodic human motions”
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`41. This term appears in at least claim 15. The specification describes
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`“step counting logic 130” that is used “to determine if a step has occurred” and
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`indicate if “a step may be counted . . . .” Ex. 1001, 6:40-45, 7:2. In one example, at
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`block 615, “measurement data is checked to determine whether an additional step
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`is recognized.” Ex. 1001, 11:19-21. At block 620, “[i]f an additional step is
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`recognized, then it is added to the final or actual step count.” Ex. 1001, 11:21-22.
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`The specification further describes that the present invention may be performed by
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`hardware, software, or a combination of both. See Ex. 1001, 14:50-56.
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`42. Accordingly, it is my opinion that a POSITA would have understood
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`the broadest reasonable interpretation of this claim term to include “hardware,
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`software, or both to count periodic human motions by monitoring accelerations
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`relative to the dominant axis, or identify and count periodic human motions.”
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`18
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`Paradiso Decl.
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`Inter Partes Review of U.S. 7,653,508
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`43. However, to the extent that Patent Owner overcomes the presumption
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`against construc