Trials@uspto.gov
`571-272-7822
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`Paper 27
`Date: January 27, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`IPR2018-015891
`Patent 7,653,508 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`1 Samsung Electronics America, Inc., which filed a petition in IPR2019-
`00889, has been joined as a petitioner in this proceeding.
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`
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`

`

`IPR2018-01589
`Patent 7,653,508 B1
`
`
`I. INTRODUCTION
`
`A. Background
`HTC Corporation and HTC America, Inc. (“Petitioner”) filed a
`
`Petition for inter partes review of claims 1–4, 6–8, 11–16, 19, and 20 of
`U.S. Patent No. 7,653,508 B1 (Ex. 1001, “the ’508 patent”). Paper 1
`(“Pet.”), 1. Concurrently with its Petition, Petitioner filed a Motion for
`Joinder with Apple Inc. v. Uniloc 2017 LLC, IPR2018-00387 (“the Apple
`IPR”). Paper 3 (“Motion” or “Mot.”). Uniloc 2017 LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 8.
`
`On February 27, 2019, we instituted an inter partes review. Paper 9
`(“Institution Decision” or “Inst. Dec.”), 10–12. In the Institution Decision,
`we granted in part Petitioner’s Motion with respect to claims 1–4, 6–8, 11–
`16, and 19, and denied in part Petitioner’s Motion with respect to claim 20
`(which was not challenged in the Apple IPR). Id. We explained,
`
`Given that Petitioner is being joined as a party to the
`Apple IPR and that “Petitioner[] agree[s] to proceed on the
`grounds, evidence, and arguments advanced, or that will be
`advanced, in the Apple IPR as instituted,” Petitioner is bound
`by the ultimate determination made in the Apple IPR regarding
`claims 1–4, 6–8, 11–16, and 19. See 35 U.S.C. §§ 315(e)(1),
`325(d); 37 C.F.R. § 42.73(d)(1). Accordingly, Petitioner shall
`not advance any arguments regarding these claims in this
`proceeding; all grounds raised by Petitioner regarding these
`claims will be addressed in the Apple IPR. The parties are
`limited to advancing arguments regarding claim 20 in this
`proceeding.
`Id. at 10 (alterations in original).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 11, “PO Resp.”), Petitioner filed a Reply to the Patent
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`Owner Response (Paper 12, “Pet. Reply”), and Patent Owner filed a Sur-
`Reply to Petitioner’s Reply (Paper 14, “PO Sur-Reply). An oral hearing was
`held on December 11, 2019. A transcript of the hearing has been entered
`into the record. Paper 26 (“Tr.”).
`
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response will be deemed
`waived.” See Paper 10, 5; see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (“CTPG”) 66 (Nov. 2019)2 (“The patent
`owner response . . . should identify all the involved claims that are believed
`to be patentable and state the basis for that belief.”).
`
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–4, 6–8, 11–16, 19, and 20 of
`the ’508 patent are unpatentable.
`
`B. Related Matters
`The parties indicate that the ’508 patent is the subject of the following
`
`litigation:
`Uniloc USA, Inc. v. Apple Inc., No. 2-17-cv-00522 (E.D. Tex.
`filed June 30, 2017),
`Uniloc USA, Inc. v. Samsung Electronics America, Inc., No. 2-
`17-cv-00650 (E.D. Tex. filed Sept. 15, 2017),
`Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 4-12-cv-
`00832 (N.D. Tex. filed Oct. 13, 2017),
`Uniloc USA, Inc. v. HTC America, Inc., No. 2-17-cv-01629
`(W.D. Wash. filed Nov. 1, 2017),
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`3
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`
`Uniloc USA, Inc. v. Huawei Devices USA, Inc., No. 2-17-cv-
`00737 (E.D. Tex. filed Nov. 9, 2017),
`Uniloc USA, Inc. v. Apple Inc., No. 4-18-cv-00364 (N.D. Cal.
`filed Jan. 17, 2018), and
`Uniloc USA, Inc. v. LG Electronics USA, Inc., No. 4-18-cv-
`02918 (N.D. Cal. filed May 17, 2018).
`Pet. 2; PO Resp. 2. The ’508 patent is also the subject of several inter partes
`reviews:
`Apple, Inc. v. Uniloc 2017, LLC, IPR2018-00387 (the Apple
`IPR),
`Apple, Inc. v. Uniloc 2017, LLC, IPR2018-01026,
`LG Electronics, Inc. v. Uniloc 2017, LLC, IPR2018-01577,
`Samsung Electronics America, Inc. v. Uniloc 2017, LLC,
`IPR2018-01756, and
`Samsung Electronics America, Inc. v. Uniloc 2017, LLC,
`IPR2019-00889.
`
`C. Real Parties-in-Interest
`The statute governing inter partes review proceedings sets forth
`
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a)(2); see also
`37 C.F.R. § 42.8(b)(1) (requiring identification of real parties-in-interest in
`mandatory notices). The Petition identifies HTC Corporation and HTC
`America, Inc. as the real parties-in-interest. Pet. 2. Patent Owner states that
`its real parties-in-interest are Uniloc 2017 LLC, Uniloc USA, Inc., and
`Uniloc Licensing USA LLC. Paper 6, 2.
`
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`IPR2018-01589
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`
`D. The Challenged Patent
`The ’508 patent discloses a device and method for counting a user’s
`
`steps using an inertial sensor. Ex. 1001, 1:5–7, 2:8–9. As used in the ’508
`patent, a “step” is “any user activity having a periodic set of repeated
`movements.” Id. at 3:32–36. A tri-axis inertial sensor can be used to
`provide acceleration data as a function of time along three axes. Id. at 3:37–
`44, Fig. 2. Steps are counted by analyzing acceleration data relative to a
`dominant axis, which can be the axis most influenced by gravity or an axis
`that is defined as approximately aligned to gravity. Id. at 6:22–55. An
`example acceleration chart is shown in Figure 2, which is reproduced below:
`
`
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`
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`Figure 2 illustrates an exemplary cadence of motion graph displaying
`acceleration measurements versus time along a first axis 203, a second axis
`205, and a third (dominant) axis 207. Id. at 1:45–47, 3:42–45.
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`IPR2018-01589
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`Step counting may be accomplished by taking an acceleration
`
`measurement, filtering the measurement to remove high and/or low
`frequency data, and determining whether the measurement is within a certain
`amount of time since the last step was counted. Ex. 1001, 3:65–67, 12:31–
`51. If the measurement is made within the allowed time, it is further
`evaluated to determine whether the acceleration along the dominant axis is
`greater than a lower threshold. Id. at 12:52–58. A step may be counted if
`the measurement is greater than the lower threshold, greater than previous
`measurements, and less than an upper threshold, and if it is determined that
`the user is moving away from gravity (e.g., the user is lifting a foot from the
`ground rather than planting a foot on the ground). Id. at 12:59–63, 13:33–
`14:3, Fig. 8.
`
`In operation, the system is initiated in a sleep mode during which data
`is collected at a low sampling rate. Ex. 1001, 8:20, 8:64–66. If acceleration
`is detected, an entry mode is initiated. Id. at 8:22–23. If a certain number of
`steps are detected in a predetermined amount of time, the system shifts to a
`stepping mode; if not, the system returns to the sleep mode. Id. at 8:24–29.
`In the stepping mode, data is monitored to count steps according to
`predefined sets of rules and motion criteria. Id. at 8:30–35. If a step is not
`detected within a set time interval, the system shifts into an exit mode. Id. at
`8:35–37. If a certain number of steps are detected in a predetermined
`amount of time in the exit mode, the system returns to the stepping mode; if
`not, the system returns to the entry mode. Id. at 8:38–44.
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`IPR2018-01589
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`
`E. The Challenged Claim
`As noted above, only claim 20 is considered in this inter partes
`
`review. Inst. Dec. 10–12. Claim 20 depends from claim 15 through
`claim 19. Ex. 1001, 16:54–56. Claims 15, 19, and 20 are reproduced below:
`15. A device including an inertial sensor, comprising:
`
`a counting logic, to identify and count periodic human
`motions;
`
`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; and
`
`a buffer, to buffer periodic human motions when the
`device is in the non-active mode.
`19. The device of claim 15, further comprising:
`
`a cadence logic, to set the appropriate cadence windows.
`20. The device of claim 19, wherein the cadence logic
`adjusts the cadence windows based on a measured cadence
`associated with the periodic human motion.
`Ex. 1001, 16:30–39, 16:52–56.
`
`
`
`F. Instituted Grounds of Unpatentability
`The Petition relies on the following prior art references:
`Reference
`Date
`US 7,463,997 B2 (“Pasolini”)
`filed Oct. 2, 2006
`issued Dec. 9, 2008
`filed Oct. 2, 2006
`issued Apr. 13, 2010
`
`US 7,698,097 B2 (“Fabio”)
`
`Exhibit
`1005
`
`1006
`
`7
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`IPR2018-01589
`Patent 7,653,508 B1
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`
`
`Petitioner sets forth the following grounds of unpatentability:
`Claims Challenged
`35 U.S.C. §
`Reference(s)
`1, 2, 11, 12
`103(a)3
`Pasolini
`6–8, 15, 16, 19
`103(a)
`Fabio
`3, 4, 13, 14, 20
`103(a)
`Pasolini, Fabio
`
`Pet. 16. Petitioner submits a declaration of Joseph A. Paradiso, Ph.D.
`(Ex. 1003) in support of its contentions.
`
`II. ANALYSIS
`
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`
`demonstrate by a preponderance of the evidence that the claims challenged
`in the Petition are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`This burden of persuasion never shifts to the patentee. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).
`
`A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,
`
`
`3 The ’508 patent was filed on December 22, 2006, prior to the date when
`the Leahy-Smith America Invents Act (“AIA”) took effect.
`
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`objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S.
`1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`Citing its declarant, Petitioner contends that a person having ordinary
`
`skill in the art at the time of the invention (“POSITA”) would have had “a
`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
`Computer Science, or equivalent training,” and “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. 6–7 (citing Ex. 1003, 10). Patent Owner does not
`refute Petitioner’s definition or offer a competing definition. PO Resp. 3.
`
`We find Petitioner’s definition reasonable, and, because it is
`consistent with the problems and solutions in the ’508 patent and cited
`references, we adopt it as our own. See, e.g., Ex. 1001, 1:11–18 (discussing
`MEMS technology); Ex. 1005, 1:34–39 (same); Ex. 1006, 2:49–52 (same);
`see also In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (“In
`determining this skill level, the court may consider various factors including
`type of problems encountered in the art; prior art solutions to those
`problems; rapidity with which innovations are made; sophistication of the
`technology; and educational level of active workers in the field.” (citations
`and internal quotations omitted)).
`
`C. Claim Construction
`In an inter partes review filed before November 13, 2018, a claim in
`
`an unexpired patent shall be given its broadest reasonable construction in
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`light of the specification of the patent in which it appears.4 37 C.F.R.
`§ 42.100(b) (2018); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Consistent with the broadest reasonable construction, claim terms
`are presumed to have their ordinary and customary meaning as understood
`by a person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). The presumption may be overcome by providing a definition of the
`term in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a definition, limitations are not to be read from the
`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms which are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`
`When a claim term does not include the word “means,” a rebuttable
`presumption that the term is not drafted in means-plus-function language can
`
`
`4 This Petition was filed before the effective date of the amendment to
`37 C.F.R. § 42.100 that changed the claim construction standard applied in
`inter partes reviews. See Changes to the Claim Construction Standard for
`Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal
`Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R.
`§ 42.100(b) effective Nov. 13, 2018). Thus, we use the broadest reasonable
`interpretation claim construction standard for this proceeding.
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`be overcome “if the challenger demonstrates that the claim term fails to
`recite sufficiently definite structure or else recites function without reciting
`sufficient structure for performing that function.” Williamson v. Citrix
`Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc in relevant part)
`(quotation marks and internal citations omitted). If the presumption is
`overcome, “[a]pplication of § 112, ¶ 6 requires identification of the structure
`in the specification which performs the recited function,” but does not
`permit “incorporation of structure from the written description beyond that
`necessary to perform the claimed function.” Micro Chem., Inc., v. Great
`Plains Chem. Co., 194 F.3d 1250, 1257–58 (Fed. Cir. 1999).
`
`Petitioner proposes constructions for certain claim terms, asserting
`that its “claim constructions . . . are based on the broadest reasonable
`construction.” Pet. 7–15. Patent Owner disagrees with Petitioner’s
`proposed constructions. PO Resp. 3–6.
`
`1. “logic” terms
`We first address the “logic” terms recited in claim 20 via its
`
`dependence from claims 15 and 19: “counting logic,” “mode logic,” and
`“cadence logic.” Pet. 11–14. Petitioner contends that these terms would
`have been understood to include “hardware, software, or both” to perform
`the functions recited. See id. at 11–13. Petitioner also contends that “to the
`extent that Patent Owner overcomes the presumption against construction
`under 35 U.S.C. § 112, sixth paragraph, a POSITA would have understood”
`certain structures to be associated with the recited functions. Id. at 12, 13,
`14. More particularly, Petitioner contends that these terms “under the
`narrower Phillips standard,” which does not apply in this inter partes
`review, are directed to “logic,” which “invoke[s] § 112 ¶ 6 but fail[s] to meet
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`IPR2018-01589
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`the definiteness requirement of § 112 ¶ 2.” Id. at 14. Patent Owner
`contends that none of these “logic” terms are governed by 35 U.S.C. § 112
`¶ 6, and that no construction is necessary. PO Resp. 5−6.
`
`We determine that the presumption against application of § 112 ¶ 6
`has not been overcome, and that express construction of these terms is not
`necessary. None of these “logic” terms recite the word “means,” and,
`therefore, there is a presumption that the terms are not drafted in means-
`plus-function format. Williamson, 792 F.3d at 1349. Additionally, although
`preserving for district court litigation its position that the claims are drafted
`in means-plus-function format, Petitioner affirmatively argues here, and
`supports with testimonial evidence, the contention that a person of ordinary
`skill in the art would interpret each of these “logic” terms to include
`“hardware, software, or both.” See Ex. 1003 ¶¶ 42, 45, 48. Patent Owner
`similarly contends that none of these “logic” terms are governed by
`35 U.S.C. § 112 ¶ 6. PO Resp. 5–6.
`
`Therefore, under Williamson, neither party has challenged the
`rebuttable presumption that § 112 ¶ 6 does not apply to these terms, which
`do not use the word “means.” Petitioner’s alternative position that these
`claim terms are indefinite appears to give “notice” of its claim construction
`position in district court, but is not a position that Petitioner is affirmatively
`asserting in this proceeding. See Pet. 15 (stating that “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 [P]etition”). More
`importantly, there is no record evidence, proposed by either party, to support
`the construction of these “logic” terms as nonce words under § 112 ¶ 6, and,
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`therefore, the presumption against application of § 112 ¶ 6 is unrebutted.
`See Zeroclick LLC v. Apple Inc., 891 F.3d 1003, 1007–08 (Fed. Cir. 2018).
`
`2. cadence window
`Petitioner proposes that “cadence window” includes “a window of
`
`time since a last step was counted that is looked at to detect a new step.”
`Pet. 9 (citing Ex. 1003, 18). Patent Owner does not contest Petitioner’s
`proposal or offer one of its own. PO Resp. 3–4.
`
`Petitioner relies on language from the Specification of the ’508 patent,
`namely the statement that “[a] cadence window is a window of time since a
`last step was counted that is looked at to detect a new step” (Ex. 1001, 3:65–
`67). We note that the ’508 patent also states: “cadence window (the
`allowable time window for steps to occur).” Id. at 3:58–59. These
`descriptions are similar in that they are both lengths of time during which a
`step can be detected, with Petitioner’s definition being narrower due to the
`requirement that the cadence window occurs “since a last step was counted.”
`We understand Petitioner to interpret “[a] cadence window is a window of
`time since a last step was counted that is looked at to detect a new step” (id.
`at 3:65–67 (emphasis added)) to indicate that a definition is provided.
`
`We agree with Petitioner’s reasoning regarding “is,” adopt
`Petitioner’s proposed construction, and determine that a “cadence window”
`is a window of time since a last step was counted that is looked at to detect a
`new step.
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`
`D. Overview of the Prior Art
`
`1. Pasolini
`Pasolini discloses a pedometer and step detection method. Ex. 1005,
`
`1:10–12. The pedometer includes an accelerometer and a processing unit.
`Id. at 2:60–63. The pedometer is carried by the user, and the accelerometer
`senses vertical accelerations that occur with each step due to impact of the
`feet on the ground. Id. at 2:66–3:29. The accelerometer produces an
`acceleration signal corresponding to the detected accelerations, and the
`processing unit acquires, at pre-set intervals, samples of the signal. Id. at
`3:16–19, 3:30–33. The processing unit processes the acceleration signal to
`count the number of steps taken by the user. Id. at 3:32–34. Figure 2 is
`reproduced below:
`
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`
`
`Figure 2 shows a graph corresponding to the pattern of an acceleration signal
`during a step. Id. at 2:39–40.
`
`Step counting may be accomplished by an algorithm that analyzes the
`acceleration signal to look for a positive phase of the step followed by a
`negative phase within a pre-set time interval from the occurrence of the
`positive phase. Ex. 1005, 3:63–66. During the positive phase, a positive-
`acceleration peak occurs (i.e., directed upwards) due to contact and
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`consequent impact of the foot with the ground; during the negative phase, a
`negative-acceleration peak occurs (i.e., directed downwards) due to rebound,
`having an absolute value smaller than that of the positive-acceleration peak.
`Id. at 3:23–29. The processing unit compares the value of the acceleration
`signal with positive and negative reference thresholds (S+ and S−,
`respectfully) to identify, respectively, the positive phase (positive
`acceleration peak) and the negative phase (negative acceleration peak) of the
`step. Id. at 3:36–41. Acceleration datum (CalAcc) values are calculated for
`each acceleration sample (Acc) based on the acceleration sample value and a
`mean value (Accm) of the acceleration samples. Id. at 6:5, Fig. 3. The
`positive phase is detected when the acceleration datum exceeds the positive
`reference threshold and then drops below the positive reference threshold.
`Id. at 4:35–40. The negative phase is detected when the acceleration datum
`drops below the negative reference threshold within a certain time interval,
`in which case the processing unit increments the count of detected steps and
`the algorithm looks for a new potential positive phase of a step. Id. at 4:66–
`5:3, 5:40–41. If no negative phase is detected within the time interval, the
`algorithm looks for a new potential positive phase of a step without
`incrementing the step count. Id. at 4:62–65, Fig. 3. Alternatively, the step
`detection can be based solely on the positive phase of the step. Id. at 7:65–
`8:1.
`The accelerometer can be a linear accelerometer (Ex. 1005, 2:61), and
`
`can also be a three-axis accelerometer (id. at 8:11–15). In the latter case, the
`processing unit identifies the axis having the highest mean acceleration
`value (due to gravity) as the main vertical axis to be used for step detection.
`Id. at 8:15–24.
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`
`2. Fabio
`Fabio discloses a pedometer that includes an inertial sensor and a
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`control unit. Ex. 1006, 2:34–40, Figs. 1–2. The pedometer is carried by the
`user, and the inertial sensor measures accelerations along its detection axis.
`Id. at 2:49–59. Steps are detected by analyzing the acceleration data for a
`positive peak exceeding a first threshold AZP, followed by a negative peak
`exceeding a second threshold AZN within a certain time window TW after
`the positive peak. Id. at 4:12–21. Figure 5 is reproduced below:
`
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`
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`Figure 5 shows a graph of the acceleration signal measured during a step of
`the user. Id. at 4:13–15, 6:23–26.
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`A detected step is validated as a step when it falls within a variable
`time window TV, which is illustrated in Figure 6, reproduced below.
`
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`Figure 6 of Fabio is a graph illustrating quantities used to validate user steps
`detected from acceleration data. Ex. 1006, 2:24–25. Figure 6 illustrates a
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`sequence of user steps detected at times TR(1), TR(2), . . . , TR(K−2),
`TR(K−1), and TR(K) according to the method disclosed in Figure 5. The
`time between steps detected at times TR(K−1) and TR(K−2) is ∆TK−1; the
`time between steps detected at times TR(K) and TR(K−1) is ∆TK. Id. at
`4:28–35. For the step detected at time TR(K) to be validated as a step, it
`must fall within variable time window TV; i.e., TR(K) must be greater than
`TR(K−1) + ½ (∆TK−1) and less than TR(K−1) + 2 (∆TK−1). Id. at 4:35–52.
`
`In operation, the control unit initially implements a first counting
`procedure in which acceleration data is sampled at a pre-determined
`frequency. Ex. 1006, 3:13–21, Figs. 3–4. The user is considered to be at
`rest, and the control unit executes the first counting procedure to analyze
`acceleration data for an indication that the user is engaged in activity with a
`regular gait. Id. at 3:22–27. If a regular gait is detected, the number of
`detected steps during the first counting procedure is added to the number of
`total steps and the control unit executes a second counting procedure
`according to which each detected valid step is added to the number of total
`steps; if no regular gait is detected within a certain amount of time, the
`pedometer is set in a low power consumption state and the control unit
`executes a surveying procedure until the pedometer is moved. Id. at 3:27–
`56, Figs. 4, 7, 8. If, when executing the second counting procedure, an
`interruption in locomotion is detected, the control unit reverts to the first
`counting procedure. Id. at 3:44–49. If pedometer movement is detected
`during execution of the surveying procedure, the control unit reverts to the
`first counting procedure. Id. at 3:53–57, Fig. 3.
`
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`IPR2018-01589
`Patent 7,653,508 B1
`
`
`E. Claims 1–4, 6–8, 11–16, and 19
`As noted above, “Petitioner is bound by the ultimate determination
`
`made in the Apple IPR regarding claims 1–4, 6–8, 11–16, and 19.” Inst.
`Dec. 10 (citing 35 U.S.C. §§ 315(e)(1), 325(d); 37 C.F.R. § 42.73(d)(1)). A
`Final Written Decision has issued in the Apple IPR, in which claims 1–4, 6–
`8, 11–16, and 19 were determined to be unpatentable. Apple IPR, Paper 21
`at 49; see also id. at Paper 23 (Decision Denying Patent Owner’s Request on
`Rehearing of Final Written Decision). For the same reasons set forth in the
`Apple IPR, we determine Petitioner has demonstrated by a preponderance of
`evidence that claims 1–4, 6–8, 11–16, and 19 of the ’508 patent are
`unpatentable. See Apple IPR, Paper 21 at 19–48.
`
`F. Claim 20
`The Petitioner maps claim 20 to Fabio. Pet. 72–73. Referencing its
`
`arguments made regarding claims 3 and 19, Petitioner contends that “Fabio
`teaches a cadence logic that sets the appropriate cadence window for each
`step based on the previous step,” and “the validation interval TV (i.e., the
`cadence window) for each new step is continuously updated based on the
`timing and duration of the immediately preceding step.” Id. at 72 (citing
`Ex. 1003, 94–95). “Because the validation interval for each step is updated
`based on the timing and duration of the immediately preceding step, a
`POSITA would have understood that the validation interval (i.e., the cadence
`window) is adjusted based on a measured cadence associated with the
`periodic human motion.” Id. (citing Ex. 1003, 95).
`
`Patent Owner disputes Petitioner’s contentions. PO Resp. 6–18.
`Patent Owner first presents several arguments, directed to claim 6 and
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`IPR2018-01589
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`claim 15 from which claim 20 depends, that are substantially similar to
`arguments made in the Apple IPR. Id. at 6–16. First, Patent Owner argues
`that “Fabio’s [validation interval] 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).” Id. at
`8 (citing Ex. 1006, 4:28–49); see also id. at 14 (referencing arguments in
`sections “VI.A.1‒2”), 17 (referencing arguments in section “VI.A.1”). This
`is the same “retrospective” argument Patent Owner made in the Apple IPR.
`See Apple IPR, Paper 11 at 11–13 (Patent Owner Response). This argument
`is not persuasive for the same reasons set forth in the Apple IPR. See id.,
`Paper 21 at 30–33 (Final Written Decision); Paper 23 at 2–4 (Decision
`Denying Patent Owner’s Request on Rehearing of Final Written Decision).
`
`In the Apple IPR Final Decision, we addressed—at length—Patent
`Owner’s “retrospective” argument asserting that Fabio validates the
`preceding step (K−1) rather than the current step (K) by explaining that,
`when considering Fabio’s disclosure as a whole, Fabio discloses that the
`current step is the step being validated and counted. See Apple IPR,
`Paper 21 at 30–33. We stated, for example,
`
`We understand Patent Owner’s [retrospective]
`interpretation to be based on Fabio’s reference to the “last step
`recognized”—interpreting the “last step recognized” as the last
`or preceding step. In fact, the relevant disclosure in Fabio
`refers to the “last step recognized,” the “current step,” and the
`“immediately preceding step”:
`More precisely, the last step recognized is validated if the
`instant of recognition of the current step TR(K) falls
`within a validation interval TV, defined with respect to
`the instant of recognition of the immediately preceding
`step TR(K−1), in the following way:
`
`TV=[TR(K−1)+ΔTK−1−TA, TR(K−1)+ΔTK−1+TB]
`
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`
`where TA and TB are complementary portions of the
`validation interval TV.
`[Ex. 1006,] 4:35–43. Patent Owner contends that “last step
`recognized” refers to the immediately preceding step (K−1).
`We disagree. First, the language quoted above indicates that
`the current step has been recognized (“instant of recognition of
`the current step”), and the current step (K) necessarily occurred
`more recently than the immediately preceding step (K−1). See
`id. at Fig. 6 (illustrating a timeline of steps 1, 2, . . . , K−2, K−1,
`K). Second, only recognized steps are subjected to the
`validation test. Id. at 4:24–27 (“If . . . the step-recognition test
`is passed (output YES from block 225), the control unit 5
`executes a first validation test, corresponding to the regularity
`of the individual step (block 230).”), 6:27–34 (discussing the
`second counting procedure and stating “The second validation
`test is altogether similar to the first validation test carried out in
`block 230 of FIG. [4].”), Figs. 4, 7.
`
`Accordingly, we find that “last step recognized” refers to
`the current step (K) because both (K) and (K−1) are recognized
`steps, and between them, (K) was the last step that was
`recognized. This understanding is further supported by several
`of Fabio’s claims, which discuss validation of the “current
`detected step.” . . . We note that all of this claim language
`appeared in the Fabio application as originally filed on October
`2, 2006. See Fabio patent file history, Specification 16 (filed
`October 2, 2006) (Ex. 3001).
`
`In addition to being consistent with Fabio’s disclosure,
`Petitioner’s contentions that the current detected step (K) is the
`step being validated are supported by reference to the testimony
`of its declarant. See Pet. 45–47 (citing, in relevant part, Ex.
`1003, 58–59). We credit this testimony as it is unrebutted,
`factually supported, and more consistent with Fabio’s
`disclosure as we have described above. Consequently, we view
`Petitioner’s evidence as more persuasive (and probative) than
`Patent Owner’s reading of Fabio.
`Id. at 31–33.
`
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`Next, Patent Owner argues that the Petition is inconsistent with how it
`
`treats Fabio’s validation interval TV by first defining “cadence window” as
`being a measurement of time since the last step was counted and then
`discussing Fabio’s TV as being measured from when the last step was
`recognized. PO Resp. 9; see also id. at 14–15 (referencing arguments made
`in sections “VI.A.1–3”). This argument is the same as an argument Patent
`Owner made in the Apple IPR. See Apple IPR, Paper 11 at 13 (Patent
`Owner Response). This argu