UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION and HTC AMERICA, INC.
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`Petitioners
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`IPR2018-01589
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`PATENT 7,653,508
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`IPR2018-01589
`U.S. Patent 7,653,508
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`Table of Contents
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`
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................... 1
`
`THE ’508 PATENT .................................................................................. 1
`
`III.
`
`RELATED PROCEEDINGS .................................................................... 2
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`IV.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 3
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`V.
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`CLAIM CONSTRUCTION ...................................................................... 3
`
`A.
`
`“cadence window” .......................................................................... 3
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`“dominant axis” .............................................................................. 4
`
`“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” .......................................................................................... 4
`
`“a counting logic to count periodic human motions by
`monitoring accelerations relative to the dominant axis” ................ 4
`
`“a counting logic to identify and count periodic human
`motions” .......................................................................................... 5
`
`“a cadence logic to continuously update a dynamic
`cadence window” ............................................................................ 5
`
`“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” ..................................................... 6
`
`VI.
`
`PETITIONER FAILS TO MEET ITS BURDEN OF
`PROVING OBVIOUSNESS .................................................................... 6
`
`A.
`
`Petitioner fails to prove Fabio renders obvious the
`“cadence window” limitations of independent claim 15
`(from which Claim 20 ultimately depends) .................................... 7
`
`1.
`
`Petitioner fails to prove Fabio’s validation
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`ii
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`IPR2018-01589
`U.S. Patent 7,653,508
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`2.
`
`3.
`
`interval (TV) maps onto the distinct definition
`Petitioner offers for “cadence window” ............................... 7
`
`Petitioner has not and cannot cure Fabio’s
`deficiencies by offering a new, undefended, and
`inconsistent definition for “cadence window” ..................... 9
`
`Petitioner has not proven obviousness for the
`“switching” step introducing the “cadence
`window” term ..................................................................... 11
`
`B.
`
`C.
`
`Petitioner fails to prove Fabio renders obvious the
`“cadence window” limitations recited in dependent
`claims 19 and 20 ........................................................................... 14
`
`The Petition fails to prove obviousness of “wherein the
`cadence logic adjusts the cadence windows based on a
`measured cadence associated with the periodic human
`motion” as recited in claim 20 ...................................................... 15
`
`VII.
`
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 18
`
`VIII. CONCLUSION ....................................................................................... 19
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`
`
`
`
`List of Exhibits
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`Exhibit No.
`
`Description
`
`2001
`
`Declaration of William C. Easttom
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`iii
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`

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`IPR2018-01589
`U.S. Patent 7,653,508
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to
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`Petition IPR2018-01589 for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 7,653,508 (“the ’508 patent” or “EX1001”) filed by HTC
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`Corporation and HTC America, Inc. (“Petitioner”).
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`The Institution Decision limits this proceeding to only those regarding claim
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`20. See Paper 9, at 10 (“Accordingly, Petitioner shall not advance any arguments
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`regarding [claims 1–4, 6–8, 11–16, and 19] in this proceeding; all grounds raised by
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`Petitioner regarding these claims will be addressed in the Apple IPR. The parties are
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`limited to advancing arguments regarding claim 20 in this proceeding.”)
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`The Petition is defective for at least the reasons set forth herein.
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`II. THE ’508 PATENT
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`The ’508 patent is titled “Human activity monitoring device.” The ʼ508 patent
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`issued January 26, 2010, from U.S. Patent Application No. 11/644,455 filed
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`December 22, 2006.
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`The inventors of the ’508 patent observed that at the time, step counting
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`devices that utilize an inertial sensor to measure motion to detect steps generally
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`required the user to first position the device in a limited set of orientations. In some
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`devices, the required orientations are dictated to the user by the device. In other
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`devices, the beginning orientation is not critical, so long as this orientation can be
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`maintained. EX1001, 1:19‒26. Further, the inventors observed that devices at the
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`time were often confused by motion noise experienced by the device throughout a
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`user's daily routine. The noise would cause false steps to be measured and actual
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`IPR2018-01589
`U.S. Patent 7,653,508
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`steps to be missed in conventional step counting devices. Conventional step counting
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`devices also failed to accurately measure steps for individuals who walk at a slow
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`pace. Id., 1:27‒34.
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`According to the invention of the ’508 Patent, a device to monitor human
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`activity using an inertial sensor assigns a dominant axis after determining the
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`orientation of an inertial sensor. he orientation of the inertial sensor is continuously
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`determined, and the dominant axis is updated as the orientation of the inertial sensor
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`changes. Id., 2:8‒15.
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`III. RELATED PROCEEDINGS
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`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.
`Samsung Electronics America,
`Inc. et al
`
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`
`Apple Inc. v. Uniloc 2017 LLC
`et al
`
`Uniloc USA, Inc. et al v. Apple
`Inc.
`
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`
`Samsung Electronics America,
`Inc. et al v. Uniloc 2017 LLC
`
`2-17-cv-00650
`
`TXED Sep. 15, 2017
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`2-17-cv-00737
`
`TXED
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`Nov. 09,
`2017
`
`IPR2018-00387
`
`PTAB Dec. 22, 2017
`
`4-18-cv-00364
`
`CAND
`
`Jan. 17, 2018
`
`4-18-cv-02918
`
`CAND
`
`IPR2019-00889
`
`PTAB
`
`May. 17,
`2018
`
`Mar. 27,
`2019
`
`2
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`IPR2018-01589
`U.S. Patent 7,653,508
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition alleges that “a person of ordinary skill in the art (“POSITA”)
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`would include someone who had, at the priority date of the ’508 Patent, (i) a
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`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
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`Computer Science, or equivalent training, and (ii) approximately two years of
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`experience working in hardware and/or software design and development related to
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`MEMS (micro-electro-mechanical) devices and body motion sensing systems.” Pet.
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`7. Given that Petitioner fails to meet its burden of proof when purportedly applying
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`its own definition of a person of ordinary skill in the art, Patent Owner does not offer
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`a competing definition for purposes of this proceeding.
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`V. CLAIM CONSTRUCTION
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`The petition should be rejected as relying upon incorrect claim constructions
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`that are unreasonable in light of the intrinsic evidence. See Mentor Graphics Corp.,
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`v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B.
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`June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed.
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`Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction unreasonable in
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`light of the specification, and therefore, denying Petition as tainted by reliance on
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`an incorrect claim construction).
`
`A.
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`“cadence window”
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`The Petition argues that the ’508 patent specification provides but one
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`definition for “cadence window” as follows: “[a] cadence window is a window of
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`time since a last step was counted that is looked at to detect a new step.” Pet. 8-9.
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`Regardless whether this statement fully captures all disclosed embodiments of
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`3
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`IPR2018-01589
`U.S. Patent 7,653,508
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`“cadence windows” disclosed in the ’508 patent (and Patent Owner does not
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`concede that it does), its application here as a claim construction for “cadence
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`window” only confirms that the Petition must be denied as failing to prove
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`obviousness. This is because Petitioner relies exclusively on Fabio’s validation
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`interval TV, which Fabio defines as necessarily starting before the last step is
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`counted. A window of time that necessarily starts before the last step is counted is
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`definitively not “a window of time since a last step was counted” (as required by
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`Petitioner’s construction).
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`B.
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` “dominant axis”
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`Because the Institution Decision limits this proceeding to Claim 20, no
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`construction is necessary here. Neither Claim 20, nor claims 19 and 15 (from
`
`which Claim 20 ultimately depends), recites the term “dominant axis”.
`
`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”
`
`Because the Institution Decision limits this proceeding to Claim 20, no
`
`construction is necessary here. Neither Claim 20, nor claims 19 and 15 (from which
`
`Claim 20 ultimately depends), recites the term “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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`D.
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis”
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`Because the Institution Decision limits this proceeding to Claim 20, no
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`construction is necessary here. Neither Claim 20, nor claims 19 and 15 (from which
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`4
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`IPR2018-01589
`U.S. Patent 7,653,508
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`Claim 20 ultimately depends), recites the term “a counting logic to count periodic
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`human motions by monitoring accelerations relative to the dominant axis”.
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`E.
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`“a counting logic to identify and count periodic human motions”
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`No construction is necessary here for the recitation “a counting logic to
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`identify and count periodic human motions.”
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`The Petition proposes a construction that substitutes the phrase “counting
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`logic” with the phrase “hardware, software, or both.” Petitioner’s rewrite of the
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`claim language serves no purpose, impermissibly omits limiting claim language,
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`and unnecessarily injects ambiguity. Here, the claim language itself provides
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`definitional context for the “counting logic” by reciting, for example, that it
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`“identif[ies] and count[s] periodic human motions.”
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`To be clear, no party has requested that the Board construe this term under 35
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`U.S.C. § 112(6).2 Accordingly, Patent Owner does not address 35 U.S.C. § 112(6)
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`or Petitioner’s hypotheticals.
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`F.
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` “a cadence logic to continuously update a dynamic cadence
`window”
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`Because the Institution Decision limits this proceeding to Claim 20, no
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`construction is necessary here. Neither Claim 20, nor claims 19 and 15 (from which
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`Claim 20 ultimately depends), recites the term “a cadence logic to continuously
`
`
`
` 2
`
` 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. 12), the Petitioner provides no authority or evidence for its
`alleged “presumption” or its implicit shifting of its burden of proof here.
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`5
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`IPR2018-01589
`U.S. Patent 7,653,508
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`update a dynamic cadence window”.
`
`G.
`
` “a mode logic, to switch the device from a non-active mode to an
`active mode after a number of periodic human motions are
`detected within appropriate cadence windows by the counting
`logic”
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`The proposed construction in the Petition should be rejected as unnecessary
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`for analogous reasons presented above. See §VI.E, supra. To be clear, no party has
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`requested that the Board construe this term under 35 U.S.C. § 112(6).3 Accordingly,
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`Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s hypotheticals.
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`VI. PETITIONER FAILS TO MEET ITS BURDEN OF PROVING
`OBVIOUSNESS
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§316(e) (““[T]he burden of proof is on the petitioner to prove unpatentable those
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`issued claims that were actually challenged in the petition for review and for which
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`the Board instituted review”). The Petition should be denied as failing to meet this
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`burden.
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`The Institution Decision (Paper 9) limits the Petition to raise only the
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`following obviousness challenge:
`
`Ground
`1
`
`20
`
`Claims
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`Reference(s)
`Pasolini4 and Fabio5
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`6
`
`
`
` 3
`
` See n.2, supra.
`4 EX1005, U.S. Patent No. 7,463,997.
`5 EX1006, U.S. Patent No. 7,698,097.
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`IPR2018-01589
`U.S. Patent 7,653,508
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`A.
`
`Petitioner fails to prove Fabio renders obvious the “cadence
`window” limitations of independent claim 15 (from which Claim
`20 ultimately depends)
`
`Because the Petition’s challenge of independent claim 15 expressly relies
`
`upon the arguments addressing claim 6, the challenge of independent claim 15 is
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`tainted by the same deficiencies and should be denied for the same reasons as will
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`be shown regarding the Petition’s challenged of claim 6. For example, in addressing
`
`the recitation “a mode logic, to switch the device from a non-active mode to an
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`active mode after a number of periodic human motions are detected within
`
`appropriate cadence windows by the counting logic,” the Petition relies upon its
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`analysis addressing what Petitioner refers to as limitation [6.2] of independent claim
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`6. Pet. 55. The referenced analysis in the Petition is deficient at least for analogous
`
`reasons to those articulated below in addressing the Petition’s challenge of 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”
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`limitations. Pet. 43. Several independentlyfatal deficiencies arise from Petitioner’s
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`exclusive reliance on Fabio’s TV, particularly under the construction for “cadence
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`window” relied upon in the Petition (i.e., “a window of time since a last step was
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`counted that is looked at to detect a new step”).
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`Fabio describes its TV with reference to its Figure 6, which is copied and
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`annotated below. See, e.g., EX1006, Fig. 6 and accompanying description including,
`
`for example, 4:28‒49.
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`7
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`IPR2018-01589
`U.S. Patent 7,653,508
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`current step detected
`
`last step
`detected
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`
`
`
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`Fabio’s TV is retrospective at least in that it is used to validate only the
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`immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current step
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`detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
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`validated if the instant of recognition of the current step TR(K) falls within a
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`validation interval TV[.]” Id. Unless and until the last step is validated by the
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`current step in the manner disclosed, the last step is not counted. Id. 5:10‒39. The
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`current step (K), in turn, is dependent upon the next step (K+1) for validation and
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`counting. Id. The final step detected will not be counted because it cannot be
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`validated. Id. As made clear by Fabio itself, Fabio expressly distinguishes between
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`the current step and the previous, or last step recognized. In other words, while it is
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`the case that the system of Fabio executes a step validation step after a step
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`recognition test, the step validation step is validating the previous step recognized,
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`there is no validation of the current step in any given instant cycle.
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`Accordingly, Fabio’s validation interval TV is not “a window of time since a
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`last step was counted” (as required by Petitioner’s construction) at least because
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`8
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`IPR2018-01589
`U.S. Patent 7,653,508
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`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
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`the last step. Id. In other words, Fabio’s validation interval TV is not “a window of
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`time since a last step was counted” (as required by Petitioner’s construction) at least
`
`because Fabio’s TV starts before the last step is counted and is used to determine
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`whether to count the last step. The Petition should therefore be denied because
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`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
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`claim 15 and therefore also fatal to the challenge of dependent claim 20.
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`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
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`patent’s ‘cadence window’ and Fabio’s ‘validation interval’ are both defined with
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`respect to the time that an immediately preceding step was recognized.” Pet. 46
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`(emphasis added); cf. id. at 8. This inconsistent theory is itself independently fatal.
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`Petitioner cannot have it both ways. The “cadence window” cannot be defined
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`by alleged lexigraphy in the specification in terms of “since a last step was counted”
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`and yet be applied, inconsistently, in terms of when “an immediately preceding step
`
`was recognized.” As explained above (in §VI.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
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`9
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`IPR2018-01589
`U.S. Patent 7,653,508
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`over by simply rewriting the alleged lexicography in the ’508 patent specification
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`that Petitioner identifies and relies upon for the “cadence window” term.
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`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
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`time interval (indicated by a red block-arrow annotation to Fig. 6 copied above)
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`commencing since detection of the last step (K-1) but before commencement of TV.
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`Although this interval is excluded by Fabio’s design, it nevertheless would satisfy a
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`modified construction that redefines the timing aspect in terms of “since the last step
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`[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
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`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
`
`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.
`
`10
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`IPR2018-01589
`U.S. Patent 7,653,508
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`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 VT at least because certain “true positive”
`
`steps occurring within VT 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 (and by extension claim 15). Pet. 43; see also Pet. 55.
`
`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
`
`mapping is that Fabio allegedly describes its first counting procedure as “motion is
`
`detected but the steps are buffered not counted.” Pet 40.6 If the claimed “non-active
`
`mode” requires buffering but not counting steps, as Petitioner alleges, then
`
`
`
` 6
`
` 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. 43.
`
`11
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`IPR2018-01589
`U.S. Patent 7,653,508
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`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. 55; see
`
`also id. at p. 30 (same). The summary also provides annotations to Figure 4 of Fabio
`
`emphasizing that NVT is a count variable that is updated during the first counting
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`procedure. Id.; see also EX1006, 5:32‒36. The Petition repeats this summary
`
`verbatim. Pet. 42 (citing EX1003, p. 55). The Petition and its attached declaration,
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`therefore, admit that steps are indeed counted as part of the first counting procedure,
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`and that this occurs before moving to the second counting procedure. This defeats
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`the contrary assertion in the Petition—identified as the underlying basis for the
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`mapping—that Fabio’s describes its first counting procedure as “motion is detected
`
`but the steps are buffered not counted.” Pet 40.
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`Second, the Petition is deficient because it fails to prove that Fabio discloses
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`“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
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`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
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`part of every process flow, while the second counting procedure is simply included
`
`as a secondary process in certain instances.
`
`12
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`IPR2018-01589
`U.S. Patent 7,653,508
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`
`
`EX1006, Fig. 3 (red-arrow annotation added); see also id. at 4:24‒26 and 6:21-23;
`
`EX2001 ¶¶ 30‒31. Merely adding a secondary counting procedure in certain
`
`instances is distinguishable from “switching the device from the non-active mode to
`
`an active mode,” as recited in claim 6.
`
`
`
`The failure in the Petition to prove Fabio discloses “switching [of] the device”
`
`is further confirmed when one compares the similar descriptions in Fabio of the first
`
`and second counting procedures. For example, Fabio describes the second counting
`
`procedure as including “a step-recognition test is carried out (block 315) [that is]
`
`identical to the step-recognition test of block 225 of FIG [4]”—i.e., a block
`
`describing the first counting procedure.7 See, e.g., EX1006, Figure 4, 4:24‒26 and
`
`
`
` 7
`
` Given that block 225 is shown only in Figure 4, it is presumed that the statement
`“block 225 of FIG 3” was a clerical error.
`
`13
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`IPR2018-01589
`U.S. Patent 7,653,508
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`6:21‒23. The largely overlapping nature of the processes carried out in the first and
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`second counting procedures in Fabio is distinguishable from the “switching” step,
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`as disclosed in the ’508 patent and recited in claim 6.
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`Third, the Petition fails to prove that the alleged “switching” is “after
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`identifying a number of periodic human motions within appropriate cadence
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`windows.” The Petition alleges that Fabio “teaches switching the pedometer from
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`the first counting procedure 110 (e.g., a non-active mode) to a second counting
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`procedure 130 (e.g., an active mode) after a condition of stepping regularity has
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`been met” and that “[t]he condition of regularity is determined based on the detected
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`steps falling within a validation interval TV (i.e., a cadence window).” Pet. 43. As
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`explained above, however, the Petition fails to prove that Fabio’s validation interval
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`TV satisfies the “cadence window” term recited in claim 15. See §§VI.A.1‒2, supra.
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`For each one of the foregoing reasons, the Petition should be denied as failing
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`to prove that Fabio alone and unmodified discloses “mode logic to switch the device
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`from the active mode to the non-active mode when a number of expected periodic
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`human motions are not identified in the appropriate cadence windows,” as recited
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`in independent claim 15.
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`B.
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`Petitioner fails to prove Fabio renders obvious the “cadence
`window” limitations recited in dependent claims 19 and 20
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`The Petition is also deficient in its exclusive reliance on Fabio’s validation
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`interval TV for the “cadence window” terms recited in dependent claims 20 and 19
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`(from which claim 20 depends).
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`IPR2018-01589
`U.S. Patent 7,653,508
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`Dependent claim 19, for example, recites “a cadence logic, to set the
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`appropriate cadence windows.”
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`Dependent claim 20, for example, recites “wherein the cadence logic adjusts
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`the cadence windows based on a measured cadence associated with the periodic
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`human motion.”
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`For each of the above limitations, the Petition purports to rely on the challenge
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`of independent claim 6 that maps Fabio’s TV onto the “cadence window” term. See,
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`e.g., Pet. 59 (claim 19), 72 (claim 20). The referenced analysis in the Petition is
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`deficient at least for analogous reasons to those articulated above in addressing the
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`challenge of claim 6. See §§VI.A.1‒3, supra.
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`C. The Petition fails to prove obviousness of “wherein the cadence
`logic adjusts the cadence windows based on a measured cadence
`associated with the periodic human motion” as recited in claim 20
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`In addressing the claim language “wherein the cadence logic adjusts the
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`cadence windows based on a measured cadence associated with the periodic human
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`motion,” the Petition expressly relies on its analysis of what the Petition refers to as
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`limitations [19.0-19.1] of claim 19. Pet. 72. The Petition’s [19.0-19.1] analysis in
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`turn expressly relies on its analysis of what the Petition refers to as limitation [6.2]
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`of claim 6. Pet. 59. The Petition further expressly relies on its analysis of what the
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`Petition refers to as limitation [3.1] of claim 3. Pet. 72. The Petition’s [3.1] analysis
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`in turn also expressly relies on its analysis of what the Petition refers to as limitation
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`IPR2018-01589
`U.S. Patent 7,653,508
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`[6.2] of claim 6. Pet. 64.8 The above analysis is deficient at least for the reasons
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`articulated above in addressing claim 15 (which the Petition refers back to its
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`challenge of claim 6). See §§VI.A.1‒3, supra.
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`Moreover, the Petition merely alleges in conclusory fashion, and without any
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`evidence or analysis, that: “Because the validation interval for each step is updated
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`based on the timing and duration of the immediately preceding step, a POSITA
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`would have understood that the validation interval (i.e., the cadence window) is
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`adjusted based on a measured cadence associated with the periodic human motion.”
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`Pet. 72. And for alleged support, the Petition cites to its expert, however, its expert’s
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`declaration merely parrots the conclusory allegation stated above. Compare Pet. 72
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`with EX1003, p. 94-95.
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`But the law is clear that Petitioner may not rely on conclusory testimony of a
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`declarant as to what would have been common knowledge at the time. 37 C.F.R. §
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`42.65(a) (explaining that experts are required to provide supporting facts or data for
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`their opinions); Verlander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board
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`has discretion to accord little weight to broad conclusory statements from expert
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`witness). K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir.
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`2014) (finding the P.T.A.B. correctly rejected conclusory assertions of what would
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` The Petition merely states that its challenge of Claim 20 is based on a
`combination of Pasolini and Fabio (Pet. 72). However, the Petition does not
`explain its reliance on Pasolini, nor does the Petition cite to Pasolini. The Petition
`relies solely on Fabio for its challenge to claims 15 and 19 (see Pet. 16, Grounds
`for Challenges), and as already mentioned, there is no discussion of Pasolini in the
`Petition’s challenge of Claim 20.
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`have been common knowledge in the art). Petitioner cannot justify its impermissible
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`hindsight reconstruction merely by offering conclusory statements concerning what
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`would have been obvious based on alleged extraneous knowledge of a POSITA. Alza
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`Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006) (“[L]egal
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`determinations of obviousness, as with such determinations generally, should be
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`based on evidence rather than on mere speculation or conjecture.”).
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`Regardless, for at least the additional reasons below, the Petition fails to prove
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`the obviousness of “wherein the cadence logic adjusts the cadence windows based
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`on a measured cadence associated with the periodic human motion” as recited in
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`claim 20.
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`First, Fabio does not disclose the required cadence window(s), because, as
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`discussed in VI.A.1, supra, Fabio defines its validation interval (TV) as necessarily
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`starting before the last step is counted. EX1006, 5:10‒39; see also EX2001 ¶¶ 32‒
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`35. Indeed, Fabio’s validation interval is used in determining whether to count the
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`last step. In other words, Fabio’s validation interval TV is not “a window of time
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`since a last step was counted” (as required by Petitioner’s construction for a “cadence
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`window”), at least because Fabio’s TV starts before the last step is counted and is
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`used to determine whether or not to count the last step.
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`Second, Fabio does not disclose adjusting a cadence window based on a
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`measured cadence, as required by the claim language. Petitioner does not dispute
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`that Fabio (EX1006)’s TV only looks at the single prior step (and uses the current
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`step to validate the single prior step). And Petitioner does not explain how Fabio’s
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`use of a single prior step can approximate “a measured cadence” as required by the
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`claim language.
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`Third, as expressly recited by Fabio itself, in the system of Fabio, for the
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`previous step to be validated, its duration must be substantially homogenous with
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`the duration of the current step. EX1006, 4:28-31 (“the validation occurs when the
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`duration ∆TK of a current step K is subst