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`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 2017 LLC,
`Patent Owner
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`CASE IPR2018-01589
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`U.S. PATENT NO. 7,653,508
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`PETITIONER’S REPLY
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`ARGUMENT ................................................................................................... 2
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`A.
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`B.
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`C.
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`D.
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`Patent Owner’s arguments for patentability of claim 20 based on
`arguments about the patentability of claims 15 and 19 must be
`denied because the Board has already finally rejected those very
`arguments. ............................................................................................. 2
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`Patent Owner has waived any argument that claim 20 is not
`substantially similar to the limitations of dependent claims 3 and
`13 already found unpatentable by the Board. ....................................... 3
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`Claim 20 is unpatentable because its limitations are disclosed by
`Fabio. ..................................................................................................... 4
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`Patent Owner’s arguments to save claim 20 should be rejected
`because they rely on Patent Owner’s already-rejected “cadence
`window” arguments. .............................................................................. 5
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`1.
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`2.
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`Patent Owner’s “required cadence window” argument was
`already rejected by the Board in the Apple FWD. ...................... 5
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`Patent Owner’s other arguments should be rejected
`because they are based on Patent Owner’s incorrect and
`rejected “retrospective” argument. ............................................. 6
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`III. CONCLUSION ................................................................................................ 9
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`CERTIFICATE OF WORD COUNT ......................................................................11
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`CERTIFICATE OF SERVICE ................................................................................12
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`ii
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`PETITIONER’S EXHIBIT LIST
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`August 27, 2019
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`Ex. 1001
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`U.S. Patent No. 7,653,508
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`Ex. 1002
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`Prosecution History of U.S. Patent No. 7,653,508
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`Ex. 1003
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`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
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`Ex. 1004
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`Curriculum Vitae of Joe Paradiso.
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`Ex. 1005
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`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
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`Ex. 1006
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`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”).
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`iii
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`I.
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`INTRODUCTION
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`The Petition and supporting evidence establish that Pasolini alone or in
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`combination with Fabio renders claims 1-4, 6-8, 11-16, 19, and 20 of the ’508 patent
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`obvious. See Paper 1 (“Pet.”). The Petition asserts substantially the same grounds
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`of unpatentability as Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00387, Paper
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`No. 2 (Dec. 21, 2017) (“the Apple IPR”), but includes an additional challenge to
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`claim 20. The Board instituted an inter partes review of all challenged claims, but
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`“ordered that the parties are limited to advancing arguments regarding claim 20 in
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`this proceeding” because the other “claims will be addressed in the Apple IPR.”
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`HTC Corp. v. Uniloc 2017 LLC, Case IPR2108-01589, Paper No. 9 at 10-11 (Feb.
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`27, 2019) (“Decision”). On June 17, 2019, the Board issued a Final Written Decision
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`on the Apple IPR, finding all challenged claims (1-4, 6-8, 11-16, and 19)
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`unpatentable. IPR2018-00387, Paper No. 21 (“Apple FWD”). For similar reasons
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`as provided by the Board in the Apple FWD with respect to claims 3 and 13, claim
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`20 should likewise be found unpatentable.
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`Patent Owner’s arguments for claim 20 are unavailing because they are either
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`verbatim reassertions of arguments made in the Apple IPR, which the Board has
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`rejected, or variants of those arguments. By failing to dispute that claim 20 contains
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`materially different limitations than do dependent claims 3 and 13, Patent Owner
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`concedes that these claims should be treated the same. Therefore, claim 20 should
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`1
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`be found unpatentable for the same reasons the Board found claims 3 and 13
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`unpatentable in the Apple FWD. For these reasons and as explained in further detail
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`below, Petitioner respectfully requests that the Board reject Patent Owner’s rehashed
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`and incorrect arguments now made for claim 20 and find claim 20 unpatentable.
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`II. ARGUMENT
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`A.
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`Patent Owner’s arguments for patentability of claim 20 based on
`arguments about the patentability of claims 15 and 19 must be
`denied because the Board has already finally rejected those very
`arguments.
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`The Board ordered “that the parties are limited to advancing arguments
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`regarding claim 20.” Paper No. 9 at 11. Nevertheless, Patent Owner elected to
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`rehash the arguments it previously made for claims 15 and 19 (from which claim 20
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`depends) in Apple IPR. Compare Apple IPR, Paper 11 at 11-20, with Paper 11 at 7-
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`15 (“PO Resp.”).1 The Board finally rejected these arguments and found that “Fabio
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`teaches the limitations of independent claims 6 and 15” and dependent claim 19.
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`Apple FWD at 27-39, 41. As a result, Parts A and B of Patent Owner’s response
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`1 Patent Owner makes the same arguments for claim 15: that Fabio does not
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`“render[] obvious the ‘cadence window’ limitations of independent claim 15” or “the
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`‘switching’ step recited in independent claim 6 (and by extension claim 15).” PO
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`Resp. at 7-14 (Part A). For claim 19, Patent Owner recites the same “cadence
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`window” argument it relied on for claim 15. PO Resp. at 14-15 (Part B).
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`2
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
`should be disregarded by the Board.2 See MaxLinear, Inc. v. CF CRESPE LLC, 880
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`F.3d 1373, 1377 (Fed. Cir. 2018) (“[T]he collateral-estoppel effect of an
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`administrative decision of unpatentability generally requires the invalidation of
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`related claims that present identical issues of patentability.”).
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`B.
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`Patent Owner has waived any argument that claim 20 is not
`substantially similar to the limitations of dependent claims 3 and
`13 already found unpatentable by the Board.
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`In its institution decision, the Board found “that the differences between claim
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`20 and claim 3 do not seem substantial.” Decision at 8. Even with that finding, the
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`Board gave the Patent Owner a “fair opportunity to respond to the contentions of
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`Petitioner and Petitioner’s declarant, including the opportunity to depose Petitioner’s
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`declarant or otherwise seek discovery from Petitioner.” Id. at 8-9. Despite being
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`afforded the opportunity, Patent Owner failed to depose Petitioner’s declarant or
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`otherwise seek discovery regarding claim 20. Rather, Patent Owner chose to
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`concede the substantial similarity of claim 20 to claims 3 and 13, and it provided no
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`additional arguments distinguishing these claims. That was a waiver of any such
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`arguments. See Paper 10 at 5 (“Patent Owner is cautioned that any arguments for
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`2 To the extent the Board reconsiders those arguments in this proceeding, Petitioner
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`adopts and incorporates by reference the response to those arguments previously
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`provided at Apple IPR, Paper 12 at 6-21 (Petitioner’s Reply, Parts IV & V).
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`3
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`patentability not raised in the response may be deemed waived.”); see also RPX
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`Corp. v. Iridescent Networks, Inc., Case IPR2018-00254, Paper 20 at 56 (Dec. 10,
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`2018) (“By not addressing Petitioner’s argument and Dr. Reddy’s original testimony
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`in the Patent Owner’s Response, Patent Owner waived the right to present that
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`argument.” (citing In re Nuvasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016)
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`(holding Patent Owner waived argument addressed in Preliminary Response by not
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`raising it in the Patent Owner Response))).
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`Because claim 20 is substantially the same as claims 3 and 13, the Board
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`should find claim 20 unpatentable for the same reasons that the Board found claims
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`3 and 13 unpatentable. See Apple FWD at 42-45; see also Ohio Willow Wood Co.
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`v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) (“If the differences between
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`the unadjudicated patent claims and adjudicated patent claims do not materially alter
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`the question of invalidity, collateral estoppel applies.”).
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`C. Claim 20 is unpatentable because its limitations are disclosed by
`Fabio.
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`The Board should find that Fabio teaches “adjust[ing] the cadence windows
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`based on a measured cadence associated with the periodic human motion” as recited
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`in dependent claim 20. As demonstrated in the Petition, Fabio teaches that “the
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`validation interval TV for each step is ‘defined with respect to the instant recognition
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`of the immediately preceding step TR(K-1).’” Ex.1006 at 4:37-39. In other words,
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`the appropriate cadence window for each step (K) is defined as a window of time
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`4
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`based on the immediately preceding step (K-1). Pet. at 46; Ex.1003 at 61. As a
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`result, the validation interval TV (i.e., the cadence window) for each new step is
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`continuously adjusted based on the measured timing and duration of the immediately
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`preceding step. Pet. at 64-65, 72-73; Ex.1003 at 82-84, 94-95. So Fabio discloses
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`the additional limitation of claim 20 and should be found unpatentable.
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`D.
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`Patent Owner’s arguments to save claim 20 should be rejected
`because they rely on Patent Owner’s already-rejected “cadence
`window” arguments.
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`Patent Owner relies on its rejected “cadence window” arguments to argue the
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`patentability of claim 20. Because each of those arguments is premised on Patent
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`Owner’s finally-rejected contention that Fabio’s validation interval is retrospective,
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`the Board should reject each of the arguments here for similar reasons as established
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`in the Apple FWD.
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`1.
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`Patent Owner’s “required cadence window” argument was
`already rejected by the Board in the Apple FWD.
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`Patent Owner argues that “Fabio does not disclose the required cadence
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`window(s), because . . . Fabio defines its validation interval (TV) as necessarily
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`starting before the last step is counted.” Response at 17 (emphasis original). The
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`Board rejected the same argument for independent claim 15 in the Apple FWD. See
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`Apple FWD at 31 (“We are not persuaded by the Patent Owner’s arguments, which
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`are premised on the contention that Fabio is retrospective in that its validation
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`interval TV is used to validate a prior step (K-1), not to validate the current step
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`5
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`(K).”). Specifically, the Board found that Fabio discloses that “the current step has
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`been recognized (‘instant of recognition of the current step’), and the current step
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`(K) necessarily occurred more recently than the immediately preceding step (K-1).”
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`Id. at 32. The Board found that “only recognized steps are subjected to the validation
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`test.” Id. Accordingly, the Board in the Apple FWD correctly concluded that
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`Fabio’s validation interval is not retrospective because “it is the currently recognized
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`step (K) that is being validated, not the preceding step (K-1).”3 Id. at 31. The Board
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`should similarly reject the same argument here with respect to claim 20, which
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`depends from claim 15.
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`2.
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`Patent Owner’s other arguments should be rejected because
`they are based on Patent Owner’s incorrect and rejected
`“retrospective” argument.
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`Relying on its rejected “retrospective” interpretation of Fabio, Patent Owner
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`makes two additional arguments for claim 20. Each of them is meritless and should
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`be rejected.
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`3 The Board recently denied Patent Owner’s Request for rehearing there because
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`“Patent Owner largely repeats its retrospective argument,” which amounted to “little
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`more than a request to reconsider arguments already made in Patent Owner’s
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`Response.” IPR2018-00387, Paper No. 23 at 4 (August 16, 2019).
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`6
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`First, Patent Owner argues that Fabio does not disclose “adjusting a cadence
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`window based on a measured cadence” because the validation interval “only looks
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`at the single prior step (and uses the current step to validate the single prior step).”
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`PO Resp. at 17-18 (emphasis added). That argument relies on the same rejected
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`premise: that “the current step [is] used to validate the single prior step.” Patent
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`Owner’s argument fails because it is “the currently recognized step (K) that is being
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`validated, not the preceding step (K-1).” Apple FWD at 31; see also supra Part
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`II.D.1.
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`In addition, the Board has already found (for claims 3 and 13) that Fabio’s
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`disclosure of using a single prior step to determine a validation window sufficiently
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`discloses “maintaining a cadence window and updating the cadence window as a
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`user’s actual cadence changes.” Apple FWD at 43. In particular, the Board found
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`that “Fabio defines validation interval TV as a function of the duration of the
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`preceding step: beginning at time TR(K-1) + ½ (ΔTK-1) and ending at time TR(K-1)
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`+ 2 (ΔTK-1). Thus, as the cadence of a user’s steps changes, the validation interval
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`TV will also change in corresponding fashion.” Id. In other words, Fabio teaches
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`updating the cadence window as a user’s actual cadence changes by looking at the
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`previous step and adjusting a validation interval TV “anew each time a step is
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`recognized.” Apple FWD at 43. Here, the Board should similarly find that Fabio
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`teaches “the cadence logic adjusts [or updates] the cadence window” in response to
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`7
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`a change in “a measured cadence associated with the periodic human motion” or the
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`user’s actual cadence as required by claim 20.4 See Ex.1003 at 94-95.
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`Second, Patent Owner argues that “Fabio does not disclose any ‘adjust[ing]
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`based on a measured cadence’ because steps in the system of Fabio are only
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`validated if the previous step is substantially homogenous with the current step.”
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`PO Resp. at 18 (emphasis original). That argument is similarly premised on Patent
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`Owner’s already-rejected “retrospective” argument that Fabio’s validation interval
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`uses the current step to validate the previous step. As discussed above, the Board
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`has already rejected the “retrospective” argument because it is “the currently
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`recognized step (K) that is being validated, not the preceding step (K-1).” Apple
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`4 Patent Owner claims that “Petitioner does not dispute that Fabio (EX1006)’s
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`[validation interval] only looks at the single prior step (and uses the current step to
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`validate the single prior step).” PO Resp. at 17. That is incorrect. Petitioner has
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`consistently argued that it is the current step being validated, not that the current step
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`is used to validate the prior step. See Pet. at 45-48; see also Apple IPR, Paper 12 at
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`6-16 (Petitioner’s Reply, Part IV); Apple FWD at 45 (“[W]e find that Fabio validates
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`and counts the current step (K), not the preceding step (K−1). Accordingly, we are
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`persuaded by Petitioner’s showing, which we adopt, that claims 3 and 13 would have
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`been obvious in view of Pasolini and Fabio.”).
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`8
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`FWD at 31; see also supra Part II.D.1. Fabio adjusts the cadence window as the
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`system’s measurement of a user’s actual cadence changes by looking at the previous
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`step and adjusting the validation interval TV “anew each time a step is recognized.”
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`Apple FWD at 43.5
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`III. CONCLUSION
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`For the reasons stated above and in view of the evidence of record, Petitioner
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`respectfully requests the Board find claim 20 unpatentable.
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`5 Patent Owner is incorrect in that Fabio validates steps “only” if the previous step
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`is substantially homogenous with the current step. See PO Resp. at 18. Fabio
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`discloses validating steps for homogenous or non-homogenous durations and is not
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`limited to only validating “substantially homogenous” steps. Fabio’s claim 5 recites
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`“executing a first validation test of a current detected step.” Ex.1006, claim 5. Claim
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`6, which depends from claim 5, then recites “wherein said executing said first
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`validation test of said current detected step comprises evaluating whether a duration
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`of said current detected step is homogeneous with respect to a duration of an
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`immediately preceding detected step.” Ex.1006, claim 6 (emphasis added). As a
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`result, Fabio is not limited to only validating substantially homogenous steps.
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`9
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`Respectfully submitted,
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`
`/Todd E. Landis/
`Todd E. Landis
`USPTO Reg. No. 44,200
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`Dated: August 27, 2019
`Vinson & Elkins LLP
`2001 Ross Avenue, Suite 37000
`Dallas, TX 75201
`Customer No. 22892
`Phone: (214) 220-7700
`Fax: (214) 220-7716
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`10
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`CERTIFICATE OF WORD COUNT
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`Pursuant to 37 C.F.R. §42.24(d), Petitioner hereby certifies, in accordance
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`with and reliance on the word count provided by the word-processing system used
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`to prepare this petition, that the number of words in this paper is 2,517. Pursuant to
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`37 C.F.R. §42.24(d), this word count excludes the table of contents, table of
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`authorities, mandatory notices under §42.8, certificate of service, certificate of word
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`count, appendix of exhibits, and any claim listing.
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`Dated: August 27, 2019
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`/Todd E. Landis/
`Todd E. Landis
`Lead Counsel for Petitioner
`USPTO Reg. No. 44,200
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`11
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`Petitioner’s Reply
`IPR2018-01589 (Patent No. 7,653,508)
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and 37
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`C.F.R. § 42.105, Petitioner’s Reply is being served via overnight mail on the 27th
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`day of August 2019, the same day as the filing of the above-identified documents in
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`the United States Patent and Trademark Office/Patent Trial and Appeal Board, upon
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`the Patent Owner by serving the correspondence address of record with the USPTO
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`as follows:
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`Sean Burdick
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`Uniloc USA Inc.
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`Legacy Town Center
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`7160 Dallas Parkway, Suite 380
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`Plano, TX 75024
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`(972) 905-9580
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`Dated: August 27, 2019
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`/Todd E. Landis/
`Todd E. Landis
`Lead Counsel for Petitioner
`USPTO Reg. No. 44,200
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`12
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