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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.,
`Petitioner
`v.
`UNILOC 2017 LLC,
`Patent Owner
`
`
`
`
`
`
`
`
`
`IPR2018-01589
`PATENT 7,653,508
`
`
`
`PATENT OWNER’S SUR-REPLY
`TO PETITIONER’S REPLY
`
`
`
`
`IPR2018-01589
`U.S. Patent 7,653,508
`
`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to
`Petitioner’s Reply in IPR2018-01589 for Inter Partes Review of United States
`Patent No. 7,653,508 (“the ’508 patent” or “EX1001”), filed by HTC Corp. and HTC
`America, Inc. (collectively, “HTC” or “Petitioner”). The instant Petition solely
`challenges claim 20 of the ’508 patent, which depends from claims 15 and 19.
`Petitioner mischaracterizes Uniloc’s Response as solely premised upon the
`dispute over which step Fabio discloses is validated and hence counted by a given
`validation interval (TV). Petitioner essentially argues it should prevail here due to
`certain alleged findings concerning Fabio in a Final Written Decision in a related
`matter. Reply 1 (citing Apple Inc. v. Uniloc 2017 LLC, Case IPR2018-00387, Paper
`No. 21, Final Written Decision) (“the Apple FWD”). Petitioner is wrong in arguing
`Apple FWD is dispositive here.
`Uniloc identified several deficiencies in the instant Petition which are entirely
`independent of the dispute over which step Fabio discloses is validated by a given
`validation interval (TV). Petitioner has not and cannot defend against these
`additional and independent deficiencies merely by pointing, instead, to a different
`dispute. Petitioner’s failure to accurately characterize, much less squarely address
`and rebut, at least these patentable additional patentable distinctions provides
`multiple independent reasons to deny the Petition in its entirety.
`Notably, Petitioner also does not dispute that “there is no discussion of
`Pasolini in the Petition’s challenge of Claim 20.” See Resp. 16 n.8. In addressing
`claim limitations uniquely recited in claim 20, the Petition relies solely on Fabio.
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`1
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`IPR2018-01589
`U.S. Patent 7,653,508
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`II. ARGUMENT
`
`A.
`
`Petitioner ignores patentable distinctions Uniloc had identified
`arising from certain claim language unique to dependent claim 20
`Petitioner’s Reply fails to address a fundamental deficiency Uniloc had
`identified in its Response concerning the additional limitations recited in dependent
`claim 20. Specifically, claim 20 (which depends from claims 15 and 19) further
`requires (1) “wherein the cadence logic adjust the cadence windows” (recited in the
`plural) and (2) that the adjustment pertaining to plural “cadence windows” must be
`“based on a measured cadence associated with the periodic human motion.”
`Among other deficiencies, Uniloc had observed that the Petition fails to
`explain how or why this claim language is allegedly rendered obvious by Fabio’s
`use of a single prior step to determine but one, single-use validation interval (TV).
`See Resp. (Paper 11) 15‒18. Uniloc argued this undisputed understanding of Fabio
`is distinguishable from limitations of claim 20 directed to an adjustment affecting
`“cadence windows” (in the plural) “based on a measured cadence associated with
`the periodic human motion.” Id. Petitioner has not and cannot prove obviousness by
`glossing over the explicit language unique to claim 20 and, instead, merely vaguely
`pointing to the analysis of other claims that do not recite the same limitations. Id.
`Petitioner does not address these deficiencies in its Reply. On the contrary,
`Petitioner expressly concedes that Fabio discloses “using a single prior step to
`determine a validation window” (in the singular). See Reply 7 (boldface and
`emphasis original). In offering this concession, Petitioner makes no attempt to refute
`the distinction Uniloc had identified between the way in which Fabio determines its
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`IPR2018-01589
`U.S. Patent 7,653,508
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`validation interval (TV) and the adjustment of claim 20, which affects “cadence
`windows” (in the plural) and which is based on “a measured cadence associated with
`the periodic human motion.” See Resp. 15‒18.
`The intrinsic evidence supports the patentable distinction that Uniloc had
`identified and that Petitioner ignored. A few examples serve to further underscore
`and clarify this patentable distinction Uniloc had previously identified concerning
`Fabio’s singular step evaluation.
`First, the ’508 patent confirms that the phrase “measured cadence associated
`with the periodic human motion” requires consideration of repeated steps or periods
`(in the plural) which collectively define the cadence. For example, the ’508 patent
`offers the following definitive statement directed to the cadence of periodic human
`motion: “[t]he amount of time that it takes to complete one motion cycle defines the
`motion cycle’s period, and the number of motion cycles that occur in a given unit of
`time define the motion cycle’s cadence.” Ex. 1001 (’508 patent) at 3:28‒31.
`Second, the ’508 patent discloses, with reference to Figure 5, an example
`embodiment that sets cadence windows based on a stepping cadence associated with
`human motion meeting a threshold number of periodic steps (e.g., 4 to 10 steps). A
`relevant portion of the flow diagram of Figure 5 is reproduced below for ease of
`reference.
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`IPR2018-01589
`U.S. Patent 7,653,508
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`Ex. 1001 (’508 patent) at Figure 5.
`The corresponding description of Figure 5 states, with reference to block 574
`(“Set New Cadence Window”), that new cadence windows are set “based on a
`stepping cadence of the M steps measured.” Id. at 10:56‒57 (emphasis added). The
`description further explains that “M is an integer value between about 4 and 10”
`steps. Id. at 10:50. This description confirms that when an adjustment is made based
`on a stepping cadence (i.e., “a measured cadence associated with periodic human
`motion”), then the adjustment itself requires consideration of several previously
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`IPR2018-01589
`U.S. Patent 7,653,508
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`measured steps (e.g., 4 to 10). This is distinguishable on its face from the disclosure
`Petitioner relies upon in Fabio of “using a single prior step to determine a validation
`window” (in the singular). See Reply 7 (boldface and emphasis original).
`Third, with reference to Figure 6, the ’508 patent discloses that cadence
`windows may be set, at least in part, “based on a rolling average of stepping periods.”
`Id. at 11:14‒17. The consideration of multiple prior stepping periods (in the context
`of a rolling average in this example) similarly reflects claim language directed to
`adjusting cadence windows “based on a measured cadence associated with the
`periodic human motion,” as recited in claim 20.
`The foregoing example disclosure in the ’508 patent is entirely consistent with
`the argument Uniloc had presented in its Response as to why the Petition should be
`denied as failing to establish obviousness for claim language unique to dependent
`claim 20. In conceding that Fabio discloses “using a single prior step to determine a
`validation window” (Reply 7, emphasis original), Petitioner fails to comprehend
`why this aspect of Fabio is distinguishable from the claim language unique to claim
`20 and the corresponding description in the ’508 patent. Unlike all other challenged
`claims, claim 20 uniquely refers (1) to an adjustment pertaining to “cadence
`windows” in the plural, and also uniquely requires (2) that the adjustment pertaining
`to plural “cadence windows” must be “based on a measured cadence associated with
`the periodic human motion.”
`Contrary to what Petitioner suggests, none of these points of distinction
`depend on a finding that Fabio uses its validation interval (TV) to retrospectively
`validate and count a prior detected step. Rather, these patentable distinctions are
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`IPR2018-01589
`U.S. Patent 7,653,508
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`entirely independent of, and were provided in Uniloc’s Response in addition to, the
`other patentable distinctions that arise when Fabio is properly understood as
`applying a retrospective analysis when counting steps.
`
`B.
`
`Petitioner mischaracterizes and fails to directly address the
`distinctions Uniloc had identified arising from Fabio’s
`“substantially homogeneous” teaching
`As an additional and independent distinction over Fabio, Uniloc had observed
`that the “steps in the system of Fabio are only validated if the previous step is
`substantially homogenous with the current step.” Resp. 18 (citing Ex. 1006 (Fabio)
`at 4:28‒31 and 7:16‒17). In its Reply, Petitioner does not dispute this understanding
`of Fabio; and Petitioner also does not dispute that this understanding of Fabio is
`distinguishable from the claim language uniquely recited in claim 20.
`At most, Petitioner argues in its Reply that this point of distinction fails
`ostensibly because Uniloc’s “argument is similarly premised on Patent Owner’s
`already-rejected ‘retrospective’ argument that Fabio’s validation interval uses the
`current step to validate the previous step.” Reply at 8. Petitioner conflates different
`points of distinction.
`Uniloc’s Response expressly distinguishes Fabio’s “retrospective” teachings
`as generally giving rise to a “first” point of distinction and Fabio’s “substantially
`homogeneous” teachings as giving rise to a distinct or “third” point of distinction.
`See Resp. 17‒18. Uniloc never stated the latter distinction depends on the first.
`Regardless which step Fabio discloses is validated and hence counted for a given
`validation interval (i.e., either the step currently detected in the validation interval or
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`IPR2018-01589
`U.S. Patent 7,653,508
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`the last step detected), it remains undisputed that Fabio’s validation considers
`whether the previous step (in the singular) is “substantially homogenous” with the
`current step. Resp. 18 (citing Ex. 1006 (Fabio) at 4:28‒31 and 7:16‒17). It also
`remains undisputed that this “substantially homogenous” aspect of Fabio gives rise
`to a patentable distinction with respect to claim language unique to claim 20.
`
`C. Uniloc stands by its previously-presented arguments directed to
`the claims from which claim 20 depends
`In addition to the multiple patentable distinctions Uniloc had identified in its
`Response, including those clarified above, Uniloc had also presented other
`arguments directed to additional limitations recited in claims from which claim 20
`depends (i.e., independent claim 15 and claim 19 depending therefrom). Uniloc
`stands by the arguments it presented previously. Resp. 7‒14.
`Petitioner mischaracterizes Uniloc’s Response as being directly solely to
`arguments Uniloc had previously presented in a related matter concerning claims 15
`and 19, from which claim 20 depends. Reply 1‒2 (citing Apple FWD). In doing so,
`Petitioner ignores certain patentable distinctions Uniloc had identified arising from
`claim language uniquely recited in claim 20, as further explained above.
`Petitioner’s reasoning is also flawed as a matter of law. See MaxLinear, Inc.
`v. CF CRESPE LLC, 880 F.3d 1373, 1377–78 (Fed. Cir. 2018) (vacating PTAB
`patentability determination and remanding on dependent claims not already
`adjudicated unpatentable: PTAB “must decide whether the remaining claims present
`materially different issues that alter the question of patentability, making them
`patentably distinct from” the claims already adjudicated unpatentable).
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`IPR2018-01589
`U.S. Patent 7,653,508
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`In suggesting that the Board should not consider Uniloc’s arguments
`concerning claim language recited in claims 15 and 19, ostensibly because the Apple
`FWD is completely dispositive, Petitioner also ignores that dependent claim 20
`derives antecedent basis from claims 15 and 19 for certain limitations recited in
`claim 20 (e.g., “the cadence logic,” “the cadence windows,” “the periodic human
`motion” having “a measured cadence” associated therewith). Consequently, claim
`20 provides additional, meaningfully limiting context to those antecedent terms, as
`addressed in Uniloc’s Response and explained further above. The Board’s findings
`in the Apple FWD do not somehow shift the burden of proof to Uniloc on terms that
`are further meaningfully limited by claim 20.
`Petitioner also leaves unrebutted other deficiencies Uniloc had identified
`(concerning language recited in claims 15 and/or 19) that are independent of whether
`Fabio is interpreted as applying a retrospective validation. For example, Petitioner
`does not dispute in its Reply that the Petition interprets the claimed “non-active
`mode” to be distinguishable from the “active mode” in that the “non-active mode”
`buffers steps and only the “active mode” counts steps. See Resp. 11‒12 (citing Pet.
`40, 43). Petitioner’s Reply also does not dispute that the mapping applied in the
`Petition is inconsistent with such an understanding because Fabio’s first counting
`procedure clearly involves counting steps (as the name of the procedure states). Id.
`
`D.
`
`Petitioner fails to explain why the Board’s findings in a related
`matter concerning claims 3 and 13 are dispositive here
`Petitioner’s Reply incorrectly suggests that the Board’s findings in a related
`matter concerning claims 3 and 13 is somehow dispositive here as to claim 20. Reply
`
`8
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`IPR2018-01589
`U.S. Patent 7,653,508
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`7 (citing Apple FWD); cf. MaxLinear, 880 F.3d at 1377–78. Petitioner has the
`burden of proof, yet it has failed to present any argument as to how or why the
`Board’s findings in the Apple FWD (directed to distinct terms recited in different
`claim sets) are somehow pertinent to the expressly-distinguished “cadence
`windows” limitations of claim 20.
`At least one notable distinction Petitioner ignores is that claims 3 and 13
`include limitations directed to “a cadence window” and “a dynamic cadence
`window”, respectively, both recited in the singular. As explained above, Uniloc’s
`Response emphasized deficiencies arising from limitations unique to claim 20,
`including those directed to “cadence windows” (in the plural) and their adjustment
`“based on a measured cadence associated with the periodic human motion.” See
`Resp. (Paper 11) 15‒18. The record speaks for itself in refuting Petitioner’s false
`statement that Uniloc concedes claim 20 should be treated the same as claims 3 and
`13 ostensibly because Uniloc’s Response did not point to any materially different
`limitations of claim 20. Reply 1.
`Rather than address the distinctions that are apparent on the face of the claim
`language unique to claim 20, Petitioner relies on its own ipse dixit statement that
`there is no material difference between claim 20 and claims 3 and 13. Such a
`conclusory argument has not and cannot meet Petitioner’s burden of proof.
`Petitioner also falsely states
`that Uniloc has somehow conceded
`unpatentability by not expressly addressing dependent claims 3 and 13. Reply at 1.
`Uniloc offered no such concession. Rather, as Petitioner acknowledges, the Board
`“ordered that the parties are limited to advancing arguments regarding claim 20 in
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`IPR2018-01589
`U.S. Patent 7,653,508
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`this proceeding.” Id. (quoting Institution Decision at 10-11). Uniloc cannot be
`faulted for focusing on claim language unique to claim 20, especially given the
`Board had ordered the parties to limit the respective briefing to claim 20 only.
`
`III. CONCLUSION
`For at least the reasons set forth above, and for the reasons articulated in
`Uniloc’s Response, the Petition should be denied in its entirety.1
`
`Date: September 27, 2019
`
`
`
`Respectfully submitted,
`
`By: /Brett A. Mangrum/
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`1 Uniloc does not concede, and specifically denies, that there is any legitimacy to
`any arguments in the instant Petition that are not specifically addressed herein.
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`IPR2018-01589
`U.S. Patent 7,653,508
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`counsel of record for Petitioner.
`
`Date: September 27, 2019
`
`
`
`Respectfully submitted,
`
`
`
`By: /Brett A. Mangrum/
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`i
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`
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