UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`HTC CORPORATION, HTC AMERICA, INC., and LG ELECTRONICS, INC.,
`Petitioners,
`v .
`UNILOC 2017 LLC,
`Patent Owner
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`OF
`U.S. PATENT NO. 7,881,902
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................. 1
`A.
`Real Party-in-Interest ............................................................................ 1
`B.
`Related Matters ...................................................................................... 2
`C.
`Lead and Back-up Counsel and Service Information ........................... 3
`III. GROUNDS FOR STANDING ........................................................................ 4
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS ...................... 4
`V. OVERVIEW OF THE ’902 PATENT ............................................................ 5
`A.
`Summary of the Patent .......................................................................... 5
`B.
`Prosecution History ............................................................................... 6
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 6
`VII. CLAIM CONSTRUCTION ............................................................................ 7
`A.
`“dominant axis” ..................................................................................... 8
`B.
`“cadence window” ................................................................................. 8
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................... 9
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ...... 9
`A.
`Challenged Claims ................................................................................ 9
`B.
`Statutory Grounds for Challenges ......................................................... 9
`C.
`Challenge #1: Claims 1 and 2 are unpatentable under 35 U.S.C
`§ 103 over Mitchnick ..........................................................................10
`1.
`Summary of Mitchnick .............................................................10
`2. Mitchnick’s embodiments are combinable ...............................12
`
`IX.
`
`
`
`–ii–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`E.
`
`F.
`
`D.
`
`Claim 1 ......................................................................................13
`3.
`Claim 2 ......................................................................................17
`4.
`Challenge #2: Claim 3 is unpatentable under 35 U.S.C § 103
`over Mitchnick and Sheldon ...............................................................18
`1.
`Summary of Sheldon .................................................................18
`2.
`Reasons to Combine Mitchnick and Sheldon ...........................19
`3.
`Claim 3 ......................................................................................21
`Challenge #3: Claim 4 is unpatentable under 35 U.S.C § 103
`over Mitchnick, Sheldon, and Tanenhaus ...........................................29
`1.
`Summary of Tanenhaus ............................................................29
`2.
`Reasons to Combine Mitchnick, Sheldon, Tanenhaus .............29
`3.
`Claim 4 ......................................................................................32
`Challenge #4: Claim 5-6 and 9-10 are unpatentable under 35
`U.S.C §103 over Fabio in view of Pasolini .........................................35
`1.
`State of the Art at the Time of the ’902 Patent .........................35
`2.
`Summary of Fabio .....................................................................37
`3.
`Summary of Pasolini .................................................................40
`4.
`Reasons to Combine Fabio and Pasolini...................................43
`5.
`Claim 5 ......................................................................................46
`6.
`Claim 6 ......................................................................................58
`7.
`Claim 9 ......................................................................................61
`8.
`Claim 10 ....................................................................................67
`CONCLUSION ..............................................................................................72
`
`
`–iii–
`
`X.
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`PETITIONERS’ EXHIBIT LIST
`August 31, 2018
`
`Ex. 1001
`
`U.S. Patent No. 7,881,902
`
`Ex. 1002
`
`Prosecution History of U.S. Patent No. 7,881,902
`
`Ex. 1003
`
`Declaration of Joe Paradiso, Ph.D., under 37 C.F.R. § 1.68
`
`Ex. 1004
`
`Curriculum Vitae of Joe Paradiso
`
`Ex. 1005
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
`
`Ex. 1006
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
`
`Ex. 1007
`
`U.S. Publication No. 2006/0084848 to Mitchnick (“Mitchnick”)
`
`Ex. 1008
`
`U.S. Patent No. 6,469,639 to Tanenhaus et al. (“Tanenhaus”)
`
`Ex. 1009
`
`U.S. Patent No. 5,957,957 to Sheldon (“Sheldon”)
`
`
`
`–iv–
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`INTRODUCTION
`
`
`I.
`
`U.S. Patent No. 7,881,902 (“the ’902 patent,” Ex. 1001) is generally directed
`
`to monitoring periodic human motions, such as walking, running, biking, and other
`
`activities. To do this, the ’902 patent uses a device that includes an accelerometer,
`
`which detects acceleration associated with the periodic human motion. And, when
`
`the accelerometer fails to detect acceleration associated with the periodic motion,
`
`the monitoring device enters a low power sleep mode.
`
`As this Petition shows, the prior art renders obvious claims 1-6 and 9-10 of
`
`the ʼ902 patent. Accordingly, HTC Corporation and HTC America, Inc. (together
`
`“HTC”), as well as LG Electronics, Inc. (“LG”) (collectively “Petitioners”) therefore
`
`respectfully request that these claims be held unpatentable and cancelled.
`
`This Petition is substantively the same as IPR2018-00424, which was
`
`instituted on August 2, 2018, and this Petition is being filed concurrently with a
`
`motion for joinder with respect to that proceeding.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`
`HTC Corporation and HTC America, Inc., as well as LG Electronics, Inc., LG
`
`Electronics U.S.A., Inc., and LG Electronics MobileComm USA, Inc., are the real
`
`parties-in-interest to this inter partes review petition.
`
`
`
`–1–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`B. Related Matters
`
`As of the filing date of this petition and to the best knowledge of the
`
`petitioners, the ’902 patent has been asserted in the following cases:
`
`Heading
`
`Number
`
`Court
`
`Filed
`
`Uniloc USA, Inc. v. Huawei
`Devices USA, Inc.
`
`2-17-cv-00737
`
`E.D. Tex. Nov. 9, 2017
`
`Uniloc USA, Inc. v. HTC Am., Inc.
`
`2-17-cv-01629 W.D. Wash. Nov. 1, 2017
`
`Uniloc USA, Inc. v. LG Elecs.
`USA, Inc.
`
`Uniloc USA, Inc. v. LG Elecs.
`USA, Inc.
`
`Uniloc USA, Inc. v. Samsung
`Elecs. Am., Inc.
`
`4-12-cv-00832 N.D. Tex. Oct. 13, 2017
`
`4:18-cv-02918 N.D. Cal.
`
`May 17,
`2018
`
`2-17-cv-00650
`
`E.D. Tex.
`
`Sep. 15, 2017
`
`Uniloc USA, Inc. v. Apple Inc.
`
`2-17-cv-00522
`
`E.D. Tex.
`
`Jun. 30, 2017
`
`Uniloc USA, Inc. v. Apple Inc.
`
`4:18-cv-00364 N.D. Cal.
`
`Jan. 17, 2018
`
`
`
`Additionally, the ’902 patent is the subject of two pending requests for inter
`
`partes review: IPR2018-00424 filed by Apple Inc. on January 5, 2018 (instituted on
`
`August 2, 2018), and IPR2018-01028 filed by Apple Inc. on May 4, 2018. The real
`
`parties-in-interest herein are not parties to the above listed petitions and were not
`
`involved in the preparation of those petitions.
`
`
`
`–2–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`Todd E. Landis
`Vinson & Elkins LLP
`2001 Ross Avenue, Suite 37000
`Dallas, TX 75201
`
`Back-up Counsel
`Mario A. Apreotesi
`Vinson & Elkins LLP
`2801 Via Fortuna, Suite 100
`Austin, TX 78746
`
`Jeffrey R. Swigart
`Vinson & Elkins LLP
`2001 Ross Avenue, Suite 37000
`Dallas, TX 75201
`
`Anand K. Sharma
`901 New York Avenue, NW
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`Washington, DC 20001
`
`Minjae Kang
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`Joshua L. Goldberg
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`
`
`Phone: (214) 220-7700
`Fax: (214) 220-7716
`tlandis@velaw.com
`USPTO Reg. No. 44,200
`
`
`Phone: (512) 542-8433
`Fax: (512) 542-8612
`mapreotesi@velaw.com
`USPTO Reg. No. 65,293
`
`Phone: (214) 220-7700
`Fax: (214) 220-7716
`jswigart@velaw.com
`USPTO Reg. No. 77,008
`
`Phone: (202) 408-4446
`Fax: (202) 408-4400
`anand.sharma@finnegan.com
`USPTO Reg. No. 43,916
`
`
`Phone: (571) 203-2318
`Fax: (202) 408-4400
`minjae.kang@finnegan.com
`USPTO Reg. No. 67,054
`
`Phone: (202) 408-6092
`Fax: (202) 408-4400
`joshua.goldberg@finnegan.com
`USPTO Reg. No. 59,369
`
`–3–
`
`
`
`
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`Phone: (617) 646-1641
`Fax: (202) 408-4400
`cory.bell@finnegan.com
`USPTO Reg. No. 75,096
`
`Cory C. Bell
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`2 Seaport Ln
`Boston, MA 02210
`
`Bradford C. Schulz
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`Please address all correspondence to lead and back-up counsel. Petitioners
`
`Phone: (571) 203-2739
`Fax: (202) 408-4400
`bradford.schulz@finnegan.com
`USPTO Reg. No. 75,006
`
`consent to electronic service via email directed to the above addresses and
`
`HTCCounselUniloc@velaw.com.
`
`III. GROUNDS FOR STANDING
`
`Petitioners certify that the ’902 patent is eligible for inter partes review and
`
`that the Petitioners are not barred or otherwise estopped from requesting inter partes
`
`review on the grounds identified in this petition.
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`
`Petitioners’ citation to Ex. 1002 uses the page numbers added for compliance
`
`with 37 C.F.R. § 42.63(d)(2)(ii). Petitioners’ citations to the remaining exhibits use
`
`the page numbers in their original publication. Unless otherwise noted, all bold
`
`underline emphasis in any quoted material has been added.
`
`
`
`–4–
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`V. OVERVIEW OF THE ’902 PATENT
`A.
`Summary of the Patent
`
`The ’902 patent is directed to an electronic device that “count[s] steps or other
`
`periodic human motions.” Ex. 1001, 2:29-30. To “count” the periodic human
`
`motions, the electronic device “includes one or more inertial sensors”—such as an
`
`accelerometer—that measure acceleration data to detect a motion cycle. Id., 1:18,
`
`2:25-26, 2:38-43, 3:47-48. According to the ’902 patent, a “period and/or cadence
`
`of the motion cycle may be based on a human activity,” such as rollerblading, biking,
`
`running, walking, or any other activity having a periodic set of repeated movements.
`
`Id., 3:16-17, 3:36-38.
`
`To reduce power consumption, the electronic device operates in different
`
`modes. Id., 8:20-23. In claims 1-4, one of these modes is a “sleep mode” that
`
`“reduces power consumption and prolongs battery life.” Id., 8:66-67. The electronic
`
`device enters the sleep mode when “no relevant acceleration is detected.” Id., 10:40-
`
`41. While in the sleep mode, “a sampling function is periodically executed,” where
`
`the function “samples acceleration data at a set sampling rate for a set time period.”
`
`Id., 9:5-7.
`
`Unlike claims 1-4, claims 5-10 are directed to determining a step cadence
`
`window “used to count steps.” Id., 4:21-22. The step cadence window “is a window
`
`of time since a last step was counted that is looked at to detect a new step.” Id., 3:66-
`
`
`
`–5–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`4:1. “The cadence window may have a default minimum and maximum value.” Id.,
`
`4:63-66. However, “[o]nce enough steps have been detected to determine a dynamic
`
`stepping cadence or period,” the dynamic cadence window “continuously updates as
`
`a user’s cadence changes.” Id., 5:1-2, 4:2426.
`
`B.
`
`Prosecution History
`
`The ’902 patent issued on February 1, 2011, from the U.S. Patent Application
`
`No. 12/694,135 filed January 26, 2010. The ’902 patent is a continuation of U.S.
`
`Patent No. 7,653,508, filed on December 22, 2006. On September 24, 2010, and
`
`without any previous action, the Examiner issued a Notice of Allowance for original
`
`claim 12 (issued claim 1) and original claim 25 (issued claim 5). Ex. 1002, pp.5,34.
`
`Consequently, the references presented in this petition were not cited or applied by
`
`during prosecution.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`The level of ordinary skill in the art may be reflected by the prior art of record.
`
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc.,
`
`57 F.3d 1573, 1579 (Fed. Cir. 1995). Here, a person of ordinary skill in the art
`
`(“POSITA”) would include someone who had, at the priority date of the ’902 Patent
`
`(i) a Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
`
`Computer Science, or equivalent training, and (ii) approximately two years of
`
`experience working in hardware and/or software design and development related to
`
`
`
`–6–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`MEMS (micro-electro-mechanical) devices and body motion sensing systems. Ex.
`
`1003, p.8. Lack of work experience can be remedied by additional education, and
`
`vice versa. Id.
`
`VII. CLAIM CONSTRUCTION
`
`This Petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable construction in light of the specification. See 37 C.F.R.
`
`§ 42.100(b). Under the broadest reasonable construction, claim terms are given their
`
`ordinary and accustomed meaning as would be understood by one of ordinary skill
`
`in the art in the context of the entire disclosure. Cuozzo Speed Techs., LLC v. Lee,
`
`579 U.S. ___, slip op. at 17 (2016); In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007). Also, because the claim constructions proposed herein are based
`
`on the broadest reasonable construction, they do not necessarily apply to other
`
`proceedings that use different claim construction standards. See Samsung Elecs. Co.
`
`v. Virginia Innovation Sci., Inc., IPR2013-00569, Paper 9 at 2 (PTAB 2013). For
`
`terms not addressed below, Petitioners submit that no specific construction is
`
`necessary for this proceeding.1
`
`
`
` 1
`
` Petitioners do not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`
`
`–7–
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`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`A.
`
`“dominant axis”
`
`This term appears in at least claim 10. In the specification of the ’902 patent,
`
`the dominant axis is determined based on the accelerometer’s alignment with
`
`gravity. Ex. 1003, p.15. For example, the specification states that “[i]n one
`
`embodiment, the dominant axis is assigned after identifying a gravitational
`
`influence. The gravitational influence may be identified by calculating total
`
`acceleration based upon the acceleration on each axis.” Ex. 1001, 14:34-38. The
`
`specification also states that “[i]n one embodiment, once the orientation is
`
`determined, a dominant axis is assigned based upon the orientation. Determining an
`
`orientation of the electronic device 100 may include identifying a gravitational
`
`influence.” Id., 6:13-16. In other words, the dominant axis is “the axis most
`
`influenced by gravity, which may change over time (e.g., as the electronic device is
`
`rotated).” Id., 6:17-19.
`
`Thus, for the purposes of this proceeding, the term “dominant axis” as used in
`
`the claims includes “the axis most influenced by gravity.” Ex. 1003, p.16.
`
`B.
`
`“cadence window”
`
`This term appears in at least claim 5. The specification specifically defines
`
`this term as “a window of time since a last step was counted that is looked at to detect
`
`a new step.” Ex. 1001, 3:66-4:1.
`
`
`
`–8–
`
`

`

`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`Thus, for the purposes of this proceeding, the term “cadence window” as used
`
`in the claims includes “a window of time since a last step was counted that is looked
`
`at to detect a new step.” Ex. 1003, p.16.
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE REQUESTED
`RELIEF
`
`Petitioners ask that the Board review the accompanying prior art and analysis,
`
`institute a trial for inter partes review of claims 1-6 and 9-10, and cancel those
`
`claims. As explained below and in the declaration of Petitioners’ expert, Dr. Joe
`
`Paradiso, the concepts described and claimed in the ’902 patent were not new. This
`
`petition explains where each element of claims 1-6 and 9-10 is found in the prior art
`
`and why the claims would have been obvious to a POSITA before the earliest
`
`claimed priority date of the ’902 patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenged Claims
`
`Claims 1-6 and 9-10 of the ’902 patent are challenged in this petition.
`
`B.
`
`Statutory Grounds for Challenges
`
`Challenge
`Challenge #1
`
`Claims
`1-2
`
`Ground
`Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`Publication No. 2006/0084848 to Mitchnick
`(“Mitchnick”).
`
`
`
`–9–
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`

`

`
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`Challenge
`Challenge #2
`
`Claims
`3
`
`Challenge #3
`
`4
`
`Ground
`Obvious under 35 U.S.C. § 103(a) over Mitchnick in
`view of U.S. Patent No. 5,957,957 to Sheldon
`(“Sheldon”).
`
`Obvious under 35 U.S.C. § 103(a) over Mitchnick, in
`view of Sheldon, and further in view of U.S. Patent No.
`6,469,639 to Tanenhaus et al. (“Tanenhaus”)
`
`Challenge #4 5-6, 9-10 Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`No. 7,698,097 to Fabio Pasolini et al. (“Fabio”) in
`view of U.S. Patent No. U.S. Patent No. 7,463,997 to
`Fabio Pasolini et al. (“Pasolini”)
`
`Pasolini (Ex. 1005) was filed on October 2, 2006, issued on December 9,
`
`2008, and is prior art under § 102(e). Fabio (Ex. 1006) was filed on October 2, 2006,
`
`issued on April 13, 2010, and is prior art under § 102(e). Mitchnick (Ex. 1007) was
`
`filed on October 14, 2004, published on April 20, 2006, and is prior art under
`
`§ 102(e). Tanenhaus (Ex. 1008) issued on October 22, 2002, and is prior art under
`
`§ 102(b). Sheldon (Ex. 1009) issued on September 28, 1999, and is prior art under
`
`§ 102(b).
`
`C. Challenge #1: Claims 1 and 2 are unpatentable under 35 U.S.C
`§ 103 over Mitchnick
`1.
`Summary of Mitchnick
`Mitchnick is directed to a monitoring device “for automatically monitoring
`
`participants.” Ex. 1007, ¶9. The device can reside “in or on the body.” Id., ¶43.
`
`The device includes an inertial sensor, such as a “MEMS-based accelerometer” that
`
`
`
`–10–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`“can measure positive and negative accelerations.” Id., ¶50. The device can detect
`
`an activity of a participant “by observing characteristic patterns of participant motion
`
`as sensed by an acceleration.” Id., ¶12. To identify the activity, the device
`
`“compares observed characteristics” of an acceleration signal “to a template
`
`indicating ranges of characteristics likely to indicate” the activity. Id., ¶70. The
`
`device then determines that the “activity is likely if the observed characteristics
`
`match the template.” Id.
`
`Mitchnick’s device also includes a “low-voltage, low-power micro-controller
`
`(MC) 31 in order to minimize device count, size, and power consumption.” Id., ¶50.
`
`The minimized power consumption allows the device to function “for extended
`
`periods, e.g., weeks, a month, or several months, or up to a year or more.” Id., ¶11.
`
`This is used because the monitored “activity is intermittent” and “power and memory
`
`can be advantageously further conserved, and device life further extended, by only
`
`intermittently sampling.” Id., ¶69. “[W]hen the device is neither sampling for
`
`sexual activity nor storing monitoring data, it enters a low-power sleep state.” Id.,
`
`¶72.
`
`In Mitchnick, “[p]rior to entering this sleep state, the MC controls power
`
`control 45 to power down external components not necessary for its subsequent
`
`wake-up.” Id. Accordingly, “[o]nly the MC and a wake-up circuit need to be
`
`powered.” Id., ¶68. Upon entering the sleep mode, the MC “loads the sampling
`
`
`
`–11–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`interval into an MC timer, and then executes a SLEEP instruction.” Id., ¶72. When
`
`the timer expires, “the SLEEP instruction completes, and the device again checks
`
`for sexual activity.” Id. If the activity is not detected, “the device remains in a low-
`
`power sleep state.” Id., ¶69. Otherwise, the monitoring device enters into a “normal
`
`operation mode” where the “the device proceeds to repetitively retrieve sensor data
`
`77 and store retrieved data in memory.” Id., ¶¶50,72.
`2. Mitchnick’s embodiments are combinable
`Mitchnick is primarily directed to a monitoring device that is “designed to be
`
`affixed to or reside in a cavity of, a participant.” Id., ¶11. A POSITA would have
`
`recognized that Mitchnick’s internal embodiment could also be performed by an
`
`external device attached to a body since Mitchnick specifically states that its device
`
`can resides elsewhere “on the body” in order to detect “other parameters of
`
`medical/clinical interest.” Id.; see Ex. 1003, pp.18-19. A POSITA would have
`
`recognized the benefits of modifying Mitchnick’s internal device to reside on the
`
`body, and not in the body cavity. Ex. 1003, p.19.
`
`For example, an external version of the monitoring device—that resides on
`
`the body—can be placed and removed by a user, rather than inserted by a medical
`
`professional. Id. This would allow such a device to be more widely distributed to
`
`both male and female patients, particularly in less developed areas as medical
`
`intervention would not be required to begin use. Id. In this way, Mitchnick’s
`
`
`
`–12–
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,881,902
`
`
`external version would be useful to detect user activities pertaining to other areas of
`
`medical interest, which a POSITA would understand to include walking or running,
`
`following for example, a heart attack or a knee surgery. Id. An external version of
`
`the device also has the benefit of being shared hygienically by numerous users,
`
`potentially reducing overall cost of use by allowing devices to be reused by various
`
`patients for various types of monitoring. Id. Thus, given Mitchnick’s express
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`teachings, a POSITA would have found it obvious to implement Mitchnick’s internal
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`embodiment as an external version that resides on the human body. Id.
`3.
`Claim 1
`[1.0] “A method comprising:”
`To the extent that this preamble is limiting, Mitchnick discloses a method that
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`“comprises awakening periodically from a low power sleep state in order to
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`determine from acceleration measurements” whether a participant is engaged in an
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`activity. Ex. 1007, ¶31. Accordingly, Mitchnick discloses “[a] method comprising”
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`as claimed. Ex. 1003, p.20.
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`[1.1] “detecting motion by an inertial sensor included in a mobile device”
`First, Mitchnick teaches that a monitoring device having an accelerometer that
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`detects motion. Ex. 1007, ¶49, Fig.7. The accelerometer is a type of an inertial
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`sensor because it senses acceleration due to gravity. Ex. 1003, pp.20-21.
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`Ex. 1007, Fig.1 (annotated); Ex. 1003, p.21. In Mitchnick, the accelerometer detects
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`motion because it measures acceleration caused by “patterns of participant motion.”
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`Ex. 1001, ¶12. Accordingly, Mitchnick teaches detecting motion by an inertial
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`sensor.
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`Second, Mitchnick teaches that the accelerometer is in a “monitoring
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`device[]” that resides within a human subject. Ex. 1007, ¶43. This monitoring
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`device is a mobile device for a number of reasons—it is small in size and can be
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`easily transported by a human; it includes a battery and is not otherwise tethered to
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`an external power source; and it does not restrict the user’s movement and mobility.
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`See Ex. 1007, Figs.1, 5B; Ex. 1003, pp.22-23. Additionally, Mitchnick teaches that
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`its internal embodiment can be “entirely dispensed with, and all data sensed from an
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`external unit on . . . the participant.” Ex. 1007, ¶15. As discussed above, a POSITA
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`would find it obvious to implement Mitchnick’s internal embodiment as an external
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`device. Ex. 1003, pp.18-19.
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`Further, Mitchnick’s device is designed to “communicate wirelessly using one
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`of the available very lower power, short range radio linked protocols.” Ex. 1007,
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`¶15. Accordingly, given that Mitchnick teaches a device that is small, battery
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`powered, carried by a human, and communicates with other devices wirelessly, a
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`POSITA would recognize the monitoring device to be a mobile device. Ex. 1003,
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`pp.23-24.
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`Because Mitchnick teaches a mobile monitoring device that includes an
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`accelerometer that measures acceleration due to participant’s motion, and teaches
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`that the device can be implemented externally, Mitchnick renders obvious “detecting
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`motion by an inertial sensor included in a mobile device” as claimed. Id., p.24.
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`[1.2] “determining, by the mobile device, whether the motion has a motion
`signature indicative of a user activity that the mobile device is configured to
`monitor”
`Mitchnick discloses this limitation. First, as discussed in section [1.1],
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`Mitchnick’s monitoring device renders obvious a mobile device that detects motion
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`via an accelerometer. Id.
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`Second, Mitchnick teaches that the monitoring device includes a “sexual-
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`activity check” that “extracts characteristics from an observed accelerometer signal,
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`compares observed characteristics to a template indicating ranges of
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`characteristics likely to indicate sexual activity, and indicates sexual activity is
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`likely if the observed characteristics match the template.” Ex. 1007, ¶70. In
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`particular, Mitchnick teaches the characteristics of the observed accelerometer signal
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`include “the values of significant peaks in the accelerometer signal, representing
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`significant acceleration of a device wearer, and the times of these peaks or the time
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`intervals between these peaks.” Id. These acceleration signals are compared with a
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`template that “describes one or more joint ranges of peak values and time intervals
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`that have been determined as likely indicative of sexual activity.” Id. According to
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`Mitchnick, the “sexual activity is likely if the observed characteristics match the
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`template.” Id. A POSITA would understand that comparing acceleration signals to
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`a template to determine whether a particular activity is occurring is “determining”
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`whether a “motion signature” is “indicative of a user activity” that the device is
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`“configured to monitor.” Ex. 1003, pp.25-26.
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`Accordingly, Mitchnick’s monitoring device that includes an activity check
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`used to determine the occurrence of sexual activity by matching the characteristics
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`of the observed acceleration signal to a template, discloses “determining, by the
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`mobile device, whether the motion has a motion signature indicative of a user
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`activity that the mobile device is configured to monitor” as claimed. Id., p.26.
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`[1.3] “when the motion does not have a motion signature of a user activity that the
`mobile device is configured to monitor, entering a sleep mode.”
`Mitchnick discloses this limitation. First, as discussed in section [1.2],
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`Mitchnick teaches determining, based on acceleration data, whether a particular
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`activity occurs. Id.; Ex. 1007, ¶70. While the activity is occurring, the device stays
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`in a normal operational mode where “the device proceeds to repetitively retrieve
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`sensor data 77,” “store retrieved data in memory 79,” and intermittently checks “that
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`sexual activity is continuing.” Ex. 1007, ¶¶50, 72, Fig.3. Otherwise, “when the
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`device is neither sampling for sexual activity nor storing monitoring data, it enters a
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`low-power sleep state.” Id., ¶72. The sleep state is a result of the activity check not
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`finding the type of activity that it is configured to monitor: “If this check fails, the
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`device again enters the sleep state.” Id.; Ex. 1003, pp.26-27.
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`Because Mitchnick’s monitoring device (mobile device) enters a sleep mode
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`when sexual activity is not detected, Mitchnick discloses when the motion does not
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`have a motion signature of a user activity that the mobile device is configured to
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`monitor, entering a sleep mode. Ex. 1003, p.27.
`4.
`Claim 2
`[2.0] The method of claim 1, further comprising:
`Mitchnick teaches this limitation as described in sections [1.0]-[1.3]. Id.
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`[2.1] “when the motion does have a motion signature of a user activity that the
`mobile device is configured to monitor, monitoring for future motions having the
`motion signature.”
`As discussed in section [1.2], Mitchnick’s monitoring device determines
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`whether the motion signature of a user activity (e.g., sexual activity) is indicative of
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`the motion signature of a user activity that the device is configured to monitor. Id.
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`This occurs when the monitoring device “checks for sexual activity” and “succeeds.”
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`Ex. 1007, ¶72; Ex. 1003, p.27. Thus, Mitchnick teaches that its device detects a
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`motion signature that it is configured to monitor. Ex. 1003, p.27.
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`In Mitchnick, when the activity check “succeeds,” the monitoring device
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`“proceeds to repetitively retrieve sensor data.” Ex. 1007, ¶72. Intermittently with
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`retrieving the sensor data, the monitoring device also monitor[s] for future motion
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`having the motion signature by checking “that sexual activity is continuing.” Id.
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`Thus, the intermittent activity check performed by the monitoring device once the
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`device has determined that the activity has occurred teaches monitoring for future
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`motions having the motion signature. Ex. 1003, pp.28-29.
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`D. Challenge #2: Claim 3 is unpatentable under 35 U.S.C § 103 over
`Mitchnick and Sheldon
`1.
`Summary of Sheldon
`Sheldon describes a monitoring device, such as a pacemaker, that
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`distinguishes human motions, such as stair climbing, from other user activities, such
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`as stair descending or walking. Ex. 1009, 4:20-23. Sheldon explains that to monitor
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`user activity, an accelerometer is mounted within the pacemaker. Id., 4:53-54. The
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`accelerometer provides an output signal due to the force of gravity, which is
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`collected over a time period that can be used to determine a human activity, such as
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`walking or running. Id., 4:56-57, 12:21-29. Sheldon teaches an example “running
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`time period” (also referred to as sampling period) that can be a two second period.
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`Id., 11:64-12:2, 12:27-29.
`2.
`Reasons to Combine Mitchnick and Sheldon
`A POSITA would have found it obvious to combine the teachings in
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`Mitchnick and Sheldon for the reasons discussed below, and for additional reasons
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`included in the detailed analysis of claim limitations. Ex. 1003, p.30. Mitchnick
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`and Sheldon are analogous art because they are in the same field of endeavor and
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`both use accelerometers to monitor user activity. Id. Both Mitchnick and Sheldon
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`are also concerned with saving power and extending battery life in a mobile device.
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`Id. Accordingly, a POSITA would have looked to Sheldon to make improvements
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`to Mitchnick’s monitoring device so that the monitoring device would monitor user
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`activity with an accelerometer while being