UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
`
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`
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`HTC CORPORATION, HTC AMERICA, INC., AND LG ELECTRONICS,
`INC.
`
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG, S.A. 1
`
`Patent Owner
`
`
`
`
`
`
`
`IPR2018-01631
`PATENT 7,881,902
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`
`
`
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
` 1
`
` The owner of this patent is Uniloc 2017 LLC.
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`HTC CORPORATION, HTC AMERICA, INC., AND LG ELECTRONICS,
`INC.
`
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG, S.A. 1
`
`Patent Owner
`
`
`
`
`
`
`
`IPR2018-01631
`PATENT 7,881,902
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
` 1
`
` The owner of this patent is Uniloc 2017 LLC.
`
`
`
`IPR2018-01631
`U.S. Patent 7,881,902
`
`Table of Contents
`
`
`
`I.
`II.
`III.
`IV.
`V.
`VI.
`
`B.
`
`INTRODUCTION .................................................................................... 5
`THE ’902 PATENT .................................................................................. 5
`RELATED PROCEEDINGS .................................................................... 6
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 7
`PROSECUTION HISTORY ..................................................................... 7
`PETITIONERS FAIL TO ESTABLISH
`UNPATENTABILITY FOR ANY CHALLENGED CLAIM ................. 9
`A.
`Claim Construction ....................................................................... 10
`1.
`“dominant axis” .................................................................. 10
`2.
`“cadence window” .............................................................. 16
`3.
`“periodically sampling acceleration data at a
`predetermined sampling rate, wherein each
`sample includes acceleration data measured by
`the inertial sensor over a predetermined period of
`time” ................................................................................... 16
`Ground 4 Fails .............................................................................. 18
`1.
`The cited Fabio and Pasolini references fail to
`disclose “using a default step cadence window to
`identify a time frame within which to monitor for
`a next step” (Claim 5) ......................................................... 18
`a)
`Petitioners fail to prove Fabio’s validation
`interval (VT) maps onto Petitioners’ own
`definition for “cadence window” ............................. 18
`Fabio’s TS1 is not a default cadence
`window ..................................................................... 20
`The cited Fabio and Pasolini references fail to
`
`b)
`
`2.
`
`ii
`
`
`
`C.
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`IPR2018-01631
`U.S. Patent 7,881,902
`disclose “when the step count is at or above the
`step count threshold, determining a dynamic step
`cadence window” (Claim 5) ............................................... 22
`The cited Fabio and Pasolini references fail to
`disclose “using the dynamic step cadence window
`to identify the time frame within which to
`monitor for the next step” ................................................... 24
`The cited Fabio and Pasolini references fail to
`disclose “assigning a dominant axis based on the
`orientation” ......................................................................... 25
`The Petition should fail as to the challenged
`dependent claims in Ground 4. ........................................... 26
`Grounds 1-3 Fail ........................................................................... 26
`1.
`The Petition Fails to Show Mitchnick’s
`Embodiments Are Combinable .......................................... 26
`a) Mitchnick fails to teach an embodiment that
`can be a “mobile device” as claimed ....................... 27
`Petitioners fail to provide the required
`analysis and explanation of how and why
`Mitchnick would be modified to make the
`hypothetical “external device” ................................. 29
`There is no Prima Facie obviousness for
`“detecting motion by an inertial sensor included
`in a mobile device” ............................................................. 33
`3. Mitchnick fails to disclose “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.” ........................... 34
`The Petition Fails as to challenged dependent
`claims in Grounds 1-3 ........................................................ 36
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW IS THE SUBJECT OF A PENDING APPEAL ..................... 36
`
`b)
`
`2.
`
`4.
`
`3.
`
`4.
`
`5.
`
`VII.
`
`iii
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`
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`IPR2018-01631
`U.S. Patent 7,881,902
`VIII. CONCLUSION ....................................................................................... 36
`
`
`
`
`List of Exhibits
`
`Exhibit No.
`2001
`2002
`
`Description
`Declaration of William C. Easttom
`United States Patent No. 5,593,431 to Sheldon (“Sheldon II”)
`
`iv
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`IPR2018-01631
`U.S. Patent 7,881,902
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`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
`Response to Petition IPR2018-016312 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,881,902 (“the ’902 Patent” or “EX1001”) filed HTC
`Corporation and HTC America, Inc. (together “HTC”), as well as LG Electronics,
`Inc. (“LG”) (collectively “Petitioners”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’902 PATENT
`The ’902 patent is titled “Human activity monitoring device.” The ʼ902 patent
`issued February 1, 2011, from U.S. Patent Application No. 12/694,135 filed January
`26, 2010, and is a continuation of U.S. Patent Application No. 11/644,455 filed
`December 22, 2006.
`The inventors of the ’902 patent observed that at the time, step counting
`devices that utilize an inertial sensor to measure motion to detect steps generally
`required the user to first position the device in a limited set of orientations. In some
`devices, the required orientations are dictated to the user by the device. In other
`devices, the beginning orientation is not critical, so long as this orientation can be
`maintained. EX1001, 1:23-30. Further, the inventors observed that devices at the
`time were often confused by motion noise experienced by the device throughout a
`
`
`
` 2
`
` The instant Petition and Petitioner seek joinder to IPR2018-00424. See Paper 13.
`Furthermore, as Petitioners state, the instant Petition is a “carbon copy” of the
`original petition in IPR2018-00387. Id., at 1.
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`5
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`U.S. Patent 7,881,902
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`user's daily routine. The noise would cause false steps to be measured and actual
`steps to be missed in conventional step counting devices. Conventional step counting
`devices also failed to accurately measure steps for individuals who walk at a slow
`pace. Id., 1:31-38.
`According to the invention of the ’902 Patent, a device to monitor human
`activity using an inertial sensor assigns a dominant axis after determining the
`orientation of an inertial sensor. The orientation of the inertial sensor is continuously
`determined, and the dominant axis is updated as the orientation of the inertial sensor
`changes. Id., 2:10-17.
`
`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 7,881,902 (EX1001).
`
`Case Caption
`
`Case Number
`
`District Case Filed
`
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Apple Inc. v. Uniloc 2017 LLC
`et al
`
`2-17-cv-00522
`
`TXED
`
`June 30, 2017
`
`2-17-cv-00650
`
`TXED
`
`September
`15, 2017
`
`4-17-cv-00832
`
`2-17-cv-00737
`
`TXND October 13,
`2017
`2-17-cv-01629 WAWD November 1,
`2017
`TXED November 9,
`2017
`Jan. 05, 2018
`
`IPR2018-00424
`
`PTAB
`
`6
`
`
`
`4-18-cv-02918
`
`IPR2018-01653
`
`CAND
`
`4-18-cv-00364
`
`IPR2018-01028
`
`IPR2018-01631
`U.S. Patent 7,881,902
`CAND
`January 17,
`2018
`PTAB May 4, 2018
`
`May. 17,
`2018
`PTAB Sep. 04, 2018
`
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple v. Uniloc Luxembourg
`SA
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`Samsung Electronics America,
`Inc. et al v. Uniloc
`Luxembourg SA et al
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`The Petition alleges that “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
`MEMS (micro-electro-mechanical) devices and body motion sensing systems.” Pet.
`6. Dr. Easttom disagrees with the definition of POSITA offered in the Petition,
`specifically, instead of requiring two years of experience in working in “hardware
`and/or software design and development related to MEMS (micro-electro-
`mechanical) devices and body motion sensing systems”, Mr. Easttom specifies two
`years of experience “related to accelerometers or similar devices.” EX2001, ¶ 12.
`Dr. Easttom, however, recognizes that the difference is inconsequential to the
`dispute here. Regardless of which definition the Board adopts, Dr. Easttom is
`sufficiently qualified in the pertinent art. Id., ¶ 3.
` PROSECUTION HISTORY
`V.
`The Petition neglects to mention relevant aspects of the prosecution history of
`
`7
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`this family of patents concerning certain claim terms. The ’902 patent is part of a
`family of related patents including U.S. Patent Nos. 8,712,723 and 7,653,508 (the
`’723 and ’508 patents, respectively). These patents all share a common specification.
`During prosecution of the application that issued as to the related ’723 patent,
`the Examiner cited the same Pasolini reference3 primarily relied upon in the instant
`Petition. In response, the Applicant successfully distinguished Pasolini as failing to
`“teach or suggest the use of cadence windows.”4 In doing so, Applicant
`distinguished Pasolini, in part, as failing to disclose the use of “cadence windows”
`as claimed. Id. The U.S Patent Office ultimately agreed and allowed the patent to
`issue over Pasolini and all other references of record.
`Evidently recognizing that this prosecution history reveals that Pasolini does
`render obvious the “cadence window” claim limitations, the Petition purports to rely
`exclusively on Fabio for such limitations. As will be shown, however, Fabio is
`distinguishable from the “cadence window” limitations (for analogous reasons
`addressed during prosecution) and does not cure the acknowledged deficiencies of
`Pasolini.
`The interest of finality weighs against revisiting the deficiencies of Pasolini
`
`
`
` 3
`
` The prosecution history of the ’723 patent references the printed publication (U.S.
`Serial App. Pub. No. 2007/0143068) of the same Pasolini reference that ultimately
`issued as U.S. Patent No. 7,463,997. The Petition opted to cite the issued patent in
`lieu of the printed publication.
`4 See Public File Wrapper of ’723 patent, Response dated Jan. 29, 2013 (at p. 6 of 9)
`to Office Action dated Sept. 26, 2012 (also filed by Petitioner as Exhibit 1002 in
`related-matter IPR2018-00389, at pp. 142 of 454).
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`8
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`and whether the cumulative disclosure in Fabio renders obvious what Pasolini
`admittedly fails to disclose. See, e.g., Shire LLC v. Amneal Pharm., LLC, 802 F.3d
`1301, 1307 (Fed. Cir. 2015) (holding a patent challenger has “the added burden of
`overcoming the deference that is due to a qualified government agency presumed to
`have properly done its job, which includes one or more examiners who are assumed
`to have some expertise in interpreting the references and to be familiar from their
`work with the level of skill in the art and whose duty it is to issue only valid
`patents.”); Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir.
`2004) (upholding claim construction of the district court in limiting the scope of the
`earlier, already issued patent based on statements offered during prosecution of a
`related application that issued later).
`
`VI. PETITIONERS FAIL TO ESTABLISH UNPATENTABILITY FOR
`ANY CHALLENGED CLAIM
`The Petition raises the following obviousness challenges under 35 U.S.C. §
`
`103:
`Ground
`1
`2
`3
`
`1-2
`3
`4
`
`Claims
`
`Reference(s)
`
`Mitchnick5
`Mitchnick and Sheldon6
`Mitchnick and Sheldon and Tanenhaus7
`
`
`
` 5
`
` EX1007, U.S. Patent Publication No. 2006/0084848
`6 EX1009, U.S. Patent No. 5,957,957
`7 EX1008, U.S. Patent No. 6,469,639
`
`
`9
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`4
`
`Fabio8 and Pasolini9
`5-6, 9-10
`The petition insinuates that few references were considered and that the “the
`references presented in this petition were not cited or applied by during prosecution.”
`Pet. at 4. Both the insinuation and the statement are misleading. More than one-
`hundred (100) references were cited. EX1001. One specifically cited reference was
`United States Patent No. 5,593,431 to Sheldon (“Sheldon II”). EX2002. Sheldon II
`has a substantial overlap of disclosures with the petition- applied Sheldon reference.
`The petition notes nothing of Sheldon II or why the disclosures presented in Sheldon
`are any different.
`
`A. Claim Construction
`As explained below, Petitioners base their patentability challenges on
`erroneous constructions, which provides an independent and fully-dispositive basis
`to deny the Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc.,
`IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015),
`aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed.
`Cir. 2016) (finding Petitioners’ claim construction unreasonable in light of the
`specification, and therefore, denying Petition as tainted by reliance on an incorrect
`claim construction).
`
` “dominant axis”
`1.
`Petitioners’ proposed construction violates the well-established rule against
`
`
`10
`
` 8
`
` EX1006, U.S. Patent No. 7,698,097
`9 EX1005, U.S. Patent No. 7,463,997
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`reading limitations from the specification into the claim language. Phillips v. AWH
`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
`teachings from the specification, Petitioners seek to limit the claim term “dominant
`axis” to mean “the axis most influenced by gravity.” Pet. 8. However, the teachings
`of the specification cited by Petitioners clearly state that they are only example
`embodiments and are not meant to be limiting. See e.g., Pet. 8 quoting EX1001,
`14:34-38 (“[i]n one embodiment…”) (emphasis added). Importantly, Petitioners
`expressly acknowledge that the ’902 Patent specifically provides for different ways
`to determine the “dominant axis” in other embodiments. For example, in one
`embodiment, the “dominant axis” is determined by orientation of the device. See
`EX1001, 6:7-21. And here, while the orientation “may include identifying a
`gravitational influence…” (EX1001, 6:13-15) (emphasis added), by definition, that
`means the “dominant axis” is not limited to just gravitational influence.
`As a further example, in the same section, the specification also states that
`“[t]herefore, a new dominant axis may be assigned when the orientation of the
`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
`electronic device 100 changes.” Id., 6:19-21 (emphasis added). Thus, the
`specification recites yet another example of a different way to determine the
`“dominant axis”. Another non-limiting example from the specification states: “[i]n
`one embodiment, the dominant axis corresponds to a virtual axis that is a
`component of a virtual coordinate system.” Id., 6:27-29 (emphasis added).
`The ’508 patent uses the phrase “the axis most influenced by gravity” only in
`describing an example embodiment for determining orientation. EX1001, 6:8‒22.
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`11
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`U.S. Patent 7,881,902
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`That description states “[t]he orientation may be determined based upon the rolling
`averages of accelerations created by the rolling average logic 125.” Id. at 6:10‒12
`(emphasis added). A few lines down, that same paragraph states “[d]etermining an
`orientation of the electronic device 100 may include identifying a gravitational
`influence. The axis with the largest absolute rolling average may be the axis most
`influenced by gravity.” Id. at 6:14‒18 (emphasis added).
`There simply is no unambiguous lexicography in the cited passage (or
`elsewhere) that states the assigned “dominant axis” must be the one that is most
`influenced by gravity. Rather, this passage observes that the rolling-average process
`used to determine orientation may, and hence may not, coincidentally be the axis
`most influenced by gravity. Petitioners’ proposed construction would impermissibly
`exclude those instances where the axis determined by a rolling-average process is
`not the axis most influenced by gravity.
`Petitioners’ proposed construction would impermissibly exclude preferred
`embodiments and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
`embodiment is rarely, if ever, correct and would require highly persuasive
`evidentiary support).
`In its Institution Decision for IPR2018-00424, the Board points to a separate
`description addressing an alternative embodiment (which the specification expressly
`distinguishes from the rolling-average process) as allegedly supporting the
`proposition that “a dominant axis, whether virtual axis or otherwise, is assigned on
`the basis of gravity: ‘most influenced by gravity’ and ‘approximately aligned to
`
`12
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`IPR2018-01631
`U.S. Patent 7,881,902
`gravity.’” IPR2018-00424, Paper 7 at 14. This too is incorrect.10 As a counter
`example, and as explained above, the ’902 patent reveals that using a rolling-average
`process to determine orientation does not necessarily result in assigning a dominant
`axis that is most influenced by gravity. EX1001, 6:8‒22.
`two alternative
`the
`Specifically,
`the Institution Decision cites
`to
`embodiments in specification. And as discussed above, where there are numerous
`alternative embodiments, the Institution Decision adopting Petitioners’s proposed
`construction violates the well-established rule against reading limitations from the
`specification into the claim language. Phillips, 415 F.3d at1313; Vitronics, 90 F.3d
`at 1584–85.
`In its first citation, the Institution Decision in IPR2018-00424 cites to an
`excerpt of a passage regarding assigning the dominant axis with the “largest absolute
`rolling average over the sample period.: IPR2018-00424, Paper 7 at 14. However,
`the Institution Decision does not include the first three words of the paragraph,
`which are key to this claim construction issue. The passage in full recites:
`
`
`
`10 Neither party has offered and defended construing “assigning a dominant axis” to
`mean “a dominant axis . . . is assigned on the basis of gravity.” This would not be a
`proper definition for what is recited, but rather it would be an impermissible rewrite
`of the claim language that merely inserts additional words.
`
`13
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`
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`EX1001, 6:8-25 (highlighting added).
`
`A sentence of the following paragraph is included in the above recitation
`
`because the Institution Decision in IRP2018-00424 cites to two separate and
`
`different embodiments in making its first argument. Regardless, as seen above, in
`
`each case, the specification clearly states that the example is but one of many
`
`alternative embodiments.
`
`In its second citation, the Institution Decision in IPR2018-00424 again cites
`
`to an excerpt of a passage from the specification, this time regarding the dominant
`
`axis being a “virtual axis in a virtual coordinate system” which, the Institution
`
`Decision acknowledge on as only being “approximately aligned to gravity.”
`
`IPR2018-00424, Paper 7 at 14. Regardless of the fact that being “approximately
`
`14
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`IPR2018-01631
`U.S. Patent 7,881,902
`aligned to gravity” itself does not support Petitioners’ proposed construction, again,
`
`the full passage shows that this is another one of many alternative embodiments:
`
`
`
`EX1001, 6:23-37 (highlighting added).
`The above recitation merely confirms Petitioners’ proposed construction is
`one of numerous alternative embodiments, and therefore it confirms that Petitioners’
`proposed construction would impermissibly exclude preferred embodiments and
`should therefore be rejected. Vitronics, 90 F.3d at 1584–85. The fact that the
`specification supports one of many alternative embodiments is both unsurprising
`and insignificant. The Board’s emphasis of the statements “most influenced by
`gravity” and “approximately aligned to gravity” reveals another flaw in Petitioners’
`proposed construction. The specification uses those phrases in describing distinct
`axis of expressly-distinguished embodiments. Id. at 6:25‒28 (“In alternative
`embodiments, the dominant axis does not correspond to …, but rather to ….”). Thus,
`
`15
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`a construction that focuses only on one embodiment (as Petitioners propose) would
`impermissibly exclude the other. This error is compounded by the fact that
`Petitioners’ construction requires the dominant axis to be the one that is most
`influenced by gravity, while the description of the rolling-average embodiment
`reveals that is not required.
`Petitioners have not and cannot establish prima facie obviousness through
`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
`Synopsys, 669 Fed. Appx. 569. In any event, Petitioners fail to present a case of
`prima facie obviousness even under its own construction.
`
` “cadence window”
`2.
`The Institution Decision in IPR2018-00424 indicates that this term does not
`need construction. See IPR2018-00424, Paper 7 at 15. However, as discussed below
`in the context of the claims, both “cadence” and “cadence window” as used in the
`claims have particular meaning. That meaning is ignored by the Petitioners.
`
`3.
`
`“periodically sampling acceleration data at a predetermined
`sampling rate, wherein each sample includes acceleration
`data measured by the inertial sensor over a predetermined
`period of time”
`The Institution Decision in IPR2018-00424 states that this term needs to be
`construed because: “it is unclear whether ‘each sample’ in the ‘wherein’ clause
`refers to all of the acceleration data measured over each sampling period, or instead
`refers to each sample of acceleration data that is measured over each sampling
`period.” IPR2018-00424, Paper 7 at 15 (emphasis in original). And, the Institution
`
`16
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`IPR2018-01631
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`Decision in IPR2018-00424 cites to alternative embodiments in the specification for
`illustration. Id. The full passage cited by the Institution Decision in IPR2018-00424
`states:
`
`
`
`EX1001, 9:5-17.
`Patent Owner submits that the claim language is clear and no construction is
`necessary. The claim language first recites periodically collecting samplings of
`acceleration data. Then the claim language recites that each sample of acceleration
`data is measured by the inertial sensor over a predetermined period of time. Thus,
`for the “each sample” limitation, the claim language contemplates that the particular
`sample could include one whole second worth of data, sampled at 50Hz (here, fifty
`acceleration data samples), or just one of the fifty acceleration data samples, if the
`“predetermined sampling rate” is chosen to be 50 Hz and the “predetermined period
`of time” is chosen to be 1/50th of a second.
`In summary, Patent owner submits that this claim term requires no
`construction, but to the extent the Board will construe this term, Patent Owner
`
`17
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`contends that the Board’s construction should be modified as such: “periodically
`obtaining acceleration data at a predetermined sampling rate by sampling the
`acceleration data over a predetermined period of time.”
`
`B. Ground 4 Fails
`The cited Fabio and Pasolini references fail to disclose “using
`1.
`a default step cadence window to identify a time frame within
`which to monitor for a next step” (Claim 5)
`The cited Fabio and Pasolini references fail to disclose “using a default step
`cadence window to identify a time frame within which to monitor for a next step”
`as required by Claim 5. The Petition relies solely on Fabio for the requirement of
`“using a default step cadence window.” Specifically, the Petition points to Fabio’s
`“validation interval” (TV) as allegedly disclosing the claimed “cadence window.”
`However, this is incorrect. The claimed “cadence window” is used to “monitor for
`a next step.” Even if the Fabio’s “validation interval” (TV) could be considered a
`“cadence window” (which it is not), Petitioners cannot dispute that such a
`“validation interval” (TV) is used for a prior step – not the next step as claimed.
`Also, in its Institution Decision in IPR2018-00424, the Board stated that is “not
`persuaded that Fabio’s validation window TV in first counting procedure 110
`teaches or suggests using a “default cadence window.” IPR2018-00424, Paper 7 at
`42.
`
`a)
`
`Petitioners fail to prove Fabio’s validation interval
`(VT) maps onto Petitioners’ own definition for
`“cadence window”
`Petitioners argue that “cadence window” should be interpreted as “a window
`of time since a last step was counted that is looked at to detect a new step.” Pet. 8.
`
`18
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`
`Fabio could not disclose such a defined feature because Fabio’s so-called
`“validation interval” TV is specifically used to determine whether a last step is
`counted (or not) – not as a “window of time since a last step was counted.”
`Specifically, Fabio describes its “validation interval” TV with reference to its Figure
`6, which is copied and annotated below. See, e.g., EX1006, Fig. 6 and accompanying
`description including, for example, 4:28‒49.
`
`
`Fabio’s TV is retrospective at least in that it is used to validate only the
`immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current step
`detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
`validated if the instant of recognition of the current step TR(K) falls within a
`validation interval TV[.]” Id. Unless and until the last step is validated by the current
`step in the manner disclosed, the last step is not counted. Id. 5:10‒39. The current
`step (K), in turn, is dependent upon the next step (K+1) for validation and counting.
`Id. The final step detected will not be counted because it cannot be validated. Id.
`Accordingly, Fabio’s validation interval TV is not “a window of time since a
`last step was counted” (as required by Petitioners’ construction) at least because
`
`19
`
`
`
`IPR2018-01631
`U.S. Patent 7,881,902
`
`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
`the last step. Id. The Petition should therefore be denied because 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 claim 5 and all
`challenged claims depending therefrom.
`Fabio’s TS1 is not a default cadence window
`b)
`The Institution Decision in IPR2018-00424 points to Fabio’s threshold time
`TS1 as allegedly being the default cadence window because “Fabio uses threshold
`time TS1 as window within which a sample of acceleration data AZ (step 200) can be
`searched to both detect (step 225) and validate (step 230) the sample as a step that
`has occurred since the time the last step was counted.” IPR2018-00424, Paper 7 at
`42. However, Fabio confusingly and improperly conflates two different concepts in
`its use of the term “step” to mean both an actual step (that is validated as a step),
`and a step-like event that could end up being not a step (e.g., because it is not
`validated later)
`As a result, even though step 225 of Fabio is labeled as a “step-recognition
`test,” Fabio’s TS1 does not “identify a time frame within which to monitor for a next
`step” as the claim language requires because Fabio’s TS1 precedes the step validation
`procedure, which is backwards-looking and functions to validate the previous step.
`First, as already discussed above in Section VI.B.1.a, the step validating
`procedures of Fabio, using validation interval TV, is used in determining whether
`to count the last step. In other words, the “validation interval” of Fabio cannot
`
`20
`
`
`
`IPR2018-01631
`U.S. Patent 7,881,902
`
`“monitor for the next step” as required by the claim language because the “validation
`interval” TV is reactive and waits for the next step to occur before making its
`determination of whether to count the previous step.
`Next, the counting procedures of Fabio, including Fabio’s use of TS1,
`precedes Fabio’s “step validation procedure,” which, as already discussed, is
`reactive and only determines whether to count the previous step. All of the above is
`illustrated by Figure 4 of Fabio:
`
`TS1 Is involved in determining
`whether to execute procedure
`to validate the previous step-
`like event
`
`Step validating procedure
`for the previous step-like
`event
`
`“NO” means
`previous step-like
`event was not a
`step
`
`
`Therefore, as shown above, Fabio’s TS1 is only a gatekeeper to Fabio’s step
`validation procedure, which in turn merely determines whether to count the previous
`step, therefore, Fabio’s TS1 cannot be “a default step cadence window to identify a
`time frame within which to monitor for a next step”.
`
`21
`
`
`
`2.
`
`IPR2018-01631
`U.S. Patent 7,881,902
`The cited Fabio and Pasolini references fail to disclose “when
`the step count is at or above the step count threshold,
`determining a dynamic step cadence window” (Claim 5)
`The cited Fabio and Pasolini references fail to disclose “when the step count
`is at or above the step count threshold, determining a dynamic step cadence
`window” as required by Claim 5. The Petition relies solely on Fabio for this
`limitation. As described above, Fabio fails disclose the required “cadence window”
`under Petitioners’ own definition. For that reason alone, the Petition should fail.
`However, even if Fabio’s validation interval TV was a cadence window
`(which it is not), Fabio does not disclose “a dynamic step cadence window” as
`required by the claim language.
`The Petition wrongly conflates Fabio’s “second counting procedure” and
`“second validation test” for the required “determining a dynamic step cadence
`window.” The Petition agrees that in Fabio’s “first counting procedure” and “second
`counting procedure” steps are validated “when
`the duration ΔTK of a
`current step K is substantially homogeneous with respect to the duration ΔTK-1 of
`an immediately preceding step K-1”. Pet. 56. But the Petition then argues that
`“[b]ased on this, a POSITA would have understood that defining the validation
`interval in this way compensates for changes in each step.” Id. (emphasis added)
`(relying solely on its declarant).
`But a review of Fabio shows Petitioners are wrong. First, as the Petition
`admits, Fabio’s “second validation test ‘is altogether similar to the first validation
`test carried out in block 230 of FIG. 3.’” Pet. 55-56; EX1006, 6:31-32 (emphasis
`added).
`
`22
`
`
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`IPR2018-01631
`U.S. Patent 7,881,902
`
`Second, Fabio’s TV is retrospective at least in that it is used to validate only
`the immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current
`step detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
`validated if the instant of recognition of the current step TR(K) falls within a
`validation interval TV[.]” EX1006, 4:28-49. Unless and until the last step is
`validated by the current step in the manner disclosed, the last step is not counted. Id.
`5:10‒39. The current step (K), in turn, is dependent upon the next step (K+1) for
`validation and counting. Id. The final step detected will not be counted because it
`cannot be validated. Id.
`Third, Fabio describes the validation tests as such: “[
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