`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`
`v.
`
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`———————
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 7,881,902
`
`

`

`Petition for Inter Partes Review
`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 ..................................................................................... 1 
`C.
`Counsel and Service Information ......................................................... 2 
`III. GROUNDS FOR STANDING ....................................................................... 3 
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS ..................... 3 
`V. OVERVIEW OF THE ʼ902 PATENT ............................................................ 3 
`A.
`Summary of the Patent .......................................................................... 3 
`B.
`Prosecution History ............................................................................... 4 
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 5 
`VII. CLAIM CONSTRUCTION ............................................................................ 5 
`A.
`“dominant axis” .................................................................................... 6 
`B.
`“cadence window” ................................................................................ 7 
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................... 7 
`IDENTIFICATION OF HOW THE CLAIMS ARE
`UNPATENTABLE ......................................................................................... 7 
`A.
`Challenged Claims ................................................................................ 8 
`B.
`Statutory Grounds for Challenges ......................................................... 8 
`C.
`Challenge #1: Claims 1 and 2 are unpatentable under 35 U.S.C.
`§ 103 over Mitchnick ............................................................................ 9 
`
`IX.
`
`–ii–
`
`

`

`D.
`
`E.
`
`F.
`
`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`Summary of Mitchnick ............................................................... 9 
`1.
`2. Mitchnick’s embodiments are combinable ............................... 10 
`3.
`Claim 1 ...................................................................................... 11 
`4.
`Claim 2 ...................................................................................... 16 
`Challenge #2: Claim 3 is unpatentable under 35 U.S.C § 103
`over Mitchnick and Sheldon ............................................................... 17 
`1.
`Summary of Sheldon ................................................................ 17 
`2.
`Reasons to Combine Mitchnick and Sheldon ........................... 17 
`3.
`Claim 3 ...................................................................................... 20 
`Challenge #3: Claim 4 is unpatentable under 35 U.S.C. § 103
`over Mitchnick, Sheldon, and Tanenhaus ........................................... 28 
`1.
`Summary of Tanenhaus ............................................................ 28 
`2.
`Reasons to Combine Mitchnick, Sheldon, and Tanenhaus ...... 28 
`3.
`Claim 4 ...................................................................................... 31 
`Challenge #4: Claim 5-6 and 9-10 are unpatentable under 35
`U.S.C. §103 over Fabio in view of Pasolini ....................................... 34 
`1.
`State of the Art at the Time of the ʼ902 Patent ......................... 35 
`2.
`Summary of Fabio .................................................................... 36 
`3.
`Summary of Pasolini ................................................................ 39 
`4.
`Reasons to Combine Fabio and Pasolini .................................. 42 
`5.
`Claim 5 ...................................................................................... 45 
`6.
`Claim 6 ...................................................................................... 58 
`7.
`Claim 9 ...................................................................................... 61 
`
`–iii–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`Claim 10 .................................................................................... 67 
`8.
`CONCLUSION ............................................................................................. 72 
`X.
`CERTIFICATE OF WORD COUNT ..................................................................... 73 
`CERTIFICATE OF SERVICE ................................................................................ 74 
`
`–iv–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 7,881,902
`
`Prosecution History of U.S. Patent No. 7,881,902
`
`Declaration of Joe Paradiso, Ph.D., under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Joe Paradiso
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”)
`
`U.S. Publication No. 2006/0084848 to Mitchnick (“Mitchnick”)
`
`U.S. Patent No. 6,469,639 to Tanenhaus et al. (“Tanenhaus”)
`
`U. S. Patent No. 5,957,957 to Sheldon (“Sheldon”)
`Comparison between the Current Petition and Petition in
`IPR2018-00424
`
`Ex.1001
`
`Ex.1002
`
`Ex.1003
`
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`
`Ex.1010
`
`
`
`–v–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`I.
`
`INTRODUCTION
`U.S. Patent No. 7,881,902 (“the ʼ902 patent,” Ex.1001) is generally directed
`
`to monitoring periodic human motions, such as walking, running, biking, and other
`
`activities. To do this, the ʼ902 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 the challenged claims of
`
`the ʼ902 patent. Accordingly, the Board should institute trial and find claims 1-6
`
`and 9-10 unpatentable.
`
`This Petition is being submitted concurrently with a Motion for Joinder.
`
`Specifically, Petitioner requests institution and joinder with Apple Inc. v. Uniloc
`
`Luxembourg SA, IPR2018-00424 (“the Apple IPR Proceeding”), which the Board
`
`instituted on August 2, 2018.
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`Petitioner identifies Samsung Electronics Co., Ltd. and Samsung Electronics
`
`America, Inc. as the real parties-in-interest.
`
`B. Related Matters
`The ’902 patent is at issue in the following district court proceedings:
`
`–1–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`•
`
`Uniloc USA, Inc. v. Samsung Electronics America, Inc., Case No.
`
`2:17-cv-00650 (E.D. Tex.)
`
`•
`
`Uniloc USA, Inc. v. Huawei Device USA, Inc., Case No. 2:17-cv-00737
`
`(E.D. Tex.)
`
`•
`
`•
`
`(W.D. Wa.)
`
`Uniloc USA, Inc. v. Apple Inc., Case No. 4:18-cv-00364 (N.D. Cal.)
`
`Uniloc USA, Inc. v. HTC America, Inc., Case No. 2-17-cv-01629
`
`•
`
`Uniloc USA, Inc. v. LG Electronics USA, Inc., Case No. 4:18-cv-2917
`
`(N.D. Cal.)
`
`Also, as noted above, the ’902 patent has been challenged in the Apple IPR
`
`Proceeding. Petitioner has concurrently filed a motion to join this proceeding. The
`
`’902 Patent is also at issue in Apple Inc. v. Uniloc Luxembourg SA, IPR2018-01028.
`
`C. Counsel and Service Information
`Lead Counsel: Naveen Modi (Reg. No. 46,224). Backup Counsel: (1) Joseph
`
`E. Palys (Reg. No. 46,508), (2) Chetan Bansal (Limited Recognition No. L0667).
`
`Service Information: Paul Hastings LLP, 875 15th Street NW, Washington, DC
`
`20005; Tel: (202) 551-1700; Fax: (202) 551-1705; E-mail: PH-Samsung-Uniloc-
`
`IPR@paulhastings.com. Petitioner consents to electronic service.
`
`
`
`
`
`–2–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ʼ902 patent is eligible for inter partes review and
`
`that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this petition.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`Petitioner’s citation to Ex.1002 uses the page numbers added for compliance
`
`with 37 C.F.R. § 42.63(d)(2)(ii). 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.
`
`V. OVERVIEW OF THE ʼ902 PATENT
`A.
`Summary of the Patent
`The ʼ902 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. Ex.1001,
`
`1:18, 2:25-26, 2:38-43, 3:47-48. According to the ʼ902 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. Ex.1001, 3:16-17, 3:36-38.
`
`–3–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`To reduce power consumption, the electronic device operates in different
`
`modes. Ex.1001, 8:20-23. In claims 1-4, one of these modes is a “sleep mode” that
`
`“reduces power consumption and prolongs battery life.” Ex.1001, 8:66-67. The
`
`electronic device enters the sleep mode when “no relevant acceleration is
`
`detected.” Ex.1001, 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.” Ex.1001, 9:5-7.
`
`Unlike claims 1-4, claims 5-10 are directed to determining a step cadence
`
`window “used to count steps.” Ex.1001, 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.”
`
`Ex.1001, 3:66-4:1. “The cadence window may have a default minimum and
`
`maximum value.” Ex.1001, 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.” Ex.1001, 5:1-2, 4:24-
`
`26.
`
`B.
`Prosecution History
`The ʼ902 patent issued on February 1, 2011, from U.S Patent Application No.
`
`12/694,135 filed January 26, 2010. The ʼ902 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
`
`–4–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`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
`
`the Examiner 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
`
`ʼ902 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. Ex.1003, p.8. Lack of work experience can be remedied
`
`by additional education, and vice versa. Ex.1003, p.8.
`
`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. In re Translogic Tech., Inc., 504
`
`–5–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`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). Therefore, Petitioner reserves the right to pursue different claim
`
`constructions in other proceedings, including in Uniloc USA, Inc. v. Samsung
`
`Electronics America, Inc., Case No. 2:17-cv-00650 (E.D. Tex.). For terms not
`
`addressed below, Petitioner submits that no specific construction is necessary for
`
`this proceeding.
`
`A.
`“dominant axis”
`This term appears in at least claim 10. In the specification of the ʼ902 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.” Ex.1001, 6:13-16. In other words, the dominant axis is “the axis most
`
`–6–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`influenced by gravity, which may change over time (e.g., as the electronic device is
`
`rotated).” Ex.1001, 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.
`
`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
`Petitioner asks 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 Petitioner’s expert, Dr.
`
`Joe Paradiso, the concepts described and claimed in the ʼ902 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 ʼ902 patent.
`
`IX.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`–7–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`A. Challenged Claims
`Claims 1-6 and 9-10 of the ʼ902 patent are challenged in this petition.
`
`B.
`
`Statutory Grounds for Challenges
`
`Challenge
`Challenge #1
`
`Claims
`1-2
`
`3
`
`4
`
`Challenge #2
`
`Challenge #3
`
`Challenge #4
`
`Ground
`Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`Publication No. 2006/0084848 to Mitchnick
`(“Mitchnick”).
`
`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”)
`
`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).
`
`–8–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`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.” Ex.1007,
`
`¶43. The device includes an inertial sensor, such as a “MEMS-based
`
`accelerometer” that “can measure positive and negative accelerations.” Ex.1007,
`
`¶50. The device can detect an activity of a participant “by observing characteristic
`
`patterns of participant motion as sensed by an acceleration.” Ex.1007, ¶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. Ex.1007, ¶70. The device then determines that the “activity
`
`is likely if the observed characteristics match the template.” Ex.1007, ¶70.
`
`Mitchnick’s device also includes a “low-voltage, low-power micro-
`
`controller (MC) 31 in order to minimize device count, size, and power
`
`consumption.” Ex.1007, ¶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.” Ex.1007, ¶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.” Ex.1007, ¶69. “[W]hen the device is neither sampling
`
`–9–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`for sexual activity nor storing monitoring data, it enters a low-power sleep state.”
`
`Ex.1007, ¶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.” Ex.1007, ¶72. Accordingly, “[o]nly the MC and a wake-up circuit need
`
`to be powered.” Ex.1007, ¶68. Upon entering the sleep mode, the MC “loads the
`
`sampling interval into an MC timer, and then executes a SLEEP instruction.”
`
`Ex.1007, ¶72. When the timer expires, “the SLEEP instruction completes, and the
`
`device again checks for sexual activity.” Ex.1007, ¶72. If the activity is not
`
`detected, “the device remains in a low-power sleep state.” Ex.1007, ¶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.” Ex.1007, ¶¶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.” Ex.1007, ¶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 reside elsewhere “on the body” in order to detect “other parameters of
`
`medical/clinical interest.” Ex.1007, ¶11; see Ex.1003, pp.18-19.
`
`–10–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`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. Ex.1003, p.19. 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. Ex.1003, p.19. In this
`
`way, Mitchnick’s 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.
`
`Ex.1003, p.19. 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.
`
`Ex.1003, p.19. Thus, given Mitchnick’s express teachings, a POSITA would have
`
`found it obvious to implement Mitchnick’s internal embodiment as an external
`
`version that resides on the human body. Ex.1003, p.19.
`
`Claim 1
`
`3.
`[1.0] “A method comprising:”
`To the extent that this preamble is limiting, Mitchnick discloses a method
`
`that “comprises awakening periodically from a low power sleep state in order to
`
`–11–
`
`

`

`
`
`Petitionn for Inter
`Partes Reeview
`
`
`Patentt No. 7,8811,902
`
`
`
`determinne from accceleration measuremments” wheether a partticipant is eengaged inn an
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`activity. Ex.1007,, ¶31. Acccordingly, MMitchnick
`
`
`
`
`
`
`
`
`
`
`
`
`
`discloses ““[a] methood comprissing”
`
`
`
`as claimmed. Ex.10003, p.20.
`
`
`
`
`[1.1] “ddetecting mmotion by aan inertial sensor inccluded in aa mobile dedevice”
`
`
`
`
`
`
`
`
`
`
`
`Fiirst, Mitchhnick teachhes a monittoring deviice having
`
`
`
`an accelerrometer thaat
`
`
`
`
`
`detects mmotion. Exx.1007, ¶449, Fig.7. TThe acceleerometer is a type of aan inertial l
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`sensor bbecause it ssenses acceeleration ddue to graviity. Ex.10003, pp.20--21.
`
`
`
`
`
`
`
`
`
`Ex.10077, Fig.1 (annnotated); EEx.1003, pp.21. In Miitchnick, thhe acceleroometer deteects
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`motion bbecause it mmeasures aacceleratioon caused bby “patternns of particcipant motiion.”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`–12–
`
`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`Ex.1001, ¶12. Accordingly, Mitchnick teaches detecting motion by an inertial
`
`sensor.
`
`Second, Mitchnick teaches that the accelerometer is in a “monitoring
`
`device[]” that resides within a human subject. Ex.1007, ¶43. This monitoring
`
`device is a mobile device for a number of reasons—it is small in size and can be
`
`easily transported by a human; it includes a battery and is not otherwise tethered to
`
`an external power source; and it does not restrict the user’s movement and mobility.
`
`See Ex.1007, Figs.1, 5B; Ex.1003, pp.22-23. Additionally, Mitchnick teaches that
`
`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
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`one of the available very power, short range radio linked protocols.” Ex.1007, ¶15.
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`Accordingly, given that Mitchnick teaches a device that is small, battery powered,
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`carried by a human, and communicates with other devices wirelessly, a POSITA
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`would recognize the monitoring device to be a mobile device. Ex.1003, 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 a participant’s motion, and teaches
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`that the device can be implemented externally, Mitchnick renders obvious
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`–13–
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`Petition for Inter Partes Review
`Patent No. 7,881,902
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`“detecting motion by an inertial sensor included in a mobile device” as claimed.
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`Ex.1003, 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. Ex.1003, p.24.
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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
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`signal, 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
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`signal include “the values of significant peaks in the accelerometer signal,
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`representing significant acceleration of a device wearer, and the times of these
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`peaks or the time intervals between these peaks.” Ex.1007, ¶70. These acceleration
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`signals are compared with a template that “describes one or more joint ranges of
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`peak values and time intervals that have been determined as likely indicative of
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`sexual activity.” Ex.1007, ¶70. According to Mitchnick, the “sexual activity is
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`likely if the observed characteristics match the template.” Ex.1007, ¶70. A
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`–14–
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`Petition for Inter Partes Review
`Patent No. 7,881,902
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`POSITA would understand that comparing acceleration signals to a template to
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`determine whether a particular activity is occurring is “determining” whether a
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`“motion signature” is “indicative of a user activity” that the device is “configured
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`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. Ex.1003, 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. Ex.1003, p.26; Ex.1007, ¶70. While the activity is occurring, the
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`device stays in a normal operational mode where “the device proceeds to
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`repetitively retrieve sensor data 77,” “store retrieved data in memory 79,” and
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`intermittently checks “that sexual activity is continuing.” Ex.1007, ¶¶50, 72, Fig.3.
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`Otherwise, “when the device is neither sampling for sexual activity nor storing
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`monitoring data, it enters a low-power sleep state.” Ex.1007, ¶72. The sleep state is
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`a result of the activity check not finding the type of activity that it is configured to
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`–15–
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`Petition for Inter Partes Review
`Patent No. 7,881,902
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`monitor: “If this check fails, the device again enters the sleep state.” Ex.1007, ¶72;
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`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.
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`4.
`Claim 2
`[2.0] The method of claim 1, further comprising:
`Mitchnick teaches this limitation as described in sections [1.0]-[1.3].
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`Ex.1003, p.27.
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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
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`of the motion signature of a user activity that the device is configured to monitor.
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`Ex.1003, p.27. This occurs when the monitoring device “checks for sexual
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`activity” and “succeeds.” Ex.1007, ¶72; Ex.1003, p.27. Thus, Mitchnick teaches
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`that its device detects a motion signature that it is configured to monitor. Ex.1003,
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`p.27.
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`–16–
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`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`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.”
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`Ex.1007, ¶72. Thus, the intermittent activity check performed by the monitoring
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`device once the device has determined that the activity has occurred teaches
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`monitoring for future 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. Ex.1009,
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`4:53-54. The accelerometer provides an output signal due to the force of gravity,
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`which is collected over a time period that can be used to determine a human
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`activity, such as walking or running. Ex.1009, 4:56-57, 12:21-29. Sheldon teaches
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`an example “running time period” (also referred to as sampling period) that can be
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`a two second period. Ex.1009, 11:64-12:2, 12:27-29.
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`2.
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`Reasons to Combine Mitchnick and Sheldon
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`–17–
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`

`

`Petition for Inter Partes Review
`Patent No. 7,881,902
`
`A POSITA would have found it obvious to combine the teachings in
`
`Mitchnick and Sheldon for the reasons discussed below, and for additional reasons
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`included in the detailed analysis of the 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. Ex.1003, p.30. Both Mitchnick
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`and Sheldon are also concerned with saving power and extending battery life in a
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`mobile device. Ex.1003, p.30. Accordingly, a POSITA would have looked to
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`Sheldon to make improvements to Mitchnick’s monitoring device so that the
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`monitoring device would monitor user activity with an accelerometer while being
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`better able to conserve power and extend battery life. Ex.1003, p.30.
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`Reason 1: Improve Power Management and Extend Battery Life
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`A POSITA would have been motivated to modify the mobile device in
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`Mitchnick to include Sheldon’s technique for sampling an accelerometer signal
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`over a given sampling time period. Ex.1003, p.30. This is because improved
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`power management is one of Mitchnick’s goals (“managing power use for longer
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`battery life” Ex.1007, ¶13), and Sheldon provides improved power management by
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`using a sampling time period to avoid scenarios where the activity check would
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`unnecessarily occur because of ambiguous results. Ex.1003, pp.30-31.
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`Implementing Sheldon’s power management techniques (e.g. sampling for a
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`predetermined time period) in Mitchnick’s device would lead to better power
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`–18–
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`

`Petition for Inter Partes Review
`Patent No. 7,881,902
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`management, and the device would be better able to function for “extended
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`periods, e.g., weeks, a month, or several months, or up to a year or more.”
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`Ex.1007, ¶11; Ex.1003, p.31.
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`Reason 2: Optimize Battery Cost
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`A POSITA would also have incorporated Sheldon’s technique for sampling
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`an accelerometer signal over a given sampling time period into Mitchnick’s mobile
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`device because it would minimize battery cost. Ex.1003, p.31. Mitchnick teaches
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`that “[e]xtended battery life (for example, a month o[r] longer) is important.”
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`Ex.1007, ¶52. Mitchnick also explains that a “[s]uitable battery capa