`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC Luxembourg S.A.,
`Patent Owner
`
`———————
`
`Declaration of Joseph A. Paradiso, PhD
`under 37 C.F.R. § 1.68
`
`
`
`
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`SAMSUNG EXHIBIT 1003
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`Inter Partes Review of U.S. 7,881,902
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE ...................... 2
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`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
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`IV. RELEVANT LEGAL STANDARDS ............................................................. 9
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`A. Anticipation ............................................................................................ 10
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`B. Obviousness ........................................................................................... 10
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`V. OVERVIEW OF THE ’902 PATENT .......................................................... 11
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`A. Summary of the ’902 Patent .................................................................. 11
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`B. Prosecution History of the ’902 Patent .................................................. 14
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`VI. BROADEST REASONABLE INTERPRETATION ................................... 14
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`A. “dominant axis” ..................................................................................... 15
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`B. “cadence window” ................................................................................. 16
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`VII.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE .... 16
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`A. Challenge #1: Claims 1 and 2 ................................................................ 16
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`1. Summary of Mitchnick .................................................................. 16
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`2. Mitchnick’s Embodiments Are Combinable ................................. 18
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`3. Detailed Analysis ........................................................................... 19
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`B. Challenge #2: Claim 3 ........................................................................... 29
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`1. Summary of Sheldon ...................................................................... 29
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`2. Reasons to Combine Mitchnick and Sheldon ................................ 29
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`3. Detailed Analysis ........................................................................... 32
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`C. Challenge #3: Claim 4 ........................................................................... 43
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`1. Summary of Tanenhaus .................................................................. 43
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`2. Reasons to Combine Mitchnick, Sheldon, Tanenhaus .................. 43
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`3. Detailed Analysis ........................................................................... 46
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`D. Challenge #4: Claims 5-6 and 9-10 ....................................................... 52
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`1. State of the Art at the Time of the ’902 Patent .............................. 52
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`2. Summary of Fabio .......................................................................... 54
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`3. Summary of Pasolini ...................................................................... 57
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`4. Reasons to Combine Fabio and Pasolini ........................................ 60
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`5. Detailed Analysis ........................................................................... 63
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`VIII. CONCLUSION ............................................................................................101
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`I.
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`INTRODUCTION
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`1.
`
`I am making this declaration at the request of Apple Inc. in the matter
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`of the inter partes review of U.S. Patent No. 7,881,902 (“the ’902 Patent”) to
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`Kahn, et al.
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`2.
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`I am being compensated for my work in this matter at the rate of
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`$500/hour. I am also being reimbursed for reasonable and customary expenses
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`associated with my work and testimony in this investigation. My compensation is
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`not contingent on the outcome of this matter or the specifics of my testimony.
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`3.
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`I have been asked to provide my opinions regarding whether claims 1-
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`6 and 9-10 of the ’902 Patent are unpatentable, either because they are anticipated
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`or would have been obvious to a person having ordinary skill in the art
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`(“POSITA”) at the time of the alleged invention, in light of the prior art. It is my
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`opinion that all of the limitations of claims 1-6 and 9-10 would have been obvious
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`to a POSITA.
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`4.
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`In the preparation of this declaration, I have studied:
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`a)
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`b)
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`c)
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`The ’902 Patent, Ex. 1001;
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`The prosecution history of the ’902 Patent, Ex. 1002;
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`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”),
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`Ex. 1005;
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`d)
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`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”), Ex.
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`1006;
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`e)
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`U.S. Publication No. 2006/0084848 to Mitchnick
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`(“Mitchnick”), Ex. 1007;
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`f)
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`U.S. Patent No. 6,469,639 to Tanenhaus et al. (“Tanenhaus”),
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`Ex. 1008; and
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`g)
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`U. S. Patent No. 5,957,957 to Sheldon (“Sheldon”), Ex. 1009.
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`5.
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`In forming the opinions expressed below, I have considered:
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`a)
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`The documents listed above, and
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`b) My own knowledge and experience based upon my work in the
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`field of MEMS (micro-electro-mechanical systems) devices
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`and body motion sensing systems, as described below.
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`II. QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
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`6. My complete qualifications and professional experience are described
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`in my Curriculum Vitae, a copy of which can be found in Ex. 1004. The following
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`is a brief summary of my relevant qualifications and professional experience.
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`7.
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`As shown in my curriculum vitae, I have devoted my career to various
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`fields of physical, electrical, and computer science with more than two decades
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`focused on embedding sensing, including wearable and wireless sensors. I have
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`twenty years of experience in wearable devices and computing, during which I
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`invented and fielded many types of wearable activity tracking devices that utilized
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`a variety of power management and wakeup protocols.
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`8.
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`I am the Alexander W. Dreyfoos (1954) Professor in Media Arts and
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`Sciences at the Massachusetts Institute of Technology (MIT), where I direct the
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`Responsive Environments Group, which explores how sensor networks augment
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`and mediate human experience, interaction and perception. I also have served as a
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`co-director of the Things That Think Consortium, a group of MIT Media Lab
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`researchers and industrial partners focused on the future of embedded computation
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`and sensing, and I am now serving as our Associate Department Head.
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`9.
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`I received my B.S. in electrical engineering and physics summa cum
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`laude from Tufts University in 1977 and my Ph.D. in physics from MIT in 1981.
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`From 1981 to 1984, I did post-doctoral research at the Swiss Federal Institute of
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`Technology (ETH) in Zurich, working on sensor technology for high-energy
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`particle physics. From 1984-1994, I was a physicist at the Draper Laboratory in
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`Cambridge, Massachusetts, where, as a member of the NASA Systems and
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`Advanced Sensors and Signal Processing Directorates, my research included
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`spacecraft control systems and sensor technology for both sonar systems and high-
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`energy physics. I also worked at Draper Lab as an undergraduate (1974-1978) on
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`software for advanced strategic inertial measurement units and guidance systems.
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`From 1992-1994, I directed the development of precision alignment sensors for the
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`GEM muon detector at the Superconducting Supercollider, and worked on design
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`of particle detectors at the CERN Large Hadron Collider (LHC).
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`10.
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`I joined the MIT Media Lab in 1994. The MIT Media Lab was
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`founded in 1985 to actively promote a unique, anti-disciplinary culture that focuses
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`on research projects joining different technological and academic fields. As
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`described further below, researchers at the MIT Media Lab have pioneered areas
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`such as wearable computing, tangible interfaces, and affective computing.
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`Examples of products or platforms spun off from the Media Lab research include
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`electronic ink readers such as the Amazon Kindle and Barnes & Noble Nook, the
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`popular video game Guitar Hero, the MPEG-4 structured audio format, the first
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`bionic lower-leg system for amputees, wireless mesh networks developed by
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`Nortel, and the Mercury RFID Reader, commercialized by spin-off ThingMagic.
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`Today, the Lab is supported by more than 70 sponsors/members, comprising some
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`of the world’s leading corporations and representing the fields of electronics,
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`entertainment, fashion, health care, greeting cards, and telecommunications, among
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`others. Faculty members, research staff, and students at the Media Lab work in
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`more than 25 research groups on more than 350 projects that range from digital
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`approaches for treating neurological disorders, to a stackable, electric car for
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`sustainable cities, to advancing imaging technologies that can see around corners.
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`11. Upon joining the Media Lab, I focused on developing new sensing
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`modalities for human-computer interaction, then by 1997 evolved my research into
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`wearable wireless sensing and distributed sensor networks. This work anticipated
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`and influenced transformative products and industries that have blossomed in
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`recent years. For example, the sensor-laden wireless shoe I developed for
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`interactive dance in 1997 is recognized as a watershed in the field of wearable
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`wireless sensing and was an inspiration for the Nike+, one of the very first activity
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`trackers and the first commercial product to integrate dynamic music with
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`monitored exercise. My team went on to pioneer clinical gait analysis with
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`wearable wireless sensors in collaboration with the Massachusetts General
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`Hospital (MGH) in 2002, and then broke new ground in sports medicine with
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`another MGH collaboration that developed an ultra-wide-range wireless inertial
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`measurement unit system for evaluating professional baseball pitchers in 2007. My
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`team and I have also been leaders on wearable sensing for Human-Computer
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`Interfaces, over the past decade fielding, for example, wristbands to measure finger
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`position, wristbands to enable pointing interaction and control of heating and
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`lighting, and even a wireless touchpad mounted on a fingernail.
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`12. Leading to over 300 publications, 17 issued patents, and a string of
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`awards in the Pervasive Computing, Human Computer Interaction, and sensor
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`network communities, my research has become the basis for widely established
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`curricula. Many of these publications are directed to wearables. I have also advised
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`over 55 graduate (M.S. and Ph.D) theses for students who have done their work in
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`my research group, and served as a reader for roughly 100 MS and PhD students in
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`other groups and at other universities. Some of my own students have gone on to
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`prominence in their own careers that have involved wearables—for example, Dr.
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`Nan-Wei Gong (Ph.D 2013) was the R&D lead of Project Jacquard (integrating
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`electronics and textiles) at Google ATAP before becoming founder and CEO of
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`her own companies with a wearable focus ‘Circular2’ and ‘Figure8,’ and Dr. Stacy
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`Morris Bamberg (Ph.D 2004) became a tenured professor at the University of Utah
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`doing wearable gait analysis, then started a company in this space (Veristride). I
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`have given over 280 invited talks, panel appearances, and seminars worldwide,
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`recently keynoting on topics relating to ubiquitous sensing and the Internet of
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`Things (IoT) for prestigious venues ranging from the Sensors Expo (the main
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`industrial sensors conference) to the World Economic Forum. I am frequently
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`asked to address industrial groups on wearables and IoT, and often engage with the
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`Media Lab’s extensive list of industrial partners in strategizing these areas.
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`13.
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`I belong to and participate in various professional organizations. I am
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`a senior member of the IEEE (Institute of Electrical and Electronics Engineers),
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`and also belong to the ACM (Association for Computer Machinery). I also belong
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`to the APS American Physical Society (the major professional society in physics),
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`and am a senior member in the AIAA (the American Institute of Aeronautics and
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`Astronautics). Within the IEEE, I belong to the Signal Processing Society, the
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`Controls Society, and the Computer Society. As detailed in my CV, I have served
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`on many Technical Program Committees (TPCs, which solicit, review, and select
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`papers for academic conferences) and journal editorial boards, plus have organized
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`academic conferences in areas such as wireless sensor networks, wearable
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`computing and wearable sensing, human-computer interfaces, ubiquitous
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`computing, etc.
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`14. One of the themes of my research has been on low-power embedded
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`systems and energy harvesting. I have written several well-regarded papers on
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`these topics that well predate the ’902 Patent—for example, the review article that
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`I wrote for IEEE Pervasive Computing in 2005, ‘Energy Scavenging for Mobile
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`and Wireless Electronics’ has become their most popular article and is widely
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`cited. My work on smart wakeup systems (e.g., as described in my papers such as
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`‘A Framework for the Automated Generation of Power-Efficient Classifiers for
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`Embedded Sensor Nodes’ and ‘CargoNet: A Low-Cost MicroPower Sensor Node
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`Exploiting Quasi-Passive Wakeup for Adaptive Asynchronous Monitoring of
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`Exceptional Events,’ both presented at SenSys 2007), are of relevance here.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`15.
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`I understand there are multiple factors relevant to determining the
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`level of ordinary skill in the pertinent art, including (1) the levels of education and
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`experience of persons working in the field at the time of the invention; (2) the
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`sophistication of the technology; (3) the types of problems encountered in the field;
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`and (4) the prior art solutions to those problems.
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`16.
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`I am familiar with accelerometers (including those found in portable
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`devices such as mobile phones). I am also aware of the state of the art at the time
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`the application resulting in the ’902 Patent was filed. I have been informed by
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`Apple’s counsel that the earliest alleged priority date for the ’902 Patent is
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`December 22, 2006. Based on the technologies disclosed in the ’902 Patent, a
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`POSITA would be someone knowledgeable concerning accelerometers and the
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`analysis of the data generated thereby. That person would have (i) a Bachelor’s
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`degree in Electrical Engineering, Computer Engineering, Computer Science, or
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`equivalent training, as well as (ii) approximately two years of experience
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`working in hardware and/or software design and development related to MEMS
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`devices and body motion sensing systems. Lack of work experience can be
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`remedied by additional education, and vice versa. Such academic and industry
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`experience would be necessary to appreciate what was obvious and/or
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`anticipated in the industry and what a POSITA would have thought and
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`understood at the time. Based on this criteria, as of the relevant time frame for
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`the ’902 Patent, I possessed at least such experience and knowledge of a
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`POSITA, as well as trained many of them by then, hence am qualified to opine
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`on the ’902 Patent.
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`17. For purposes of this Declaration, in general, and unless otherwise
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`noted, my statements and opinions, such as those regarding my experience and the
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`understanding of a POSITA generally (and specifically related to the references I
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`consulted herein), reflect the knowledge that existed in the field as of December
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`22, 2006. Unless otherwise stated, when I provide my understanding and analysis
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`below, it is consistent with the level of a POSITA prior to the priority date of the
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`’902 Patent.
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`IV. RELEVANT LEGAL STANDARDS
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`18.
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`I understand that prior art to the ’902 Patent includes patents and
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`printed publications in the relevant art that predate the priority date of the alleged
`
`invention recited in the ’902 Patent. For purposes of this Declaration, I have been
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`asked to apply December 22, 2006, the earliest alleged priority date, as the priority
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`date.
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`19.
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`I am not an attorney. In preparing and expressing my opinions and
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`considering the subject matter of the ’902 Patent, I am relying on certain basic
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`legal principles that counsel have explained to me. These principles are discussed
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`below.
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`20.
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`I understand that a claim is unpatentable if it is anticipated under 35
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`U.S.C. § 102 or obvious under 35 U.S.C. § 103.
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`A. Anticipation
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`21.
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`I have been informed by counsel that a patent claim is unpatentable as
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`anticipated if each element of that claim is present either explicitly or inherently in
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`a single prior art reference. I have also been informed that, to be an inherent
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`disclosure, the prior art reference must necessarily disclose the limitation, and the
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`fact that the reference might possibly practice or contain a claimed limitation is
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`insufficient to establish that the reference inherently teaches the limitation.
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`B. Obviousness
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`22.
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`I have been informed that a claimed invention is unpatentable under
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`35 U.S.C. § 103 if the differences between the invention and the prior art are such
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which the subject
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`matter pertains. I have also been informed by counsel that the obviousness analysis
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`takes into account factual inquiries including the level of ordinary skill in the art,
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`the scope and content of the prior art, and the differences between the prior art and
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`the claimed subject matter.
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`23.
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`I have been informed by counsel that the Supreme Court has
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`recognized several rationales for combining references or modifying a reference to
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`show obviousness of claimed subject matter. Some of these rationales include the
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`following: (a) combining prior art elements according to known methods to yield
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`predictable results; (b) simple substitution of one known element for another to
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`obtain predictable results; (c) use of a known technique to improve a similar device
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`(method, or product) in the same way; (d) applying a known technique to a known
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`device (method, or product) ready for improvement to yield predictable results; (e)
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`choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success; and (f) some teaching, suggestion, or motivation
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`in the prior art that would have led one of ordinary skill to modify the prior art
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`reference or to combine prior art reference teachings to arrive at the claimed
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`invention.
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`V. OVERVIEW OF THE ’902 PATENT
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`A.
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`Summary of the ’902 Patent
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`24. The ’902 patent is directed to an electronic device that “may be used
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`to count steps or other periodic human motions.” Ex. 1001, 2:29-30. To detect
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`periodic human motions, the electronic device “includes one or more inertial
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`sensors,” such as an accelerometer. Ex. 1001, 2:25-26, 1:18. The inertial sensor
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`measures acceleration data to detect a motion cycle. Ex. 1001, 2:38-43, 3:47-48.
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`The ’902 patent explains that the “period and/or cadence of the motion cycle may
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`be based upon user activity,” such as rollerblading, biking, running, walking, or
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`any other activity having a periodic set of repeated movements. Ex. 1001, 3:16-17,
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`3:36-38.
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`25. To reduce power consumption, the electronic device in the ’902 patent
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`operates in different modes. Ex. 1001, 8:20-23. As recited in claims 1-4, one of
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`these modes is a “sleep mode.” The “sleep mode” in the ’902 patent is described as
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`a power level that “reduces power consumption and prolongs battery life.” Ex.
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`1001, 8:66-67. The electronic device enters the sleep mode when “no relevant
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`acceleration is detected.” Ex. 1001, 10:41-41. While in the sleep mode, “a
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`sampling function is periodically executed,” where the function “samples
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`acceleration data at a set sampling rate for a set time period.” Ex. 1001, 9:5-9. The
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`device terminates the sleep mode “[w]hen acceleration is detected.” Ex. 1001,
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`9:39-41.
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`26. Claims 5-6 and 9-10 differ from claims 1-4 in that they are not related
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`to the sleep mode, but instead are directed to determining a step cadence window
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`“used to count steps.” Ex. 1001, 4:21-22. According to the ’902 patent, a cadence
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`window “is a window of time since a last step was counted that is looked at to
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`detect a new step.” Ex. 1001, 3:66-4:1. The ’902 patent describes how “[i]f fewer
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`than the required number of steps” are detected, “the cadence window may have a
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`default minimum and maximum value.” Ex. 1001, 4:63-66. However, “[o]nce
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`enough steps have been detected to determine a dynamic stepping cadence or
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`period,” the dynamic cadence window “continuously updates as a user’s cadence
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`changes.” Ex. 1001, 5:1-2, 4:24-26.
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`27. Claim 10 of the ’902 Patent is further directed to assigning a dominant
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`axis based on the orientation” of the mobile device with respect to gravity. See,
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`e.g., Ex. 1001, claim 10. In the ’902 Patent, the dominant axis is “the axis most
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`influenced by gravity,” which “may change over time (e.g. as the electronic device
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`is rotated).” Ex. 1001, 6:16-21. Figure 9 of the ’902 Patent, reproduced below in
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`part, provides a method for assigning a dominant axis based on taking
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`measurements of acceleration data:
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`Ex. 1001, Fig. 9.
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`28. The “cadence window” and the “dominant axis” concepts claimed in
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`the ’902 Patent were not novel. As shown in this Declaration, (1) U.S. Patent No.
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`7,698,097 to Fabio Pasolini et al. (“Fabio”) describes a validation interval (cadence
`
`window) that is a window of time since a last step was counted that is looked at to
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`detect a new step and (2) both Fabio and U.S. Patent No. 7,463,997 to Fabio
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`Pasolini et al. (“Pasolini”) describe detecting steps using a dominant axis of a tri-
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`axial accelerometer, or, in other words, using the axis most influenced by gravity.
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`B.
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`Prosecution History of the ’902 Patent
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`29. The ’902 patent issued on February 1, 2011 from the U.S. Patent
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`Application No. 12/694,135 filed January 26, 2010. The ’902 patent is a
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`continuation of the U.S. Patent No. 7,653,508, filed on December 22, 2006.
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`30. The first action by the Office during prosecution was a Notice of
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`Allowance that issued on September 24, 2010. Ex. 1002, p. 34.
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`31.
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`In the Notice of Allowance the Examiner stated that the cited art (not
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`included in this petition) failed to teach or suggest the limitations of original claim
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`12 (issued claim 1) and original claim 25 (issued claim 5). Ex. 1002, p.5.
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`VI. BROADEST REASONABLE INTERPRETATION
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`32.
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`It is my understanding that in order to properly evaluate the ’902
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`Patent, the terms of the claims must first be interpreted. It is my understanding that
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`for the purposes of this inter partes review, the claims are to be given their
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`broadest reasonable interpretation in light of the specification. It is my further
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`understanding that claim terms are given their ordinary and accustomed meaning
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`as would be understood by one of ordinary skill in the art, unless the inventor has
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`set forth a special meaning for a term. In order to construe the following claim
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`terms, I have reviewed the entirety of the ’902 Patent, as well as its prosecution
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`history.
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`A.
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`“dominant axis”
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`33. This term appears in at least claim 10. In the’902 specification, the
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`dominant axis is determined based on the accelerometer’s alignment with gravity.
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`For example, the specification states that “[i]n one embodiment, the dominant axis
`
`is assigned after identifying a gravitational influence. The gravitational influence
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`may be identified by calculating total acceleration based upon the acceleration on
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`each axis.” Ex. 1001, 14:34-38. The specification also states that “[i]n one
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`embodiment, once the orientation is determined, a dominant axis is assigned based
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`upon the orientation. Determining an orientation of the electronic device 100 may
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`include identifying a gravitational influence.” Ex. 1001, 6:13-16. In other words,
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`the dominant axis is “the axis most influenced by gravity, which may change over
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`time (e.g., as the electronic device is rotated).” Ex. 1001, 6:17-19.
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`34. Thus, for the purposes of this proceeding, the term “dominant axis” as
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`used in the claims includes “the axis most influenced by gravity.”
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`B.
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`“cadence window”
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`35. This term appears in at least claim 5. The ’902 specification
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`specifically defines this term as “a window of time since a last step was counted
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`that is looked at to detect a new step.” Ex. 1001, 3:66-4:1.
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`36. 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
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`is looked at to detect a new step.”
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`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
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`A. Challenge #1: Claims 1 and 2
`
`37.
`
`It is my opinion that claims 1 and 2 are obvious under 35 U.S.C. § 103
`
`over U.S. Patent Publication No. 2006/0084848 to Mitchnick (“Mitchnick”).
`
`1.
`
`Summary of Mitchnick
`
`38. Mitchnick is directed to a monitoring device “for automatically
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`monitoring participants.” Ex. 1007, ¶9. The monitoring device can reside “in or on
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`the body.” Ex. 1007, ¶43.
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`39. Mitchnick describes that to monitor participants, monitoring device
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`includes an inertial sensor, such as a “MEMS-based accelerometer.” Ex. 1007, ¶55.
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`The accelerometer “can measure positive and negative accelerations.” Ex. 1007,
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`¶55. Mitchnick explains that the monitoring device can detect an activity of a
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`participant “by observing characteristic patterns of participant motion as sensed by
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`an acceleration.” Ex. 1007, ¶12. For example, to identify whether an activity is
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`occurring, the monitoring device “compares observed characteristics” of an
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`acceleration signal “to a template indicating ranges of characteristics likely to
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`indicate” the activity. Ex. 1007, ¶70. The monitoring device then determines that
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`the “activity is likely if the observed characteristics match the template.” Ex. 1007,
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`¶70.
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`40.
`
` Mitchnick also describes how the monitoring device includes a “low-
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`voltage, low-power micro-controller (MC) 31 in order to minimize device count,
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`size, and power consumption.” Ex. 1007, ¶50. The minimized power consumption
`
`allows the monitoring device to function “for extended periods, e.g., weeks, a
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`month, or several months, or up to a year or more.” Ex. 1007, ¶11. Mitchnick uses
`
`this power consumption mode because the monitored “activity is intermittent” and
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`“power and memory can be advantageously further conserved, and device life
`
`further extended, by only intermittently sampling 75” for the activity. Ex. 1007,
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`¶69. Mitchnick further explains that “when the device is neither sampling for
`
`sexual activity nor storing monitoring data, it enters a low-power sleep state.” Ex.
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`1007, ¶72.
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`41. Mitchnick more specifically describes that “[p]rior to entering this
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`sleep state, the MC controls power control 45 to power down external components
`
`not necessary for its subsequent wake-up.” Ex. 1007, ¶72. In Mitchnick, “[o]nly
`
`the MC and a wake-up circuit need to be powered.” Ex. 1007, ¶68. Upon entering
`
`the sleep state, the MC “loads the sampling interval into an MC timer, and then
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`executes a SLEEP instruction.” Ex. 1007, ¶72. When the timer expires, “the
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`SLEEP instruction completes, and the device again checks for sexual activity.” Ex.
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`1007, ¶72. If the activity is not detected, “the device remains in a low-power sleep
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`state.” Ex. 1007, ¶69. Otherwise, the monitoring device enters into a “normal
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`operation mode” where the “the device proceeds to repetitively retrieve sensor data
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`77 and store retrieved data in memory.” Ex. 1007, ¶¶50, 72.
`
`42.
`
`It is my opinion that claims 1-4 are obvious under 35 U.S.C. § 103
`
`over U.S. Patent Publication No. 2006/0084848 to Mitchnick (“Mitchnick”)
`
`2. Mitchnick’s Embodiments Are Combinable
`
`43. Mitchnick’s disclosure is primarily directed to a monitoring device
`
`that operates inside a body cavity. Ex. 1007, ¶11. For example, Mitchnick
`
`describes the accelerometer and power management functionality included in a
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`monitoring device “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
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`embodiment could be performed by an external device attached to a body. In fact,
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`Mitchnick states that its device can reside elsewhere “on the body” in order to
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`detect “other parameters of medical/clinical interest.” Ex. 1007, ¶43.
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`44. A POSITA would have recognized the benefits of modifying
`
`Mitchnick’s internal device to reside on the body, and not in the body cavity. 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. This would allow such a device to be more widely distributed to both
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`male and female patients, particularly in less developed areas as medical
`
`intervention would not be required to begin use. 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 medical issues and procedures such as, a heart attack or a knee
`
`surgery. 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.
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`Thus, given Mitchnick’s express teachings, a POSITA would have found it
`
`obvious to implement internal embodiment as an external version that resides on
`
`the human body.
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`3.
`
`Detailed Analysis
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`45. The following analysis describes how Mitchnick renders obvious
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`claims 1 and 2 of the ’902 Patent.
`
`US 7,881,902
`
`Claim 1
`
`[1.0] A method
`comprising:
`
`Mitchnick
`
`To the extent that this preamble is limiting, Mitchnick
`discloses it.
`Mitchnick discloses this limitation because it teaches a
`method that describes using acceleration measurements to
`monitor activity of a user:
`
`invention
`this
`In a ninth embodiment,
`includes a computer readable memory with a
`program for performing the methods of this
`invention. An
`aspect of
`the ninth
`that the
`embodiment further comprises
`method comprises awakening periodically
`from a low power sleep state in order to
`determine
`from
`acceleration
`measurements whether or not the subject
`is likely to be engaging in sexual activity,
`retrieving measurements from at least one
`sensor
`and
`storing