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`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
`_________________________
`
`
`U.S. Patent No. 8,872,646
`
`_________________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,872,646
`
`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`5.
`
`TABLE OF CONTENTS
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 .................................. 2
`A.
`Real Party-in-Interest ........................................................................... 2
`B.
`Related Matters ..................................................................................... 2
`C.
`Counsel and Service Information ......................................................... 2
`III. GROUNDS FOR STANDING ....................................................................... 3
`IV. THE ’646 PATENT ........................................................................................ 3
`A.
`State of the Art Before the ’646 Patent ................................................ 3
`B.
`Overview of the ’646 Patent ................................................................. 4
`C.
`Prosecution History .............................................................................. 6
`D.
`Claim Construction .............................................................................. 7
`1.
`“glitch” ....................................................................................... 9
`2.
`“a change in the dominant axis” ................................................ 9
`3.
`“dominant axis logic to determine an idle sample value” ....... 10
`4.
`“power logic to move the device from the inactive state
`to an active state upon detection of a change in the
`dominant axis which is the axis experiencing the largest
`effect of gravity” ...................................................................... 11
`“device state logic to restore the device to one of: a last
`active state, a preset customized state” .................................... 12
`RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF ................................................................................ 14
`IDENTIFICATION OF CHALLENGES ..................................................... 16
`A.
`Challenged Claims ............................................................................. 16
`
`V.
`
`VI.
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`
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`
`
`i
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`
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`

`

`VII.
`
`Petition for Inter Partes Review
`Patent No. 8,872,646
`B.
`Statutory Grounds for Challenges ...................................................... 16
`IDENTIFICATION OF HOW THE CLAIMS ARE
`UNPATENTABLE ....................................................................................... 17
`A.
`Challenge #1: Claim 22 is unpatentable under 35 U.S.C § 103
`over Pasolini in view of Goldman, McMahan, Mizell, and Park ...... 17
`1.
`Summary of Pasolini ................................................................ 17
`2.
`Summary of Goldman .............................................................. 19
`3.
`Reasons to combine Pasolini and Goldman ............................. 20
`4.
`Summary of McMahan ............................................................ 23
`5.
`Reasons to combine McMahan with Pasolini and
`Goldman ................................................................................... 24
`Summary of Mizell .................................................................. 25
`Reasons to combine Mizell with Pasolini and Goldman ......... 25
`Summary of Park ..................................................................... 26
`Reasons to Combine Park with Pasolini, Goldman,
`McMahan, and Mizell .............................................................. 27
`10. Detailed Analysis ..................................................................... 28
`VIII. CONCLUSION ............................................................................................. 42
`
`6.
`7.
`8.
`9.
`
`
`
`
`
`ii
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`LIST OF EXHIBITS
`
`Ex. 1001
`
`U.S. Patent No. 8,872,646
`
`Ex. 1002
`
`Prosecution History of U.S. Patent No. 8,872,646
`
`Ex. 1003
`
`U.S. Patent No. 7,409,291 to Pasolini et al. (“Pasolini”)
`
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Using the LIS3L02AQ Accelerometer, Ron Goldman, Sun
`Microsystems Inc. Dated February 23, 2007 (“Goldman”)
`U.S. Patent No. 7,204,123 to McMahan et al. (“McMahan”)
`U.S. Patent Publication No. 2006/0161377 to Rakkola et al.
`(“Rakkola”)
`Using Gravity to Estimate Accelerometer Orientation, David Mizell,
`Proceedings of the Seventh IEEE International Symposium on
`Wearable Computers (ISWC ’03) 2003 (“Mizell”)
`
`Ex. 1008
`
`Declaration of Chris Butler
`
`Ex. 1009
`
`Dictionary of Scientific and Technical Terms, McGraw-Hill
`
`Ex. 1010
`
`Declaration of Dr. Irfan Essa
`
`Ex. 1011
`
`Curriculum Vitae of Dr. Irfan Essa
`
`Ex. 1012
`
`Declaration of Ingrid Hsieh-Yee
`
`Ex. 1013
`
`Reserved
`
`U.S. Patent No. 7,028,220 to Park et al (“Park”)
`
`Ex. 1014
`
`
`iii
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`I.
`
`INTRODUCTION
`U.S. Patent No. 8,872,646 (“the ’646 Patent,” Ex. 1001) is generally directed
`
`to waking a device from a low power state in response to detected acceleration.
`
`Specifically, the claims of the ’646 Patent recite well-known accelerometer
`
`techniques that involve (i) removing glitches, (ii) capturing accelerometer samples
`
`while at rest, (iii) measuring the current acceleration, and (iv) waking the device
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`from the low power state in response to detecting acceleration. However, before
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`the alleged invention of the ’646 Patent, such techniques were already well known
`
`and widely used.
`
`Accordingly, the evidence in this Petition demonstrates that claim 22 of the
`
`’646 Patent is unpatentable under (pre-AIA) 35 U.S.C. § 103. Indeed, claim 22
`
`depends from claim 20, for which the Board has already instituted inter partes
`
`review based on the same prior art and analysis provided herein. See Apple Inc. v.
`
`Uniloc Luxembourg, S.A., Case No. IPR2018-00289, Paper 7 at 17-22 (June 11,
`
`2018). Additionally, while claim 22 has not previously been challenged before the
`
`Board, it recites limitations that are practically identical to the limitations recited in
`
`claim 18, which was also instituted in IPR2018-00289 based on the same
`
`combination of prior art and analysis presented herein. See id. at 22-24. Samsung
`
`Electronics America, Inc. (“Petitioner”) therefore respectfully requests that claim
`
`22 be held invalid and cancelled.
`
`1
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-in-Interest
`Petitioner identifies Samsung Electronics America, Inc. and Samsung
`
`Electronics Co., Ltd. as the real parties-in-interest.
`
`B. Related Matters
`The ’646 Patent is at issue in the following district court proceedings:
`
`
`
`
`
`Uniloc USA, Inc. v. Apple Inc., Case No. 4:18-cv-00361 (N.D. Cal.)
`
`Uniloc USA, Inc. v. Huawei Device USA, Inc., Case No. 2:17-cv-
`00746 (E.D. Tex.)
`
`
`
`Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., Case No. 2:17-cv-
`00652 (E.D. Tex.)
`The ’646 Patent is also at issue in the following proceedings before the
`
`Patent Trial and Appeal Board:
`
`
`
`Apple Inc. v. Uniloc Luxembourg, S.A., Case No. IPR2018-00289
`
`
`
`Samsung Elecs. Am., Inc. v. Uniloc Luxembourg, S.A., Case No.
`IPR2018-01383
`C. Counsel and Service Information
`Lead Counsel: Naveen Modi (Reg. No. 46,224). Backup Counsel: (1) Joseph
`
`E. Palys (Reg. No. 46,508), (2) Phillip W. Citroën (Reg. No. 66,541), and (3)
`
`Michael A. Wolfe (Reg. No. 71,922). Service Information: Paul Hastings LLP, 875
`
`15th Street NW, Washington, DC 20005; Tel: (202) 551-1700; Fax: (202) 551-
`
`2
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`1705; E-mail: PH-Samsung-Uniloc-IPR@paulhastings.com. Petitioner consents to
`
`electronic service.
`
`III. GROUNDS FOR STANDING
`Petitioner certifies that the ’646 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. THE ’646 PATENT
`A.
`State of the Art Before the ’646 Patent
`Modern day accelerometers are typically small, micro electro-mechanical
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`systems (MEMS) that may be fabricated into an integrated circuit. (See Ex. 1006,
`
`[0004]). A common type of accelerometer is a triaxial accelerometer that measures
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`acceleration along three different orthogonal axes. (See Ex. 1003, 2:66-3:3). A
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`triaxial accelerometer at rest will measure acceleration due to the force of gravity
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`along at least one axis. A triaxial accelerometer in motion will measure both
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`acceleration due to the force of gravity and acceleration due to any movement
`
`being experienced by the accelerometer. (See Ex. 1003, 3:3-7). However, for many
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`applications it is desirable to distinguish between static acceleration (due to the
`
`force of gravity) and dynamic acceleration (due to motion). (See Ex. 1003, 5:31-
`
`34, 4:38-49).
`
`3
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`Various techniques for distinguishing between static acceleration and
`
`dynamic acceleration were used and known to a person of ordinary skill in the art
`
`before the filing date of the ’646 Patent (“POSITA”). In particular, such techniques
`
`were used to detect motion and wake an electronic device from a sleep state. For
`
`example, U.S. Patent No. 7,409,291 to Pasolini et al. (Ex. 1003) uses low pass
`
`filters to create a representation of gravity along each axis. The signals from the
`
`low pass filters, which represent gravity, can then be subtracted from the current
`
`acceleration values measured by the accelerometer. (See Ex. 1003, 4:38-50). Then,
`
`these acceleration values are used to wake the device from a sleep state. (See Ex.
`
`1003, 1:66-2:4; 3:17-23). In addition, Sun Microsystems published a detailed
`
`technical description of a portable electronic device that samples an accelerometer
`
`while at rest to obtain a rest value and to perform other processing on the
`
`accelerometer signals. (See Ex. 1004, p. 2). (Ex. 1010 ¶¶15-16).
`
`B. Overview of the ’646 Patent
`The ’646 Patent relates to a method and system for waking a device from a
`
`low power state in response to detecting motion. (Ex. 1001, Abstract, 1:6-7).
`
`Specifically, the ’646 Patent describes a device that goes into a low power state
`
`after a period of inactivity. (Ex. 1001, 2:17-19, 4:43-47). The device also has a
`
`motion sensor to detect motion. (Ex. 1001, 2:59-62, 3:4, 4:31-41). In response to
`
`4
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`detecting motion, the device will “wake” from the low power state. (Ex. 1001,
`
`Abstract, 1:6-7, 2:35-37, 4:12-20, 5:1-6, 5:40-6:24).
`
`More specifically, the claimed invention uses a motion sensor to collect a
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`sample value while the device is at rest. (Ex. 1001, 2:65-3:12, 4:31-41). This
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`sample value is referred to as the “idle sample value.”1 (Ex. 1001, 10:29). The
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`claimed invention also wakes the device from idle mode when it is determined that
`
`the device experiences motion along a “dominant axis.” (Ex. 1001, 4:12-20, 6:9-
`
`24). The claims define the dominant axis as the axis most affected by gravity. (Ex.
`
`1001, 10:31-33). However, use of the term “dominant axis” brings a superficial
`
`aura of complexity to the claims because any triaxial system has an axis that is
`
`more aligned with gravity than the others at a given time. (Ex. 1010, ¶30). It is
`
`noted that the claims do not require determining which of the three axes is the
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`dominant axis. Moreover, during prosecution of the ’646 Patent, the Examiner was
`
`not persuaded by the Applicant’s patentability arguments for the dominant axis.
`
`(See e.g., Ex. 1002, 230). (Ex. 1010, ¶¶17-30).
`
`
`
`
`1 Claim 20 only recites that the idle sample value is obtained. No use for the idle
`
`sample value is recited.
`
`5
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`C.
`Prosecution History
`The ’646 Patent issued on October 28, 2014, from U.S. Patent Application
`
`No. 12/247,950 filed October 8, 2008.
`
`The Office issued the first Action on May 12, 2011. (See Ex. 1002, 106). In
`
`that Action, the claims were rejected under 35 U.S.C. 112, second paragraph, for
`
`indefiniteness. Specifically, the terms “long average” and “dominant axis” were
`
`deemed indefinite. Additionally, independent claim 1 was rejected under 35 U.S.C.
`
`102 as being anticipated by Rakkola (U.S. 2006/0161377), and independent claims
`
`25 and 33 were rejected under 35 U.S.C. 103 as being rendered obvious by
`
`Rakkola and Mattice (U.S. 2007/0259716). In response to the first Action, the
`
`Applicant argued that the term “dominant axis” was defined in the specification as
`
`“the axis most impacted by gravity” and therefore was not indefinite. (See Ex.
`
`1002, 149). Additionally, the Applicant argued that the term “long average” was
`
`defined in the specification as “averaging of a plurality of acceleration
`
`measurements over the sample period” and therefore was not indefinite. (See Ex.
`
`1002, 148). The Applicant also challenged the anticipation and obviousness
`
`rejections for the independent claims without amendments. (See Ex. 1002, 149-50).
`
`However, the Examiner determined that these arguments were not persuasive. (See
`
`Ex. 1002, 175-88).
`
`6
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`Similar arguments were made regularly throughout prosecution but did not
`
`persuade the Office. Several additional Office Actions were issued by the Office.
`
`The Applicant’s responses to such Office Actions made little changes to the claims
`
`and rehashed similar arguments.
`
`After receiving Applicant’s response to the seventh Office Action, there was
`
`an Examiner’s amendment that added the phrases “verifying whether the motion
`
`data includes one or more glitches and removing the one or more glitches from the
`
`motion data” and “the idle sample value comprising an average of accelerations
`
`over a sample period along the dominant axis recorded when the devices goes to
`
`idle mode after a period of inactivity.” (See Ex. 1002, 1358). Applicant accepted
`
`these proposed amendments and the application was allowed.
`
`D. Claim Construction2
`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
`
`
`2 Where alternative constructions are proposed below, Petitioner addresses
`
`unpatentability under both possible constructions.
`
`7
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`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,
`
`including Uniloc USA, Inc. v. Samsung Electronics America, Inc., Case No. 2:17-
`
`cv-00652 (E.D. Tex.). 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. For terms not
`
`addressed below, Petitioner submits that no specific construction is necessary for
`
`this proceeding.3
`
`Petitioner notes that the following constructions were also proposed in
`
`IPR2018-00289. See IPR2018-00289, Paper 1 at 6-17. While the Board did not
`
`explicitly disagree with the proposed constructions, the Board declined to construe
`
`these terms in its institution decision. IPR2018-00289, Paper 7 at 6-9. Petitioner
`
`repeats the constructions here for consistency and to the extent such constructions
`
`are relevant to the Board’s determinations. As discussed below in Section VII.10,
`
`the prior art renders obvious all of the limitations of claim 22 (and its independent
`
`
`3 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`8
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`claim 20) under Petitioner’s proposed constructions (and under the plain and
`
`ordinary meaning of these limitations, as applied by the Board in IPR2018-00289).
`
`1.
`“glitch”
`This term is used in claim 20. According to the specification of the ’646
`
`Patent, “a glitch is a datum that indicates a motion outside an acceptable range. For
`
`example, it is extremely unlikely that a device would go from idle (e.g., no motion)
`
`to moving at an acceleration of 64 feet per second squared (equivalent to 2 g).”
`
`(Ex. 1001, 6:36-40).
`
`Thus, for the purposes of this Petition, the broadest reasonable interpretation
`
`of a “glitch” includes “a datum that is outside of an acceptable range.” (See Ex.
`
`1010, ¶¶22-23).
`
`2.
`“a change in the dominant axis”
`This term is used in claim 20. Claim 7 gives an example of a specific feature
`
`for the term “change in the dominant axis” as recited in claim 1. Specifically, claim
`
`7 recites: “wherein the change in the dominant axis comprises a change in
`
`acceleration along the dominant axis.” Thus, for the purposes of this Petition, the
`
`broadest reasonable interpretation of “a change in the dominant axis,” which also
`
`appears in claim 20, includes “at least a change in acceleration measured along the
`
`dominant axis.” (See Ex. 1010, ¶112).
`
`
`
`9
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`3.
`“dominant axis logic to determine an idle sample value”
`The specification describes dominant axis logic 245 that performs the
`
`claimed function. (See Ex. 1001, 3:13-27). Additionally, block 515 describes logic
`
`that “receives data for the dominant axis DA1 of the idle device and accelerations
`
`along DA1 over a sampling period.” (Ex. 1001, 5:48-50). And block 520 describes
`
`logic that “assigns the long average of accelerations along DA1 over a period to
`4 The specification further describes that the
`Idle Sample (IS).” (Ex. 1001, 5:53-55).
`
`logic may be executed by a processor. (See Ex. 1001, 7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`determines an idle sample value.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: determine an idle sample value;
`
`
`4 While blocks 515 and 520 are described in the ’646 Patent specification as being
`
`performed by computation logic 500, the actions described in blocks 515 and 520
`
`correspond to the claim limitations associated with the “dominant axis logic.”
`
`10
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`Structure: software, hardware, or combination thereof to perform the
`
`actions in blocks 515 and 520. (See Ex. 1001, 5:48-55, 7:46-59).
`
`4.
`
`“power logic to move the device from the inactive state to an
`active state upon detection of a change in the dominant axis which
`is the axis experiencing the largest effect of gravity”
`The specification describes power logic 265 that performs the claimed
`
`function. (See Ex. 1001, 4:14-24). In one example, block 545 describes logic to
`
`“start up the device.” (Ex. 1001, 6:24).5 The specification further describes that the
`
`logic may be executed by a processor. (See Ex. 1001, 7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that wakes
`
`up the device when the motion of the device indicates a change in the dominant
`
`axis of the device or moves the device form the inactive state to an active state
`
`upon detection of a change in the dominant axis which is the axis experiencing the
`
`largest effect of gravity.”
`
`
`5 While block 540 is described in the ’646 Patent specification as being performed
`
`by computation logic 500, the actions described in block 540 correspond to the
`
`claim limitations associated with the “power logic.”
`
`11
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`Function: move the device from the inactive state to an active state upon
`
`detection of a change in the dominant axis which is the axis experiencing the
`
`largest effect of gravity;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`block 545. (See Ex. 1001, 6:24, 7:46-59).
`
`5.
`
`“device state logic to restore the device to one of: a last active
`state, a preset customized state”
`The specification describes device state logic 270 that performs the claimed
`
`function. (See Ex. 1001, 4:14-20). In one example, block 340 describes a process
`
`that “configures the device to restore the last device state when the device was
`
`active.” (Ex. 1001, 5:7-9). The specification further describes that the logic is
`
`stored in memory and accessible to a processor. (See Ex. 1001, 7:46-59).
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both that
`
`restores the device to one of: a last active state, a preset customized state.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. 112, sixth paragraph, a POSITA would have
`
`understood the claim itself and the specification to provide:
`
`12
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`Function: restore the device to one of: a last active state, a preset
`
`customized state;
`
`Structure: software, hardware, or combination thereof to perform actions of
`
`block 340. (See Ex. 1001, 5:7-9, 7:46-60).
`
`Petitioner may assert in district court litigation that, under the narrower
`
`Phillips standard, these claim limitations invoke § 112, ¶6 but fail to meet the
`
`definiteness requirement of § 112, ¶2. No district court has issued a claim
`
`construction under Phillips.
`
`Petitioner recognizes that inter partes review proceedings cannot be used to
`
`challenge definiteness under § 112. (See 35 U.S.C. § 311(b)). However, for
`
`purposes of this proceeding, the broadest reasonable interpretation of these claim
`
`terms encompasses software, hardware, or a combination thereof for performing
`
`the recited function, as explained by the ’646 Patent.
`
`In addition, regardless of whether the recited “logic” is a nonce word
`
`requiring the disclosure of an algorithm, the Board may still find that the claims are
`
`obvious in view of the software and hardware disclosed in the prior art cited in this
`
`Petition. (See, e.g., Vibrant Media, Inc. v. Gen’l Elec. Co., IPR2013-00172, Paper
`
`50 at 10-11 (PTAB Jul. 28, 2014) (“an indefiniteness determination in this
`
`proceeding would not have prevented us from deciding whether the claims would
`
`have been obvious over the cited prior art”); Microsoft Corp. v. Enfish, IPR2013-
`
`13
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`00560, Paper 14 at 9-10 (PTAB Mar. 4, 2014) (instituting review and directing
`
`patent owner to identify structure in its Patent Owner Response)). As detailed
`
`herein, the prior art teaches software, hardware, or a combination thereof
`
`performing the claimed function. Therefore, any indefiniteness determination
`
`would not prevent the Board from deciding that these claims are obvious.
`
`V. 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 claim 22 of the ’646 Patent, and
`
`cancel the claim as invalid.
`
`As explained below and in the declaration of Petitioner’s expert, Dr. Irfan
`
`Essa,6 the concepts described and claimed in the ’646 Patent were not new. (Ex.
`
`1010, ¶¶9-12, 31-130). This Petition explains where each element of claim 22 is
`
`found in the prior art and why the claim would have been obvious to a POSITA
`
`before the earliest claimed priority date of the ’646 Patent. Because claim 22
`
`depends from claim 20, this Petition also explains where each element of claim 20
`
`is found in the prior art and why the claim would have been obvious to a POSITA
`
`before the earliest claimed priority date of the ’646 Patent.
`
`6 Petitioner submits the declaration of Dr. Irfan Essa (Ex. 1010), an expert in the
`
`field of the ’646 patent. (Ex. 1010, ¶¶1-8, 13-14; Ex. 1011).
`
`14
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`

`

`Petition for Inter Partes Review
`Patent No. 8,872,646
`Indeed, the Board has already instituted inter partes review of claim 20
`
`based on the same combination of prior art and analysis presented herein in Apple
`
`Inc. v. Uniloc Luxembourg, S.A., Case No. IPR2018-00289, Paper 7 at 17-22 (June
`
`11, 2018).7 Additionally, while claim 22 was not challenged in IPR2018-00289, it
`
`recites limitations that are practically identical to the limitations recited in claim
`
`18, which was also instituted in IPR2018-00289 based on the same combination of
`
`prior art and analysis presented herein. See id. at 22-24. Accordingly, for the same
`
`reasons the Board instituted review of claims 18 and 20 in IPR2018-00289, the
`
`Board should institute review of claim 22 here.
`
`
`
`
`7 Petitioner filed a motion to join IPR2018-00289 in Samsung Elecs. Am., Inc. v.
`
`Uniloc Luxembourg, S.A., Case No. IPR2018-01383. See IPR2018-01383, Paper 3
`
`(July 11, 2018).
`
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`
`VI.
`
`IDENTIFICATION OF CHALLENGES
`A. Challenged Claims
`Claim 22 of the ’646 Patent is challenged in this Petition.
`
`B.
`Statutory Grounds for Challenges
`Claim(s)
`Ground
`Challenge
`Challenge #1 22
`35 U.S.C. § 103 over U.S. Patent No. 7,409,291
`to Pasolini et al. (“Pasolini”) in view of Using
`the LIS3L02AQ Accelerometer, Ron Goldman,
`Sun Microsystems Inc. Dated February 23, 2007
`(“Goldman”); U.S. Patent No. 7,204,123 to
`McMahan et al. (“McMahan”); Using Gravity to
`Estimate Accelerometer Orientation, David
`Mizell, Proceedings of the Seventh IEEE
`International Symposium on Wearable
`Computers (ISWC ’03) 2003 (“Mizell”); and
`U.S. Patent No. 7,028,220 to Park et al. (“Park”).
`
`
`
`Pasolini was filed on February 26, 2004, issued on August 5, 2008, and is
`
`prior art under at least pre-AIA 35 U.S.C. 102(e). Goldman was publicly available
`
`as of July 20, 2007, and is thus prior art under at least pre-AIA 35 U.S.C. 102(b).
`
`Exhibit 1008 is a declaration by Chris Butler of the Internet Archive showing that
`
`Goldman was publically available no later than July 20, 2007. (See Ex. 1008, ¶¶2-
`
`6) (See also Ex. 1012, ¶¶23-26, Dec. of Dr. Ingrid Hsieh-Yee, further
`
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`demonstrating first public availability no later than July 20, 2007). McMahan was
`
`filed March 27, 2007, and published on March 27, 2008. McMahan is thus prior art
`
`under at least pre-AIA 35 U.S.C. 102(e). Mizell was first publically available no
`
`later than March 2006 and is thus prior art under at least pre-AIA 35 U.S.C.
`
`102(b). (See Ex. 1012, ¶¶14-22, Dec. of Dr. Ingrid Hsieh-Yee, showing first public
`
`availability no later than March 2006). Park was filed on September 4, 2002,
`
`issued on April 11, 2006, and is prior art under 35 U.S.C. 102(b).
`
`VII. IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenge #1: Claim 22 is unpatentable under 35 U.S.C § 103 over
`Pasolini in view of Goldman, McMahan, Mizell, and Park
`1.
`Summary of Pasolini
`Pasolini relates to a device that uses an accelerometer to detect motion (e.g.,
`
`when a user picks up the device). In response to detecting such motion, Pasolini’s
`
`device wakes from a standby mode. Pasolini notes that entering standby mode is
`
`commonly used by portable electronic devices to conserve power. Particularly,
`
`Pasolini states: “reduction of power consumption is one of the main objectives in
`
`any sector of modern microelectronics.” (Ex. 1003, 1:13-14). Pasolini further notes
`
`that portable electronic devices such as “cell phones and cordless phones,” and
`
`“palm-top computers” (Ex. 1003, 1:19) are battery operated. Thus power
`
`conservation for such devices is of particular concern. To conserve power, it is
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`well known in the art for computing devices to enter a standby mode after a
`
`predefined period of inactivity. (See Ex. 1003, 1:32-38).
`
`However, Pasolini recognizes that while a standby mode conserves power, it
`
`results in inconvenience for the user because the user has to wake the device up
`
`when he or she is ready to use the device. (See Ex. 1003, 1:47-53).
`
`Pasolini’s invention solves this problem by having a device that wakes up in
`
`response to detecting dynamic acceleration. (See Ex. 1003, 1:66-2:4; 3:17-23).
`
`Pasolini further describes how picking up the device will wake the device from the
`
`stand-by mode. (See Ex. 1003, 5:31-41).
`
`Thus, Pasolini notes that when the device is picked up, at least one of the
`
`axes (including the one most aligned with gravity) experiences dynamic
`
`accelerations significant enough to trigger a wakeup. A POSITA would have
`
`known that picking a device up would have caused the accelerometer to measure
`
`dynamic accelerations in whichever axis is currently most aligned with gravity.
`
`(See Ex. 1010, ¶¶41-46).
`
`As an example, Pasolini’s device may be oriented such that the X-axis is
`
`most aligned with gravity when the device is at rest and in stand-by mode. Picking
`
`the device up while in such an orientation would have caused the accelerometer to
`
`detect dynamic accelerations along that X-axis, thus triggering a wakeup from the
`
`standby mode. In other words, detected acceleration in the axis most aligned with
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`gravity triggers a wakeup. Similarly, Pasolini’s device may be at rest and in
`
`standby mode while oriented such that the Y-axis is most aligned with gravity.
`
`Picking the device up from such an orientation would have caused the
`
`accelerometer to measure dynamic accelerations along the Y-axis (currently the
`
`one most aligned with gravity), which would have triggered a wakeup. Again,
`
`Pasolini’s device may be at rest and in standby mode while oriented such that the
`
`Z-axis is most aligned with gravity. Picking the device up from such an orientation
`
`would have caused the accelerometer to measure dynamic accelerations along the
`
`Z-axis (currently the one most aligned with gravity), which would have triggered a
`
`wakeup. By waking the device from sleep mode in such a manner, the device is
`
`more readily available for use by the user. (See Ex. 1010, ¶47).
`
`2.
`Summary of Goldman
`Goldman is a publication by Sun Microsystems for its Sun Spot device. The
`
`reference describes how to utilize the LIS3L02AQ accelerometer that is built into
`
`the Sun Spot device. (See Ex. 1004, 1). Specifically, Goldman describes various
`
`Java methods associated with the Application Programming Interfaces (API) for
`
`the Sun Spot device. Such Java methods include basic accelerometer functions like
`
`obtaining the acceleration along various axes or measuring the tilt. Goldman also
`
`provides sample code for using such features. For example, Goldman describes
`
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`Petition for Inter Partes Review
`Patent No. 8,872,646
`code that outputs the current acceleration when that acceleration exceeds a
`
`threshold. (See Ex. 1004, p. 2).
`
`Of particular note, Goldman describes measuring acceleration relative to
`
`gravity.
`
`Specifically, Goldman
`
`states:
`
`“Another
`
`set
`
`of methods,
`
`getRelativeAccelX(),
`
`g