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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A. 1
`Patent Owner
`_________________________
`
`IPR2018-01664
`U.S. Patent No. 8,872,646
`
`_________________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO AMEND
`
`
`1 Uniloc's Mandatory Notice (Paper 4) indicates that the owner of U.S. Patent No.
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`8,872,646 is now Uniloc 2017 LLC.
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`
`
`
`
`C.
`
`E.
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`I.
`II.
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`TABLE OF CONTENT
`INTRODUCTION .............................................................................. 1
`“WITHIN AN OPERATIONAL RANGE” LACKS WRITTEN
`DESCRIPTION SUPPORT.................................................................. 1
`III. THE SUBSTITUTE CLAIM IS OBVIOUS ........................................... 5
`A.
`“Motion Data” Is “Data Generated by the Motion Sensor” .............. 6
`B.
`The Prior Art Discloses “the One or More Glitches Each
`Indicating a Respective Detected Motion That is Both Within
`an Operational Range of the Motion Sensor and Outside an
`Acceptable Range” .................................................................... 7
`1. McMahan ........................................................................ 7
`2.
`Hyatt ............................................................................... 9
`The Prior Art Discloses “the Motion Data Containing Less Data
`as a Result of the Removal of the One or More Glitches from
`the Motion Data” ..................................................................... 11
`1. McMahan ...................................................................... 11
`2.
`Hyatt ............................................................................. 14
`D. Reasons to Combine Hyatt with Pasolini, Goldman, Mizell, and
`Park ....................................................................................... 15
`The Prior Art Discloses “A Dominant Axis Logic to Determine
`a Dominant Axis” .................................................................... 17
`1.
`The Combination of Pasolini and Marvit Renders
`Obvious the “Dominate Axis Logic” Limitation.................. 18
`The Combination of Pasolini and Fabio Renders
`Obvious the “Dominate Axis Logic” Limitation.................. 22
`IV. CONCLUSION ................................................................................ 25
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`2.
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`i
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`
`LIST OF EXHIBITS
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`Ex. No.
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`Description
`
`Ex. 1001
`
`U.S. Patent No. 8,872,646
`
`Ex. 1002
`
`Prosecution History of U.S. Patent No. 8,872,646
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`Ex. 1003
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`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
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`Ex. 1009
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`Ex. 1010
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`U.S. Patent No. 7,409,291 to Pasolini et al.
`(“Pasolini”)
`Using the LIS3L02AQ Accelerometer, Ron Goldman,
`Sun Microsystems Inc. Dated February 23, 2007
`
`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
`
`
`
`
`Declaration of Chris Butler
`
`Dictionary of Scientific and Technical Terms,
`McGraw-Hill
`Declaration of Dr. Irfan Essa
`
`Ex. 1011
`
`Curriculum Vitae of Dr. Irfan Essa
`
`Ex. 1012
`
`Declaration of Ingrid Hsieh-Yee
`
`Ex. 1013
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`Reserved
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`Ex. 1014
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`U.S. Patent No. 7,028,220 to Park et al (“Park”)
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`Previously
`Submitted
`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`X
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`ii
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`U.S. Patent No. 7,180,502 to Marvit et al. (“Marvit”)
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`
`Ex. 1015
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`Ex. 1016
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`U.S. Patent No. 7,463,997 to Pasolini et al. (“Fabio”)
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`Ex. 1017
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`Ex. 1018
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`U.S. Patent Application Pub. No. 2007/0268246
`(“Hyatt”)
`Declaration of Dr. Irfan Essa in Support of
`Petitioner’s Opposition to Patent Owner’s Motion to
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`iii
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`Opposition to Motion to Amend
`Patent No. 8,872,646
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`I.
`
`INTRODUCTION
`Petitioner submits this Opposition to PO’s Motion to Amend (Paper No. 10,
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`“Mot.”), which proposes amendments to challenged claim 22 in the form of
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`substitute claim 23. As explained below, PO’s motion should be denied because the
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`proposed substitute claim is not supported by the original disclosure and is
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`unpatentable over the prior art.
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`II.
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`“WITHIN AN OPERATIONAL RANGE” LACKS WRITTEN
`DESCRIPTION SUPPORT
`PO’s motion should be denied because it seeks to amend claim 22 to recite
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`“within an operational range,” which lacks written description support in the
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`specification of the ’646 patent. See 35 U.S.C. § 112, ¶ 1.
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`A motion to amend must set forth “[t]he support in the original disclosure of
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`the patent for each claim that is added or amended.” 37 C.F.R. § 42.121(b)(1). The
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`Board may deny a motion to amend “if [it] is unable to determine how the
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`specification and drawings support the proposed substitute claims.” Trial Practice
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`Guide, 37. To satisfy the written description requirement, the specification must
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`describe the claimed invention in such detail that a POSITA can reasonably conclude
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`that the inventor had possession of the claimed invention as of the filing date. See,
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`e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003).
`
`This standard is not met here, because there is no written description support
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`for “within an operational range of the motion sensor,” as recited in PO’s proposed
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`1
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`substitute claim. (Ex. 1018, ¶¶13-18.) In fact, PO’s amendment is inconsistent with
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`the specification, as the Board found in its institution decision. (See Paper No. 7
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`(“Dec.”), 10.) In its preliminary response, PO argued that “glitch” “refers to motion
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`data within the operational range of the motion sensor yet deemed to not fit the
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`signature of human motion indicative of someone preparing to interface with a
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`device.”2 (Paper 6, 9.) The Board rightly rejected PO’s construction because the
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`“[s]pecification describes a glitch broadly” as “a datum that indicates a motion
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`outside an acceptable range,” (Dec., 10 (quoting Ex. 1001, 6:35-40)), and because
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`the language “within the operational range of the motion sensor” is inconsistent with
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`the specification: “In addition, the Specification repeatedly uses ‘glitch’ inconsistent
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`with Patent Owner’s contention that a glitch refers to motion data within the
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`operational range of the motion sensor,” (id.). (Ex. 1018, ¶17.)
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`For example, multiple portions of the specification indicate that a glitch does
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`not exclude motion data outside the operational range of the motion sensor, as the
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`Board pointed out in its Decision (Dec., 10):
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`• Ex. 1001, 5:19–23: describing “a glitch correcting logic which removes
`abnormal data from the motion data”;
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`• id., 6:56–65: explaining “an excessive number of glitches may indicate a
`problem with the accelerometer”; and
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`2 All emphasis added unless otherwise indicated.
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`2
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`
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`• id., 3:33–37: noting “glitches generally are
`accelerometer or sensor is malfunctioning.”
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`indicative
`that the
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`(Ex. 1018, ¶¶17.) The Board also rejected PO’s reliance on portions of the
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`specification describing “a mere jostle or bump” as motion data that does not warrant
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`waking up a device, because “none of the references Patent Owner cites actually
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`refers to jostle/bump motion data as a ‘glitch.’” (Dec., 10-11 (citation omitted)
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`(referring to Ex. 1001, 1:59-63, 2:35-51, 4:61-5:2).)
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`Despite the Board’s findings, which demonstrate why the language “within
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`an operational range of the motion sensor” is not supported by and inconsistent with
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`the written description, PO’s amendment adds this language to the substitute claim.
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`Thus, for the same reasons provided by the Board, the substitute claim lacks written
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`description support in the specification. (Ex. 1018, ¶17.)
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`PO contends that the original application includes examples of “glitches” that
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`are “accurately detectable by the sensor” and “not an impossible value outside the
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`operational range of a sensor.” (Mot., 5-6.) Those examples, at best, support “data
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`outside an acceptable range.” They do not, however, support the “within an
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`operational range” limitation PO adds to the claim. (Ex. 1018, ¶¶15-16.) Indeed, the
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`original application explicitly describes these examples as “data outside a pre-
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`determined range of acceptable data” (Ex. 1002, pp. 12-13, ¶21), “datum that
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`indicates a motion outside an acceptable range” (id., pp. 14-15, ¶52), and
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`3
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`“unacceptable motion data” (id., p.15, ¶56). These examples do not contemplate
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`whether the motion data is “within an operational range of the motion sensor,” and
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`provide no “reason to exclude” data outside of the operational range from the scope
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`of “glitches.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1350-51 (Fed. Cir.
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`2012) (“Negative claim limitations are adequately supported when the specification
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`describes a reason to exclude the relevant limitation.”) (See Ex. 1018 ¶15.)
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`Indeed, it is unsurprising that the specification does not exclude data outside
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`the operational range from the scope of “glitches,” as it would be paradoxical to
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`detect and remove motion data that is within the operational range of the motion
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`sensor but not motion data outside the operational range of the sensor. (See id. ¶¶16-
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`17.) The specification explains that the “present invention provides a method and
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`system to wake up a device due to motion,” but only if “the motion data indicates a
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`real motion.” (Ex. 1001, 1:24-31.) If the motion data does not indicate a real motion,
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`it is discarded to avoid waking up the device at the wrong time. (Id., 1:59-63, 2:46-
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`51, 3:13-37, 6:25-7:3.) This must be true regardless of whether the motion data is
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`within or outside the operational range of the sensor. (See Ex. 1018 ¶17.) Otherwise,
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`motion data outside the operational range of the motion sensor, which cannot be an
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`accurate indication of real motion, could wake up the device, contrary to the
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`teachings of the specification. (Id.)
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`4
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`When viewed in light of the record, it is apparent that PO’s proposed
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`amendment is not influenced by the specification, but rather by the prior art that PO
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`attempts to distinguish. For instance, PO’s description of “within an operational
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`range” as including motion data that is “accurately detectable by the sensor” and
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`“not an impossible value outside the operational range of a sensor” (Mot., 5-6) is
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`language that comes from McMahan and not the ’646 patent. (See, e.g., Ex. 1005,
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`2:33-34 (“[E]rrors in...sensors are reduced by eliminating output frequencies that
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`have impossible values under normal operation.”), 4:26-31 (“When the output of
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`sensor 102 is not within the expected range of its normal operation, it is presumed
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`that the output is in error. This means that the output of the sensor is not an accurate
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`reflection of the stimulus that the sensor is designed to monitor.”).)
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`Accordingly, a POSITA, reading the original disclosure, would not be able to
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`“immediately discern the limitation at issue in the claims.” Purdue Pharma L.P. v.
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`Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000); (see Ex. 1018 ¶¶13-18.) PO’s
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`motion should therefore be denied.
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`III. THE SUBSTITUTE CLAIM IS OBVIOUS
`PO tries to overcome the prior art with so-called “clarification[s]” to claim
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`limitations directed to “glitches” and the “dominant axis logic.” (Mot., 9-17.)
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`However, the prior art combination in the petition involving McMahan renders
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`obvious the amended “glitches” limitation, as does the combination of Pasolini,
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`5
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`Goldman, Mizell, and Park in further view of Hyatt. And the prior art combination
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`in the petition, or the combination involving Hyatt, in further view of Marvit or
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`Fabio renders obvious the amended “dominant axis logic” limitation. 3
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`“Motion Data” Is “Data Generated by the Motion Sensor”
`A.
`Although PO does not explicitly construe the term “motion data,” PO
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`implicitly argues that this term should be construed contrary to the plain language of
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`the claim. Namely, PO argues that replacing “motion data” with “contrived data”
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`“does not result in ‘motion data containing less data’” (Mot., 14), which implies that
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`“motion data” may include data not generated by the motion sensor. However, the
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`plain language of substitute claim 23 expressly requires “a motion sensor to detect
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`motion along three axes and generate motion data.” (Mot., App. A.) Likewise, the
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`specification consistently refers to data generated by the accelerometer as “motion
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`3 Hyatt, Marvit, and Fabio are not cited in the petition, and are additional prior art
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`directed to proposed substitute claim 23. See Trial Practice Guide at 39. Petitioner
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`submits that proposed substitute claim 23 is unpatentable under 35 U.S.C. § 103
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`over: (1) Pasolini in view of Goldman, McMahan, Mizell, Park, and Marvit; (2)
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`Pasolini in view of Goldman, McMahan, Mizell, Park, and Fabio; (3) Pasolini in
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`view of Goldman, Hyatt, Mizell, Park, and Marvit; and (4) Pasolini in view of
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`Goldman, Hyatt, Mizell, Park, and Fabio.
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`6
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`data.” (Ex. 1001, 3:4-5 (“The accelerometer 220 periodically samples motion
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`data.”), 5:18-19 (“[T]he long average logic...receives motion data from the
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`accelerometer.”), 6:33-34 (“[T]he glitch correcting logic receives motion data from
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`an accelerometer.”).) PO even acknowledges that the substitute claim “derives
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`antecedent basis for ‘the motion data’ from ‘a motion sensor to detect motion along
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`three axes and generate motion data.’” (Mot., 10 (emphasis in original).)
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`Accordingly, consistent with the language of the claim and the specification,
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`“motion data” should be construed to mean “data generated by the motion sensor.”
`
`B. The Prior Art Discloses “the One or More Glitches Each
`Indicating a Respective Detected Motion That is Both Within an
`Operational Range of the Motion Sensor and Outside an
`Acceptable Range”
`1. McMahan
`Proposed substitute claim 23 states that “glitches” indicate “detected motion
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`that is both within an operating range of the motion sensor and outside an acceptable
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`range.” The Board has already found that “McMahan teaches ‘the modification of
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`accelerometer data that is determined to be outside an acceptable range.” (Dec., 14.)
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`Indeed, McMahan explicitly discloses “a method for enhancing the accuracy of a
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`sensor” by modifying “output of the sensor...outside an acceptable range.” (Ex.
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`1005, Abstract; see also id., 2:34-41.)
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`PO’s sole argument regarding this limitation is that McMahan does not
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`disclose “within an operational range” because its disclosure is purportedly limited
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`7
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`to sensor output that is “impossible” and outside of “what the sensor is designed to
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`monitor.” (Mot., 11-13.) To support its argument, PO cherry-picks from one
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`embodiment of McMahan that includes a “sensor 102” that “comprises any
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`appropriate device with a known range of physically possible values being output.”
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`(Id., 12 (quoting Ex. 1005, 3:37-40).) However, the sentence immediately preceding
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`this quote provides that, “[i]n other embodiments, sensor 102 comprises any other
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`appropriate sensor that is subject to a definable range for output signals such that an
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`anomalous event may be detected based on the output of the sensor.” (Ex. 1005,
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`3:37-40.) This sentence, which PO ignores, indicates that McMahan is applicable to
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`any “definable range for output signals” and is not limited to a “known range of
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`physically possible values.” (See Ex. 1018 ¶59-60.)
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`The scope of McMahan’s disclosure is confirmed by its claims 1-18, which
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`broadly require determining when the output of the sensor is outside “a selected
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`range of values.” (See, e.g., Ex. 1005, claims 1, 8, 14, 18.) In contrast, claims 19-22
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`require determining “when the output of the sensor is outside the normal operating
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`range of the sensor.” (See, e.g., id., claim 19.) PO latches onto specific examples in
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`McMahan describing claims 19-22, but such exemplary embodiments do not
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`represent the full scope of McMahan’s disclosure. (See Ex. 1018 ¶63.) Consistent
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`with the language of claims 1-18, McMahan’s disclosure is applicable to any
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`“selected range of values” and “will work for any source of transients or noise on
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`8
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`Patent No. 8,872,646
`the signals,” including “shocks” and “vibration,” not just data “outside the normal
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`operating range of the sensor.” (See id. ¶¶61-64; Ex. 1005, 7:39-47.) Thus,
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`McMahan’s “anomalous event” is not limited to “impossible value[s]” that are
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`outside of “what the sensor is designed to monitor.” (Mot., 12; Ex. 1018, ¶¶57-65.)
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`Accordingly, the McMahan prior art combination in the petition discloses this
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`limitation, and a POSITA would have been motivated to incorporate these teachings
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`of McMahan for the reasons similar to those provided in the petition (e.g., improve
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`accelerometer accuracy to avoid waking up the device unnecessarily, thereby
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`enhancing power conservation and convenience of use) (Paper 1 (“Pet.”), 24). (Ex.
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`1018, ¶¶65.)
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`2. Hyatt
`Hyatt discloses “a motion signal processing circuit” that “filter[s] the output
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`of the motion sensor 60 or...condition[s] the output using known techniques such
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`that the indication of motion or an appropriate signal to represent motion to the
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`control circuit 42 only is provided in instances where the user decidedly moves the
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`mobile phone 10 in a prescribed manner.” (Ex. 1017 ¶58.) Hyatt refers to “motion
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`in [a] prescribed manner...as intended motion.” (Id.) Hyatt states that “signals
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`representing brief or casual movement of the [device], e.g., a dead zone where
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`slight movement of the [device], such as a result of being carried by a user while
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`9
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`walking, bouncing in a moving car, etc., is not registered as an intended motion.”
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`(Id.)
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`To “block from the control circuit” signals not indicative of “intended
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`motion,” Hyatt includes “a low pass filter 64 and either a threshold detector 66,
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`amplitude detector 68, or frequency detector 70.” (Id. ¶¶58-59.) “The low pass filter
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`64 removes or blocks signals representing casual motions or noise or spurious
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`signals representing brief, unintended movement of the mobile phone 10 or casual
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`movement of the mobile phone, such as may occur during walking or bouncing in
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`a moving vehicle.” (Id. ¶59.) “[T]hreshold detector 66, amplitude detector 68, [and]
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`frequency detector 70” distinguish between “intended or prescribed motion” and
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`“casual motion or noise” based on the motion signal’s “pulse width” (which
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`indicates the duration of the detected motion), amplitude, and frequency,
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`respectively. (Id. ¶¶58-61; see Ex. 1018 ¶¶35-44.)
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`Thus, Hyatt discloses this limitation. (Ex. 1018, ¶¶66-76.) As explained
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`above, for example, Hyatt discloses “a motion signal processing circuit” that
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`removes or blocks output of a motion sensor not because the “motion is...inherently
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`deemed an impossible error of the sensor” (Mot., 13 (emphasis in original)), but
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`because it is not “an intended or prescribed motion” (Ex. 1017 ¶¶58-59), i.e.,
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`“detected motion that is both within an operational range of the motion sensor and
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`outside an acceptable range.” (See Ex. 1018 ¶¶61-67.) The “motion signal
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`10
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`processing circuit” may include a “low pass filter,” and either a “threshold detector,”
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`an “amplitude detector,” or a “frequency detector,” each of which determines
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`whether the output of the motion sensor indicates “casual motion or noise” (id.; Ex.
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`1017 ¶¶59-61), i.e., “glitches.” (Ex. 1018, ¶¶70-74.) Such “casual motion or noise”
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`“may be accurately detected motion data within an operational range of the motion
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`sensor, yet outside a predetermined [duration, amplitude, or frequency] range of
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`acceptable motion data.” (Mot., 12; see Ex. 1018 ¶¶70-74; Ex. 1017 ¶¶59-61.) For
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`instance, like the ’646 patent, which discards as “glitches” a “vehicle’s motion...not
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`fitting the signature of human motion” (Ex. 1001, 3:24-27), Hyatt’s “low pass filter
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`64 removes or blocks signals representing...unintended movement,” such as
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`“bouncing in a moving vehicle” (Ex. 1017, ¶59). Therefore, Hyatt discloses this
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`limitation. (Ex. 1018, ¶¶66-76.)
`
`C. The Prior Art Discloses “the Motion Data Containing Less Data
`as a Result of the Removal of the One or More Glitches from the
`Motion Data”
`1. McMahan
`The proposed substitute claim adds that “the motion data containing less data
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`as a result of the removal of the one or more glitches from the motion data.” PO
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`argues that McMahan does not disclose this feature because (1) “McMahan replaces
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`errors with contrived data, which is not a removal of one or more glitches,” and (2)
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`replacing errors with contrived data does not result in ‘motion data containing less
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`11
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`data.’” (Mot., 14 (emphasis in original).) PO further argues that (3) McMahan
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`teaches away from the removal of an “error” from motion data because an “error”
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`is, by design, never included in motion data. (Id.) Under the proper construction of
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`the term “motion data,” as proposed by Petitioner in Section III.A above, McMahan
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`discloses this limitation. (Ex. 1018, ¶¶77-90.)
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`First, McMahan explicitly discloses the removal of a sensor output outside an
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`acceptable range. For example, McMahan discloses that “the sensor output is
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`modified to remove any values outside the nominal range expected of the sensor”
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`(Ex. 1005, 6:16-19), and that “by removing the values that fall outside the normal
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`operating range and replacing the values with a nominal 17.5 count, the 4000 cm/s
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`velocity shift is removed.” (Id., 6:19-22; see also id., 3:60-63.) Thus, McMahan
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`teaches removing anomalous sensor output (i.e., “motion data”) prior to replacing
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`said output with “contrived data” (i.e., a nominal value). (See Ex. 1018 ¶¶77-80.)
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`Second, PO’s argument that replacing sensor output that is outside an
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`acceptable range with “contrived data” does not result in “motion data containing
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`less data” relies on the faulty premise that “contrived data” is “motion data.” (Mot.,
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`14.) However, the so-called “contrived data” is not “motion data” under Petitioner’s
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`construction because it is not “data generated by the motion sensor.” This “contrived
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`data” is instead generated by McMahan’s “output circuit.” (See, e.g., Ex. 1005, 5:14-
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`19, 7:2-5, Fig. 10.)
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`12
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`As shown in Figure 10 of McMahan below, “enhancement circuit 1004
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`comprises processing circuit 1008 and output circuit 1010.” (Id., 6:55-57.) “If...the
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`processing circuit 1008 determines that the frequency of the output signal is not
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`within the normal operating range, then the output circuit [1010] suppresses the
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`signal from sensor 1002” and “a signal is substituted for the signal from the sensor
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`1002.” (Id., 6:65-9.) Thus, McMahan discloses removing “data generated by the
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`motion sensor” (i.e., “motion data”) and replacing it with data generated by the
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`“output circuit” (i.e., not “motion data”), resulting in “motion data containing less
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`data,” as required by the proposed substitute claim. (See Ex. 1018 ¶¶81-85.)
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`Third, PO argues that McMahan “teaches away from [the] inclusion of an
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`‘error’ within motion data and, by extension, also teaches away from subsequent
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`removal of that ‘error’ from motion data.” (Mot., 14.) In support, PO points to
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`McMahan’s warning that “[i]f the error is allowed to propagate to the electronic
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`circuit 106, the operation of electronic circuit 106 is likely to be compromised since
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`the error may be magnified when relied on in further operations by electronic circuit
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`13
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`106.” (Id. (quoting Ex. 1005, 4:31-34).) PO thus concludes that “the ‘error’ in
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`McMahan, by intended design, is never included as part of anything that can be
`
`considered motion data.” (Mot., 14.)
`
`However, McMahan’s “error” is identified by the “enhancement circuit 104,”
`
`which “receives the output of [the motion] sensor 102,” as shown in Figure 1 of
`
`McMahan. (Id., 4:24-26, Fig 1, Fig. 10.) If an “anomalous output is detected,” the
`
`“enhancement circuit” “selectively modifies” the output. (Id., 4:24-26.) Thus,
`
`contrary to PO’s argument, all “anomalous output” (or “error”) is “motion data,” i.e.,
`
`data generated by the motion sensor. (See Ex. 1018 ¶¶86-90.)
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`Accordingly, the prior art combination in the petition involving McMahan
`
`discloses this limitation, and a POSITA would have been motivated to incorporate
`
`these teachings of McMahan for reasons similar to those provided in the petition
`
`(e.g., improve accelerometer accuracy to avoid waking up the device unnecessarily,
`
`thereby enhancing power conservation and convenience of use). (See Pet., 24; Ex.
`
`1018, ¶¶77-90.)
`
`2. Hyatt
`Hyatt discloses a “motion signal processing circuit 62,” which receives
`
`motion data from the “motion sensor 60.” (Ex. 1017, ¶58, Fig. 2.) “The motion signal
`
`processing circuit 62 may block from the control circuit 42 signals representing
`
`brief or casual movement.” (Id.) Hyatt further explains that the motion signal
`
`14
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`processing circuit 62 “includes a low pass filter 64 and either a threshold detector
`
`66, amplitude detector 68, or frequency detector 70.” (Id., ¶¶58-59, Figs. 3-5.) “The
`
`low pass filter 64 removes or blocks signals representing casual motions or noise or
`
`spurious signals representing brief, unintended movement of the mobile phone 10 or
`
`casual movement of the mobile phone.” (Id., ¶59.)
`
`
`
`Thus, Hyatt discloses “the motion data containing less data as a result of the
`
`removal of the one or more glitches from the motion data.” (Ex. 1018, ¶¶35-44, 91-
`
`95.) As explained above, for example, Hyatt explicitly discloses the removal of a
`
`signal generated by the motion sensor “representing casual motions or noise” from
`
`the “control circuit 42.” (Ex. 1017, ¶¶58-59.) As discussed above in Section III.B.2,
`
`“casual motion[] or noise” is “both within an operational range of the motion sensor
`
`and outside a predetermined range of acceptable motion data.” (See supra § III.B.2.)
`
`Additionally, Hyatt does not replace the removed data. (See generally Ex. 1017.)
`
`Thus, even if PO is correct that replacing motion data with data not generated by the
`
`motion sensor “is not a removal of one or more glitches” (it is) and does not result
`
`in “motion data containing less data” (it does) (see Mot., 14; see also supra §
`
`III.C.1), Hyatt nonetheless discloses this limitation. (See Ex. 1018 ¶¶35-44, 91-95.)
`
`D. Reasons to Combine Hyatt with Pasolini, Goldman, Mizell, and
`Park
`It would have been obvious to a POSITA to apply the teachings of Hyatt to
`
`the combination of Pasolini, Goldman, Mizell, and Park (resulting in the limitations
`
`15
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`discussed above) to distinguish “intended motion” from “casual motion or noise,”
`
`such that the device of the combination would not be woken up from the standby
`
`mode by “unintended movements,” consistent with the teachings of Hyatt. 4 (Ex.
`
`1017, ¶¶58-59; see Ex. 1018 ¶86;) KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-
`
`18 (2007). The device of the combination enters into standby mode to conserve
`
`power. (Ex. 1003, 1:13-56, 2:59-65.) Thus, a POSITA would have had good reason
`
`to apply the teachings of Hyatt to ensure that the device in the combination only
`
`wakes up upon detection of “intended motion,” including motion indicative of the
`
`device being picked up, to further improve the device’s power conservation. (Ex.
`
`1018, ¶97.) Otherwise, “casual motion or noise...such as may occur during walking
`
`or bouncing in a moving vehicle” (Ex. 1017 ¶59), may trigger a wakeup, thus
`
`causing unnecessary power consumption. (See Ex. 1018 ¶87.) A POSITA would
`
`have looked to Hyatt because Hyatt, like the other references in the combination, is
`
`directed to motion detection in the context of handheld devices. (See generally Ex.
`
`1017; Ex. 1018 ¶88.) Hyatt also describes techniques for handling undesired motion
`
`
`4 Petitioner only relies upon McMahan to disclose the “glitches” limitation. (See Pet.,
`
`31-32; supra §§ III.B.1, III.C.1.) Thus, to the extent Hyatt discloses this limitation,
`
`McMahan is not necessary to the combination.
`
`16
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`data to avoid affecting devices like those described in the other references in
`
`unwanted ways. (Ex. 1018, ¶98.)
`
`A POSITA would have had a reasonable expectation of success in modifying
`
`the device of the combination based on the teachings of Hyatt. KSR, 550 U.S., 417;
`
`(see Ex. 1018 ¶¶89-91.) For example, the modification could have been easily
`
`implemented by software programming, as taught by Goldman (see Ex. 1010, ¶86),
`
`and/or hardware modification, which merely requires the insertion of a “motion
`
`signal processing” circuit (or other circuitry) in between the motion sensor and the
`
`electronic circuit, similar to as described in Hyatt. (Ex. 1017, ¶¶58-60, 69, Fig. 2-5;
`
`see Ex. 1018 ¶99.) Given these minimal modifications and the fact that the device
`
`of the combination already includes most of the desired hardware (e.g., motion
`
`sensor, low pass filter, control circuit), a POSITA would have possessed the
`
`knowledge and ability to implement the teachings of Hyatt in such a way to achieve
`
`an improved device that operates as described above without detracting from other
`
`features of the device. (See Ex. 1018 ¶¶96-100.)
`
`E. The Prior Art Discloses “A Dominant Axis Logic to Determine a
`Dominant Axis”
`The proposed substitute claim adds to the “dominant axis logic” limitation the
`
`requirement that the “dominate axis logic...determine[s] a dominant axis,” which is
`
`defined “as an axis with a largest effect of gravity among the three axes.” PO argues
`
`that Pasolini does not disclose this limitation because it “[i]ndiscriminately
`
`17
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`evaluate[s] all available acceleration signals, without reference to a previously
`
`determined dominant axis” and thus “is indifferent as to whether there is a detection
`
`of a change in the dominant axis.” (Mot., 15-16.) However, it would have been
`
`obvious to modify Pasolini to determine a dominant axis (and wake up the device
`
`upon detection of a change in the dominant axis) in light of Marvit or Fabio. (Ex.
`
`1018, ¶¶101-34.)
`
`1.
`
`The Combination of Pasolini and Marvit Renders Obvious
`the “Dominate Axis Logic” Limitation
`Marvit discloses that a handheld device “function may utilize input motion
`
`along one axis of motion at a time. (Ex. 1018 ¶¶45-50.) For example, a device
`
`application “may allow a user to scroll through a list… by moving the device along
`
`a particular axis.” (Ex. 1015, 7:60-65.) According to Marvit, for such a function,
`
`“[i]t may be very difficult for a user to constrain the motion of the device to that
`
`particular axis as desired. In other words, some user generated device rotation or
`
`movement along another axis may be difficult to avoid.” (Id., 7:65-8:2.) To counter
`
`this problem, Marvit teaches “the selection and amplification of a dominant motion
`
`and the minimization of movement in other directions or axes.” (Id., 8:2-5.) Marvit
`
`discloses that “dominant motion” may be selected based on the axes experiencing
`
`“greater...amount of movement” or “magnitude of acceleration,” among other
`
`things. (Id., 8:12-14.) Marvit refers to this as “a dominant axis of motion.” (Id., 8:60-
`
`61.) Additionally, Marvit discloses that “[m]ovement along axes other than the
`
`18
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`Opposition to Motion to Amend
`Patent No. 8,872,646
`dominant axis of motion may be minimized...[
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