UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`IPR2018-01664
`PATENT 8,872,646
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
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`Patent Owner
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`IPR2018-01664
`PATENT 8,872,646
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`IPR2018-01664
`U.S. Patent 8,872,646
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`Table of Contents
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`I.
`II.
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`III.
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`IV.
`V.
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`INTRODUCTION .................................................................................... 1
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. §
`325(D) ....................................................................................................... 1
`PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. §
`315(E)(1) ................................................................................................... 4
`THE ’646 PATENT .................................................................................. 5
`THE PETITION FAILS TO PROVE OBVIOUSNESS .......................... 6
`A.
`The Petition fails to resolve the level of ordinary skill in
`the art .............................................................................................. 7
`Claim construction .......................................................................... 9
`1.
`“glitch” ................................................................................. 9
`2.
`“a change in dominant axis”............................................... 14
`3.
`“logic to” limitations .......................................................... 14
`No obviousness for “determine whether the motion data
`includes one or more glitches” and “remove the one or
`more glitches from the motion data” (claim 20) .......................... 15
`1.
`Petitioner fails to prove that McMahan’s “error”
`maps onto the claimed “one or more glitches” .................. 15
`Petitioner fails to prove that McMahan’s
`“modify” teaching maps onto the claimed
`“remove the one or more glitches from the motion
`data” .................................................................................... 18
`Petitioner fails to explain why it would have been
`obvious to a person of ordinary skill in the art to
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`B.
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`C.
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`2.
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`3.
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`ii
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`D.
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`IPR2018-01664
`U.S. Patent 8,872,646
`combine McMahan as proposed ......................................... 20
`The Petition Fails to Prove obviousness for dependent
`claim 22 ........................................................................................ 23
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 23
`CONCLUSION ....................................................................................... 24
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`VI.
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`VII.
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`iii
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`IPR2018-01664
`U.S. Patent 8,872,646
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`I.
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`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
`Response to Petition IPR2018-01664 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 8,872,646 (“the ’646 patent” or “EX1001”) filed by
`Samsung Electronics American, Inc. (“Petitioner”). The instant Petition should be
`denied in its entirety for the reasons set forth herein.
`II. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
`The Board should exercise its discretion under 35 U.S.C. § 314(a) and 35
`U.S.C. § 325(d) to deny this follow-on Petition. Petitioner has previously filed a
`petition against this same patent in IPR2018-01383 on July 11, 2018, which seeks
`joinder to IPR2018-00289. The instant follow-on Petition, filed on September 6,
`2018, acknowledges that Petitioner had filed a previous petition and motion for
`joinder in its IPR2018-01383. Pet. 15 at n.7.
`The Board should exercise its discretion to deny the instant Petition because:
`First, Petitioner was already aware of all of the asserted prior art in the instant
`Petition at the time Petitioner filed the earlier petition in IPR2018-013832. This is
`demonstrably shown by comparing the instant Petition with the previously filed
`petition in IPR2018-01383:
`• In the instant Petition, Petitioner asserts the following five references
`(Pasolini, Goldman, McMahan, Mizell, and Park):
`
`
`
` 2
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` See LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., IPR2016-00986, Paper 12
`at 6–7 (“LG Elecs.”), Fourth factor.
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`U.S. Patent 8,872,646
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`Pet. at 16 (highlighting added).
`• In IPR2018-01383, Petitioner asserted the exact same references:
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`IPR2018-01383, Paper 1 at 18 (highlighting added).
`Second, as expressly admitted by Petitioner itself, the newly challenged claim
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`2
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`(claim 22) in the instant follow-on Petition “recites limitations that are practically
`identical to the limitations recited in claim 18.” Pet. 15 (emphasis added). And claim
`18 was previously challenged by Petition in its earlier-filed IPR2018-01383. See
`IPR2018-01383, Paper 1 at 18 (“Challenge #2”). Therefore, Petitioner, in its own
`words, previously filed a petition directed to a claim having “limitations that are
`practically identical” of the same patent.3
`Third, the same or at the very least substantially the same prior art arguments
`were presented to the Office in Petitioner’s previously-filed petition.4 This is
`expressly confirmed by Petitioner itself, first because this follow-on Petition admits
`that the petition in IPR2018-00289 was “based on the same combination of prior
`art and analysis presented herein.” Pet. 15 (emphasis added). And second because
`Petitioner, in the earlier-filed IPR2018-01383, which seeks joinder to IPR2018-
`00289, expressly states that “[t]he Samsung petition and the Apple IPR [(IPR2018-
`00289)] are substantially identical.” IPR2018-01383, Paper 3 at 1 (emphasis
`added).
`Fourth, Petitioner provides no explanation for the time elapsed (about two
`months) between the filing dates of the instant follow-on Petition and the previously-
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` 3
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` See LG Elecs., Third factor.
`4 See 35 U.S.C. § 325(d) (“In determining whether to institute or order a
`proceeding under . . . chapter 31 [providing for inter partes review], the Director
`may take into account whether, and reject the petition or request because, the same
`or substantially the same prior art or arguments previously were presented to the
`Office.”)
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`3
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`filed petition.5 As the PTAB has noted previously in a similar case, Petitioner was
`not compelled to seek to join IPR2018-00289, nor was Petitioner prevented by any
`statutory or regulatory hurdle from forgoing joinder with other proceedings and
`instead filing a single petition on the full claim set it wishes to challenge. See
`IPR2016-01441, Paper 14 at 13; see also IPR2016-01851, Paper 7 at 9. Not only did
`Petitioner delay its joinder petition in IPR2018-01383 to the last possible date for
`strategic advantage, it appears Petitioner chose to separately challenge claim 22 and
`to delay filing the separate challenge in this instant follow-on Petition only to
`increase the chances of joinder in IPR2018-01383 and gain a strategic advantage.
`The Board should discourage such tactics and consider the harassing impact
`that the piecemeal challenges have on Patent Owner in defending the ’646 Patent.
`See IPR2016-01441, Paper 14 at 14; see also ZTE Corp. v. ContentGuard Holdings,
`Inc., IPR2013-00454, Paper 12 at 5–6 (“The Board is concerned about encouraging,
`unnecessarily, the filing of petitions which are partially inadequate.”); Butamax
`Advanced Biofuels LLC v. Gevo, Inc., IPR2014-00581, Paper 8 at 12–13 (“Allowing
`similar, serial challenges to the same patent, by the same petitioner, risks harassment
`of patent owners and frustration of Congress’s intent in enacting the LeahySmith
`America Invents Act.” (citing H.R. Rep. No. 112-98, pt. 1, at 48 (2011)))
`III. PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1)
`35 U.S.C. § 315(e)(1) will estop Petitioner from maintaining this IPR. As
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` See LG Elecs., Sixth and Seventh factors.
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`4
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`explained in the preceding section, Petitioner’s grounds raised in the current Petition
`either were raised or “reasonably could have been raised” in Petitioner’s earlier-filed
`petition concerning the ’646 Patent, mandating dismissal of this proceeding.
`IV. THE ’646 PATENT
`The ’646 patent is titled “Method and System For Waking Up A Device Due
`To Motion.” The ʼ646 patent issued October 28, 2014, from U.S. Patent Application
`No. 12/247,950 filed October 8, 2008.
`The ’646 patent observes that battery life has become increasingly important
`for mobile devices, particularly given that the more applications a mobile device has,
`the faster the battery of the mobile device depletes. It thus could be difficult to
`balance maximum battery life with an optimal user experience. EX1001, 1:12−20.
`The ’646 Patent teaches an innovative solution to determine whether a measured
`device motion is sufficient enough to warrant waking up a mobile device from an
`idle, battery-saving state to an active state. See, e.g., id., Abstract; 1:24−25; 1:56−63.
`According to a particular embodiment, when a device enters an idle state using
`a low-power mode, it nevertheless maintains sufficient power to monitor at least one
`sensor. Id., 2:10−27. This design may help ensure that when the device is picked up
`to be used by a user, the device can automatically transition from the idle state to an
`active state. By initiating the transition from the idle state to the active state without
`requiring user input, the user experience may be enhanced. Id., 2:34−41.
`The patent uses the word “glitch” to refer to actual motion data deemed to not
`fit the signature of human motion indicative of someone preparing to interface with
`a device. See, e.g., EX1001 at Abstract; 1:59−63; 2:35−51; 4:61−5:2. While a
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`5
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`“glitch” is within the operational range of the sensor, it does not warrant waking up
`the device from an idle state to an active state. Id. The ’646 patent provides multiple
`examples of events that may cause such a “glitch” measurement, such as “a mere
`jostle or bump” (4:62; see also 1:63), “the table on which the device is resting is
`shaken” (2:46−47), “the purse is jostled” (2:47), “a little jostle of a desk or table on
`which the device is laying” (4:63−64), “a heavy step nearby” (4:64), etc.
`Motion data determined to be a “glitch” does not warrant waking up the device
`from an idle state to an active state. Id. at 4:61−66. In contrast, motion data
`determined to correspond to other movement (e.g., as a result of a device being
`picked up by a user intending to user the device) may warrant automatically awaking
`the device from an idle state to an active state. See, e.g., id. at Abstract; 4:66−5:2.
`Power usage may be reduced by designing the device to automatically evaluate
`whether motion data is or is not associated with a user preparing to intentionally
`engage with the device. See, e.g., id., Abstract; 2:46−51.
`V. THE PETITION FAILS TO PROVE OBVIOUSNESS
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§ 42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges:
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`6
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`Ground
`1
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`22
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`Claims
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`IPR2018-01664
`U.S. Patent 8,872,646
`Reference(s)
`Pasolini6, Goldman7, McMahan8, Mizell9 and
`Park10
`A. The Petition fails to resolve the level of ordinary skill in the art
`To prevail on its theory of obviousness, Petitioner has the burden to prove that
`“the differences between the subject matter sought to be patented and the prior art
`are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject
`matter pertains.” 35 U.S.C. § 103. Consistent with that statutory framework, and as
`reiterated by the Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S.
`398 (2007) (“KSR”), the factual inquiries for determining obviousness under 35
`U.S.C. § 103 are enunciated in Graham v. John Deere Co., 383 U.S. 1 (1966) as
`follows:
`
`(A) Determining the scope and content of the prior art;
`(B) Ascertaining the differences between the claimed invention and
`the prior art; and
`(C) Resolving the level of ordinary skill in the pertinent art.
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` 6
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` EX1003, U.S. Patent No. 7,409,291
`7 EX1004, Goldman, “Using the LIS3L02AQ Accelerometer”
`8 EX1005, U.S. Patent No. 7,204,123
`9 EX1007, David Mizell, “Using Gravity to Estimate Accelerometer Orientation”
`10 EX1014, U.S. Patent No. 7,028,220
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`See also MPEP § 2141 (quoting the same). Rule 42.22(a)(2) states that the petition
`itself must contain a “full statement of the reasons for the relief requested, including
`a detailed explanation of the significance of the evidence . . . .”
`The Petition does not set forth the requisite analysis necessary to prove
`obviousness at least because (among other deficiencies) it fails to provide or
`expressly rely upon any definition for the level of ordinary skill in the pertinent art.11
`Further, the Petition fails to explain how its analysis conforms to that required
`perspective (i.e., a perspective that the Petition itself fails to define).
`This deficiency is not something that can be cured after filing a Petition or
`through incorporation by reference. Further, the Federal Circuit has repeatedly
`admonished the Board against adopting arguments not raised in the Petition itself.
`See, e.g., Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027
`(Fed. Cir. 2017) (citing In re Magnum Oil Tools Int’l, Ltd, 829 F.3d 1364, 1377,
`1380 (Fed. Cir. 2016) and SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
`1351 (Fed. Cir. 2016)). This is true even where the argument “‘could have been
`included in a properly-drafted petition.’” Rovalma, 856 F.3d at 1027 (quoting and
`discussing Magnum Oil, 928 F.3d at 1377).
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`
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`11 While the Petition makes certain citations to the declaration of Dr. Paradiso
`(EX1010), the Petition provides no citation to, and does not expressly purport to
`rely upon, any alleged definition for a person of ordinary skill in the art in that
`declaration. Moreover, “[a] brief must make all arguments accessible to the judges,
`rather than ask them to play archeologist with the record.” DeSilva v. DiLeonardi,
`181 F.3d 865, 866-67 (Fed. Cir. 1999), accord, Ariosa Diagnostics v. Verinata
`Health, Inc., IPR 2013-00276, Paper No. 43 (quoting the same).
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`8
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`IPR2018-01664
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`B. Claim construction
`The Petition injects several claim construction disputes that highlight multiple
`deficiencies of the Petition and hence warrant resolution here. The disputes largely
`center on the term “glitch” and the limitations in which that term appears. The Board
`need not construe the other terms identified in the Petition to resolve the dispute
`between the parties.
`“glitch”
`1.
`Copying the same error from the original petition Petitioner sought to join in
`its earlier-filed IPR2018-01383, the instant Petition injects the same claim
`construction dispute over the proper construction of the “glitch” term recited in
`every challenged claim. The intrinsic evidence reveals that the “glitch” term refers
`to motion data within the operational range of the motion sensor yet deemed to not
`fit the signature of human motion indicative of someone preparing to interface with
`a device. See, e.g., EX1001 at Abstract; 1:59−63; 2:35−51; 4:61−5:2.
`Petitioner erroneously seeks to construe glitch as follows: “a ‘glitch’ includes
`a datum that is outside of an acceptable range.” Pet. 9. Petitioner seeks through its
`construction to unreasonably broaden “glitch” to encompass any type of datum,
`including impossible values which do not qualify as motion data because they are is
`outside the operational range of the sensor.12 As will be shown, Petitioner’s
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`12 As described further below, McMahan’s “error” is an impossible value outside the
`operational range of the sensor and hence does not indicate a motion. For at least
`this reason, McMahan’s “error” does not map onto the “glitch” term when properly
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`IPR2018-01664
`U.S. Patent 8,872,646
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`construction is inconsistent, in several respects, with the only passage it cites.
`Additional inconsistencies arise when one considers the remainder of the intrinsic
`evidence, including the claim language itself.
`Patent Owner proposes a construction that correctly reflects the requirement,
`recited in the claim language itself, that a “glitch” is measured motion data. Claim
`1 recites “receiving motion data from a motion sensor in a device, the motion sensor
`sensing motion along three axes; [and] verifying whether the motion data includes
`one or more glitches and removing the one or more glitches from the motion data[.]”
`There can be no question that the recited “one or more glitches” must be part of the
`“motion data” defined in the antecedent “receiving” step as “sensing motion along
`three axes.” Independent claims 13 and 20 similarly confirm that each of the “one
`or more glitches” is part of the measured “motion data.” Petitioner’s construction is
`untethered to the “motion data” requirement at least in that it is intended to
`encompass impossible values that are outside the operational range of the sensor.13
`Consistent with the claim language, the ’646 patent provides multiple
`examples of motion data that, although within the operational range of the motion
`sensor, may be deemed a “glitch.” For example, the specification discloses that a
`“glitch” may result from “a mere jostle or bump” of the device (4:62; see also 1:63),
`“the table on which the device is resting is shaken” (2:46−47), “the purse is jostled”
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`construed. Pet. 31 (citing EX1005, 4:26−30). Accordingly, McMahan does not
`cure the conceded deficiencies of the remainder of the cited references.
`13 See n.8, supra.
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`10
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`U.S. Patent 8,872,646
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`that contains the device (2:47), “a little jostle of a desk or table on which the device
`is laying” (4:63−64), “a heavy step nearby” (4:64), etc. In every example provided,
`the ’646 patent describes the “glitch” as indicating motion that the system is
`designed to measure in evaluating whether such motion warrants waking up the
`device. See, e.g., EX1001 at Abstract; 1:59−63; 2:35−51; 4:61−5:2.
`Patent Owner’s interpretation is also supported by the statement in the
`specification that, in one embodiment, “[a]n excessive number of glitches may
`indicate a problem with the accelerometer.” Id., 6:61−62 (emphasis and underlining
`added); see also id., 3:33−37 (stating “if a certain number of glitch data points have
`been discarded,” it may be “indicative that the accelerometer or sensor is
`malfunctioning.”). The fact that multiple motion data measurements are needed in
`this example to indicate what “may” (and hence may not) be a problem confirms
`that the word “glitch” is not used in this context to refer to an impossible value
`outside the operational range of a sensor. This is because even one impossible value
`outside the operational range of the sensor would necessarily indicate an error in
`and of itself, yet the above example requires multiple motion data points to make
`only a presumptive determination that there may be a problem with the
`accelerometer.
`This interpretation is also supported by descriptions in the specification of
`example embodiments that remove “abnormal accelerometer reading(s).” See, e.g.,
`id., 3:28−29. Use of the word “abnormal” in this context simply refers to what is not
`normal or expected, as opposed to an impossible reading outside the operational
`range of the motion sensor. This is also confirmed by the fact that the word
`
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`IPR2018-01664
`U.S. Patent 8,872,646
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`“abnormal” modifies the couplet “accelerometer reading(s)”—i.e., although
`abnormal, it is motion data as sensed along three axes. Id. The above-emphasized
`accelerations associated with “a mere jostle or bump” (4:62; see also 1:63) may be
`considered abnormal, for example, at least in that they do not fit the signature of
`human motion indicative of someone preparing to interface with a device.
`The sole passage Petitioner cites as alleged support for its construction is
`helpful only to Patent Owner. Petitioner relies exclusively on the following
`description of“one embodiment” in the ’646 patent:
`
`In one embodiment, 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).
`Pet. 9 (citing EX1001, 6:36−40). Petitioner’s construction is inconsistent in several
`respects with the only passage it cites.
`First, Petitioner impermissibly seeks to untether its construction from the
`descriptive statement (in the sole passage cited in the Petition) that a glitch
`“indicates a motion” and that it is the indicated motion itself “that is outside of an
`acceptable range.” EX1001, 6:36−40. Petitioner’s construction ignores this aspect
`of the only description it cites.
`Second, Petitioner fails to explain how a description expressly directed to
`“one embodiment” is somehow lexicographic in nature and unambiguously defines
`all embodiments. Moreover, Petitioner cannot reasonably argue that the cited
`description of “one embodiment” somehow provides unambiguous lexicography for
`
`12
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`U.S. Patent 8,872,646
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`the “glitch” term, and nevertheless cherry-picks which aspects of that purportedly
`definitive description to exclude from the construction (e.g., that “a glitch …
`indicates a motion ….”).
`Third, Petition offers no argument, evidence, or explanation for why the cited
`passage supports construing a “glitch” in terms of what it purportedly includes (an
`unreasonably broadening construction), as opposed to what it is.
`For at least the foregoing reasons, only Patent Owner’s construction ties a
`“glitch” to certain motion data (i.e., within the operational range of the motion
`sensor yet deemed to not fit the signature of human motion indicative of someone
`preparing to interface with a device), as required by full context of the claim
`language and as consistently reflected in the intrinsic evidence. By way of contrast,
`Petitioner seeks through its construction to untether the “glitch” term from its
`thematic and claimed description—including in the sole passage cited in the
`Petition—that a “glitch” indicates a motion. Pet. 9 (citing EX1001, 6:36−40). In
`order to advance its obviousness theory based on distinguishable art, Petitioner
`seeks through its construction to unreasonably broaden “glitch” to encompass any
`type of datum, including impossible values which do not qualify as motion data
`because they are outside the operational range of the sensor.
`Petitioner has not and cannot prove obviousness through application of an
`erroneous construction. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-
`00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub
`nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016)
`(finding Petitioner’s claim construction unreasonable in light of the specification,
`
`13
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`IPR2018-01664
`U.S. Patent 8,872,646
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`and therefore, denying Petition as tainted by reliance on an incorrect claim
`construction).
`“a change in dominant axis”
`2.
`No party offers a construction for “a change in dominant axis,” as recited in
`claims 1, 13, and 20. The Petition does, however, argue that the scope of this term,
`as recited in all independent claims, must include what is recited only in dependent
`claim 7: “wherein the change in the dominant axis comprises a change in
`acceleration along the dominant axis.” The Board need not determine whether the
`recitation in claim 7 (which depends from claim 1) dictates the scope of the other
`independent claims 13 and 20, in order to resolve the dispute between the parties.
`“logic to” limitations
`3.
`In IPR2018-00289, The Board observed in its Institution Decision that
`
`Here, neither party asserts § 112, ¶ 6 should apply or offers any
`evidence to overcome the presumption against doing so. See PO
`Prelim. Resp. 6–13 (asserting that the “logic to” claim terms are
`not governed by 35 U.S.C. § 112(6)); Pet. 8–16 (offering
`alternative claim constructions under § 112, ¶ 6, but only “to the
`extent Patent Owner overcomes the presumption against
`construction under 35 U.S.C. 112, sixth paragraph”). Thus, we
`decline to adopt a construction under § 112, ¶ 6 at this stage of
`the proceeding.
`IPR2018-00289, Paper 7 at 9. Patent Owner submits that, for purposes of this
`proceeding, the “logic to” limitations are straightforward and require no
`construction beyond the claim language itself.
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`14
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`C. No obviousness for “determine whether the motion data includes
`one or more glitches” and “remove the one or more glitches from
`the motion data” (claim 20)
`The Petition should be denied in its entirety is failing to establish obviousness
`for “determine/verifying whether the motion data includes one or more glitches” and
`“remov[ing] the one or more glitches from the motion data,” as recited in
`independent claim 20 (and hence all challenged claims). The Petition relies
`exclusively on McMahan for all limitations reciting the “glitch” term. Pet. 31−32.
`The cited portions of McMahan are distinguishable from the claim language for each
`one of the several fully-dispositive reasons that follow.
`
`1.
`
`Petitioner fails to prove that McMahan’s “error” maps onto
`the claimed “one or more glitches”
`the
`to
`in McMahan
`First, Petitioner
`incorrectly maps
`the “error”
`distinguishable “glitch” disclosed and claimed in the ’646 patent. In a passage cited
`in the Petition, McMahan defines its “error” as an impossible value that is not
`indicative of motion because it is outside what the sensor is designed to monitor:
`“[w]hen the output of sensor 102 is not within the expected range of its normal
`operation, it is presumed that the output is an error. This means that the output of the
`sensor is not an accurate reflection of the stimulus that the sensor is designed to
`monitor.” Pet. 31 (citing EX1005, 4:26−30) (emphasis added).
`The “error” in McMahan bears no resemblance to the “glitch” disclosed and
`claimed in the ’646 patent. As detailed above in addressing claim construction
`(§III.B.1), the ’646 patent consistently and repeatedly uses the word “glitch” to refer
`to motion data within the operational range of the motion sensor yet deemed to not
`
`15
`
`
`
`IPR2018-01664
`U.S. Patent 8,872,646
`
`fit the signature of human motion indicative of someone preparing to interface with
`a device. See, e.g., EX1001 at Abstract; 1:59−63; 2:35−51; 4:61−5:2. While a
`“glitch” is within the operational range of the sensor, it does not warrant waking up
`the device from an idle state to an active state. Id.; §V.B.1, supra. By way of contrast,
`it is undisputed that McMahan defines its “error” as an impossible value that is not
`indicative of motion because it is outside what the sensor is designed to monitor.
`See, e.g., EX1005, 4:26−30.
`Another fatal deficiency of the mapping applied in the Petition is that
`McMahan does not state its “error” is part of “motion data from a motion sensor in
`a device, the motion sensor sensing motion along three axes,” as required by the
`claim language. See §III.B.1, supra. The Petition relies solely on Pasolini for the
`requirement that the motion data is received as a result of a “motion sensor sensing
`motion along three axes.” Pet. 30. Petitioner concedes Pasolini does not disclose or
`suggest the “glitch” term and relies exclusively on McMahan as allegedly curing that
`deficiency. Pet. 31−32. Petitioner has the burden of proof, yet the Petition provides
`no argument or evidence to show that McMahan’s “error” satisfies the definitive
`claim language applicable to the recited “motion data” and hence also applicable to
`the “glitch” term. See §V.B.1, supra.
`Further, the testimony of Petitioner’s declarant in its earlier filed IPR2018-
`01383 is unavailing to Petitioner.14 A review of the cross-examination transcript of
`
`
`
`14 In the instant follow-on Petition, Petitioner provides a different declarant’s
`
`
`16
`
`
`
`IPR2018-01664
`U.S. Patent 8,872,646
`
`Petitioner’s declarant from its earlier-filed petition, Dr. Paradiso, reveals that he
`imbued the “glitch” term with a preconceived understanding that is extraneous to
`and inconsistent with the intrinsic evidence. According to Dr. Paradiso, the term
`“glitch” as used in the’646 patent should be conflated, instead, with the
`distinguishable concept of “distortion” (a word that appears nowhere in the
`specification). This erroneous interpretation is revealed, for example, in the
`following cross-examination testimony:
`
`If you look, in general, using accelerometers, any kind of
`distortion of the data is going to affect the accuracy. … When
`you use a device, if there’s distortion in the device, you have
`difficulty with the accuracy. And a POSITA would be aware of
`glitches because we saw them, you know, we encountered them.
`The early accelerometers were even worse. And we would
`always put in a glitch detector because these glitches would
`affect the accuracy adversely.
`Exhibit 2002, Certified Transcript of Josh A. Paradiso, PH.D. (“EX2002”) at
`19:25−20:21. Dr. Paradiso’s conflation of the “glitch” term and the distinguishable
`concept of distortion is inconsistent with the intrinsic evidence detailed above (see
`§III.B.1) and undermines both his credibility and his conclusion of obviousness.
` Petitioner’s incorrect and unproven mapping of McMahan’s “error” onto the
`claimed “one or more glitches” provides a fully-dispositive and independent basis
`to deny the Petition in its entirety.
`
`
`
`testimony (EX1010), but Dr. Essa in this follow-on petition merely adopts, without
`analysis, the exact same construction of Dr. Paradiso from Petitioner’s earlier-filed
`petition in IPR2018-01383. See EX1010, ¶33.
`
`17
`
`
`
`2.
`
`IPR2018-01664
`U.S. Patent 8,872,646
`Petitioner fails to prove that McMahan’s “modify” teaching
`maps onto the claimed “remove the one or more glitches from
`the motion data”
`Second, the Petition fails to prove its mapping of certain portions of
`McMahan addressing modifying an “error” onto “remov[ing] the one or more
`glitches from the motion data,” as recited in each challenged claim. Petitioner’s
`theory fails at the outset because, as described above (in §V.C.1), the “error”
`described in McMahan is an impossible value that is never included as part of the
`motion data. Thus, the “error” described in McMahan (1) is not a “glitch” as claimed
`(see §V.C.1) and (2) cannot be removed from “the motion data” if it was never part
`of “the motion data” in the first place.
`The “remov[ing]” claim limitations must be understood in light of their
`recited context. As detailed above (in §§ V.B.1 and V.C.1), the “remove” limitation
`(of claim 20) derives antecedent basis for the term “the motion data” from a
`respective limitation in which that term is introduced. It follows that the “remove”
`limitation refers to a sample of “motion data” that must already exist. That the first
`recited instance of “motion data” refers to more than one data point is made evident
`by the recitation of “remove one or more glitches from the motion data.” Thus, the
`claim language unambiguously requires that (1) the “motion data” must exist as a
`collective whole prior to the “remov[ing],” (2) the “one or more glitches” (if any)
`are each included as part of that “motion data,” and (3) certain “motion data” m
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