UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`APPLE INC.,
`Petitioner
`v.
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`_______________________
`Case No. IPR2018-01756
`U.S. Patent No. 7,653,508
`
`DECLARATION OF WILLIAM C. EASTTOM II (CHUCK EASTTOM)
`
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`
`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................................... 4
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`BACKGROUND AND QUALIFICATIONS .................................................................... 4
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`III.
`
`THE ‘508 PATENT .................................................................................................... 5
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`IV.
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`CLAIM CONSTRUCTION ........................................................................................... 7
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`V.
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`ONE OF ORDINARY SKILL IN THE ART ..................................................................... 8
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`VI.
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`GENERAL ISSUES ..................................................................................................... 8
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`A. Tamura .............................................................................................................. 8
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`B. Pasolini ............................................................................................................ 10
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`C. Motivation to combine ................................................................................... 11
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`D. Obviousness .................................................................................................... 13
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`E. Anticipation ..................................................................................................... 15
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`VII.
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`SPECIFIC OBVIOUSNESS CLAIM ELEMENTS ........................................................... 15
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`A. Claim 1 b. “continuously determining an orientation of the inertial sensor;” 15
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`B. Claim 1 c “assigning a dominant axis;” ........................................................... 24
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`C. Claim 1 d: “updating the dominant axis as the orientation of the inertial
`sensor changes; and”, ..................................................................................... 26
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`D. 1 d. “updating the dominant axis as the orientation of the inertial sensor
`changes; and”.................................................................................................. 29
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`E. Claim 1 e “counting periodic human motions by monitoring accelerations
`relative to the dominant axis.” ....................................................................... 30
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`F. Claim 2 “The method of claim 1, further comprising: using acceleration
`measurements along only the dominant axis to count steps.” ...................... 32
`
`G. Claim 3 “The method of claim 1, further comprising: maintaining a cadence
`window, wherein the cadence window is continuously updated as an actual
`cadence changes; and” ................................................................................... 33
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`
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`1
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`H. Claim 3 b “counting a periodic human motion when an acceleration
`measurement that meets motion criteria is within the cadence window.” .. 38
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`I. Claim 4 “The method of claim 3, wherein at least one of the motion criteria is
`a dynamic motion criterion, the dynamic motion criterion being continuously
`updated to reflect current conditions.” .......................................................... 40
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`J. Claim 5 “The method of claim 4, wherein the dynamic motion criteria
`includes at least a lower threshold, wherein the lower threshold is adjusted
`based on at least one of a rolling average of accelerations and the orientation
`of the inertial sensor.” .................................................................................... 41
`
`K. Claim 11 b “a dominant axis logic to continuously determine an orientation
`of a device, to assign a dominant axis, and to update the dominant axis as the
`orientation of the device changes; and .......................................................... 43
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`L. Claim 11 c. “a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis.” ................................................. 43
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`M. Claim 12 "The device of claim 11, wherein: [t]he counting logic uses
`acceleration measurements along only the dominant axis to count steps.” . 44
`
`122. Claim 13 “The device of claim 11, further comprising: a cadence logic to
`continuously update a dynamic cadence window; and the counting logic to
`count a periodic human motion when an acceleration measurement that
`meets motion criteria is taken within the cadence window. ......................... 44
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`N. Claim 14 “The device of claim 11, further comprising: a comparator, to
`compare measurements of acceleration to dynamic motion criteria, the
`dynamic motion criteria being continuously updated to reflect current
`conditions; and the counting logic to count a periodic human motion when
`the measurements of acceleration satisfy the dynamic motion criteria.” ..... 46
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`VIII.
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`SPECIFIC ANTICIPATION CLAIM ELEMENTS .......................................................... 47
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`A. Claim 6: “A method of monitoring human activity using an inertial sensor,
`comprising: running a device that includes the inertial sensor in a non-active
`mode, in which periodic human motions are buffered; switching the device
`from the non-active mode to an active mode, after identifying a number of
`periodic human motions within appropriate cadence windows; and during
`the active mode, counting each of the periodic human motions to enable the
`monitoring of human activity.” ....................................................................... 47
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`2
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`IX.
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`
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`B. Claim 7 “The method of claim 6, further comprising: switching the device
`from the active mode to the non-active mode when a number of expected
`periodic human motions are not identified in the appropriate cadence
`windows.” ....................................................................................................... 49
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`C. Claim 8 “The method of claim 6, further comprising: switching from a sleep
`mode to the non-active mode of operation when an acceleration is
`detected.” ....................................................................................................... 50
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`D. Claim 15 Claim 15 “A device including an inertial sensor, comprising: a
`counting logic, to identify and count periodic human motions; a mode logic,
`to switch the device from a non-active mode to an active mode after a
`number of periodic human motions are detected within appropriate cadence
`windows by the counting logic; and a buffer, to buffer periodic human
`motions when the device is in the non-active mode” .................................... 51
`
`E. Claim 16 “The device of claim 15, wherein: the mode logic to switch the
`device from the active mode to the non-active mode when a number of
`expected periodic human motions are not identified in the appropriate
`cadence windows.” ......................................................................................... 52
`
`F. Claim 19 “The device of claim 15, further comprising: a cadence logic, to set
`the appropriate cadence windows.” .............................................................. 52
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`G. Claim 20 “The device of claim 19, where the cadence logic adjusts the
`cadence windows based on a measured cadence associated with the periodic
`human motion.” .............................................................................................. 52
`
`CONCLUSIONS ....................................................................................................... 53
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`3
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by Uniloc to provide my expert opinions regarding
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`validity of U.S. Patent No. U.S. Patent No. 7,653,508 (“508 Patent”). The ‘508 patent was
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`granted January 26, 2010 based on from application 11/644,455 that was filed on
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`December 22, 2006.
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`2.
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`I am being compensated for my time at my standard consulting rate of
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`$300 per hour. I am also being reimbursed for expenses that I incur during the course of
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`this work. My compensation is not contingent upon the results of my study or the
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`substance of my opinions.
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`II.
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`BACKGROUND AND QUALIFICATIONS
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`3.
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`I have 25+ years of experience in the computer science industry including
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`extensive experience with computer security, computer programming, and computer
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`networking. I have authored 26 computer science books, including textbooks used at
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`universities around the world. I hold a Doctor of Science in Cyber Security, as well as two
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`masters (one in Applied Computer Science). I hold 44 different computer industry
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`certifications, including many in networking subjects. I am experienced with multiple
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`programming languages. I also have extensive experience in computer networking. I have
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`extensive experience with mobile devices, including all aspects of mobile devices
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`(hardware and software), mobile forensics, and programming for mobile devices. I am
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`a Distinguished Speaker for the Association of Computing Machinery (ACM), and a
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`reviewer for the IEEE Security and Privacy journal, as well as a reviewer for the four
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`4
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`separate scientific journals I am also a member of the IEEE Systems and Software
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`engineering standards committee. My CV is attached as Exhibit 1.
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`4.
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`I am being compensated at a rate of $300 per hour. My compensation is
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`not dependent in any way upon my opinions. My opinions are based solely on my
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`independent analysis.
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`III.
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`THE ‘508 PATENT
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`1.
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`The '508 patent is an invention for monitoring human activity, as the title
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`itself says. The '508 patent uses inertial sensors to determine the orientation and assigns
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`a dominant axis. That dominant axis is updated as the inertial sensors orientation
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`changes. As described in the patent itself, embodiments of this invention are designed to
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`monitor human activity using an inertial sensor. In one embodiment of the invention the
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`dominant axis is assigned after determining the orientation of an internal sensor.
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`2.
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`The '508 patent includes logic to measure acceleration data using some
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`sampling rate. That rate may be fixed or variable. One aspect of the invention is
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`continuously determining the orientation of the internal sensor, thus assigning a
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`dominant axis. Furthermore, the acceleration measurements can utilize the dominant
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`axis to count steps. Figure 8 from the ‘508 patent shows the process of the ‘508 patent.
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`3.
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`The invention of the '508 patent includes a cadence window. That cadence
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`windows is updated as the actual cadence changes. Periodic human motion is counted
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`when an acceleration measurement meets motion criteria that is within the cadence
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`window. With the '508 patent human activity is monitored using the internal sensor(s).
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`Figure 2 from the ‘508 patent shows the cadence window.
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`6
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`IV.
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`CLAIM CONSTRUCTION
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`4.
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`Fort the purposes of an IPR, claim terms are given their broadest
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`reasonable meaning. The petitioner has asserted “dominant axis” should be construed
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`as the “axis most influenced by gravity.”
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`5.
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`The petitioner has asserted “cadence window” should be construed as “a
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`window of time since a last step was counted that is looked at to detect a new step.”
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`6.
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`For the purposes of this proceeding I have applied those constructions in
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`my analysis.
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`7
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`V.
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`ONE OF ORDINARY SKILL IN THE ART
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`7.
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`Patent claims must be viewed from the perspective of one of ordinary skill
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`in the art. The petitioner has opined that one of ordinary skill in the art would be
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`“Bachelor’s degree in Computer Engineering, Electrical Engineering, or the equivalent and
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`at least two years of experience working in hardware and/or software design related to
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`human activity monitoring and sensing systems. More education can substitute for
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`practical experience and vice versa.”
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`8.
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`I have no disagreement with most of this definition of a POSA, and for the
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`purposes of this declaration will accept the petitioner’s definition of a POSA. And I qualify
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`as at least one of ordinary skill in the art.
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`VI.
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`GENERAL ISSUES
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`9.
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`In this section I address general issues that permeate the petition and Dr.
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`Essa’s declaration
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`A.
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`Tamura
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`10.
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`Tamura is described as a "Mobile terminal apparatus" and further one that
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`uses "an acceleration sensor as a tilt angle sensor and relies various applications based
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`on this detection result. A processing unit 10 counts the number of steps of a human
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`based on acceleration components of low frequency detected by the tilt angle sensor that
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`detects the acceleration components.”
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`11.
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`In fact, Tamura states "The present invention relates to mobile terminal
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`apparatuses such as a mobile telephone and it particularly relates to a mobile terminal
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`apparatus equipped with a function to determine azimuth". This is repeated throughout
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`8
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`Tamura with excerpts such as "Under these circumstances, it is preferable that a tilt angle
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`sensor be provided in a mobile terminal apparatus equipped with azimuth measuring
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`function".
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`12.
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`An azimuth is defined as “The direction of a celestial object from the
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`observer, expressed as the angular distance from the north or south point of the horizon
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`to the point at which a vertical circle passing through the object intersects the horizon.”1
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`Or similarly “an arc of the horizon measured between a fixed point (such as true north)
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`and the vertical circle passing through the center of an object usually in astronomy and
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`navigation clockwise from the north point through 360 degrees”2
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`13.
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`Claim 1 of Tamura states " processing unit which is connected to the
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`magnetic sensor and the tilt angle sensor, and which determines that azimuth b
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`performing coordinate transformation on the terrestrial magnetism components
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`detected by said magnetic sensor, based on a detection result of said tilt angle sensor."
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`14.
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`Tamura does determine the "user's ambulation trajectory based on the
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`azimuth and the number of steps.” Tamura also includes a camera for determining the
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`azimuth:
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`1 Oxford dictionary https://en.oxforddictionaries.com/definition/us/azimuth
`2 Merriam Webster https://www.merriam-webster.com/dictionary/azimuth
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`15.
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`Tamura is devoted to detecting the azimuth and displaying a view. Step
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`counting in Tamura is merely incidental to determining location. Put simply, Tamura is
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`
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`not a pedometer.
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`B.
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`Pasolini
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`16.
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`Pasolini is described as a "Pedometer Device and Step Detection Method
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`using an algorithm for self-adaptive computation of acceleration thresholds" and further
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`described as a "pedometer device for detecting and counting steps of a user on foot, an
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`accelerometer sensor detects a vertical acceleration generated during the step"
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`10
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`17.
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`The entire purpose of Pasolini is step detection. Pasolini states in the
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`summary of the invention "One embodiment of the present invention provides a
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`pedometer device and a method for detecting and counting steps which will enable the
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`aforesaid disadvantages and problems to be overcome."
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`C.
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`Motivation to combine
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`18.
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`Both in the petition and in Dr. Essa’s declaration, the petitioner asserts that
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`it would have been obvious to combine Tamura with some other prior art. However, the
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`combinations suggested are counter to the intention and purpose of the asserted prior
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`art references.
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`19.
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`In his declaration, Dr. Essa states “Therefore, to ensure that the step count
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`is accurate in Tamura, a person of ordinary skill would have combined the teachings of
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`Tamura and Pasolini such that processing unit 10 continuously determines the orientation
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`of tilt angle sensor 24.”
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`20.
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`As was already discussed, Tamura does not need more exacting step
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`counting. The steps are used to determine an azimuth. The level of accuracy already
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`present in Tamura of steps is more than sufficient. In fact, Tamura believed his invention
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`already had a very high accuracy.
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`
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`11
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`21.
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`Tamura believe he already had a “highly accurate function of a
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`
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`pedometer”. Furthermore, Tamura states:
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`22.
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`Dr. Essa asserts:
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`12
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`23.
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`This is incorrect. Tamura already had a highly accurate step counter. And
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`Dr. Essa’s assertions that combining Pasolini with Tamura would have improved Tamura
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`are unfounded. In fact the only reason to combine Pasolini with Tamura, is to attempt to
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`bring the two prior art references together to meet some claim limitation, and that is not
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`something a PHOSITA would be motivated to do.
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`D.
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`Obviousness
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`24.
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`Grounds 1 and 2 the petitioner cites are obviousness arguments.
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`13
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`25.
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`I understand that a patent claim is invalid if the differences between the
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`subject matter and the prior art are such that the subject matter as a whole would have
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`been obvious to a PHOSITA at the time of the alleged invention. I further understand that
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`an obviousness analysis involves a review of the scope and content of the asserted prior
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`art; the differences between the prior art and the claims at issue; the level of ordinary
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`skill in the pertinent art; and objective indicia of non-obviousness, such as long-felt need,
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`industry praise for the invention, and skepticism of others in the field.
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`26.
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`I have been informed that the following rationales, among others, may
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`support a conclusion of obviousness:
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`(a)
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`the combination of familiar elements according to known methods
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`to yield predictable results;
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`(b)
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`the simple substitution of one known element for another to
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`obtain predictable results;
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`(c)
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`the use of known techniques to improve similar methods or
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`apparatuses in the same way;
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`(d)
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`the application of a known technique to a known method or
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`apparatus ready for improvement to yield predictable results;
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`(e)
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`the choice of a particular solution from a finite number of
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`identified, predictable solutions with a reasonable expectation of success;
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`(f)
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`the use of known work in one field of endeavor in either the same
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`field or a different one based on design incentives or other market forces, if the variations
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`are predictable to one of ordinary skill in the art; and
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`14
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`(g)
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`the following of some teaching, suggestion, or motivation in the
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`prior art that would have led one of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings to arrive at the claimed invention.
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`27.
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`However, in every case in the petition, the petitioner is taking asserted
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`prior art that has very different purposes, neither prior art reference disclosing the claim
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`limitation, and asserting that somehow by combining them the claim limitation is met.
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`This is incorrect, and I disagree with the petitioner’s obviousness claims.
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`E.
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`Anticipation
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`28.
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`I understand that a claim is invalid as “anticipated” if each and every
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`element of the claim as construed by the Court is found, either expressly or inherently, in
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`a single device or method that predates the claimed invention or has been described in a
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`single publication or patent that predates the claimed invention.
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`29.
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`I also understand that if any claim element is not found expressly or
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`inherently in a reference, that refence does not anticipate that claim.
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`VII.
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`SPECIFIC OBVIOUSNESS CLAIM ELEMENTS
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`30.
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`In this section specific obviousness claims discussed in the IPR petition are
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`addressed.
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`Claim 1 b. “continuously determining an orientation of the inertial
`A.
`sensor;”
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`31.
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`The petitioner claims that Tamura discloses this limitation, specifically
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`stating:
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`15
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`32.
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`However, the only things that the petitioner or Dr. Essa point to are
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`excerpts that do say Tamura determines orientation, but nothing to even suggest it does
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`so continuously.
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`33.
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`In Dr. Essa's declaration paragraphs 39 to 45 he discusses this claim
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`limitation. However, it is only in paragraph 43 that Dr. Essa attempts to assert that Tamura
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`determines orientation continuously stating "Tamura also discloses “continuously”
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`determining an orientation of the tilt angle sensor 24. For instance, a person of ordinary
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`skill in the art would have understood that Tamura “continuously” determines the
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`orientation of the tilt angle sensor 24 because it needs to know this orientation in order
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`to calculate the user’s steps."
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`16
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`34.
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`It should first be noted that even Dr. Essa does not point to any part of
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`Tamura that actually discloses continuously. Instead he simply asserts that a PHOSITA
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`would have understood that Tamura
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`is
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`‘continuously’ determining orientation.
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`Furthermore, given the purpose of Tamura, there is no need to continuously determine
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`orientation.
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`35.
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`The petitioner and Dr. Essa claim “For instance, a POSITA would have
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`understood that Tamura “continuously” determines the orientation of the tilt angle
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`sensor 24 because it needs to know this orientation in order to calculate the user’s steps.
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`(Id.)”. This claim is contrary to what Tamura actually teaches.
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`36.
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`As one example consider claim 1 and claim 2 of Tamura
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`
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`37.
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`This claim illustrates how Tamura uses steps. The steps are used to
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`determine trajectory. Trajectory needs multiple steps over a period of time, thus
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`continuously determining orientation is superfluous to this calculation.
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`38.
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`Next, Dr. Essa is asserting that a PHOSITA would have understood Tamura’s
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`action to be continuously, and that is simply false. A PHOSITA would readily understand
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`that it is possible, and even desirable in some cases, to determine orientation only
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`17
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`

`
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`periodically, and not continuously. And neither the petitioner nor Dr. Essa point to
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`anything in Tamura that requires, teaches, nor even suggests continuously.
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`39.
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`It is important to keep in mind what Tamura was attempting to do. This is
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`shown in figure 2 from Tamura.
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`
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`40.
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`Tamura only needed orientation to calculate azimuth. This is not a
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`calculation that changes rapidly. Periodic samples of orientation would have been ideal
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`for Tamura. This is made clearer in the following excerpt from Tamura:
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`18
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`41.
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`Note in the preceding excerpt that the purpose of detecting the tile angle,
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`is to aid in rotating the map so that it is inline with the actual azimuth. A PHOSITA would
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`readily understand that this is an action that is best accomplished with periodic sampling,
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`not continuous determination.
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`42.
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`Since Dr. Essa highlights 10 in Tamura, the entire section describing that
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`function is instructional:
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`19
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`43.
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`The processing unit 10 corrects X-axis and Y-axis detection results. If
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`Tamura were to “continuously determining an orientation of the inertial sensor”, then no
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`correction would be needed. The results would be updated continuously. However, the
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`purpose of Tamura does not require continuous monitoring, and results can be corrected
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`later in the process.
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`44.
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`Nothing in Tamura teaches or even suggests continuously determining.
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`And the very nature of Tamura makes it clear that periodic determining, which is not
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`continuous, is appropriate for the purposes of Tamura.
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`45.
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`Dr. Essa then asserts “To the extent Patent Owner contends that Tamura
`
`does not disclose “continuously” determining the orientation of tilt angle sensor 24, it
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`20
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`
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`would have been obvious to configure processing unit 10 to perform orientation
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`detection “continuously” in view of Pasolini.”
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`46.
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`However, Dr. Essa nor the petitioner show that Pasolini discloses
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`continuously. The petitioner makes the claim “In particular, Pasolini discloses
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`continuously determining the orientation of the accelerometer 2 because it discloses
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`performing this determination “at each acquisition of a new acceleration sample.” This is
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`a peculiar claim for the petitioner to make since, in the sentences just prior to this the
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`petitioner cites Pasolini stating: ‘The processing unit in the pedometer device “acquires
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`at pre-set intervals samples of the acceleration signal A generated by the accelerometer
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`2, and executes appropriate processing operations for counting the number of steps.”’
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`47.
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`The petitioner’s own statements, and the petitioner’s own citation from
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`Pasolini clearly demonstrate that Pasolini does not perform continuously, but rather at
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`“pre-set intervals”. This is made even clearer in the following excerpt from Pasolini:
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`48.
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`This is again stated in claim 11 of Pasolini
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`21
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`49.
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`A PHOSITA would readily recognize that Pasolini does not disclose
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`“continuous determination of orientation”. In fact, Pasolini expressly states that samples
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`are acquired at pre-set intervals.
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`50.
`
`Clearly Pasolini does not disclose continuously, but rather at pre-set
`
`intervals. As was discussed in the preceding paragraphs, even if one were to ignore what
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`Pasolini states and to instead assert that Pasolini has “continuously determining an
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`orientation of the inertial sensor”, a PHOSITA would have no motivation to combine that
`
`with Tamura. Tamura does not need continuous determination of orientation.
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`51.
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`Pasolini also does not disclose a dominant axis. In fact, the petitioner, nor
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`Dr. Essa point to any part of Pasolini that they claim is disclosing a dominant axis. The
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`petitioners description of Pasolini (found in section VIII sub section E) has no mention of
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`a dominant axis The closest the petitioner comes is describing. In the ’508 patent, the
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`dominant axis is “the axis most aligned with gravity,” which “may change over time (e.g.
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`as the electronic device is rotated).” The petitioner ignores the “may change over time..”
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`as well as the various parts of the ‘508 that discuss the fact that this axis can change, and
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`simply point to any axis that appears to be aligned with gravity.
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`52.
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`Dr. Essa asserts that “The ’508 patent does not provide any explanation
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`regarding how frequently the orientation should be determined in order to meet the
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`22
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`“continuously” limitation”. I am not an attorney and do not make any legal conclusions,
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`however, it is my understanding that when a patent does not define a term it should be
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`given its plain and ordinary meaning. Therefore, consulting common dictionaries can help
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`elucidate what “continuously” means:
`
`53.
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`“of a function: having the property that the absolute value of the
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`numerical difference between the value at a given point and the value at any point in a
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`neighborhood of the given point can be made as close to zero as desired by choosing the
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`neighborhood small enough” 3 This definition is revealing as it applies specifically to
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`functions. The definition requires that any difference be as small as possible. Nothing in
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`Pasolini nor Tamura even suggest this.
`
`54.
`
`Oxford dictionary states “Forming an unbroken whole; without
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`interruption”4
`
`55.
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`Dictionary.com states "uninterrupted in time; without cessation: 2 being
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`in immediate connection or spatial relationship"5
`
`56.
`
`Nothing in Pasolini teaches or even suggests this. Pasolini is rather
`
`detailed, providing specific algorithms, figures, etc. But never mentions ‘continuously’ nor
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`any analog thereof. In fact, reading Pasolini, it is clear that it could not function in the
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`continuous manner of the ‘508 patent:
`
`
`3 https://www.merriam-webster.com/dictionary/continuous
`4 https://en.oxforddictionaries.com/definition/continuous
`5 https://www.dictionary.com/browse/continuous
`
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`23
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`57.
`
`Note that Pasolini requires different values being compared. That requires
`
`a delay between measurements, so such a comparison can be made.
`
`58.
`
`A PHOSITA would readily understand that neither Tamura nor Pasolini
`
`teach continuous determination, and in fact teach away from such continuous
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`determination. Therefore, not only would a PHOSITA not be motivated to combine
`
`Pasolini and Tamura, such a combination would not disclose this claim limitation.
`
`B.
`
`Claim 1 c “assigning a dominant axis;”
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`59.
`
`The petitioner states “The Tamura-Pasolini combination discloses or
`
`suggests this limitation in at least two ways.” This is wrong for several reasons. The most
`
`obvious being that a PHOSITA would not be motivated to combine Tamura and Pasolini.
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`This has been described throughout this declaration. The only reason to even posit such
`
`a combination is an attempt to meet a particular claim limitation, and that is not
`
`something a PHOSITA would be motivated to do.
`
`60.
`
`The petitioner then alleges that “First, Tamura discloses that the “tilt angle
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`sensor 24” has three axes: X, Y, and Z (Ex. 1005 at ¶[0021].) The “Z axis is placed in the
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`24
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`direction of gravity.” (Id.) The “Z axis” is therefore, assigned as the dominant axis. (Ex.
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`1002 at ¶49.) " It is helpful to view all of 21 in petitioners exhibit 1005:
`
`61.
`
`It is correct that this excerpt teaches that Tamura has an X, Y, and Z axis,
`
`that are placed orthogonally to each other. Tamura further states that the Z axis is placed
`
`in the direction of gravity. However, nothing in this excerpt (nor elsewhere in Tamura)
`
`teaches one axis being dominant. Even if one ignores what Tamura actually teaches, and
`
`
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`25
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`

`

`
`
`imagines it teaches a dominant axis, this excerpt teaches that the Z axis is fixed and won’t
`
`change.
`
`62.
`
`This is completely contrary to the ‘508 patent. The ‘508 patent states “In
`
`one embodiment, a dominant axis is assigned after determining an orientation of an
`
`inertial sensor. The orientation of the inertial sensor is continuously determined, and the
`
`dominant axis is updated as the orientation of the inertial sensor changes.” This is clear,
`
`and a PHOSITA would readily understand that the dominant axis is not fixed. It changes
`
`in response to the orientation of the sensor. One of the innovations of the ‘508 patent
`
`was the ability for any axis of the sensor to be dominant based on the specific conditions
`
`at the time. In fact, the ‘508 patent makes several mentions of a “a dominant axis logic”
`
`used to determine the dominant axis.
`
`63.
`
`Neither the petitioner, nor Dr. Essa even mention Pasolini having a
`
`dominant axis, even though they begin the discussion by claiming a “Tamura-Pasolini”
`
`combination. It is unclear if this they simply forgot to discuss Pasolini, or if this is a tacit
`
`admission that Pasolini does not have a dominant axis. In either case, a PHOSITA would
`
`readily understand that Tamura does not disclose a dominant axis as per the ‘508 patent.
`
`Furthermore, Pasolini also does not disclose a dominant axis, so no combination with
`
`Tamura would satisfy this claim limitation.
`
`Claim 1 d: “updating the dominant axis as the orientation of the inertial
`C.
`sensor changes; and”,
`
`64.
`
`The petitioner asserts that “The Tamura-Pasolini combination discloses or
`
`suggests this limitation. (Ex. 1002 at ¶51.) Tamura discloses that the processing unit 10
`
`dynamically selects one of the three axes of the tilt angle sensor 24 as the “dominant axis”
`
`
`
`26
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`

`

`
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`based on the current orientation of the tilt angle sensor 24 and then uses the acceleration
`
`components detected along that axis for calculating the steps taken by the user. (Ex. 1005
`
`at ¶[0025]; Ex. 1002 at ¶51.) “
`
`65.
`
`The first problem with this assertion is that a PHOSITA would have no
`
`motivation to combine Tamura and Pasolini, as has been discussed in this declaration.
`
`And as was discussed in the previous section, Tamura does not have a dominant axis as
`
`per the ‘508 patent. T
`
`66.
`
`The petitioner states that Tamura discloses “decision on which axis most
`
`approximates the axis of gravity”. This is correct, but this is not a dominant axis as per the
`
`‘508 patent.
`
`67.
`
`Again, it is helpful to cite full excerpts from Tamura, rather than sentence
`
`fragments:
`
`
`
`27
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`68.
`
`First the excerpt clearly teaches that the Z axis is placed in the direction of
`
`gravity. Nothing in the Tamura reference teaches a 'dominant axis'. But if one views
`
`Tamura in a light most favorable to the petitioner, then the Z axis is the dominant axis.
`
`The Z axis remains in its position; however, tilt can be detected by acceleration on the
`
`axes. Nothing in this, nor elsewhere in Tamura teaches the dyna