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 2017 LLC
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`Patent Owner
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`IPR2018-01757
`PATENT 8,712,723
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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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 2017 LLC
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`Patent Owner
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`IPR2018-01757
`PATENT 8,712,723
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2018-01757
`U.S. Patent 8,712,723
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`Table of Contents
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`
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`I.
`II.
`III.
`IV.
`V.
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`INTRODUCTION .................................................................................... 1
`THE ’723 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 3
`A.
`Claim Construction ......................................................................... 4
`1.
`“dominant axis” .................................................................... 5
`2.
`“cadence window” ................................................................ 8
`3.
`“logic” terms ......................................................................... 8
`The Pasolini Reference Was Already Considered by the
`USPTO ............................................................................................ 9
`The Applied References Fail to Disclose a “Cadence
`Window” ....................................................................................... 10
`Petitioner has not and cannot cure Fabio’s deficiencies
`by offering a new, undefended, and inconsistent
`definition for “cadence window” .................................................. 13
`The Applied References Fail to Disclose Detected
`Motions “Within a Cadence Windows” ........................................ 15
`The Applied References Fail to Disclose an Update to
`the Cadence Window as “Actual Cadence” or
`“Cadence” Changes ...................................................................... 15
`The Applied References Fail to “Assigning a Dominant
`axis with Respect to Gravity Based on an Orientation of
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`ii
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`
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`H.
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`I.
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`the Inertial Sensor” ....................................................................... 16
`The Applied References Fail to Disclose “Detecting a
`Change in the Orientation of the Inertial Sensor and
`Updating the Dominant Axis Based on the Change” ................... 18
`The Petition fails to Prove Obviousness of Any
`Dependent Claim .......................................................................... 20
`The Petition Redundantly Challenges Claims 4 and 19 ............... 21
`J.
`THE PETITION SHOULD BE DENIED AS REDUNDANT
`WITH PRIOR INTER PARTES REVIEW PETITIONS ........................ 24
`A.
`The Board Has Held Denial is Appropriate Under These
`Facts .............................................................................................. 24
`The Board’s Precedential Factors Support Denial ....................... 25
`B.
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 26
`CONCLUSION ....................................................................................... 27
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`IPR2018-01757
`U.S. Patent 8,712,723
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`II.
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`VI.
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`VII.
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`
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`List of Exhibits
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`Exhibit No.
`2001
`
`Description
`Declaration of Dr. William C. Easttom
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`iii
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`IPR2018-01757
`U.S. Patent 8,712,723
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2018-01757 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 8,712,723 (“the ’723 patent” or “EX1001”) filed by
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`Samsung Electronics America, Inc. (“Petitioner”). The instant Petition is
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`procedurally and substantively defective for at least the reasons set forth herein.
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`II. THE ’723 PATENT
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`The ’723 patent is titled “Human activity monitoring device.” The ʼ723 patent
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`issued April 29, 2014, from U.S. Patent Application No. 13/018,321 filed January
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`31, 2011.
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`The inventors of the ’723 patent observed that, at the time, step counting
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`devices that utilize an inertial sensor to measure motion to detect steps generally
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`required the user to first position the device in a limited set of orientations. In some
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`devices, the required orientations are dictated to the user by the device. In other
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`devices, the beginning orientation is not critical, so long as this orientation can be
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`maintained. EX1001, 1:29-34. Further, the inventors observed that devices at the
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`time were often confused by motion noise experienced by the device throughout a
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`user's daily routine. The noise would cause false steps to be measured and actual
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`steps to be missed in conventional step counting devices. Conventional step counting
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`1
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`IPR2018-01757
`U.S. Patent 8,712,723
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`devices also failed to accurately measure steps for individuals who walk at a slow
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`pace. Id., 1:35-40. Accordingly, the inventors introduced determining a rhythmic
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`cadence and a correspondence cadence window concept that could anticipate when
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`an expected periodic user activity is expected to occur. Id., 3:46-4:4.
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`According to the invention of the ’723 Patent, a device to monitor human
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`activity using an inertial sensor assigns a dominant axis after determining the
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`orientation of an inertial sensor. The orientation of the inertial sensor is continuously
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`determined, and the dominant axis is updated as the orientation of the inertial sensor
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`changes. Id., 2:14-19. Periodic user activity in a cadence window is counted and the
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`cadence is updated. Id., 3:46-4:4.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 8,712,723 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
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`Uniloc USA, Inc. et al. v.
`Apple Inc.
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`Uniloc USA, Inc. et al v. LG
`Electronics USA, Inc. et al
`Uniloc USA, Inc. et al v. HTC
`America, Inc.
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`2-17-cv-00522
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`TXED
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`June 30, 2017
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`2-17-cv-00650
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`TXED
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`Sept. 15,
`2017
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`4-17-cv-00832
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`TXND Oct. 13, 2017
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`2-17-cv-01629 WAWD Nov. 1, 2017
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`2
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`
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`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`Apple Inc. v. Uniloc 2017 LLC
`et al
`Uniloc USA, Inc. et al v. Apple
`Inc.
`Apple Inc. v. Uniloc
`Luxembourg SA et al
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`LG Electronics, Inc. et al v.
`Uniloc 2017 LLC et al
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`IPR2018-01757
`U.S. Patent 8,712,723
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`TXED Nov. 9, 2017
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`2-17-cv-00737
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`IPR2018-00389
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`PTAB Dec. 22, 2017
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`IPR2018-01027
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`PTAB May 4, 2018
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`4-18-cv-02918
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`CAND May 17, 2018
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`IPR2018-01458
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`PTAB
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`July 27, 2018
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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` The Petition alleges that a person of ordinary skill in the art (“POSITA”)
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`would include someone who had, at the priority date of the ‘723 Patent (i) a
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`Bachelor’s degree in Computer Engineering, Electrical Engineering, or equivalent
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`training, and (ii) approximately two years of experience working in hardware and/or
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`software design related to human activity monitoring and sensing systems. Pet. 6.
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`Given that Petitioner fails to meet its burden of proof when purportedly applying its
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`own definition of a person of ordinary skill in the art, Patent Owner does not offer a
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`competing definition for purposes of this proceeding.
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`3
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`IPR2018-01757
`U.S. Patent 8,712,723
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition fails to meet this burden.
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`The Petition raises the following challenges:
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`Ground
`1
`2
`3
`4
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`Claims
`1, 2, 10-12, and 14-17
`3, 4, 13, 18, and 19
`5-7
`4 and 19
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`Reference(s)
`Tamura1, and Fabio2
`Tamara, Fabio, and Pasolini3
`Fabio
`Tamara, Pasolini, Fabio, and Richardson4
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`A. Claim Construction
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`As explained below, Petitioner bases its patentability challenges on erroneous
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`constructions, which provides an independent and fully-dispositive basis to deny the
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`Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-
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`00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub
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`nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016)
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`(finding Petitioner’s claim construction unreasonable in light of the specification,
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`and therefore, denying Petition as tainted by reliance on an incorrect claim
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`construction).
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` 1
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` EX1005, U.S. Patent Publication No. 2006/0010699.
`2 EX1006, U.S. Patent No. 7,698,097.
`3 EX1008, U.S. Patent No. 7,463,997.
`4 EX1009, U.S. Patent No. 5,976,083.
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`4
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`1.
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`“dominant axis”
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`Petitioner’s proposed construction violates the well-established rule against
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`IPR2018-01757
`U.S. Patent 8,712,723
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`reading limitations from the specification into the claim language. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (citation omitted). Importing
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`teachings from the specification, Petitioner seeks to limit the claim term “dominant
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`axis” to mean “the axis most influenced by gravity”. Pet. 8. However, the teachings
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`of the specification cited by Petitioner clearly state that they are only example
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`embodiments and are not meant to be limiting. See e.g., Pet. 8 quoting EX1001,
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`6:15-29 (“[i]n one embodiment…”) (emphasis added). The specification
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`specifically anticipates that multiple different types of activities may avail from the
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`disclosure, some of which will not use gravity as the dominant axis. FIGURE 2 is
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`but one example of selecting one of three axis measurements that will be the
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`“dominant axis” for determining a periodic movement and corresponding cadence.
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`Each axis has the effect of gravity; however, one is dominant due to the particular
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`activity encountered.
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`The ’723 Patent specifically provides for different ways to determine the
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`“dominant axis” in other embodiments. For example, in one embodiment, the
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`“dominant axis” is determined by orientation of the device. See EX1001, 6:15-29.
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`And here, while the orientation “may include identifying a gravitational
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`influence…” (EX1001, 6:21-23) (emphasis added), by definition, that means the
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`5
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`“dominant axis” is not limited to just gravitational influence.
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`IPR2018-01757
`U.S. Patent 8,712,723
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`As a further example, in the same section, the specification also states that
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`“[t]herefore, a new dominant axis may be assigned when the orientation of the
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`electronic device 100 and/or the inertial sensor(s) attached to or embedded in the
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`electronic device 100 changes.” Id., 6:26-29 (emphasis added). Thus, the
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`specification recites yet another example of a different way to determine the
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`“dominant axis”. Another non-limiting example from the specification states: “[i]n
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`one embodiment, the dominant axis corresponds to a virtual axis that is a
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`component of a virtual coordinate system.” Id., 6:35-37 (emphasis added).
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`Petitioner’s proposed construction would impermissibly exclude preferred
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`embodiments, and should be rejected. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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`1576, 1584–85, (Fed.Cir.1996) (a construction that reads out the preferred
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`embodiment is rarely, if ever, correct and would require highly persuasive
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`evidentiary support).
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`The Institution Decision in IPR2018-00389 further supports rejecting
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`Petitioner’s proposed construction. While the Institution Decision in IPR2018-
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`00389 states that the specification purportedly “supports Petitioner’s proposal”
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`(IPR2018-00389, Paper 7 at 9), in fact the example cited by the Institution Decision
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`in
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`IPR2018-00389 supports rejecting Petitioner’s proposed construction.
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`Specifically, the Institution Decision in IPR2018-00389 cites to the specification for
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`6
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`IPR2018-01757
`U.S. Patent 8,712,723
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`stating: “[i]n alternative embodiments, the dominant axis does not correspond to
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`one of the actual axes of the inertial sensor(s) in a current orientation, but rather to
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`an axis that is defined as approximately aligned to gravity”. IPR2018-00389, Paper
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`7 at 9-10 citing EX1001, 6:32-35 (emphasis added). The above recitation merely
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`confirms Petitioner’s proposed construction is one of numerous alternative
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`embodiments, and therefore it confirms that Petitioner’s proposed construction
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`would impermissibly exclude preferred embodiments, and should be rejected.
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`Vitronics, 90 F.3d at 1584–85. The fact that the specification supports one of many
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`alternative embodiments is both unsurprising and insignificant.
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`Further, the Institution Decision in IPR2018-00389 points to the claim
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`language as allegedly “expressly requires the assignment of the dominant axis based
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`on gravity.” IPR2018-00389, Paper 7 at 10. Here, however, the Board is mistaken.
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`The claim language merely requires that the dominant axis be assigned “with respect
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`to gravity”, for example, Claim 1 in relevant part recites: “assigning a dominant axis
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`with respect to gravity based on an orientation of the inertial sensor”. The claim
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`language does not “expressly require [] the assignment of the dominant axis based
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`on gravity” as the Institution Decision states, instead it merely requires assigning a
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`dominant axis and providing gravity as a point of reference.
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`According to the claim language, the dominant axis may be assigned with
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`respect to gravity in the sense that the dominant axis is orthogonal to gravity, or
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`7
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`IPR2018-01757
`U.S. Patent 8,712,723
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`opposing gravity, or in any configuration with respect to gravity. The claim
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`language certainly doesn’t require assigning the dominant axis to be aligned with
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`gravity, or be the axis “most influenced by gravity” as Petitioner proposes.
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`Petitioner’s proposed construction would
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`impermissibly exclude preferred
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`embodiments, and should be rejected. Vitronics, 90 F.3d at 1584–85.
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`Petitioner has not and cannot establish prima facie obviousness through
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`application of an incorrect construction. See Mentor Graphics, IPR2014-00287,
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`2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom.
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`Synopsys, 669 Fed. Appx. 569. In any event, Petitioner fails to present a case of
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`prima facie obviousness even under its own construction.
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`2.
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` “cadence window”
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`The Institution Decision in IPR2018-00389 indicates that this term does not
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`need construction. See IPR2018-00389, Paper 7 at 10. However, as discussed below
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`in the context of the claims, both “cadence” and “cadence window” as used in the
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`claims have particular meaning. That meaning is ignored by the Petitioner.
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`3.
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`“logic” terms
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`The Institution Decision in IPR2018-00389 determined that “the presumption
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`against application of § 112 ¶ 6 has not been overcome, and that no construction is
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`necessary”. IPR2018-00389, Paper 7 at 8.
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`8
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`B.
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`The Pasolini Reference Was Already Considered by the USPTO
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`In its petition, Petitioner was silent in regard to whether U.S. Patent No.
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`IPR2018-01757
`U.S. Patent 8,712,723
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`7,463,997 to Fabio Pasolini et al. (“Pasolini”) (EX1008) was already considered by
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`the Patent Office. An inspection of the Prosecution History5 reveals that it was,
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`indeed, already considered. In particular, one of the applied references in the
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`prosecution history of the ‘723 Patent was U.S. Patent Application No.
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`2007/0143068 (Pasolini), which is the printed publication version of the now applied
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`Pasolini reference (Ex. 1008). EX1008 at 1. Stated more succinctly, the exact same
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`disclosure was already considered by the Patent Office in the prosecution of the ‘723
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`Patent.
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` 5
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` See Public File Wrapper of ’723 patent, Response dated Jan. 29, 2013 (at p. 6 of
`9) to Office Action dated Sept. 26, 2012 (also filed as Exhibit 1002 in related-
`matter IPR2018-00389, at pp. 142 of 454).
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`9
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`The following was one the of final substantive arguments made before the
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`IPR2018-01757
`U.S. Patent 8,712,723
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`‘723 Patent was allowed:
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`Public File Wrapper of ’723 patent, Response dated Jan. 29, 2013 (at p. 6 of 9) to
`Office Action dated Sept. 26, 2012 (also filed as Exhibit 1002 in related-matter
`IPR2018-00389, at pp. 142 of 454) (Emphasis Added).
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`C. The Applied References Fail to Disclose a “Cadence Window”
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`Each of the challenged claims requires a “cadence window.” The Petition
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`relies exclusively on Fabio’s validation interval (sometimes abbreviated as “TV”) as
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`allegedly mapping onto the claimed “cadence window” limitations. See Pet. 24-26.
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`As recognized by the Examiner in the prosecution history of the ‘723 Patent,
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`Pasolini (EX1008) fails to disclose such a cadence window. See Public File Wrapper
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`of ’723 patent, Notice of Allowability, dated April 22, 2013 at pp. 5-6 of 7 (also filed
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`as Exhibit 1002 in related-matter IPR2018-00389, at pp. 35-36) (indicating in notice
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`of allowance that prior art fails to disclose the now-challenged claims). Likewise,
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`10
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`U.S. Patent 8,712,723
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`the other Pasolini reference, Fabio (EX1006)6 also fails to disclose anything
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`resembling such a cadence window.
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`As explained in the ‘723 Specification, a “cadence window” corresponds to
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`the time allowable for a particular motion to occur. See e.g., EX1001 at 3:9-17, 56-
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`59; 3:64-6:6; 11:13-28; 12:45-50. To determine the “cadence” itself, motion criteria
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`is examined to determine whether a motion cycle corresponds to a particular motion.
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`See e.g., Id. at 3:18-32, 38-54; 6:65-7:14. The motion cycle itself is not limited to
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`walking, but also can be any user activity having a periodic set of movements. Id.at
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`3:43-44. Non-limiting examples include rollerblading, biking, running, and walking.
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`Id. at 3:23-25. In one configuration, the cadence window is described as a rolling
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`average of previous detected cycles. Id at 3:66-4:10. The independent claims must
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`encompass such a “cadence window” being based on “rolling averages” because
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`dependent claims (e.g., Claim 4 and 19) narrow the updating of the “cadence
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`window” to being based on rolling averages.
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`The Petition points to Fabio (EX1006)’s “validation interval TV” as allegedly
`corresponding to the claimed “cadence window.” See e.g., Petition at 24-25. Several
`independently-fatal deficiencies arise from Petitioner’s exclusive reliance on
`
`
` 6
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` The last name of the inventor is actually Pasolini; however, to maintain consistency
`with petitioner’s nomenclature, Fabio (the first name) is used. Both EX1008 and
`EX1006 share the same inventors and have the same filing dates.
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`11
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`U.S. Patent 8,712,723
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`Fabio’s TV, particularly under the construction for “cadence window” relied upon
`in the Petition (i.e., “a window of time since a last step was counted that is looked
`at to detect a new step”).
`Fabio describes its TV with reference to its Figure 6, which is copied and
`annotated below. See, e.g., EX1006, Fig. 6 and accompanying description including,
`for example, 4:28‒49.
`
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`last step
`
`current step detected
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`Fabio’s TV is retrospective at least in that it is used to validate only the
`immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current step
`detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
`validated if the instant of recognition of the current step TR(K) falls within a
`validation interval TV[.]” Id. Unless and until the last step is validated by the current
`step in the manner disclosed, the last step is not counted. Id. 5:10‒39. The current
`step (K), in turn, is dependent upon the next step (K+1) for validation and counting.
`Id. The final step detected will not be counted because it cannot be validated. Id.
`Accordingly, Fabio’s validation interval TV is not “a window of time since a
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`12
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`IPR2018-01757
`U.S. Patent 8,712,723
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`last step was counted” (as required by Petitioner’s construction) at least because
`Fabio defines its TV as necessarily starting before the last step is counted. Id.; see
`also EX2001 ¶¶ 64-70. Indeed, Fabio’s TV is used in determining whether to count
`the last step. Id. The Petition should therefore be denied because Fabio’s TV does
`not satisfy the construction for “cadence window” relied upon in the Petition. This
`deficiency is independently fatal to the challenge of independent claims 1, 5, 10 and
`14 and all challenged claims depending therefrom.
`
`D.
`
`Petitioner has not and cannot cure Fabio’s deficiencies by offering
`a new, undefended, and inconsistent definition for “cadence
`window”
`Evidently recognizing this deficiency, the Petition appears to abandon its own
`construction for “cadence window” by inconsistently arguing, instead, that Fabio’s
`“validation interval TV” is a cadence window because the validation interval TV is
`“defined with respect to the instant recognition of the immediately preceding step”.
`Pet. 325. cf. id. at 8. This inconsistent theory is itself independently fatal.
`Petitioner cannot have it both ways. The “cadence window” cannot be defined
`by alleged lexigraphy in the specification in terms of “since a last step was counted”
`and yet be applied, inconsistently, in terms of upon “recognition of the immediately
`preceding step.” As explained above (in §V.C, supra), Fabio’s retrospective
`validation process expressly distinguishes the moment when the last step is
`detected/recognized from when that step is later ultimately counted (if at all). See,
`e.g., EX1006, 5:10‒39. This explicit distinction in terms of timing cannot be glossed
`over by simply rewriting the alleged lexicography in the ’723 patent specification
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`13
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`U.S. Patent 8,712,723
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`that Petitioner identifies and relies upon for the “cadence window” term.
`Even if the Board were to apply Petitioner’s inconsistent and undefended
`rewrite of the alleged lexicography the Petition identifies, this too would fail to
`prove obviousness. Fabio further defines its TV as necessarily excluding at least the
`time interval (indicated by a red block-arrow annotation to Fig. 6 copied above)
`commencing since detection of the last step (K-1) but before commencement of TV.
`Although this interval is excluded by Fabio’s design, it nevertheless would satisfy a
`modified construction that redefines the timing aspect in terms of “since the last step
`[K-1] was recognized.” See, e.g., EX1006, Fig. 6 and accompanying description
`including, for example, 4:28‒49.
`Fabio also recognizes that in certain instances its system might detect a “false
`positive” step. Id. 1:39‒44. This might occur, for example, where the system detects
`an irregularity resulting, for example, from the user tripping or otherwise making a
`quick stutter step. See, e.g., id. at 1:47‒51; 5:56‒61; 6:9‒11; 7:16. If such a “false
`positive” detection occurs since detection of the last step (K-1) but before TV
`commences, then the last step would not be counted. This is true even if the last step
`was in fact a “true positive” detection that had occurred sometime within the TV
`used to detect that step. This retrospective aspect of Fabio’s system, which results
`in excluding certain “true positive” detections, bears no resemblance to any of the
`inconsistent constructions of “cadence window” offered by Petitioner, much less to
`the description of that term and its associated real-time counting offered in the
`specification and reflected in the claims.
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`Thus, even under the inconsistent and undefended construction “a window of
`time since a last step was [recognized] that is looked at to detect a new step,” there
`is no proof of obviousness by Fabio’s TV at least because certain “true positive”
`steps occurring within TV would not be counted.
`
`E.
`
`The Applied References Fail to Disclose Detected Motions “Within
`a Cadence Windows”
`
`Even if Fabio (EX1006)’s “validation interval TV” were assumed to be a
`
`cadence window (which it is not), Fabio (EX1006) still does not disclose the claims
`
`because of its backward-looking validation. Fabio (EX1006)’s TV validation
`
`process uses a time period of a current step to determine whether a prior step is
`
`counted. However, the claims require counting with respective to steps “within a
`
`cadence window.” None of the counting in Fabio (EX1006) is with respect to a step
`
`within the validation interval TV. Rather, the counted steps occur before the
`
`validation interval TV being examined.
`
`F.
`
`The Applied References Fail to Disclose an Update to the Cadence
`Window as “Actual Cadence” or “Cadence” Changes
`
` The challenged claims all recite an update to the cadence window as either
`
`an “actual cadence” or a “cadence” changes. The applied reference fail to disclose
`
`such an update. Fabio (EX1006)’s “validation interval TV” for a particular step
`
`considers only an immediately preceding step and time period and cannot account,
`
`for example, for a rolling average of previous detected cycles. One cannot
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`reasonably dispute that a singular measurement by itself could be considered a
`
`cadence change.
`
`To the extent Petitioner argues that “within” doesn’t actually mean “within,”
`
`Patent Owner directs the Board to the specification, for example, FIGURE 2 and its
`
`corresponding discussion in which counting of a step considers whether such a step
`
`is “within” its respective cadence window. There is no indication (and Petitioner
`
`has cited none) where a step is counted if another step falls within a different cadence
`
`window.
`
`G. The Applied References Fail to “Assigning a Dominant axis with
`Respect to Gravity Based on an Orientation of the Inertial
`Sensor”
`The Petitioner argues that the dominant axis must be vertical (direction of
`gravity) and hence, Tamura (EX1005)’s selection of the gravitational axis meets the
`claim features. However, the ‘723 Patent recognizes that multiple activities may
`occur and that the dominant axis may be other than vertical (gravity) – hence the
`reference to “dominant axis.” FIGURE 2 of the ‘723 Patent gives an example of
`three axis measurements where one acceleration activity is dominant over the others
`and can be used for periodic motion detections for cadence and cadence window
`determinations. All of these axis measurements have an acceleration with respect
`to gravity; one just happens to be dominant over the other two.
`Petitioner acknowledges, and tacitly admits that Tamura does not disclose
`“assigning a dominant axis with respect to gravity based on an orientation of the
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`inertial sensor”, because according to the disclosure and device of Tamura
`(EX1005), “[s]ince walking motion is such as to add an acceleration component
`mainly in the direction of gravity, detection results along an axis within the tilt angle
`sensor 24 which most approximates the axis of gravity are used.” EX1005, ¶ 25; see
`Pet. 18. Thus, the device of Tamura (EX1005) does not disclose “assigning a
`dominant axis” as required by the claims and furthermore, Tamura (EX1005) does
`not disclose assigning a dominant axis based on an orientation of the inertial sensor,
`as Petitioner tacitly admits. Pet. 18.
`This is further confirmed by Tamura itself in describing that its “stationary”
`and “dynamic” states are only concerned about compensating for the effect of the
`“kinetic acceleration component” in addition to gravity on its tilt angle sensor 24:
`
`
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`EX1005, ¶ 21 (highlighting added).
`In other words, the “dynamic state” of Tamura is not concerned with or
`responding to changes in the orientation of an inertial sensor, it is only concerned
`with the addition of an acceleration component to the gravitational acceleration
`component on its tilt angle sensor 24. The passage further confirms Tamura does
`not disclose “assigning a dominant axis with respect to gravity based on an
`orientation of the inertial sensor”, as required by the claim language.
`Additionally, Petitioner’s reliance on its declarant for the conclusory
`statement that Tamura does disclose this limitation should be given little to no
`weight because Petitioner’s declarant merely parrots the Petition’s conclusory
`statements and likewise fails to explain how the cited examples would have taught
`or suggested this claim limitation. Compare Pet. 18-19 with EX1002, ¶ 41-43.
`Petitioner cannot merely speculate through its declarant, outside the four corners of
`the reference, to carry its burden. See 37 C.F.R. § 42.65(a) (“Expert testimony that
`does not disclose the underlying facts or data on which the opinion is based is
`entitled to little or no weight.”); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286,
`1290 (Fed. Cir. 2006) (“legal determinations of obviousness, as with such
`determinations generally, should be based on evidence rather than on mere
`speculation or conjecture.”).
`
`H. The Applied References Fail to Disclose “Detecting a Change in
`the Orientation of the Inertial Sensor and Updating the Dominant
`Axis Based on the Change”
`The Petition relies on its argument in Claim 1 for similar limitations in Claims
`
`18
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`10 and 14. See Pet. 32-33; Pet. 38. Therefore, the Petition fails to establish prima
`facie obviousness of independent Claims 1, 10, and 14 for the same reasons.
`Petitioner relies exclusively on Tamura for this limitation. See Pet. 20. The
`Petition is deficient because Tamura (EX1005) does not disclose “detecting a
`change in the orientation of the inertial sensor”, as required by the claim language.
`The Petition relies on Tamura’s so-called “dynamic state” and cites to paragraph 25
`of Tamura. see Pet. 20. However, Tamura’s “dynamic state” is only concerned with
`compensating for the effect of the “kinetic acceleration component” in addition to
`gravity on its tilt angle sensor:
`
`
`EX1005, ¶ 21 (highlighting added).
`In other words, the “dynamic state” of Tamura is not concerned with or
`
`
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`responding to changes in the orientation of an inertial sensor, it is only concerned
`with the addition of an acceleration component to the gravitational acceleration
`component on its tilt angle sensor 24. The passage above further confirms Tamura
`does not disclose “detecting a change in the orientation of the inertial sensor and
`updating the dominant axis based on the change”, as required by the claim
`language.
`Additionally, Petitioner’s reliance on its declarant for the conclusory
`statement that Tamura does disclose this limitation should be given little to no
`weight because Petitioner’s declarant merely parrots the Petition’s conclusory
`statements and likewise fails to explain how the cited examples would have taught
`or suggested this claim limitation. Compare Pet. 20 with EX1002, ¶ 44. Petitioner
`cannot merely speculate through its declarant, outside the four corners of the
`reference, to carry its burden. See 37 C.F.R. § 42.65(a) (“Expert testimony that does
`not disclose the underlying facts or data on which the opinion is based is entitled to
`little or no weight.”); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed.
`Cir. 2006) (“legal determinations of obviousness, as with such determinations
`generally, should be based on evidence rather than on mere speculation or
`conjecture.”)
`
`The Petition fails to Prove Obviousness of Any Dependent Claim
`I.
`The deficiencies of the Petition articulated above concerning the challenged
`independent claims apply also taint the analysis of the challenged dependent claims.
`Accordingly, the Petition should be denied in its entirety. In addition, Patent Owner
`
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`has addressed above certain deficiencies in the Petition concerning claim language
`recited in dependent claims.
`
`The Petition Redundantly Challenges Claims 4 and 19
`J.
`The Petition redundantly ch
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