Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: March 11, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01757
`Patent 8,712,723 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122; 35 U.S.C. §§ 315(d), 325(d)
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 7
`
`
`
` Entered: March 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01757
`Patent 8,712,723 B1
`____________
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. §§ 42.108, 42.122; 35 U.S.C. §§ 315(d), 325(d)
`
`
`
`
`
`
`IPR2018-01757
`Patent 8,712,723 B1
`
`
`I.
`INTRODUCTION
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`requesting inter partes review of claims 1–7 and 10–19 of U.S. Patent No.
`8,712,723 B1 (Ex. 1001, “the ’723 patent”). Paper 1 (“Pet.”). Uniloc 2017
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record, for reasons discussed below, we do not institute inter partes review.
`
`A. Related Matters
`The parties indicate that the ’723 patent is involved in Uniloc USA,
`Inc. v. Samsung Electronics America, Inc., Case No. 2-17-cv-00650 (E.D.
`Tex.) and other proceedings. Pet. 1; Paper 3.
`The ’723 patent is the subject matter of an ongoing inter partes review
`filed by Apple Inc., IPR2018-00389 (instituted June 27, 2018), which
`concerns claims 13, 57, and 1018. See IPR2018-00389 (Paper 7).1
`Apple Inc. filed another petition for inter partes review concerning claims 4
`and 19 of the ’723 patent, but we denied that petition. See IPR2018-01027
`(Paper 8).
`
`B. The ’723 Patent
`The ’723 patent relates to monitoring and counting periodic human
`motions, such as steps. Ex. 1001, 1:1214. The ’723 patent states that
`
`
`1 LG Electronics, Inc., HTC Corporation, and HTC America, Inc., have been
`joined to IPR2018-00389 via grant of the motion for joinder in IPR2018-
`01458. Paper 13, IPR2018-00389.
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`inertial sensors (e.g., accelerometers) are used in step counting devices
`allowing an individual to track the number of daily steps. Id. at 1:1829.
`One problem recognized in the ’723 patent is the limitations of these step
`counting devices concerning the orientation of the device during use. Id. at
`1:2934. Further, motion noise often confuses these devices resulting in
`missed steps or counting false steps, with a particular problem identified of
`inaccurate step measurements for slow walkers. Id. at 1:3543.
`The ’723 patent provides for accurate counting of steps without regard
`for the orientation of the step counting device, even if that orientation
`changes during operation. Id. at 2:3338. In particular, the ’723 patent
`describes assigning a dominant axis after determining an orientation of the
`inertial sensor, where the orientation of the inertial sensor is continuously
`determined. Id. at 2:1519. In one embodiment, the ’723 patent method
`determines rolling averages of the accelerations of each axis monitored by
`the inertial sensor in the device. Id. at 6:1521. The largest absolute rolling
`average indicates the axis most influenced by gravity, which may change
`over time as the device’s orientation changes because of rotation. Id. at
`6:2025.
`With regard to the embodiment shown in Figure 8, reproduced below,
`the ’723 patent describes the method for measuring the acceleration along
`the assigned dominant axis to detect, and count, steps. See id. at 12:3035.
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`Figure 8 illustrates a diagram for a method of recognizing a step. Id.
`at 12:30–32. After measurements of acceleration data (step 805) and
`filtering those measurements (step 810), the method evaluates the orientation
`of the device and assigns a dominant axis (step 812). Id. at 12:36–49. A
`processing logic determines whether a measurement is within a cadence
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`window (step 815). Id. at 12:50–51. The cadence window is the allowable
`time window for steps to occur. Id. at 3:6566. In one embodiment, the
`cadence window is determined based on the actual stepping period or actual
`motion cycle, but default limits or other determiners may be used to set the
`cadence window. Id. at 4:727. After each step is counted, the minimum
`and/or maximum of the cadence window, or window length, may be
`adjusted based on actual cadence changes. Id. Therefore, the cadence
`window is dynamic such that it is continuously updated. Id. at 4:3133.
`If the measurement of acceleration along the dominant axis is within
`the cadence window, is greater than previous measurements, and is within
`the range of acceleration thresholds (steps 820, 825, 830), the motion is
`determined to be a step and is counted (step 835). Id. at 12:53–62, 13:37–
`14:6. Otherwise, the step is not counted (step 840) and the method continues
`to evaluate subsequent measurements. Id. at 12:51–53.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 5, 10, and 14 are independent.
`Each of claims 2–4, 6, 7, 1113, and 1519 depends directly or indirectly
`from one of the challenged independent claims.
`Claim 1 is illustrative:
`1. A method for monitoring human activity using an inertial
`sensor, comprising:
`assigning a dominant axis with respect to gravity based on an
`orientation of the inertial sensor;
`detecting a change in the orientation of the inertial sensor and
`updating the dominant axis based on the change; and
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`counting periodic human motions by monitoring accelerations
`relative to the dominant axis by counting the periodic human
`motions when accelerations showing a motion cycle that meets
`motion criteria is detected within a cadence window; and
`updating the cadence window as actual cadence changes.
`Ex. 1001, 15:13–24.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`The Petition identifies the following references in connection with
`Petitioner’s challenge of unpatentability (Pet. 4):
`
`a) Tamura: U.S. Patent Publication No. 2006/0010699 A1, filed in
`the record as Exhibit 1005;
`
`b) Fabio: U.S. Patent No. 7,698,097 B2, filed in the record as Exhibit
`1006;
`
`c) Pasolini: U.S. Patent No. 7,463,997 B2, filed in the record as
`Exhibit 1008; and
`
`d) Richardson: U.S. Patent No. 5,976,083, filed in the record as
`Exhibit 1009.
`
`Petitioner asserts the following grounds of unpatentability based on
`the aforementioned references (Pet. 4):
`
`Basis
`Challenged Claims
`1, 2, 10–12, and 14–17 § 103(a)
`3, 4, 13, 18, and 19
`§ 103(a)
`5–7
`§ 102(e)
`4 and 19
`§ 103(a)
`
`Reference(s)
`Tamura and Fabio
`Tamura, Fabio, and Pasolini
`Fabio
`Tamura, Fabio, Pasolini, and
`Richardson
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`Petitioner also relies on a Declaration of Dr. Irfan Essa, Ph.D., filed as
`Exhibit 1002 (“Essa Declaration”).
`
`II. DISCUSSION
`
`Summary of Asserted Prior Art
`A.
`1. Overview of Tamura (Exhibit 1005)
`Tamura is directed to “a mobile terminal apparatus equipped with a
`function to determine azimuth.” Ex. 1005 ¶ 1. Tamura describes using a
`three-axis magnetic sensor to determine the magnetic field strength to more
`efficiently remove the dynamic magnetic component. Id. ¶¶ 3–4. In
`particular, Tamura is concerned with detecting the azimuth accurately. Id.
`¶ 4. Tamura corrects the terrestrial magnetism vector component detected
`by the three-axis magnetic sensor with the inclination of the mobile terminal
`apparatus, measured by a tilt angle sensor. Id. The structure of Tamura’s
`mobile terminal apparatus is shown in Figure 1, reproduced below.
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`Figure 1 depicts a mobile terminal apparatus 1, such as a cellular
`phone, that includes a processing unit 10, a detecting unit 20, and a display
`unit 36. Id. ¶¶ 18–19. Detecting unit 20 has a magnetic sensor 22, a tilt
`angle sensor 24, a barometric sensor 26, and a temperature sensor 28. Id.
`¶ 19. The processing until 10 determines an accurate azimuth using data
`from the magnetic sensor 22 and the tilt sensor 24, data which is corrected
`for any temperature drift using the temperature sensor 28. Id. ¶ 23.
`The tilt sensor 24 is “an acceleration sensor for detecting acceleration
`components in three axis directions.” Id. ¶ 21. The X axis and Y axis of the
`tilt sensor 24 “are placed orthogonally to each other in a horizontal plane,
`and the Z axis is placed in the direction of gravity.” Id. “As the posture of
`the mobile terminal apparatus 1 inclines, the gravitational acceleration
`changes, and the pitch angle and roll angle are detected by detecting this
`gravitational acceleration.” Id. When the user of the mobile terminal
`apparatus is moving, “a kinetic acceleration component will be added to
`have an effect on the tilt angle sensor 24.” Id. “By the use of three axes, the
`gravitational acceleration and the kinetic acceleration can be separated from
`each other, thereby enabling an accurate detection of the posture.” Id.
`Tamura describes an embodiment wherein the “mobile terminal
`apparatus 1 is provided with the function of a pedometer.” Id. ¶ 24. “[T]ilt
`angle sensor 24 detects acceleration components in the three-axis directions
`in accordance with the movement of the mobile terminal apparatus 1.” Id.
`While a user is walking, “the tilt angle sensor 24 detects not only the
`acceleration components corresponding to the tilt angle of the mobile
`terminal apparatus 1 but also low-frequency acceleration components in
`response to the movement of the user.” Id.
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`“The processing unit 10 performs a frequency analysis on the
`detection results from the tilt angle sensor 24 and counts the number of
`user’s steps based on the acceleration [] components of a frequency within a
`predetermined range.” Id. ¶ 25. According to Tamura, because the user’s
`walking motion “add[s] 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” to count the number
`of steps. Id. To determine which axis most approximates the axis of
`gravity, Tamura states that in “a stationary state,” an axis showing the
`largest gravitational acceleration component is selected. Id. Tamura also
`states that in a “dynamic state,” the axis which most approximates the axis
`of gravity is calculated “based on changes in the resistance values of the
`respective axes and the calculated values of the pitch angle and the roll
`angle.” Id.
`
`2. Overview of Fabio (Exhibit 1006)
`Fabio is directed to controlling a pedometer based on the use of
`inertial sensors. Ex. 1006, 1:1011, Abstract, Title. Fabio describes that
`pedometer reliability depends in part on “recognizing and ignoring events
`not correlated to the gait, which, however, cause perturbations resembling
`those produced by a step.” Id. at 1:2227. Pedometers that use inertial
`sensors detect accelerations along a substantially vertical axis and recognize
`a step when the pedometer detects a positive acceleration peak followed by a
`negative acceleration peak, both of these peaks within certain thresholds. Id.
`at 1:3238. Random events, however, can interfere with step recognition,
`causing “false positives” (steps are recognized when they are not steps). Id.
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`at 1:3844. Rest periods also produce events that are detected by the
`pedometer, and “isolated” steps or brief sequences of steps are irrelevant to
`assessment of activity for which a pedometer is used. Id. at 1:4452.
`Fabio overcomes the above-described problems by detecting whether
`sequences of detected steps satisfy pre-determined conditions of regularity.
`Id. at 1:632:3. If the condition of regularity is satisfied, the valid step count
`is updated; if the condition of regularity is not satisfied, the number of valid
`steps is not updated. Id. In particular Fabio describes a method that
`involves two counting procedures, as shown in Figure 3, reproduced below.
`
`
`Figure 3 depicts a flowchart of a control method executed by a control
`unit of a pedometer. Ex. 1006, 2:1719, 3:1112. In particular, upon
`switching on the pedometer, an initialization step 100 sets to zero the
`counters for valid steps (NVT), valid control steps (NVC), and invalid steps
`(NINV). Id. at 3:1318. Then, during the first counting procedure
`(COUNT I, step 110), the acceleration signal output by the accelerometer of
`the pedometer is sampled and evaluated to recognize sequences of steps that
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`are “close to one another, which satisfy [the] pre-determined conditions of
`regularity.” Id. at 3:1927. In particular, for each step that is validated
`during this first counting procedure, the number of valid control steps is
`increased, until the number of valid control steps matches a pre-determined
`threshold. Id. at 5:4045 (describing that regularity is sufficient when NVC
`reaches a threshold NT2). The first counting procedure terminates after
`updating the valid steps counter, NVT, to equal the number of “regular” steps
`just detected. Id. at Fig. 4, step 265 (NVT=NVT+NT2).
`Fabio describes this first counting procedure as enabling the
`pedometer to wait for a sequence of events that satisfies regularity and to
`detect events that are irregular (or when a wait time between steps is too
`long) so the counter for valid control steps NVC is decreased or reset to zero
`accordingly. Id. at 5:4049. Fabio states that programming thresholds for
`the first counting procedure, such as NT2 described above, enables
`modification of the sensitivity of the pedometer. Id. at 5:626:11. The user
`can program lower values of the threshold number of steps when regularity
`of gait is not possible, such as when in an office, enabling the pedometer to
`validate and count shorter sequences of steps as “regular” steps. Id. On the
`other hand, by programming higher values for the thresholds for intense
`activity, such as running, short step sequences can be ignored. Id.
`When the first counting procedure passes control to the second
`counting procedure, the user is considered to be moving and the second
`counting procedure counts valid steps NVT. Id. at 3:4144. The second
`counting procedure also checks for continued regularity of the sequences of
`steps by counting the number of valid control steps NVC and the number of
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`invalid steps NINV. Id. at 6:4062. If the number of invalid steps NINV is
`lower than a threshold, the method assumes regularity of steps and continues
`counting validated steps. Id. at 7:713. Validation of steps in both counting
`procedures is described more particularly with respect to Figure 6,
`reproduced below.
`
`
`Figure 6 is a graph plotting the time of recognition TR of a sequence
`of steps (1, 2, . . . K-2, K-1, K). Id. at Fig. 6. Fabio validates a step when
`the duration of a current step K (ΔTK) is “substantially homogeneous with
`respect to the duration [] of an immediately preceding step K-1 [(ΔTK-1)].”
`Id. at 4:2835. In particular, “the last step recognized is validated if the
`instant of recognition of the current step TR(K) falls within a validation
`interval TV, defined with respect to the instant of recognition of the
`immediately preceding step TR(K-1),” according to a specific equation. Id.
`at 4:3542. Fabio describes the validation interval TV as having an
`“amplitude” equal to “3ΔTK-1/2,” but could have a different “amplitude.” Id.
`at 5053.
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`3. Overview of Pasolini (Exhibit 1008)
`Pasolini is also directed to a pedometer for detecting and counting
`steps. Ex. 1005, Abstract. Specifically, Pasolini describes using an
`accelerometer that detects an acceleration component along axis Z of the
`vertical acceleration generated during a step. Id. at 3:1619. Pasolini
`applies positive and negative thresholds S+ and S to the acceleration signal
`for identifying the positive phase and the negative phase of a step. Id. at
`3:3541. The values of these thresholds are modified at each acquisition of
`a new sample. Id. at 3:4254. In particular, Pasolini utilizes an algorithm
`for determining positive and negative envelope values E+ and E using the
`acceleration datum for each sampled acceleration signal, and adjusting the
`thresholds S+ and S as a function of the envelope values E+ and E. Id. at
`5:4254. In this manner, the pedometer adapts to variations in the detection
`conditions due, for example, to a different type of terrain, or to an increase in
`the speed of the gait. Id. at 3:5459.
`Pasolini also states that,
`the algorithm implemented by the processing unit 3
`[of the pedometer] envisages identifying the main
`vertical axis to be used for step detection as the axis
`of detection that has the highest mean acceleration
`value Accm (on account of gravity). For example, the
`main vertical axis can be identified at each acquisition
`of a new acceleration sample, block 30 of FIG. 4, so
`as to take into account variations in the orientation of
`the pedometer device 1, and consequently of the
`accelerometer 2 arranged inside it.
`
`Id. at 8:1624.
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`4. Overview of Richardson (Exhibit 1009)
`Richardson is directed to “a personal fitness monitoring device that
`may be worn by an individual while the individual is exercising.” Ex. 1009,
`1:6–8. Richardson’s device includes a pedometer, the components of which
`are shown in Figure 2, reproduced below.
`
`
`Figure 2 depicts pedometer 15, which uses accelerometer subsystem
`25 to take as input a user’s bodily movement data 7 and produces
`locomotion parameters signal 16. Id. at 4:20–23; 6:20–32. The pedometer
`15 monitors the accelerometer subsystem 025 at a suitable sampling
`frequency, in order to determine the occurrence of footfalls that mean a
`locomotor step has been taken. Id. at 27:60–65. During this monitoring
`process, two buffers, A and B, are maintained to hold background scans. Id.
`at 28:31–34. “While one buffer, A or B is being filled with data, the data in
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`the other, B or A, is being analyzed.” Id. at 28:34–36. The pedometer
`computes at each sample time a moving average of acceleration, which
`serves as a baseline for describing the acceleration waveform of a locomotor
`step. Id. at 28:36–39. The pedometer then finds peaks of positive
`acceleration that indicative of footfalls, and each interval between footfalls is
`taken to be a user’s locomotive step. Id. at 28:42–45.
`
`B. Multiple Petitions
`Patent owner argues that “[t]he Board should exercise its discretion
`under 35 U.S.C. § 325(d) and deny the Petition because it relies on the same
`art and substantially the same arguments that [are] already before the Board
`[in] three other pending IPR proceedings.” Prelim. Resp. 24 (identifying
`IPR2018- 00389, IPR2018-01027, and IPR2018-01458).
`Section 325(d) states that “[i]n determining whether to institute . . .
`the Director may take into account whether, and reject the petition . . .
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” In this proceeding, Patent Owner argues that
`the same or substantially the same prior art has been presented to the Office
`previously because Fabio, Pasolini, and Richardson have been asserted in
`multiple inter partes reviews. Prelim. Resp. 2425 (alluding to IPR2018-
`00389, IPR2018-01027, and IPR2018-01458). Specifically, Fabio and
`Pasolini have been asserted by different petitioners in IPR2018-00389 and
`IPR2018-01458, which we instituted and which also address the ’723 patent
`(“the previous IPRs”). Further, Fabio, Pasolini, and Richardson have been
`asserted by a different petitioner in IPR2018-01027, which addressed the
`’723 patent and which we did not institute.
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`Petitioner contends that the Board should not exercise discretion to
`not institute. Specifically, Petitioner argues that it is not a party to any of the
`previous IPRs and should be given an opportunity to challenge the
`’723 patent before the Board to ensure a “just, speedy, and inexpensive
`resolution” consistent with 37 C.F.R. § 42.1(b). Pet. 68–71. Petitioner also
`argues that the instant Petition does not seek to remedy any “deficiencies in
`Apple’s prior art that were identified by the Board” or by Patent Owner’s
`Preliminary Response filed in IPR2018-00389 (“the 389 IPR”). Id. at 69
`(noting that the Board rejected Patent Owner’s arguments). Petitioner
`further argues that instituting here would be no more a burden than
`instituting on any other petition. Id. at 70. And finally, Petitioner argues
`that the Petition here asserts Tamura, which was not presented in any other
`proceeding, and that here, for certain claims, the Petition asserts Fabio in an
`anticipation ground, rather than an obviousness ground presented previously.
`Id. We are not persuaded by Petitioner’s arguments.
`There is no question that Fabio, Pasolini, and Richardson have been
`previously presented to the Office in the previous IPRs challenging the
`’723 patent. In IPR2018-00389, which was filed by Apple Inc., the ongoing
`trial concerning the ’723 patent involves a single ground: obviousness of
`claims 13, 57, and 1018 over Fabio and Pasolini. Further in IPR2018-
`01027, Apple Inc. challenged dependent claims 4 and 19 for obviousness
`over Fabio, Pasolini, and Richardson. Thus, Fabio, Pasolini, and Richardson
`have been previously presented to the Board to challenge all the claims at
`issue here. The question for us to answer is whether, based on this fact, we
`should exercise our discretion and deny the Petition.
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`Applicability of § 325(d) is not limited to situations where the same
`petitioner has filed a follow-on petition. The statute allows for the exercise
`of discretion upon consideration only of whether the same or substantially
`the same prior art or arguments were presented previously to the Office.
`Further, the statutory authority to deny the petition based on the same
`previously presented prior art is not tied to the format of how that prior art is
`presented or whether every aspect of the asserted grounds is identical in both
`petitions. Therefore, we have statutory authority to deny this Petition
`because Fabio, Pasolini, and Richardson were previously presented to the
`Office in the previous IPRs, notwithstanding that Petitioner is not a party to
`the previous IPRs and that the asserted grounds here are not exactly the same
`as the previous IPRs.2
`We further note that under the current circumstances, where the
`patent-at-issue is involved in an ongoing trial,3 we also have discretionary
`authority, under 37 C.F.R. § 42.122, to issue “any appropriate order
`regarding the additional matter [i.e., this proceeding,] including providing
`for the stay, transfer, consolidation, or termination of any such matter.” See
`35 U.S.C. § 315(d). We recognize that in exercising our discretion we
`determine the proper course of conduct in a proceeding (37 C.F.R. § 42.5) in
`
`
`2 The Trial Practice Guide Update, issued August 2018, identifies certain
`non-exclusive factors to consider in evaluating whether to deny institution
`under § 325(d), and advises parties to analyze similar factors in the context
`of a trial petition involving art that is the same or substantially the same art
`as presented previously in an earlier-filed petition requesting inter partes
`review. See Trial Practice Guide Update, 1213 (accessed via
`https://go.usa.gov/xU7GP).
`3 Trial in IPR2018-00389 is pending as of the issuance of this Decision.
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`a manner consistent with securing the just, speedy, and inexpensive
`resolution of the proceeding (37 C.F.R. § 42.1(b)).
`Here, our exercise of discretion to deny institution under §§ 315(d)
`and 325(d) is warranted for several reasons. To start with, Petitioner’s
`arguments for each of the claims are substantially the same as previously
`presented in the 389 IPR. For independent claims 1, 10, and 14, Petitioner
`asserts a combination of Tamura and Pasolini, whereas in the 389 IPR, these
`claims have been challenged over a combination of Fabio and Pasolini. The
`assertion of Tamura, in Fabio’s stead, however, presents the same arguments
`previously presented. For example, Petitioner alleges that Tamura teaches
`assigning a “dominant axis” as recited in the independent claims because
`Tamura discloses detecting the axis “that most approximates the axis of
`gravity,” or the “Z axis.” Pet. 18 (citing Ex. 1005 ¶¶ 21, 25). In the 389
`IPR, Fabio is alleged to select the acceleration signal corresponding to the
`detection axis nearest to the vertical, or the Z axis. 389 IPR, Paper 2, 2829
`(asserting that Pasolini also teaches the limitation because it detects the main
`vertical axis taking into account the orientation of the pedometer). Thus, the
`detection of the axis nearest the vertical has already been presented as
`teaching the “dominant axis” notwithstanding that Tamura explains other
`features of how its magnetic and tilt sensors operate in order to make that
`detection.
`The same can be said for the limitation concerning “detecting a
`change in orientation” to update the “dominant axis.” Petitioner asserts that
`Tamura teaches this limitation because the tilt sensor detects changes in
`orientation, and Tamura uses the tilt sensor’s output to determine which
`“axis most approximates the axis of gravity.” Pet. 20 (citing Ex. 1005 ¶¶ 20,
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`25). Similarly, in the 389 IPR, Pasolini takes “into account variations in the
`orientation of the pedometer,” using the inertial sensor’s output, and Pasolini
`detects the main vertical axis at each acquisition of a new acceleration
`sample. 389 IPR, Paper 2, 30. The same argument is involved in both of
`these assertions; namely, a change in orientation of the sensor is used to
`update the vertical axis determination that each of Tamura and Pasolini are
`alleged to perform.
`Further, with regard to the “cadence window,” the same prior art is
`asserted and based on the same arguments presented in the 389 IPR.
`Petitioner here argues that Fabio’s “validation interval TV” constitutes the
`recited “cadence window.” Pet. 25. In the 389 IPR, Fabio also is asserted as
`disclosing the “cadence window” based on the “validation interval TV.”
`389 IPR, Paper 2, 3336. Thus, for the “cadence window” limitations in all
`the challenged claims Petitioner relies on the same prior art and the same
`argument previously presented.
`Accordingly, we understand the arguments presented here with
`respect to Tamura to be substantially the same as those previously presented
`concerning Fabio and Pasolini. Even though Petitioner alleges that Tamura
`is different prior art, we see the reliance on Tamura as not being materially
`different from the prior assertions concerning Fabio and Pasolini. Further,
`Fabio and Pasolini are being considered on the merits in the 389 IPR and we
`look to Petitioner to provide some reason that persuades us to institute on
`another trial that features Fabio and Pasolini as teaching the same limitations
`or providing support for the same arguments previously presented. Again, if
`there was a manner in which Petitioner here distinguishably relied on
`Tamura, Fabio, and Pasolini, Petitioner did not proffer that fact explicitly or
`
`19
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`IPR2018-01757
`Patent 8,712,723 B1
`
`with sufficient emphasis that would allow us to balance Petitioner’s desire to
`be heard with the duplication of the Board’s effort in determining the
`overlapping issues.
`Further, we are not persuaded that the ground concerning claims 57
`under anticipation is materially different than previously presented in the
`389 IPR. Here, Petitioner asserts that claims 57 are anticipated by Fabio.
`In the 389 IPR, claims 57 are challenged as obvious over Fabio and
`Pasolini, but the arguments presented rely on Fabio as disclosing all the
`limitations of those claims. 389 IPR, Paper 2, 4149. Therefore, we are not
`persuaded that asserting “anticipation” of claims 57 changes the nature of
`the arguments that have been previously presented over the same prior art,
`Fabio.
`As for claims 4 and 19, we note that we have determined previously
`that the same arguments and prior art presented here with regard to Fabio,
`Pasolini, and Richardson did not rise to the reasonable likelihood threshold.
`Specifically, Apple Inc. filed a Petition in IPR2018-01027 in which it
`challenged claims 4 and 19 for obviousness over Fabio, Pasolini, and
`Richardson. See IPR2018-01027, Paper 8. We denied that Petition. Id.
`The instant Petition proffers the same prior art and same arguments. Thus,
`not only have the same arguments and prior art been previously presented,
`but we have determined already that the same ground failed to show a
`reasonable likelihood of prevailing.
`Moreover, the time of filing of this Petition leads us to conclude that
`Petitioner gained the benefit of Patent Owner’s preliminary response and our
`Decision on Institution in the 389 IPR. Patent Owner filed a preliminary
`
`20
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`IPR2018-01757
`Patent 8,712,723 B1
`
`response in the 389 IPR on April 4, 2018, and we issued a Decision on
`Institution on June 27, 2018. Three months later Petitioner filed the instant
`petition. Petitioner alleges that it “does not seek to remedy any deficiencies
`in Apple’s prior art that were identified by the Board or Patent Owner in its
`preliminary response in IPR2018-00389.” Pet. 69. This artfully crafted
`assertion is unpersuasive. The assertion does not show that Petitioner did
`not gain the benefit of the preliminary responses in previous IPRs. We did
`not specifically address an issue for Petitioner to remedy when we instituted
`on all claims and all grounds; rather, we focused on addressing Patent
`Owner’s arguments. Nevertheless, we note that the arguments by Patent
`Owner in the 389 IPR previewed Patent Owner’s contention that Fabio’s
`vertical axis detection occurs without regard for orientation. See Ex. 1004,
`18 (stating in our Decision on Institution that Patent Owner argued Fabio’s
`lack of regard for orientation in determining the vertical axis). We do not
`see Petitioner’s reliance on Tamura to bolster the orientation issue in the
`instant case as a coincidence.
`Further, we are concerned with administrative efficiency because
`instituting here is substantially duplicative of the 389 IPR, and the Board
`would need to reconcile arguments, issues, and evidence across multiple,
`independent trials on the same patent and claims.4 Cf. Heckler v. Chaney,
`470 U.S. 821, 831 (1985) (indicating an agency, when deciding whether to
`take action in a particular matter, must determine whether its resources are
`best spent on one matter or another). On balance, we find that the same
`prior art and substantially the same arguments have been previously
`
`
`4 See MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir. 2018).
`21
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`IPR2018-01757
`Patent 8,712,723 B1
`
`presented, and, indeed, some of those arguments have failed scrutiny of the
`reasonable likelihood threshold. Notwithstanding some differences in the
`prior art, we are persuaded that undertaking another trial on the same claims
`and on substantially the same prior art would be an inefficient use of Board
`resources and would result in substantial overlap and duplication of issues,
`arguments, and evidence. Therefore, based on the foregoing, and to secure
`the just, speedy, and inexpensive resolution of the dispute, we exercise our
`discretion under §§ 315(d) and 325(d), and deny institution.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied.
`
`
`
`
`22
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`IPR2018-01757
`Patent 8,712,7
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