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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
`
`________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 7,653,508
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`D.
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 1
`A.
`Real Party-in-Interest ........................................................................... 1
`B.
`Related Matters ..................................................................................... 1
`C.
`Lead and Back-up Counsel and Service Information .......................... 3
`III. GROUNDS FOR STANDING ....................................................................... 3
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS ..................... 3
`V.
`THE ’508 PATENT ........................................................................................ 4
`A.
`Summary of the ’508 patent ................................................................. 4
`B.
`Prosecution History of the ’508 Patent ................................................ 6
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 6
`VII. CLAIM CONSTRUCTION ........................................................................... 7
`A.
`“dominant axis” .................................................................................... 8
`B.
`“cadence window” ................................................................................ 9
`C.
`“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” ..................... 9
`“a counting logic to count periodic human motions by
`monitoring accelerations relative to the dominant axis” .................... 10
`“a counting logic to identify and count periodic human
`motions” ............................................................................................. 11
`“a cadence logic to continuously update a dynamic cadence
`window” ............................................................................................. 12
`“a mode logic, to switch the device from a non-active mode to
`an active mode after a number of periodic human motions are
`
`G.
`
`E.
`
`F.
`
`ii
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`D.
`
`detected within appropriate cadence windows by the counting
`logic” .................................................................................................. 13
`H. Note Regarding the Claim Terms directed to “Logic” ...................... 14
`VIII. PRECISE RELIEF REQUESTED .............................................................. 15
`IX.
`IDENTIFICATION OF HOW THE CLAIMS ARE
`UNPATENTABLE ....................................................................................... 16
`A.
`Challenged Claims ............................................................................. 16
`B.
`Statutory Grounds for Challenges ...................................................... 16
`C.
`State of the art at the time of the ’508 Patent ..................................... 16
`1.
`Summary of Pasolini ................................................................ 18
`2.
`Summary of Fabio .................................................................... 20
`Challenge #1: Claims 1-2 and 11-12 are obvious under 35
`U.S.C. § 103(a) over Pasolini. ............................................................ 24
`1.
`Claim 1 ..................................................................................... 24
`2.
`Claim 2 ..................................................................................... 31
`3.
`Claim 11 ................................................................................... 32
`4.
`Claim 12 ................................................................................... 37
`Challenge #2: Claims 6-8, 15-16, and 19 are obvious under 35
`U.S.C. § 103(a) over Fabio. ............................................................... 37
`1.
`Claim 6 ..................................................................................... 38
`2.
`Claim 7 ..................................................................................... 49
`3.
`Claim 8 ..................................................................................... 51
`4.
`Claim 15 ................................................................................... 52
`5.
`Claim 16 ................................................................................... 57
`6.
`Claim 19 ................................................................................... 59
`
`E.
`
`iii
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`

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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`F.
`
`Challenge #3: Claims 3-4, 13-14, and 20 are unpatentable under
`35 U.S.C. § 103 over Pasolini in view of Fabio. ................................ 60
`1.
`Reasons to Combine Pasolini and Fabio.................................. 60
`2.
`Claim 3 ..................................................................................... 64
`3.
`Claim 4 ..................................................................................... 66
`4.
`Claim 13 ................................................................................... 68
`5.
`Claim 14 ................................................................................... 70
`6.
`Claim 20 ................................................................................... 72
`X. ANY ARGUMENT FOR A DISCRETIONARY DENIAL SHOULD
`BE REJECTED ............................................................................................. 73
`XI. CONCLUSION ............................................................................................. 73
`CERTIFICATE OF WORD COUNT ..................................................................... 74
`CERTIFICATE OF SERVICE ............................................................................... 75
`
`
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`LIST OF EXHIBITS
`
`U.S. Patent No. 7,653,508
`
`Prosecution History of U.S. Patent No. 7,653,508
`
`Declaration of Joe Paradiso, Ph.D, under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Joe Paradiso.
`
`U.S. Patent No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”)
`
`U.S. Patent No. 7,698,097 to Fabio Pasolini et al. (“Fabio”).
`
`Comparison between the Current Petition and Petition in
`IPR2018-01589
`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`
`
`v
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`I.
`
`INTRODUCTION
`Samsung Electronics America, Inc. (“Petitioner”) respectfully requests inter
`
`partes review of claims 1-4, 6-8, 11-16, 19, and 20 of U.S. Patent No. 7,653,508
`
`(“the ’508 patent”). This petition is being submitted concurrently with a motion
`
`for joinder. Specifically, Petitioner requests institution and joinder with HTC
`
`Corp. et al. v. Uniloc 2017 LLC, IPR2018-01589 (“the HTC IPR” or “the HTC
`
`proceeding”), which the Board instituted on February 27, 2019. This petition is
`
`substantially identical to the petition in the HTC IPR; it contains the same grounds
`
`(based on the same prior art combinations and supporting evidence) against the
`
`same claims. (See Ex. 1007, illustrating changes between the instant petition and
`
`the petition in IPR2018-01589.)
`
`II. MANDATORY NOTICES
`A. Real Party-in-Interest
`The real parties-in-interest are Samsung Electronics America, Inc. and
`
`Samsung Electronics Co., Ltd.
`
`B. Related Matters
`As of the filing date of this petition, the ’508 patent has been asserted in the
`
`following cases:
`
`Heading
`Uniloc USA, Inc. v. Huawei
`Devices USA, Inc.
`
`Court
`Number
`2:17-cv-00737 E.D. Tex.
`
`Filed
`Nov. 9, 2017
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`Uniloc USA, Inc. v. HTC Am.,
`Inc.
`
`Uniloc USA, Inc. v. LG Elecs.
`USA, Inc.
`
`Uniloc USA, Inc. v. LG Elecs.
`USA, Inc.
`
`Uniloc USA, Inc. v. Samsung
`Elecs. Am., Inc.
`
`2:17-cv-01629 W.D. Wash. Nov. 1, 2017
`
`4:17-cv-00832 N.D. Tex.
`
`Oct. 13, 2017
`
`4:18-cv-02918 N.D. Cal.
`
`May 17, 2018
`
`2:17-cv-00650 E.D. Tex.
`
`Sep. 15, 2017
`
`Uniloc USA, Inc. v. Apple Inc.
`
`2:17-cv-00522 E.D. Tex.
`
`Jun. 30, 2017
`
`Uniloc USA, Inc. v. Apple Inc.
`
`
`4:18-cv-00364 N.D. Cal.
`
`Jan. 17, 2018
`
`Additionally, the ’508 patent is the subject of four other requests for inter
`
`partes review: IPR2018-00387 filed by Apple Inc. on December 22, 2017
`
`(instituted on July 23, 2018); IPR2018-01026 filed by Apple Inc. on May 4, 2018
`
`(institution denied on October 18, 2018 and rehearing request denied on February
`
`1, 2019); IPR2018-01577 filed by LG Electronics, Inc. on August 23, 2018
`
`(instituted and joined with IPR2018-00387 on January 15, 2019); IPR2018-01756
`
`filed by Samsung Electronics America, Inc. on September 18, 2018 (institution
`
`denied on March 11, 2019). Except in IPR2018-01756, the real parties-in-interest
`
`herein are not parties to the above listed petitions and were not involved in the
`
`preparation of those petitions.
`
`2
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`C. Lead and Back-up Counsel and Service Information
`Lead Counsel: Naveen Modi (Reg. No. 46,224). Backup Counsel: (1) Joseph
`
`E. Palys (Reg. No. 46,508), (2) Chetan Bansal (Limited Recognition No L0667).
`
`Service Information: Paul Hastings LLP, 875 15th Street NW, Washington, DC
`
`20005, Tel: (202) 551-1700, Fax: (202) 551-1705, E-mail: PH-Samsung-Uniloc-
`
`IPR@paulhastings.com. Petitioner consents to electronic service.
`
`III. GROUNDS FOR STANDING
`The ’508 patent is eligible for IPR and Petitioner is not barred or estopped
`
`from requesting IPR on the grounds identified in this petition. Petitioner is not
`
`estopped because this petition is accompanied by a motion for joinder, and is being
`
`submitted no later than one month after the institution date of the HTC IPR. Under
`
`the Board’s current interpretation of the statute and rules, including 37 C.F.R. §
`
`42.122(b), the time period set forth in § 42.101(b) does not apply to a Petition
`
`accompanied by a request for joinder.
`
`IV. NOTE REGARDING PAGE CITATIONS AND EMPHASIS
`Petitioner’s citation to Ex. 1002 uses the page numbers added for
`
`compliance with 37 C.F.R. § 42.63(d)(2)(ii). Petitioner’s citations to the remaining
`
`exhibits use the page numbers in their original publication. Unless otherwise
`
`noted, all bold underline emphasis in any quoted material has been added.
`
`3
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`V. THE ’508 PATENT
`Summary of the ’508 patent
`A.
`The ’508 patent is directed to “a method of monitoring human activity, and
`
`more particularly, to counting periodic human motions such as steps.” Ex. 1001,
`
`1:5-7. As admitted by the Applicant, “inertial sensors (e.g., accelerometers)” are
`
`commonly used in commercial electronic devices. Id., 1:13-18. “Step counting
`
`devices are used to monitor an individual’s daily activity by keeping track of the
`
`number of steps that he or she takes.” Id., 1:19-21. These devices, however, “are
`
`often confused by motion noise experienced by the device throughout a user’s
`
`daily routine. This noise causes false steps to be measured and actual steps to be
`
`missed in conventional step counting devices.” Id., 1:27-31.
`
`The claims are directed to two separate concepts. The first concept
`
`(associated with independent claims 1 and 11) relates to determining and assigning
`
`a “dominant axis,” and counting steps along that axis. See id., claim 1. In the ’508
`
`patent, the dominant axis is the axis “with the largest absolute rolling average . . .
`
`most influenced by gravity, which may change over time (e.g. as the electronic
`
`device is rotated). Therefore, a new dominant axis may be assigned when the
`
`orientation of the electronic device . . . changes.” Id., 6:16-21.
`
`The second concept (associated with independent claims 6 and 15) relates to
`
`counting steps in two different modes—a non-active mode and an active mode. In
`
`4
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`the non-active mode, steps are detected but not yet added to the total step count.
`
`Instead, steps are buffered until the device switches to the active mode, which
`
`occurs when a certain number of steps have been detected and validated. Steps are
`
`determined to be valid if they fall within a cadence window. The cadence window
`
`is based on a user’s motion cycle or stepping period. Once in the active mode, the
`
`detected steps are added to the total step count as they are detected.
`
`The concepts described and claimed in the ’508 patent were not new at the
`
`time the ’508 patent was filed. Before the ’508 Patent was filed, Fabio Pasolini
`
`was actively working on pedometer devices that included the concepts described
`
`and claimed in the ’508 patent. Mr. Pasolini filed two patent applications (issued
`
`as U.S. Patent No. 7,698,097 (“Fabio”) and U.S. Patent No. 7,463,997
`
`(“Pasolini”)) before the ’508 patent was filed. The Pasolini reference describes a
`
`pedometer updating the vertical axis with each acquisition of an acceleration
`
`sample to take into account variations of the orientation of the pedometer device
`
`during use. Ex. 1005, 8:20-24. The Fabio reference, on the other hand, describes
`
`applying a regularity condition to the detected step data so that a step is counted
`
`when it occurs within a “validation interval.” The disclosures provided in the
`
`Fabio and Pasolini references render obvious each and every element of the
`
`challenged claims.
`
`5
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`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`Prosecution History of the ’508 Patent
`B.
`The ’508 patent issued on January 26, 2010 from U.S. Patent Application
`
`No. 11/644,455 filed on December 22, 2006.
`
`The first Office Action issued on August 31, 2009, and included no prior art
`
`rejections. See Ex. 1002, 70. The Action did, however, include multiple
`
`objections to the drawings and other informalities. On October 9, 2009, the
`
`Applicant filed a response to replace drawings and amended the specification to
`
`address the other objections. See id., 54. A Notice of Allowance then issued on
`
`November 30, 2009. See id., 16. In the Allowance, the Examiner did not provide
`
`any specific reason but instead quoted the independent claims and merely stated
`
`that a few cited references did not teach the limitations of the claims. See id., 22.
`
`The prior art presented in this petition was not cited or applied by the
`
`Examiner during prosecution.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`The level of ordinary skill in the art may be reflected by the prior art of
`
`record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Here, a
`
`person of ordinary skill in the art (“POSITA”) would include someone who had, at
`
`the priority date of the ’508 Patent (i) a Bachelor’s degree in Electrical
`
`Engineering, Computer Engineering, and/or Computer Science, or equivalent
`
`training, and (ii) approximately two years of experience working in hardware
`
`6
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`and/or software design and development related to MEMS (micro-electro-
`
`mechanical) devices and body motion sensing systems. Ex. 1003, 10. Lack of
`
`work experience can be remedied by additional education, and vice versa. Id.
`
`VII. CLAIM CONSTRUCTION
`This petition presents claim analysis in a manner that is consistent with the
`
`broadest reasonable construction in light of the specification. See 37 C.F.R. §
`
`42.100(b).1 Under the broadest reasonable construction, claim terms are given
`
`their ordinary and accustomed meaning as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, because the claim constructions
`
`proposed herein are based on the broadest reasonable construction, Petitioner
`
`reserves the right to pursue different claim constructions in other proceedings,
`
`including in Uniloc USA, Inc. v. Samsung Electronics America, Inc., Case No.
`
`
`1 While the claim construction standard has changed from BRI to Phillips for
`
`petitions filed after November 13, 2018, the Board should apply the BRI standard
`
`to the instant petition because Samsung is simply seeking joinder as a co-petitioner
`
`to the HTC proceeding. If the Board deems that its rule(s) require application of
`
`the Phillips standard to this petition, Samsung seeks waiver of such rule(s)
`
`pursuant to 37 C.F.R. § 42.5(b).
`
`7
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`2:17-cv-00650 (E.D. Tex.). For terms not addressed below, Petitioner submits that
`
`no specific construction is necessary for this proceeding.2
`
`“dominant axis”
`A.
`This term appears in at least claims 1 and 11. In the specification of the ’508
`
`patent, the dominant axis is determined based on the accelerometer’s alignment
`
`with gravity. Ex. 1003, 17. For example, the specification states that “[i]n one
`
`embodiment, the dominant axis is assigned after identifying a gravitational
`
`influence. The gravitational influence may be identified by calculating total
`
`acceleration based upon the acceleration on each axis.” Ex. 1001, 14:34-38. The
`
`specification also states that “[i]n one embodiment, once the orientation is
`
`determined, a dominant axis is assigned based upon the orientation. Determining
`
`an orientation of the electronic device 100 may include identifying a gravitational
`
`influence.” Id., 6:12-15. In other words, the dominant axis is “the axis most
`
`influenced by gravity, which may change over time (e.g., as the electronic device is
`
`rotated).” Id., 6:16-18.
`
`Thus, for the purposes of this proceeding, the term “dominant axis” as used
`
`in the claims includes “the axis most influenced by gravity.” Ex. 1003, 18.
`
`
`2 Petitioner does not concede that any term not construed herein meets the statutory
`
`requirements of 35 U.S.C. § 112.
`
`8
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`
`“cadence window”
`B.
`This term appears in at least claims 3, 6, 7, 10, 13, 15, 16, 19, and 20. The
`
`specification specifically defines this term as “a window of time since a last step
`
`was counted that is looked at to detect a new step.” Ex. 1001, 3:64-65.
`
`Thus, for the purposes of this proceeding, the term “cadence window” as
`
`used in the claims includes “a window of time since a last step was counted that is
`
`looked at to detect a new step.” Ex. 1003, 18.
`
`C.
`
`“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”
`This term appears in at least claim 11. The specification describes that
`
`“dominant axis logic 127 is used to determine an orientation of the electronic
`
`device 100 and/or an inertial sensor within the electronics device 100.” See Ex.
`
`1001, 3:4-8. “At processing block 812, in one embodiment the inertial sensor is
`
`oriented by assigning a dominant axis. Assigning a dominant axis may include
`
`calculating rolling averages of acceleration and assigning the dominant axis based
`
`on the rolling averages of acceleration.” Id., 12:42-43. The specification further
`
`describes that the present invention may be performed by hardware, software, or a
`
`combination of both. See id., 14:50-56.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to
`
`9
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`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.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function: 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;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`block 812. See Ex. 1001, 12:42-43, 14:50-56; Ex. 1003, 18-19.
`
`D.
`
`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis”
`This term appears in at least claim 11. The specification describes “step
`
`counting logic 130” that is used “to determine if a step has occurred” and indicate
`
`if “a step may be counted . . . .” Ex. 1001, 6:40-45, 7:2. In one example, at block
`
`615, “measurement data is checked to determine whether an additional step is
`
`recognized.” Id., 11:19-21. At block 620, “[i]f an additional step is recognized,
`
`then it is added to the final or actual step count.” Id., 11:21-22. The specification
`
`further describes that the present invention may be performed by hardware,
`
`software, or a combination of both. See id., 14:50-56.
`
`10
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to count
`
`periodic human motions by monitoring accelerations relative to the dominant axis,
`
`or identify and count periodic human motions.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function: count periodic human motions by monitoring accelerations
`
`relative to the dominant axis;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`blocks 615 and 620. See Ex. 1001, 7:46-60, 14:50-56; Ex. 1003, 20-21.
`
`“a counting logic to identify and count periodic human motions”
`E.
`This term appears in at least claim 15. The specification describes “step
`
`counting logic 130” that is used “to determine if a step has occurred” and indicate
`
`if “a step may be counted . . . .” Ex. 1001, 6:40-45, 7:2. In one example, at block
`
`615, “measurement data is checked to determine whether an additional step is
`
`recognized.” Id., 11:19-21. At block 620, “[i]f an additional step is recognized,
`
`then it is added to the final or actual step count.” Id., 11:21-22. The specification
`
`further describes that the present invention may be performed by hardware,
`
`software, or a combination of both. See id., 14:50-56.
`
`11
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to count
`
`periodic human motions by monitoring accelerations relative to the dominant axis,
`
`or identify and count periodic human motions.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function: identify and count periodic human motions;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`blocks 615 and 620. See Ex. 1001, 7:46-60, 14:50-56; Ex. 1003, 21-22.
`
`F.
`
`“a cadence logic to continuously update a dynamic cadence
`window”
`This term appears in at least claim 13. The specification describes “cadence
`
`logic 132 [that] detects a period and/or cadence of a motion cycle. The period
`
`and/or cadence of a motion cycle may be based upon user activity (e.g.
`
`rollerblading, biking, running, walking, etc.).” Ex. 1001, 3:9-16. In one example,
`
`at block 574 “a new cadence window is set (block 574) based on a stepping
`
`cadence of the M steps measured.” Id., 10:56-57. The specification further
`
`describes that the present invention may be performed by hardware, software, or a
`
`combination of both. See id., 14:50-56.
`
`12
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`

`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to
`
`continuously update a dynamic cadence window.”
`
`However, to the extent that Patent Owner overcomes the presumption
`
`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
`
`have understood the claim itself and the specification to provide:
`
`Function: continuously update a dynamic cadence window;
`
`Structure: software, hardware, or combination thereof to perform actions in
`
`block 574. See Ex. 1001, 10:56-57, 14:50-56; Ex. 1003, 22.
`
`G.
`
`“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”
`This term appears in at least claim 15. The specification describes mode
`
`logic 190 that determines the “operating mode that the electronic device is in.” Ex.
`
`1001, 7:23-24. In one example, block 580 describes logic to check “whether there
`
`are N steps in the buffered step count.” Id., 10:63-64. At block 584, “a stepping
`
`[active] mode is entered into.” Id., 11:2-3. The specification further describes that
`
`the present invention may be performed by hardware, software, or a combination
`
`of both. See id., 14:50-56.
`
`Accordingly, a POSITA would have understood the broadest reasonable
`
`interpretation of this claim term to include “hardware, software, or both to switch
`
`13
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`the device from a non-active mode to an active mode after a number of periodic
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`human motions are detected within appropriate cadence windows by the counting
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`logic.”
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`However, to the extent that Patent Owner overcomes the presumption
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`against construction under 35 U.S.C. § 112, sixth paragraph, a POSITA would
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`have understood the claim itself and the specification to provide:
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`Function: switch the device from a non-active mode to an active mode after
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`a number of periodic human motions are detected within appropriate
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`cadence windows by the counting logic;
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`Structure: software, hardware, or combination thereof to perform actions in
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`blocks 580 and 584. See Ex. 1001, 10:63-11:3, 14:50-56; Ex. 1003, 23-24.
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`H. Note Regarding the Claim Terms directed to “Logic”
`Petitioner may assert in this same district court litigation that, under the
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`narrower Phillips standard, the claim limitations directed to “logic” invoke § 112
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`¶6 but fail to meet the definiteness requirement of § 112 ¶2. As of the filing of this
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`petition, the district court has not yet issued a claim construction order.
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`Petitioner recognizes that inter partes review proceedings cannot be used to
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`challenge definiteness under § 112. See 35 U.S.C. § 311(b). However, for
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`purposes of this proceeding, the broadest reasonable interpretation of these claim
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`terms encompasses software, hardware, or a combination thereof for performing
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`the recited function, as explained by the ’508 patent.
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`Additionally, regardless of whether the recited “logic” is a nonce word
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`requiring the disclosure of an algorithm, the Board may still find that the claims are
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`obvious in view of the software and hardware disclosed in the prior art cited in this
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`petition. See, e.g., Vibrant Media, Inc. v. Gen’l Elec. Co., IPR2013-00172, Paper
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`50, at 10-11 (PTAB July 28, 2014) (“[A]n indefiniteness determination in this
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`proceeding would not have prevented us from deciding whether the claims would
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`have been obvious over the cited prior art.”); Microsoft Corp. v. Enfish, IPR2013-
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`00560, Paper 14, at 9-10 (PTAB Mar. 4, 2014) (instituting review and directing
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`patent owner to identify structure in its Patent Owner Response). As detailed
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`herein, the prior art teaches software, hardware, or a combination thereof
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`performing the claimed function. Therefore, any indefiniteness determination
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`would not prevent the Board from deciding that these claims are obvious in light of
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`the provided prior art.
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`VIII. PRECISE RELIEF REQUESTED
`Petitioner respectfully requests inter partes review of claims 1-4, 6-8, 11-16,
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`19, and 20 of the ’508 patent, and cancellation of those claims as unpatentable.
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`IX.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`A. Challenged Claims
`Claims 1-4, 6-8, 11-16, 19, and 20 of the ’508 patent are challenged in this
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`petition.
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`B.
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`Statutory Grounds for Challenges
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`Challenge
`Challenge
`#1
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`Ground
`Claims
`1-2 and 11-12 Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`No. 7,463,997 to Fabio Pasolini et al. (“Pasolini”).
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`Challenge
`#2
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`6-8, 15-16,
`and 19
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`Obvious under 35 U.S.C. § 103(a) over U.S. Patent
`No. 7,698,097 to Fabio Pasolini et al. (“Fabio”).
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`Challenge
`#3
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`3-4, 13-14,
`and 20
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`Obvious under 35 U.S.C. § 103(a) over Pasolini in
`view of Fabio.
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`
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`Both Pasolini and Fabio were filed on October 2, 2006, which is before the
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`December 22, 2006 filing date of the earliest filed application upon which the ’508
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`Patent claims priority. Accordingly, Pasolini and Fabio are each at least pre-AIA
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`35 U.S.C. § 102(e) prior art based on their filing dates.
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`State of the art at the time of the ’508 Patent
`C.
`By the time the ’508 Patent was filed on December 22, 2006, others were
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`actively working on pedometer devices that monitored a user’s steps. One such
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`developer was Fabio Pasolini, who designed motion detection systems using
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`MEMS that could be implemented in phones or other portable electronic devices.
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`See Ex. 1006, 2:33-36; Ex. 1005, 8:31-34. The Fabio and Pasolini references
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`disclose pedometer devices that use an inertial sensor, such an accelerometer, to
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`count steps of the user while the user is carrying the device. Ex. 1006, 1:10-11,
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`2:49-64; Ex. 1005, 3:30-35.
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`To detect and identify the user’s steps, Mr. Pasolini’s devices analyze
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`positive and negative acceleration peaks provided by the accelerometer. Ex. 1006,
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`4:12-21; Ex. 1005, 3:35-41. In this way, Mr. Pasolini’s devices provide features
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`that help avoid “false positives” with respect to the step recognition. Ex. 1006,
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`7:16-19; Ex. 1005, 1:61-2:3. These step-recognition features are described in two
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`of Mr. Pasolini’s issued patents—U.S. Patent No. 7,698,097 (“Fabio”) and U.S.
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`Patent No. 7,463,997 (“Pasolini”)—that were both filed on October 2, 2006.
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`Both of Mr. Pasolini’s patents describe a number of features in common
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`with the pedometer devices. This includes, for example, an accelerometer with
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`multiple axes of detection, so that step recognition is advantageously performed
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`using the accelerations measured by the axis that is most aligned with gravity. Ex.
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`1006, 8:20- 32; Ex. 1005, 8:15-24.
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`The references differ in that the Pasolini reference provides additional detail
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`regarding step detection using linear and multi-axes accelerometers, including
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`describing that the pedometer updates the vertical axis with each acquisition of an
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`acceleration sample to take into account variations of the orientation of the
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`pedometer device during use. Ex. 1005, 8:20-24. The Fabio reference, on the
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`Petition for Inter Partes Review of U.S. Patent No. 7,653,508
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`other hand, describes applying a regularity condition to the detected step data so
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`that a step is counted when it occurs within a “validation interval,” which is
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`identified as a window of time since a previous step was counted. Ex. 1006, 4:35-
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`39, 7:16-19, FIG. 6.
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`As described in more detail below, the disclosures provided in the Fabio and
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`Pasolini references render obvious each and every element of the challenged
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`claims.
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`Summary of Pasolini
`1.
`Pasolini is directed to “a pe