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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`IPR2019-00889
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`PATENT 7,653,508
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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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`IPR2019-00889
`U.S. Patent 7,653,508
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`Table of Contents
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`
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`I.
`
`INTRODUCTION .................................................................................... 1
`
`II.
`
`THE ’508 PATENT .................................................................................. 1
`
`III.
`
`RELATED PROCEEDINGS .................................................................... 2
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`IV.
`
`THE PETITION SHOULD BE DENIED AS REDUNDANT
`WITH PRIOR INTER PARTES REVIEW PETITIONS .......................... 2
`
`A.
`
`B.
`
`The Petition Is Not A “Me Too” Petition As Petitioner
`Alleges, Instead It Is A Serial And Repetitive Attack On
`The ’508 Patent ............................................................................... 3
`
`The Board Has Held Denial is Appropriate Under These
`Facts ................................................................................................ 5
`
`V.
`
`TO THE EXTENT THE PETITION IS CONSIDERED, THIS
`JOINDER PETITION SHOULD BE LIMITED TO
`CHALLENGING CLAIM 20 ONLY ....................................................... 6
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`VI.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART ............................. 7
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`VII.
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`PROSECUTION HISTORY ..................................................................... 7
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`VIII. CLAIM CONSTRUCTION ...................................................................... 9
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`A.
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`“cadence window” .......................................................................... 9
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`B.
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`C.
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`“dominant axis” ............................................................................ 10
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`“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” ........................................................................................ 13
`
`D.
`
`“a counting logic to count periodic human motions by
`monitoring accelerations relative to the dominant axis” .............. 14
`
`E.
`
`“a counting logic to identify and count periodic human
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`ii
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`IPR2019-00889
`U.S. Patent 7,653,508
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`F.
`
`G.
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`motions” ........................................................................................ 14
`
`“a cadence logic to continuously update a dynamic
`cadence window” .......................................................................... 14
`
`“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” ................................................... 15
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`IX.
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`PETITIONER FAILS TO MEET ITS BURDEN OF
`PROVING OBVIOUSNESS .................................................................. 15
`
`A.
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`Petitioner fails to prove Fabio renders obvious the
`“cadence window” limitations of independent claim 6 ................ 16
`
`1.
`
`2.
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`3.
`
`4.
`
`Petitioner fails to prove Fabio’s validation
`interval (VT) maps onto the distinct definition
`Petitioner offers for “cadence window” ............................. 16
`
`Petitioner has not and cannot cure Fabio’s
`deficiencies by offering a new, undefended, and
`inconsistent definition for “cadence window” ................... 18
`
`Petitioner has not proven obviousness for the
`“switching” step introducing the “cadence
`window” term ..................................................................... 20
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`Petitioner has not proven obviousness for the
`“counting” step as applied to the “cadence
`window” term ..................................................................... 23
`
`B.
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`C.
`
`D.
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`Petitioner fails to prove Fabio itself renders obvious the
`“cadence window” limitations of independent claim 15 .............. 25
`
`Petitioner fails to prove Fabio renders obvious the
`“cadence window” limitations recited in certain
`dependent claims .......................................................................... 25
`
`Petitioner fails to prove Pasolini renders obvious
`“assigning a dominant axis” as recited in claim 1 ........................ 26
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`E.
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`Petitioner fails to prove Pasolini renders obvious the
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`iii
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`IPR2019-00889
`U.S. Patent 7,653,508
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`“updating the dominant axis as the orientation of the
`inertial sensor changes” as recited in claim 1 ............................... 30
`
`The Petition fails to prove obviousness of “counting
`periodic human motions by monitoring accelerations
`relative to the dominant axis” as recited in claim 1 ..................... 32
`
`Petitioner fails to prove Pasolini renders obvious the
`“dominant axis” terms recited in independent claim 11............... 33
`
`The Petition fails to prove obviousness of “a counting
`logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis,” as recited in
`claim 11 ........................................................................................ 34
`
`The Petition fails to prove obviousness of “wherein the
`cadence logic adjusts the cadence windows based on a
`measured cadence associated with the periodic human
`motion” as recited in claim 20 ...................................................... 34
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`The Petition fails to prove obviousness of any dependent
`claim.............................................................................................. 38
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`F.
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`G.
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`H.
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`I.
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`J.
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`X.
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`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 38
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`XI.
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`CONCLUSION ....................................................................................... 38
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`
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`
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`List of Exhibits
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`Exhibit No.
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`Description
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`2001
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`Declaration of William C. Easttom
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`iv
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`

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`IPR2019-00889
`U.S. Patent 7,653,508
`
`I.
`
`INTRODUCTION
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`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Joinder Petition IPR2019-008891 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 7,653,508 (“the ’508 patent” or “EX1001”)
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`filed by Samsung Electronics America, Inc. (“Petitioner”). The Petition is
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`procedurally and substantively defective for at least the reasons set forth herein.
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`II. THE ’508 PATENT
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`The ’508 patent is titled “Human activity monitoring device.” The ʼ508
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`patent issued January 26, 2010, from U.S. Patent Application No. 11/644,455 filed
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`December 22, 2006.
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`The inventors of the ’508 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, 1:19‒26. 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
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`
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` 1
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` The instant Petition and Petitioner seek joinder to IPR2018-01589. See Paper 1.
`Furthermore, as Petitioners state, the instant Petition is “substantially similar” to
`HTC Corp.’s petition in IPR2018-01589. Id., at 1.
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`1
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`IPR2019-00889
`U.S. Patent 7,653,508
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`counting devices also failed to accurately measure steps for individuals who walk
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`at a slow pace. Id., 1:27‒34.
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`According to the invention of the ’508 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
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`sensor changes. Id., 2:8‒15.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending concerning U.S. Pat. No.
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`7,653,508 (EX1001).
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`
`
`Case Caption
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`Case Number
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`District Case Filed
`
`HTC Corporation et al v.
`Uniloc 2017 LLC et al
`
`Uniloc USA Inc et al v. LG
`Electronics U.S.A., Inc. et al
`
`Uniloc USA, Inc. et al v. Apple
`Inc.
`
`Uniloc USA, Inc. et al v.
`Huawei Device USA, Inc. et al
`
`Uniloc USA, Inc. et al v.
`Samsung Electronics America,
`Inc. et al
`
`IPR2018-01589
`
`PTAB
`
`4-18-cv-02918
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`CAND
`
`August 23,
`2018
`
`May. 17,
`2018
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`4-18-cv-00364
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`CAND
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`Jan. 17, 2018
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`2-17-cv-00737
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`TXED November 9,
`2017
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`2-17-cv-00650
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`TXED Sep. 15, 2017
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`IV. THE PETITION SHOULD BE DENIED AS REDUNDANT WITH
`PRIOR INTER PARTES REVIEW PETITIONS
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`The Board should exercise its discretion under 35 U.S.C. § 325(d) and deny
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`2
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`

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`IPR2019-00889
`U.S. Patent 7,653,508
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`the Petition because it relies on the same art and substantially the same arguments
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`that is or was before the Board in five other pending IPR proceedings. See
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`IPR2018-01756; IPR2019-01589; IPR2018-01577; IPR2018-01026; IPR2018-
`
`00387. And as the Petition admits, Petitioner Samsung has already filed a
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`substantially similar petition in IPR2018-01756, which was denied institution. Pet.
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`73.
`
`A. The Petition Is Not A “Me Too” Petition As Petitioner Alleges,
`Instead It Is A Serial And Repetitive Attack On The ’508 Patent
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`Although Petitioner characterizes the instant Petition as a “me too” petition
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`of the petition in IPR2018-015892, as the Petition admits, Petitioner filed this
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`Petition after the institution of the IPR2018-01589 (“the HTC IPR”). Therefore, as
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`Petitioner must know, in IPR2018-01589 the Board ordered the parties be
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`limited to advancing arguments regarding claim 20 only. IPR2018-01589,
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`Paper 9, at 11. Yet, Petitioner does not even purport to restrict its “Joinder”
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`Petition to claim 20 only.
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`Nowhere in Petitioner’s motion for joinder is there any recognition or
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`acknowledgment that the Board limited its institution in the HTC IPR to only claim
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`20. Instead, Petitioner implies that in seeking joinder, Petitioner also seeks to bring
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`in the claims previously excluded by the Board (claims 1-4, 6-8, 11-16, and 19):
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`3
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` 2
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` See Pet. 1, 73.
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`

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`IPR2019-00889
`U.S. Patent 7,653,508
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`Paper 3, at 1 (highlighting added).
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`
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`That Petitioner improperly seeks to enlarge and unduly complicate the HTC
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`IPR is further supported by Petitioner’s mischaracterization of the Board’s
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`institution decision in the HTC IPR by omitting the Board’s clear order to the
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`parties to be limited to claim 20 only:
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`
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`Paper 3, at 2 (highlighting added).
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`Therefore, the instant “Joinder” Petition cannot be characterized as a “me
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`too” petition given that the HTC IPR is limited to claim 20 only and the instant
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`
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`4
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`IPR2019-00889
`U.S. Patent 7,653,508
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`Petition does not concede or even acknowledge any such limitation. Instead, the
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`instant “Joinder” Petition is a serial and repetitive attack on the ’508 patent and
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`should be denied.
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`B.
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`The Board Has Held Denial is Appropriate Under These Facts
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`The Board held that denial was appropriate of Petitioner’s previous petition
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`in IPR2018-01756, which challenged a superset of the claims in the instant Petition
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`and relied on the same art and substantially the same arguments. See IPR2018-
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`01756, Paper 7. The result should be the same here.
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`As Petitioner admits, the instant Petition is “substantially identical” with
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`IPR2018-01589. Pet. 1. And Petitioner confirms that the instant Petition relies on
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`the same art and the identical arguments from IPR2018-01589. See EX1007
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`(Comparison between instant Petition and petition in IPR2018-01589).
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`Further, every one of the challenged claims here has been challenged in five
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`previously filed inter partes review proceedings. The Board instituted trial in
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`IPR2018-00387 (“the Apple IPR”) on the patentability of (a) claims 1, 2, 11, and
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`12 over Pasolini, (b) claims 6–8, 15, 16, and 19 over Fabio, and (c) claims 3, 4, 13,
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`and 14 over Pasolini and Fabio. See IPR2018-00387, Paper 8 at 5-6, 27. And the
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`Board in the Apple IPR has since issued a final written decision. The Board denied
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`institution of trial in IPR2018-01026 (“the Apple II IPR”) on the patentability of
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`claim 5 over Pasolini, Fabio, and Richardson. See IPR2018-01026, Paper 9 at 7,
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`23. The Board instituted trial in IPR2018-01577, a copycat of the Apple IPR,
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`which joined LG Electronics, Inc. and terminated the proceeding. See IPR2018-
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`01577, Paper at 6-7. The Board instituted trial in IPR2018-01589 (“the HTC IPR”),
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`5
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`

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`IPR2019-00889
`U.S. Patent 7,653,508
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`a near copycat of the Apple IPR, after which the Board joined HTC Corp. to the
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`Apple IPR but maintained the proceeding as to HTC’s challenge to claim 20 – a
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`challenge not presented in the Apple IPR. See IPR2018-01589 Paper 9, at 6-7.
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`Finally, the Board denied Petitioner Samsung’s previously filed petition in
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`IPR2018-01756 on the patentability of claims 1, 2, 11 and 12 over Tamura and
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`Pasolini; claims 3-5, 13, and 14 over Tamura, Pasolini, and Fabio; claim 5 over
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`Tamura, Pasolini, Fabio, and Richardson, and claims 6-8, 15, 16, 19, and 20 over
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`Fabio. See IPR2018-01756, Paper 7 at 3, 30.
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`As such, having multiple petitions challenging the same patent is inefficient
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`and wastes the Board’s resources, thus the finite resources of the Board support
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`that denial is appropriate here. The Board has already been presented with “the
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`same or substantially the same prior art or arguments” in the earlier-filed petitions,
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`denying the instant Petition would conserve the Board’s valuable and finite
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`resources. See IPR2018-01756 at 30; see also Valve Corp. v. Elec. Scripting
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`Prods., Inc. IPR2019-00062, Paper 11 at 15.
`
`V. TO THE EXTENT THE PETITION IS CONSIDERED, THIS
`JOINDER PETITION SHOULD BE LIMITED TO CHALLENGING
`CLAIM 20 ONLY
`
`The instant Petition and Petitioner seek joinder to IPR2018-01589. See Paper
`
`1. Furthermore, as Petitioners state, the instant Petition is “substantially similar” to
`
`HTC Corp.’s petition in IPR2018-01589. Id., at 1. However, in IPR2018-01589 the
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`Board ordered the parties be limited to advancing arguments regarding claim
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`20 only:
`
`6
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`

`

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`IPR2019-00889
`U.S. Patent 7,653,508
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`IPR2018-01589, Paper 9, at 11 (highlighting added).
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`Therefore, because the instant Petition seeks joinder with IPR2018-01589,
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`the instant Petition must necessarily also be limited to advancing arguments
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`
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`regarding claim 20 only.
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`VI. THE 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 ’508 Patent (i) a
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`Bachelor’s degree in Electrical Engineering, Computer Engineering, and/or
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`Computer Science, or equivalent training, and (ii) approximately two years of
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`experience working in hardware and/or software design and development related to
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`MEMS (micro-electro-mechanical) devices and body motion sensing systems.”
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`Pet. 6‒7. Given that Petitioner fails to meet its burden of proof when purportedly
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`applying its own definition of a person of ordinary skill in the art, Patent Owner
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`does not offer a competing definition for purposes of this proceeding.
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`VII. PROSECUTION HISTORY
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`The Petition neglects to mention it relies upon a reference the U.S. Patent
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`Office has already found to be distinguishable from certain limitations also recited
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`in the challenged claims. The ’508 patent is part of a family of related patents
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`including U.S. Patent Nos. 8,712,723 and 7,881,902 (the ’723 and ’902 patents,
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`7
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`IPR2019-00889
`U.S. Patent 7,653,508
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`respectively). These patents all share a common specification.
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`During prosecution of the application that issued as the related ’723 patent,
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`the Examiner cited the same Pasolini reference3 either exclusively or primarily
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`relied upon in the challenges presented in instant Petition. As the prosecution
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`history reveals, Applicant successfully distinguished Pasolini and all other
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`references of record from the claims that ultimately issued, including on the basis
`
`of certain claim limitations that also are cited in the ’508 patent.4
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`The instant Petition relies exclusively on Pasolini in challenging claims 1‒2
`
`and 11‒12; and it also relies exclusively on Pasolini for the remainder of the
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`challenged claims when addressing certain limitations. For those claim limitations
`
`in which the Petition asserts only the Fabio reference (e.g., the “cadence window”
`
`limitations), Fabio is distinguishable for analogous reasons addressed during
`
`prosecution of the related ’723 patent, as will be shown. Consequently, Fabio does
`
`not cure the acknowledged deficiencies of Pasolini already recognized by the U.S.
`
`Patent Office.
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`The interest of finality weighs against revisiting the deficiencies of Pasolini
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`and whether the cumulative disclosure in Fabio renders obvious what Pasolini
`
`
`
` 3
`
` The prosecution history of the ’723 patent references the printed publication (U.S.
`Serial App. Pub. No. 2007/0143068) of the same Pasolini reference that ultimately
`issued as U.S. Patent No. 7,463,997. The Petition opted to cite the issued patent in
`lieu of the printed publication.
`4 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 by Petitioner as Exhibit 1002 in
`related-matter IPR2018-00389, at pp. 142 of 454).
`
`8
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`

`

`IPR2019-00889
`U.S. Patent 7,653,508
`
`admittedly fails to disclose. See, e.g., Shire LLC v. Amneal Pharm., LLC, 802 F.3d
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`1301, 1307 (Fed. Cir. 2015) (holding a patent challenger has “the added burden of
`
`overcoming the deference that is due to a qualified government agency presumed
`
`to have properly done its job, which includes one or more examiners who are
`
`assumed to have some expertise in interpreting the references and to be familiar
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`from their work with the level of skill in the art and whose duty it is to issue only
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`valid patents.”); Microsoft Corp. v. Multi–Tech Sys., Inc., 357 F.3d 1340, 1350
`
`(Fed. Cir. 2004) (upholding claim construction of the district court in limiting the
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`scope of the earlier, already issued patent based on statements offered during
`
`prosecution of a related application that issued later).
`
`VIII. CLAIM CONSTRUCTION
`
`The Petition should be rejected as relying upon incorrect claim constructions
`
`that are unreasonable in light of the intrinsic evidence. See Mentor Graphics Corp.,
`
`v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B.
`
`June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed.
`
`Appx. 569 (Fed. Cir. 2016) (finding Petitioner’s claim construction unreasonable in
`
`light of the specification, and therefore, denying Petition as tainted by reliance on
`
`an incorrect claim construction).
`
`A.
`
`“cadence window”
`
`The Petition argues that the ’508 patent specification provides but one
`
`definition for “cadence window” as follows: “[a] cadence window is a window of
`
`time since a last step was counted that is looked at to detect a new step.” Pet. 9.
`
`Regardless whether this statement fully captures all disclosed embodiments of
`
`9
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`

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`IPR2019-00889
`U.S. Patent 7,653,508
`
`“cadence windows” disclosed in the ’508 patent (and Patent Owner does not
`
`concede that it does), its application here as a claim construction for “cadence
`
`window” only confirms that the Petition must be denied as failing to prove
`
`obviousness. This is because Petitioner relies exclusively on Fabio’s validation
`
`interval TV, which Fabio defines as necessarily starting before the last step is
`
`counted. A window of time that necessarily starts before the last step is counted is
`
`definitively not “a window of time since a last step was counted” (as required by
`
`Petitioner’s construction).
`
`B.
`
` “dominant axis”
`
`Petitioner first offers an incorrect claim construction for “dominant axis”
`
`and then applies another in relying solely on Pasolini for the “dominant axis”
`
`limitations. The Petition proposes construing “dominant axis” to mean “the axis
`
`most influenced by gravity.” Pet. 8. In doing so, the Petition incorrectly conflates
`
`certain description directed to determining an orientation of the electronic device
`
`with, instead, assigning a dominant axis. The claim language itself, and the
`
`remainder of the intrinsic evidence, proscribe such an interpretation.
`
`Claim 1, for example, expressly distinguishes “continuously determining an
`
`orientation of the initial sensor” from the separately recited step of “assigning a
`
`dominant axis.” Accordingly, the written description corresponding to one step
`
`cannot be attributed, instead, to the other. But that is precisely what the Petition
`
`attempts to do.
`
`The ’508 patent uses the phrase “the axis most influenced by gravity” only
`
`in describing an example embodiment for determining orientation. EX1001, 6:7‒
`
`10
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`

`

`IPR2019-00889
`U.S. Patent 7,653,508
`
`21. That description states “[t]he orientation may be determined based upon the
`
`rolling averages of accelerations created by the rolling average logic 125.” Id. at
`
`6:9‒11 (emphasis added). A few lines down, that same paragraph states
`
`“[d]etermining an orientation of the electronic device 100 may include identifying
`
`a gravitational influence. The axis with the largest absolute rolling average may be
`
`the axis most influenced by gravity.” Id. at 6:13‒17 (emphasis added). Notably, the
`
`Petition uses ellipses in place of the word “may” when quoting the above passage,
`
`presumably because Petitioner recognized that qualifying word kills Petitioner’s
`
`proposed construction and hence the underlying basis for the challenge. Pet. 4
`
`(quoting EX1001, 6:16‒21).
`
`There simply is no unambiguous lexicography in the cited passage (or
`
`elsewhere) that states the assigned “dominant axis” must be the one that is most
`
`influenced by gravity. Rather, this passage observes that the rolling-average
`
`process used to determine orientation may, and hence may not, coincidentally be
`
`the axis most influenced by gravity. Petitioner’s proposed construction would
`
`impermissibly exclude those instances where the axis determined by a rolling-
`
`average process is not the axis most influenced by gravity.
`
`In its Institution Decision in IPR2018-00387 (which is the proceeding that
`
`the HTC IPR sought to join), the Board points to a separate description addressing
`
`an alternative embodiment (which the specification expressly distinguishes from
`
`the rolling-average process) as allegedly supporting the proposition that “a
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`dominant axis, whether virtual axis or otherwise, is assigned on the basis of
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`gravity: ‘most influenced by gravity’ and ‘approximately aligned to gravity.’”
`
`11
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`

`

`IPR2019-00889
`U.S. Patent 7,653,508
`
`IPR2018-00387, Paper 8 at 9‒10 (citing EX1001, 6:24‒27). This too is incorrect.5
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`As a counter example, and as explained above, the ’508 patent reveals that using a
`
`rolling-average process to determine orientation does not necessarily result in
`
`assigning a dominant axis that is most influenced by gravity. EX1001, 6:7‒21.
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`The Board’s emphasis of the statements “most influenced by gravity” and
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`“approximately aligned to gravity” reveals another flaw in Petitioner’s proposed
`
`construction. The specification uses those phrases in describing distinct axis of
`
`expressly distinguished embodiments. Id. at 6:24‒27 (“In alternative embodiments,
`
`the dominant axis does not correspond to …, but rather to ….”). Thus, a
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`construction that focuses only on one embodiment (as Petitioner proposes) would
`
`impermissibly exclude the other. This error is compounded by the fact that
`
`Petitioner’s construction requires the dominant axis to be the one that is most
`
`influenced by gravity, while the description of the rolling-average embodiment
`
`reveals that is not required.
`
`The Petition has not and cannot prove obviousness through application of an
`
`incorrect construction for “dominant axis.” See Mentor Graphics Corp. v.
`
`Synopsys, Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B.
`
`June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed.
`
`Appx. 569 (Fed. Cir. 2016). This provides an independent basis to deny the
`
`
`
` 5
`
` Neither party has offered and defended construing “assigning a dominant axis” to
`mean “a dominant axis . . . is assigned on the basis of gravity.” This would not be a
`proper definition for what is recited, but rather it would be an impermissible rewrite
`of the claim language that merely inserts additional words.
`
`12
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`

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`IPR2019-00889
`U.S. Patent 7,653,508
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`Petition.
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`Even if the Board were to apply Petitioner’s proposed construction for
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`“dominant axis,” however, the Petition should nevertheless be denied for failing to
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`apply such a construction in presenting its challenges, as explained further below
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`in addressing specific claim language.
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`C.
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`“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”
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`No construction is necessary here for the recitation “a dominant axis logic to
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`continuously determine an orientation of a device, to assign a dominant axis, and to
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`update the dominant axis as the orientation of the device changes.”
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`The Petition proposes a construction that substitutes the phrase “dominant
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`axis logic” with the phrase “hardware, software, or both.” Petitioner’s rewrite of the
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`claim language serves no purpose, impermissibly omits limiting claim language,
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`and unnecessarily injects ambiguity. Here, the claim language itself provides
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`definitional context for the “dominant axis logic” by reciting, for example, that it
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`“continuously determine[s] an orientation of a device, to assign a dominant axis,
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`and to update the dominant axis as the orientation of the device changes.”
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`No party has requested that the Board construe this term here under 35 U.S.C.
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`§ 112(6).6 Accordingly, Patent Owner does not address 35 U.S.C. § 112(6) or
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` 6
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` While the Petition repeatedly offers the statement “to the extent Patent Owner
`overcomes the presumption against construction under 35 U.S.C. 112, sixth
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`IPR2019-00889
`U.S. Patent 7,653,508
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`Petitioner’s hypotheticals.
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`D.
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`“a counting logic to count periodic human motions by monitoring
`accelerations relative to the dominant axis”
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`The Petition takes the same erroneous approach to the term “counting logic”
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`that it does with the “dominant axis logic” term addressed in the preceding section
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`above. Accordingly, the proposed construction in the Petition should be rejected as
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`unnecessary for analogous reasons. To be clear, no party has requested that the
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`Board construe this term under 35 U.S.C. § 112(6).7 Accordingly, Patent Owner
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`does not address 35 U.S.C. § 112(6) or Petitioner’s hypotheticals.
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`E.
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`“a counting logic to identify and count periodic human motions”
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`The proposed construction in the Petition should be rejected as unnecessary
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`for analogous reasons presented above. See §VIII.C, supra. To be clear, no party
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`has requested that the Board construe this term under 35 U.S.C. § 112(6).8
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`Accordingly, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
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`hypotheticals.
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`F.
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` “a cadence logic to continuously update a dynamic cadence
`window”
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`The proposed construction in the Petition should be rejected as unnecessary
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`paragraph…” (e.g., Pet. 9-10), the Petitioner provides no authority or evidence for
`its alleged “presumption” or its implicit shifting of its burden of proof here.
`7 See n.6, supra.
`8 See n.6, supra.
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`IPR2019-00889
`U.S. Patent 7,653,508
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`for analogous reasons presented above. See §VIII.C, supra. To be clear, no party
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`has requested that the Board construe this term here under 35 U.S.C. § 112(6).9
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`Accordingly, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
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`hypotheticals.
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`G.
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` “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”
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`The proposed construction in the Petition should be rejected as unnecessary
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`for analogous reasons presented above. See §VIII.C, supra. To be clear, no party
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`has requested that the Board construe this term under 35 U.S.C. § 112(6).10
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`Accordingly, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
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`hypotheticals.
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`IX. PETITIONER FAILS TO MEET ITS BURDEN OF PROVING
`OBVIOUSNESS
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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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 should be denied as failing to meet this burden.
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`The Petition raises the following obviousness challenges:
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`15
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` 9
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` See n.6, supra.
`10 See n.6, supra.
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`Ground
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`Claims
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`Reference(s)
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`IPR2019-00889
`U.S. Patent 7,653,508
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`1
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`2
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`3
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`A.
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`1‒2 and 11‒12
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`6‒8, 15‒16, and 19
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`Pasolini11
`Fabio12
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`3‒4, 13‒14, and 20
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`Pasolini and Fabio
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`Petitioner fails to prove Fabio renders obvious the “cadence
`window” limitations of independent claim 6
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`The Petitioner fails to prove obviousness of “switching the device from the
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`non-active mode to an active mode, after identifying a number of periodic human
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`motions within appropriate cadence windows; and counting a periodic human
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`motion when an acceleration measurement that meets motion criteria is within the
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`cadence window,” as recited in independent claim 6.
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`1.
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`Petitioner fails to prove Fabio’s validation interval (VT) maps
`onto the distinct definition Petitioner offers for “cadence
`window”
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`The Petition relies exclusively on Fabio’s validation interval (sometimes
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`abbreviated as “TV”) as allegedly mapping onto the claimed “cadence window”
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`limitations. Pet. 43-47. Several independently-fatal deficiencies arise from
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`Petitioner’s exclusive reliance on Fabio’s TV, particularly under the construction
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`for “cadence window” relied upon in the Petition (i.e., “a window of time since a
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`last step was counted that is looked at to detect a new step”).
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`11 EX1005, U.S. Patent No. 7,463,997.
`12 EX1006, U.S. Patent No. 7,698,097.
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`IPR2019-00889
`U.S. Patent 7,653,508
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`Fabio describes its TV with reference to its Figure 6, which is copied and
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`annotated below. See, e.g., EX1006, Fig. 6 and accompanying description including,
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`for example, 4:28‒49.
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`last step
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`current step detected
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`Fabio’s TV is retrospective at least in that it is used to validate only the
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`immediately preceding step (shown in Fig. 6 as K-1), as opposed to the current step
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`detected (shown in Fig. 6 as K): “[m]ore precisely, the last step recognized is
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`validated if the instant of recognition of the current step TR(K) falls within a
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`validation interval TV[.]” Id. Unless and until the last step is validated by the current
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`step in the manner disclosed, the last step is not counted. Id. 5:10‒39. The current
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`step (K), in turn, is dependent upon the next step (K+1) for validation and counting.
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`Id. The final step detected will not be counted because it cannot be validated. Id.
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`Accordingly, Fabio’s validation interval TV is not “a window of time since a
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`last step was counted” (as required by Petitioner’s construction) at least because
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`Fabio defines its TV as necessarily starting before the last step is counted. Id.; see
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`also EX2001 ¶¶ 32‒35. Indeed, Fabio’s TV is used in determining whether to count
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`IPR2019-00889
`U.S. Patent 7,653,508
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`the last step. Id. The Petition should therefore be denied because Fabio’s TV does
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`not satisfy the construction for “cadence window” relied upon in the Petition. This
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`deficiency is independently fatal to the ch