`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`SLYDE ANALYTICS, LLC,
`
`Patent Owner.
`
`
`
`Patent No. 10,198,085
`Filing Date: October 31, 2017
`Issue Date: February 5, 2019
`
`Inventors: Alex Bezinge, Adrian Mohni, Daniel Pfeifer, and Musa Dogan
`Title: METHOD AND CIRCUIT FOR SWITCHING A WRISTWATCH
`FROM A FIRST POWER MODE TO A SECOND POWER MODE
`
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2024-00041
`__________________________________________________________________
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`IPR2023-00041
`PATENT NO. 10,198,085
`
`
`Page(s)
`
`INTRODUCTION ........................................................................................... 1
`I.
`THE ’085 PATENT ......................................................................................... 2
`II.
`III. THE ALLEGED PRIOR ART ........................................................................ 5
`A. Yeung .................................................................................................... 5
`B.
`Ruiz ........................................................................................................ 5
`C.
`Alameh .................................................................................................. 6
`D.
`Joselli ..................................................................................................... 6
`IV. CLAIM CONSTRUCTION ............................................................................ 7
`V.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 7
`VI. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED
`IN THE PETITION, AND THE PETITION SHOULD BE DENIED ........... 7
`A. Ground 1: Claims 1-10 Are Not Obvious Over Yeung in View
`of Ruiz .................................................................................................10
`1.
`The Petition Does Not Show that the Combination of
`Yeung and Ruiz Discloses “switching said wristwatch
`from said first power mode to said second power mode
`when a wristturn has been detected,” as Required by
`Claim Element 1[b] ...................................................................10
`The Petition Does Not Show that the Combination of
`Yeung and Ruiz Discloses “detecting that an orientation
`of the wristwatch is in a starting position, wherein said
`step of detecting that the orientation is in the starting
`position comprises detecting that the orientation of the
`wristwatch is held within a first range for a defined
`time,” as Required by Claim Element 1[c.1] ............................12
`
`2.
`
`i
`
`

`

`
`
`B.
`
`IPR2023-00041
`PATENT NO. 10,198,085
`
`
`3.
`
`4.
`
`The Petition Does Not Show that the Combination of
`Yeung and Ruiz Discloses “detecting that an orientation
`of the wristwatch is then in a final position, wherein
`said step of detecting that the orientation is in the final
`position comprises detecting that the orientation is in a
`second range different from said first range,” as
`Required by Claim Element 1[c.2] ...........................................13
`The Petition Does Not Show that the Combination of
`Yeung and Ruiz Discloses “in response to a detection
`that the orientation of the wristwatch is in the second
`range, detecting that the wristwatch remains
`substantially immobile during a predetermined duration
`and that a duration between the starting position and the
`final position is in a predefined range,” as Required by
`Claim Element 1[c.3] ................................................................14
`The Petition Does Not Show that the Combination of
`Yeung and Ruiz Renders Claims 2-10 Obvious .......................16
`Ground 2: Claims 1-4, 6, and 8-10 are Not Obvious Over the
`Combination of Yeung, Alameh, and Joselli ......................................16
`1.
`The Petition Does Not Show that the Combination of
`Yeung and Ruiz Discloses “switching said wristwatch
`from said first power mode to said second power mode
`when a wristturn has been detected,” as Required by
`Claim Element 1[b] ...................................................................16
`The Petition Does Not Show that the Combination of
`Yeung, Alameh, and Joselli Discloses “in response to a
`detection that the orientation of the wristwatch is in the
`second range, detecting that the wristwatch remains
`substantially immobile during a predetermined duration
`and that a duration between the starting position and the
`final position is in a predefined range,” as Required by
`Claim Element 1[c.3] ................................................................17
`
`5.
`
`2.
`
`ii
`
`

`

`
`
`3.
`
`IPR2023-00041
`PATENT NO. 10,198,085
`
`
`The Petition Does Not Show that the Combination of
`Yeung, Alameh, and Joselli Renders Claims 2-4, 6, and
`8-10 Obvious .............................................................................19
`Ground 3: Claims 5 and 7 are Not Obvious By the
`Combination of Yeung, Alameh, Joselli, and Yano ...........................19
`VII. THE PETITION SHOULD BE DENIED IN THE DISCRETION OF
`THE DIRECTOR UNDER 35 U.S.C. § 314(a) ............................................19
`A.
`The Parallel District Court Litigation and the Petition Involve
`the Same Parties ..................................................................................21
`The District Court Litigation Involves Substantially the Same
`Claims ..................................................................................................21
`Proximity of the District Court’s Trial Date .......................................22
`Significant Investment and Petitioner’s Delay in Filing the
`Petition .................................................................................................23
`No Stay of the Parallel District Court Litigation ................................24
`E.
`Other Factors Favor Discretionary Denial ..........................................25
`F.
`VIII. CONCLUSION ..............................................................................................25
`
`
`C.
`D.
`
`C.
`
`B.
`
`iii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`IPR2023-00041
`PATENT NO. 10,198,085
`
`
` Page(s)
`
`Cases
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) ......................................... 19
`Apple, Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00355, Paper 9 (P.T.A.B. June 26, 2015) ............................................. 8
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 9
`Cisco Sys., Inc. v. Ramot at Tel Aviv Univ. Ltd.,
`IPR2020-00122, Paper 15 (P.T.A.B. May 15, 2020) ................................... 21, 23
`Edward LifeSciences Corp. v. Evalve, Inc.,
`IPR2019-01479, Paper 7 (P.T.A.B. Feb. 26, 2020) ............................................ 22
`Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017)........................................... 21
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) .................................................................................................. 8
`Innogenetics, N.V. v. Abbott Lab’ys.,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................ 9
`Intell. Ventures II v. FedEx Corp.,
`No. 2:16-cv-00980-JRG, Dkt. 141 (E.D. Tex. Oct. 24, 2017) ..................... 24, 25
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 9
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 8
`
`iv
`
`

`

`IPR2023-00041
`PATENT NO. 10,198,085
`
`
`
`Lennon Image Techs., LLC v. Macy’s Retail Holdings, Inc.,
`2:13-CV-00235-JRG, 2014 WL 4652117 (E.D. Tex. Sept. 18,
`2014) ................................................................................................................... 24
`Los Angeles Biomedical Rsch. Inst. at Harbor-UCLA Med. Ctr. v. Eli
`Lilly & Co.,
`849 F.3d 1049 (Fed. Cir. 2017) ............................................................................ 9
`Next Caller Inc. v. TrustID, Inc.,
`IPR2019-00961, -00962, Paper 10 (P.T.A.B. Oct. 16, 2019) ............................ 23
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018)........................................... 21
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 8
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2019-01218, Paper 7 (P.T.A.B. Jan. 7, 2020) .............................................. 22
`Samsung Elecs. Co., v. Slyde Analytics, LLC,
`IPR2024-00041, Paper 5 (P.T.A.B. November 22, 2023) .................................. 21
`Slyde Analytics LLC v. Samsung Elecs. Co.,
`No. 2:23-cv-00083-RWS-RSP (E.D. Tex. October 5, 2023) ............................. 22
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ............................................................................ 8
`Supercell Oy v. Gree, Inc.,
`IPR2020-00513, Paper 11 (P.T.A.B. June 24, 2020) ......................................... 22
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) ............................................................................ 9
`Statutes
`35 U.S.C. § 314(a) ................................................................................... 2, 19, 20, 25
`35 U.S.C. § 314(b)(1)............................................................................................... 22
`35 U.S.C. § 316(a)(11) ............................................................................................. 22
`
`v
`
`

`

` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`LIST OF EXHIBITS
`
`Description of Document
`Second Amended Docket Control Order, Dkt. 33, Slyde Analytics
`LLC v. Samsung Elecs. Co., No. 2:23-cv-00083-RWS-RSP (E.D.
`Tex. October 5, 2023)
`Defendants’ Joint Patent L.R. 3-3 Invalidity Contentions and
`Subject Matter Ineligibility Contentions, Slyde Analytics LLC v.
`Samsung Elecs. Co., No. 2:23-cv-00083-RWS-RSP, served
`November 14, 2023
`
`Exhibit No.
`
`2001
`
`2002
`
`
`
`
`
`vi
`
`

`

`
`I.
`
`INTRODUCTION
`On November 2, 2023, Samsung Electronics Co., Ltd. and Samsung
`
`IPR2023-00041
`PATENT NO. 10,198,085
`
`Electronics America, Inc. (collectively, “Petitioner” or “Samsung”) submitted a
`
`petition (Paper 3, “Petition” or “Pet.”) to institute inter partes review (“IPR”) of U.S.
`
`Patent No. 10,198,085 (Ex. 1001, the “’085 Patent”), challenging claims 1-10 (the
`
`“Challenged Claims”). The Petition asserts that (i) Claims 1-10 are obvious over
`
`U.S. Patent Application Publication No. US 2009/0164219 (“Ex. 1005” or “Yeung”)
`
`in view of U.S. Patent No. 8,228,292 (“Ex. 1006” or “Ruiz”); (ii) Claims 1-4, 6, and
`
`8-10 are obvious over Yeung combined with U.S. Patent Application Publication
`
`No. US 2011/0148752 (“Ex. 1007” or “Alameh”) and further combined with Mark
`
`Joselli and Esteban Clua, gRmobile: A Framework for Touch Accelerometer
`
`Gesture Recognition for Mobile Games, IEEE 141-150 (2010) (“Ex. 1008” or
`
`“Joselli”); and (iii) Claims 5 and 7 are obvious over Yeung combined with Alameh
`
`and Joselli and further combined with U.S. Patent No. 8,615,375 (“Yano”). Pet. at
`
`3. The Board should deny the Petition for at least the reasons described briefly
`
`below.
`
`Petitioner also fails to show that both combinations of Yeung and Ruiz and
`
`Yeung, Alameh, and Joselli disclose at least “switching said wristwatch from said
`
`first power mode to said second power mode when a wristturn has been detected,”
`
`and “in response to a detection that the orientation of the wristwatch is in the second
`
`1
`
`

`

`range, detecting that the wristwatch remains substantially immobile during a
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`predetermined duration and that a duration between the starting position and the final
`
`position is in a predefined range,” as required by Claim 1 of the ’085 Patent. In
`
`particular, neither Petitioner’s Grounds 1 and 2 show that the cited references
`
`disclose a wristwatch with multiple power modes or a duration of time between the
`
`starting position and final position of the wristwatch in a predefined range.
`
`The Board should exercise its discretion to deny the Petition under 35 U.S.C.
`
`§ 314(a) for at least the following reasons: (i) there exists a parallel District Court
`
`Litigation between the same parties or real-parties-in-interest; (ii) the District Court
`
`Litigation involves the same subject patent (the ’085 Patent) with substantially the
`
`same claims; (iii) the District Court’s trial will be over three months before the
`
`projected statutory deadline; (iv) the parties have heavily invested in the District
`
`Court Litigation and a trial date is set for February 18, 2025; and (v) there is no stay
`
`of the parallel District Court Litigation.
`
`II. THE ’085 PATENT
`The ’085 Patent “is related to a method for switching a wristwatch from a first
`
`power mode to a second power mode, and to a wristwatch which can be switched
`
`from a first power mode to a second power mode. The present invention is also
`
`related to wristwatches with a touch panel and a plurality of power modes. ’085
`
`Patent, 1:15-20.
`
`2
`
`

`

`As the ’085 Patent describes, the various components for wristwatches that
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`would determine the claimed wristwatch’s first power mode and second power mode
`
`cannot be compared to or combined with the components for mobile phones or other
`
`larger computing devices. The ’085 Patent further describes that wristwatches
`
`possess a greater potential for false positives, namely, of “undesirable activation of
`
`the touch panel,” because of higher acceleration, during normal use or during sport,
`
`due to their size and mass.
`
`EP2315101 describes a method combining use of an
`inertial sensor and of a touch panel for detecting taps on
`the touch panel of a device such as a smartphone. The
`detection of taps by the touch panel is mainly based on the
`amplitude of the acceleration signal; if this amplitude is
`higher than a threshold, then the touch panel will be woken
`up to confirm this detection. Although this process might
`work well in smartphones, it has been found that a more
`precise detection method would be needed
`for
`wristwatches. Indeed, wristwatches are often subject to
`high acceleration values, sometimes in the magnitude of
`50 G or higher, in normal use or during sport. The inertial
`system described in this document is not able to
`distinguish reliably between those high acceleration
`values in normal use and acceleration due to a tap or other
`gesture. This results in numerous undesirable activation of
`the touch panel and therefore in a decrease of the power
`reserve. Moreover, the user is requested to exert a strong
`pressure on the display in order to produce an acceleration
`above the detection threshold.
`
`
`’085 Patent, 1:55-2:6 (emphasis added).
`
`
`3
`
`

`

`The ’085 Patent explicitly describes that various “functionalities” can be
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`activated and displayed by the user within one power mode (i.e., without switching
`
`power modes):
`
`The display 4 can display various indications, for example
`the current time, date, chrono, reverse counter, calendar,
`etc. . . . or phases of the moon as shown in FIG. 1. In order
`to extend the watch’s functionalities, the user can switch
`from one display mode to another and for example
`replace the card displayed in FIG. 1 with other cards. In
`a preferred embodiment, the user can move from one card
`to the other with a slide (fast) or scroll (slow) gesture for
`moving through and viewing a collection of available
`displays or cards. Scrolling or sliding in the horizontal or
`vertical direction is achieved by moving the finger on the
`glass in the corresponding direction.
`
`Id., 4:60-5:4 (emphasis added).
`
`As noted in the ’085 Patent, the claimed “predefined range” or “given range”
`
`can be the angular range in relation to the user’s face between the starting position
`
`of the wristwatch and the final position of the wristwatch:
`
`The accelerometer 23 is set so as to generate an interrupt
`when its position changes and reaches a given range that
`is maintained during a predetermined duration, as will be
`described.
`
`
`Id., 9:48-51 (emphasis added).
`
`
`The duration between the starting position and the final
`position may be measured. If this duration is not in a
`predefined range, the method is interrupted. Otherwise,
`the touch controller 24 changes to a No-movement &
`Angle Check mode. Alternatively, this No-movement &
`
`4
`
`

`

` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`Angle Check detection may be performed by the
`embedded
`processing
`capabilities within
`the
`accelerometer 23.
`
`
`Id., 10:18-24 (emphasis added).
`
`III. THE ALLEGED PRIOR ART
`A. Yeung
`Yeung relates to using accelerometer-based orientation and/or movement
`
`sensing to control wearable devices, such as wrist-worn audio recorders and
`
`wristwatches. Ex. 1005, [0005].
`
`Yeung describes that an “audio recording function of audio recorder 30 turns
`
`on automatically when the user positions audio recorder 30 in a predetermined
`
`orientation, such as the natural orientation for recording shown in FIG. 6, and/or
`
`after audio recorder 30 has completed a predetermined movement” without noting
`
`whether the function is activated within a power mode or not. Ex. 1005, [0048].
`
`B. Ruiz
`Ruiz focuses exclusively on mobile devices:
`
`This document relates to systems and techniques for
`interpreting motion-based user
`inputs
`to a mobile
`computing device.
`
`
`Ex. 1006, 1:15-17.
`
`
`In general, the system is represented by a mobile device
`202, such as a smart phone, that has a touch screen display
`208.
`
`
`
`5
`
`

`

`Id., 6:47-49.
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`Describing how to determine an intentional movement by the user, Ruiz
`
`discloses that the “user may hold the device in this orientation for a time period,
`
`which may be as little as a split instant,” with no upper bound on time (i.e., an
`
`indefinite or not defined time). Id., 4:53-63.
`
`C. Alameh
`Alameh focuses exclusively on mobile devices:
`
`The present invention relates generally to mobile devices
`and, more particularly, to methods and systems capable of
`being implemented by mobile devices that facilitate
`interactions with one or more of those mobile devices.
`
`Mobile devices such as cellular telephones, smart phones,
`and other handheld or portable electronic devices such as
`personal digital assistants (PDAs ), headsets, MP3 players,
`etc. have become increasingly popular and ubiquitous. As
`more and more people carry mobile devices with them,
`there is a desire that such mobile devices become capable
`of numerous functions, yet also be easy to use.
`
`
`Ex. 1007, [0002]-[0003].
`
`Joselli
`D.
`Joselli is directed to mobile phone games and gestures used in mobile phone
`
`games:
`
`Mobile phone games are usually designed to be able to
`play using the traditional number pads of the handsets.
`This is stressfully difficult for the user interaction and
`consequently for the game design. Because of that, one of
`
`6
`
`

`

`the most desired features of a mobile game is the usage of
`few buttons as possible.
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`…
`This framework can also be used for the development of
`mobile application with the use of gestures.
`
`
`Ex. 1008, 141.
`
`IV. CLAIM CONSTRUCTION
`For the purposes of this Preliminary Response, Patent Owner agrees with
`
`Petitioner that claim construction is not warranted. Pet. at 8. At this stage, Patent
`
`Owner does not believe claim construction is required to resolve any issues.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`For the purposes of this Preliminary Response only, Patent Owner utilizes
`
`Petitioner’s proposed level of skill in the art: “a bachelor’s degree in electrical
`
`engineering, computer science, computer engineering, or a related field, and two-
`
`three years of experience in the research, design, development, or testing of user
`
`interfaces, inertial sensors, touchscreens, and human-computer interaction in mobile
`
`devices, with additional education substituting for experience and vice-versa.” Pet.
`
`at 7 (citations omitted).
`
`VI. PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS
`ADVANCED IN THE PETITION, AND THE PETITION
`SHOULD BE DENIED
`The question of obviousness is resolved on the basis of underlying factual
`
`determinations, including: (1) the scope and content of the prior art, (2) any
`
`7
`
`

`

`differences between the claimed subject matter and the prior art, (3) the level of skill
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`in the art, and (4) so-called secondary considerations where in evidence. Graham v.
`
`John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex
`
`Inc., 550 U.S. 398, 406 (2007). The question is not whether the differences
`
`themselves would have been obvious, but whether the claimed invention as a whole
`
`would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537
`
`(Fed. Cir. 1983).
`
`The Board has held that a failure to identify the differences between the
`
`claimed subject matter and the prior art is fatal to an obviousness challenge. See,
`
`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
`
`Institution of Inter Partes Review, Paper 9 at 9-10 (P.T.A.B. June 26, 2015)
`
`(denying institution for failure to identify the differences between the claimed
`
`subject matter and the prior art).
`
`In arriving at an obviousness determination, the Board must sufficiently
`
`explain and support the conclusions that the prior-art references disclose all the
`
`elements recited in the Challenged Claims and a relevant, skilled artisan not only
`
`could have made, but would have been motivated to combine all the prior art
`
`references in the way the patent claims and reasonably expected success. Pers. Web
`
`Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, even if all
`
`the claim elements are found across a number of references, an obviousness
`
`8
`
`

`

`determination must consider whether a person of ordinary skill in the art would have
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`the motivation to combine those references. Intelligent Bio-Sys., Inc. v. Illumina
`
`Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles Biomedical
`
`Rsch. Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1067 (Fed.
`
`Cir. 2017) (vacating and remanding an obviousness determination, in part, because
`
`the Board did not make factual finding as to whether there was an apparent reason
`
`to combine all three prior art references to achieve the claimed invention and whether
`
`a person of skill in the art would have had a reasonable expectation of success from
`
`such a combination). This combinability determination, as supported by an
`
`articulated motivation to combine, requires a plausible rationale as to why those
`
`prior art references would have worked together. Broadcom Corp. v. Emulex Corp.,
`
`732 F.3d 1325, 1335 (Fed. Cir. 2013). Absent some articulated rationale, a “common
`
`sense” finding is no different than the conclusory statement “would have been
`
`obvious.” In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). Of additional
`
`importance, “knowledge of a problem and motivation to solve it are entirely different
`
`from motivation to combine particular references. . . .” Innogenetics, N.V. v. Abbott
`
`Lab’ys., 512 F.3d 1363, 1373 (Fed. Cir. 2008).
`
`9
`
`

`

` IPR2023-00041
`PATENT NO. 10,198,085
`
`A. Ground 1: Claims 1-10 Are Not Obvious Over Yeung in
`View of Ruiz
`The Petition Does Not Show that the Combination of Yeung
`1.
`and Ruiz Discloses “switching said wristwatch from said first
`power mode to said second power mode when a wristturn has
`been detected,” as Required by Claim Element 1[b]
`Claim 1 of the ’085 Patent recites “switching said wristwatch from said first
`
`power mode to said second power mode when a wristturn has been detected.”
`
`Petitioner only relies on Yeung to disclose this claim limitation. Pet. at 29.
`
`Petitioner fails to demonstrate that Yeung discloses multiple power modes.
`
`Petitioner equates activating functionality, i.e., an audio recorder, with switching
`
`power modes, but Petitioner presents no evidence that Yeung changes power modes
`
`when the audio recorder is activated. Pet. at 29. The fact that a function may cause
`
`a device to consume more power than when the device is idle does not demonstrate
`
`that the device has also changed power modes.
`
`Petitioner incorrectly argues that activating an audio recording function shows
`
`a “switch from a lower-power ‘first power mode’ to a higher-power ‘second power
`
`mode’ because audio recording would consume additional processing power.” Pet.
`
`at 29. Petitioner’s understanding is incorrect because Yeung’s audio recording is just
`
`a functionality that can be activated or not, which is irrelevant as to whether there
`
`are switched power modes. In fact, the ’085 Patent explicitly describes that various
`
`“functionalities” can be activated and displayed by the user within one power mode
`
`10
`
`

`

`(i.e., without switching power modes):
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`The display 4 can display various indications, for example
`the current time, date, chrono, reverse counter, calendar,
`etc. . . . or phases of the moon as shown in FIG. 1. In order
`to extend the watch’s functionalities, the user can switch
`from one display mode to another and for example
`replace the card displayed in FIG. 1 with other cards. In
`a preferred embodiment, the user can move from one card
`to the other with a slide (fast) or scroll (slow) gesture for
`moving through and viewing a collection of available
`displays or cards. Scrolling or sliding in the horizontal or
`vertical direction is achieved by moving the finger on the
`glass in the corresponding direction.
`
`’085 Patent, 4:60-5:4 (emphasis added). Therefore, activating a functionality (e.g.,
`
`an audio recording), as Yeung describes, does not disclose the claimed “switching
`
`said wristwatch from said first power mode to said second power mode.”
`
`
`
`Petitioner attempts to bootstrap its argument to the ’085 Patent, arguing that
`
`“[t]his is similar to the challenged patent’s characterization of the second power
`
`mode as a ‘time display’ mode as opposed to a ‘power saving’ first power mode.”
`
`Pet. at 29 (citing Ex. 1001, 6:2-6). The Petition then quotes the ’085 Patent’s
`
`disclosure that “the wristwatch should be switched to a second power mode for
`
`example in order to activate the display.” Pet. at 29 (quoting Ex. 1001, 9:40-42).
`
`However, this disclosure merely shows that in the ’085 Patent, a power mode is
`
`changed when certain functionality is enabled; it does not show, as Petitioner argues,
`
`that Yeung’s activation of its display necessarily causes a corresponding change in
`
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`

`power mode.
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`Therefore, the Petition is deficient because it fails to show that claim element
`
`1[b] is disclosed or rendered obvious by the combination of Yeung and Ruiz.
`
`2.
`
`The Petition Does Not Show that the Combination of Yeung
`and Ruiz Discloses “detecting that an orientation of the
`wristwatch is in a starting position, wherein said step of
`detecting that the orientation is in the starting position
`comprises detecting that the orientation of the wristwatch is
`held within a first range for a defined time,” as Required by
`Claim Element 1[c.1]
`Claim 1 of the ’085 Patent recites “detecting that an orientation of the
`
`wristwatch is in a starting position, wherein said step of detecting that the orientation
`
`is in the starting position comprises detecting that the orientation of the wristwatch
`
`is held within a first range for a defined time.”
`
`The Petition does not show that the combination of Yeung and Ruiz discloses
`
`a “defined time” within which the orientation of the wristwatch is detected to be held
`
`within a first range. Even Petitioner’s own citation to Ruiz’s disclosure that the “user
`
`may hold the device in this orientation for a time period, which may be as little as a
`
`split instant,” actually indicates an undefined time period because the time “may be
`
`as little as a split instant” with no upper bound on time (i.e., an indefinite or not
`
`defined time). Pet. at 33 (citing Ex. 1006, 4:53-63) (emphasis added).
`
`Therefore, the Petition is deficient because it fails to show that claim element
`
`1[c.1] is disclosed or rendered obvious by the combination of Yeung and Ruiz.
`
`12
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`

`

`3.
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`The Petition Does Not Show that the Combination of Yeung
`and Ruiz Discloses “detecting that an orientation of the
`wristwatch is then in a final position, wherein said step of
`detecting that the orientation is in the final position comprises
`detecting that the orientation is in a second range different
`from said first range,” as Required by Claim Element 1[c.2]
`Claim 1 of the ’085 Patent recites “detecting that an orientation of the
`
`wristwatch is then in a final position, wherein said step of detecting that the
`
`orientation is in the final position comprises detecting that the orientation is in a
`
`second range different from said first range.”
`
`Since the combination of Yeung and Ruiz does not disclose the claimed
`
`“detecting that an orientation of the wristwatch is in a starting position, wherein said
`
`step of detecting that the orientation is in the starting position comprises detecting
`
`that the orientation of the wristwatch is held within a first range for a defined time,”
`
`it cannot now disclose the claimed “detecting that an orientation of the wristwatch
`
`is then in a final position, wherein said step of detecting that the orientation is in the
`
`final position comprises detecting that the orientation is in a second range different
`
`from said first range.” See supra Section VI.A.2.
`
`Therefore, the Petition is deficient because it fails to show that claim element
`
`1[c.2] is disclosed or rendered obvious by the combination of Yeung and Ruiz.
`
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`

`

`4.
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`The Petition Does Not Show that the Combination of Yeung
`and Ruiz Discloses “in response to a detection that the
`orientation of the wristwatch is in the second range, detecting
`that the wristwatch remains substantially immobile during a
`predetermined duration and that a duration between the
`starting position and the final position is in a predefined
`range,” as Required by Claim Element 1[c.3]
`Claim 1 of the ’085 Patent recites “in response to a detection that the
`
`orientation of the wristwatch is in the second range, detecting that the wristwatch
`
`remains substantially immobile during a predetermined duration and that a duration
`
`between the starting position and the final position is in a predefined range.”
`
`Since the combination of Yeung and Ruiz does not disclose the claimed
`
`“detecting that an orientation of the wristwatch is then in a final position, wherein
`
`said step of detecting that the orientation is in the final position comprises detecting
`
`that the orientation is in a second range different from said first range,” it cannot
`
`now disclose the claimed “in response to a detection that the orientation of the
`
`wristwatch is in the second range, detecting that the wristwatch remains
`
`substantially immobile during a predetermined duration and that a duration between
`
`the starting position and the final position is in a predefined range.” See supra
`
`Section VI.A.3.
`
`Petitioner also does not show that the combination of Yeung and Ruiz
`
`discloses the claimed “duration between the starting position and the final position
`
`is in a predefined range.” Instead, Petitioner only argues that “[t]he period of time
`
`14
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`from when the user begins the double flip to when the user completes the double flip
`
` IPR2023-00041
`PATENT NO. 10,198,085
`
`
`is within a predefined range of 200ms.” Pet. a