Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: April 9, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SLYDE ANALYTICS, LLC,
`Patent Owner.
`
`IPR2024-00041
`Patent 10,198,085 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, ST. JOHN COURTENAY, III, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`COURTENAY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 12
`Date: April 9, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`SLYDE ANALYTICS, LLC,
`Patent Owner.
`
`IPR2024-00041
`Patent 10,198,085 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, ST. JOHN COURTENAY, III, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`COURTENAY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`IPR2024-00041
`Patent 10,198,085 B2
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner”) filed a Petition (Paper 3, “Pet.”) requesting
`an inter partes review of claims 1–10 (“the challenged claims”) of U.S.
`Patent No. 10,198,085 B2 (Ex. 1001, “the ’085 patent”). Slyde Analytics,
`LLC (“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim.
`Resp.”).
`With our authorization, Petitioner filed a Preliminary Reply (Paper 10,
`“Prelim. Reply”) to address Patent Owner’s arguments in the Preliminary
`Response regarding discretionary denial under 35 U.S.C. § 314(a), and
`Patent Owner filed a Preliminary Sur-reply. Paper 11 (“Prelim. Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter
`partes review may not be instituted unless the information presented in the
`Petition “shows that there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence
`of record before us, we conclude Petitioner has not shown a reasonable
`likelihood that it would prevail in establishing unpatentability of any
`challenged claim of the ’085 patent.
`Accordingly, we decline to institute inter partes review.
`
`
`A.
`
`INTRODUCTION
`
`I.
`Real Parties in Interest
`Petitioner identifies Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. as the real parties in interest. Pet. 1. Patent
`Owner identifies itself, Slyde Analytics, LLC, as the real party-in-interest.
`Paper 5, 2.
`
`2
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`IPR2024-00041
`Patent 10,198,085 B2
`Related Matters
`B.
`The parties identify the following related district court litigation:
`Slyde Analytics LLC v. Samsung Electronics Co., Ltd., et al., Case No. 2-23-
`cv-00083 (E.D. Tex.); Slyde Analytics LLC v. Zepp Health Corp., Case No.
`2-23-cv-00172 (E.D. Tex.). Pet. 1; Paper 5, 2.1
`The ’085 patent
`C.
`The ’085 patent is entitled “Method and Circuit for Switching a
`Wristwatch from a First Power Mode to a Second Power Mode.” Ex. 1001,
`code (54). The patent seeks to provide faster switching of a device into a
`different power mode, without causing unwanted changes of power mode.
`Id. at 2:22–27. The patent also discusses the use of a detected “tap” as a
`signal. Id. at 2:51–3:3.
`The ’085 patent describes that a “first power mode could be a sleep
`mode, or standby mode, in which the power consumption is reduced but no
`indications are displayed on the display,” and a “second power mode could
`be an operating mode where indications are displayed on the display.” Ex.
`1001, 3:15–19. The patent gives examples of using taps and wristturns to
`detect an intent to change power modes. Id. at 9:29–42.
`Illustrative Claim
`D.
`Petitioner challenges claims 1–10 of the ’085 patent. Pet. 1.
`Claim 1, the sole independent claim, is illustrative of the challenged
`claims, and recites the following (bracketing and identifiers added):
`1[pre]. A method for switching a wristwatch from a first
`power mode to a second power mode, comprising:
`[a] using an accelerometer for detecting a wristturn, and
`
`
`1 Patent Owner appears to have incorrectly listed the case numbers as
`starting with “3:23” rather than “2:23.”
`
`3
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`IPR2024-00041
`Patent 10,198,085 B2
`[b] switching said wristwatch from said first power mode to
`said second power mode when a wristturn has been detected,
`[c] wherein said step of detecting a wristturn comprises:
`[c.1] 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;
`[c.2] 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,
`[c.3] 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.
`Ex. 1001, 10:59–11:15; Pet. 25–36.
`
`F.
`
`E. Declaration
`Petitioner filed a Declaration of Professor Benjamin B. Bederson,
`Ph.D. (Ex. 1002).
`
`Prior Art
`Petitioner submits the following asserted references as evidence:
`Prior Art
`Exhibit
`No.
`1005
`1006
`1007
`1008
`
`Yeung, US 2009/0164219 A1 (published June 25, 2009)
`Ruiz, US 8,228,292 B1 (issued July 24, 2012)
`Alameh, US 2011/0148752 A1 (published June 23, 2011)
`Joselli, “gRmobile: A Framework for Touch and
`Accelerometer Gesture Recognition for Mobile Games,” VIII
`Brazilian Symposium on Games and Digital Entertainment,
`IEEE, pp. 141–150 (2009)
`Yano, US 8,615,375 B1 (issued Dec. 24, 2013)
`
`
`
`1009
`
`4
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`IPR2024-00041
`Patent 10,198,085 B2
`Summary of Yeung (Ex. 1005)
`a.
`Yeung is titled “Accelerometer-Based Control of Wearable Devices.”
`Ex. 1005, code (54). Yeung “relates to using accelerometer-based
`orientation and/or movement sensing to control wearable devices, such as
`wrist-worn audio recorders and wristwatches.” Id. ¶ 5.
`Yeung describes that motion activation has been used to operate
`wristwatches, but notes limits to “simple motion-activated on-off switches.”
`Ex. 1005 ¶ 11. Yeung discloses improvements by using accelerometers to
`sense orientation and movement for control of devices such as wrist-worn
`audio recorders and wristwatches. Id. ¶ 14. For example, Yeung discloses
`detecting a user positioning an audio recorder in front of his or her mouth,
`with the front housing of the recorder facing the mouth, by detecting “the
`natural movement of lifting the arm upwards from a resting position (i.e.
`from the side of the body or from in front of the lower end of the torso) and
`tilting the wrist towards the mouth to activate audio recording.” Id. ¶ 47.
`Summary of Ruiz (Ex. 1006)
`b.
`Ruiz is titled “Flipping for Motion-Based Input,” and “relates to
`systems and techniques for interpreting motion-based user inputs to a mobile
`computing device.” Ex. 1006, code (54), 1:15–17. Ruiz describes
`techniques for placing a mobile device in and out of motion-based input
`mode, such as by repeating a motion, using a different motion, or following
`a motion with “a delimiter input.” Id. at 1:44–64. Ruiz also discloses a
`variety of motions that can be interpreted as inputs. Id. at 4:24–5:42. Ruiz
`describes the “delimiter” as an input that may be used by a user “to indicate
`that a user would like to ‘open’ the device to additional motion-based inputs-
`i.e., to switch input modes on the device so that the other motion-based
`inputs, which were previously disabled, will be enabled.” Id. at 4:26–31.
`
`5
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`Patent 10,198,085 B2
`One example motion is shown in Figure 1B, reproduced below, which
`shows five images to convey a sequence of motions.
`
`
`
`Figure 1B shows a user holding a phone in their right hand, then
`rotating their hand counter-clockwise until the phone has been rotated about
`170 degrees, then rotated back to the original position. Ex. 1006, 6:36–42.
`Ruiz also describes using “inaction, such as by not moving the device for a
`predetermined time period” as an indication or input. Id. at 1:56–59.
`Summary of Alameh (Ex. 1007)
`c.
`Alameh is titled “Mobile Device with User Interaction Capability and
`Method of Operating Same.” Ex. 1007, code (54). Alameh relates to
`“support for interactions with one or more mobile devices with acceleration
`and proximity sensing.” Id. ¶ 17. Alameh describes “a mobile device
`including an accelerometer and infrared sensor is configured to associate
`commands (or, in some cases, to learn commands) through accelerometer
`sensing and then to actuate the commands based on infrared sensing, or vice-
`versa.” Id.
`Alameh discloses that to initiate a command on a device using its
`method, after starting the operation, the mobile device “is placed in a
`substantially motionless orientation for a preset amount of time.” Ex. 1007
`¶ 31. The motionlessness of the mobile device as sensed serves as a cue to
`the mobile device that the mobile device is potentially about to be moved in
`a manner that signifies that a command selection is forthcoming. Id. ¶ 32. If
`
`6
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`IPR2024-00041
`Patent 10,198,085 B2
`motion is then detected, the processor uses the accelerometer to track the
`motion of the mobile device 102 during movement. Id. The motion is
`tracked until the mobile device becomes relatively stationary. Id. Then, the
`processor compares the tracked movement to a list of numerous
`predefined/pre-stored motions, and searches the memory for preselected
`commands associated with the motion that has been sensed. Id. ¶ 33.
`Summary of Joselli (Ex. 1008)
`d.
`Joselli, titled “gRmobile: A Framework for Touch and Accelerometer
`Gesture Recognition for Mobile Games,” is a scholarly article about mobile
`phone games. Ex. 1008, 141. Joselli describes that “with the evolution of
`the mobile phones, more types of user interaction are appearing, like touch
`and accelerometer input,” and with “mobile phones equipped with 3D
`accelerometers, developers can use the simple motion of the device to
`control the game or use complex accelerated gestures.” Id. Joselli also
`describes “dragged and pressed” inputs on touch screen devices that have
`become more common. Id. at 142. Joselli “presents a novel framework for
`touch/accelerometer gesture recognition that uses hidden Markov model for
`recognition of the gestures.” Id. at 141. Joselli notes that “a good gesture
`needs a duration of more than 0.6 seconds and less than 2 seconds.” Id.
`at 144.
`
`Summary of Yano (Ex. 1009)
`e.
`Yano is entitled “Motion Determination Apparatus and Motion
`Determination Method.” Ex. 1009, code (54). Yano’s “embodiments relate
`an apparatus determining a motion of an apparatus.” Id. at 1:14–15. Yano
`describes:
`a mobile terminal main body is moved in accordance with a
`specific operation pattern, and an acceleration of the motion of
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`IPR2024-00041
`Patent 10,198,085 B2
`the mobile terminal main body is detected when the mobile
`terminal main body is moved in accordance with the specific
`operation pattern. In a preliminary phase to the identification
`of the operation pattern of the mobile terminal responsive to the
`detected acceleration, it is verified whether a still state in which
`the acceleration of the mobile terminal is equal to or below a set
`threshold value has continued for a specific period of time. If
`the still state has continued for the specific period of time, the
`operation is identified.
`Id. at 1:39–50. Yano describes that the reason for the invention stems from
`the situation where “[e]ven if a user thinks he has provided the same
`instruction to a device using a motion UI, a habit of the user of the device
`may cause a motion sensor to determine that a motion different from that
`intended by the user has been made.” Id. at 3:6–9.
`Figure 33, reproduced below, illustrates the relationships between
`detected motions and their determined, corresponding instructions:
`
`8
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`IPR2024-00041
`Patent 10,198,085 B2
`
`
`Figure 33, showing the relationship between motions and instructions.
`Yano’s “application performs a process in response to the candidate
`motion or the final motion determined by the motion determiner 103, and the
`final motion determiners 107, 127, and 156.” Ex. 1009, 20:56–59.
`
`9
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`IPR2024-00041
`Patent 10,198,085 B2
`The Asserted Grounds of Unpatentability
`G.
`Petitioner challenges claims 1–10 of the ’085 patent based upon the
`following grounds:
`Claim(s) Challenged
`1–10
`1–4, 6, 8–10
`5, 7
`
`Reference(s)/Basis
`Yeung, Ruiz
`Yeung, Alameh, Joselli
`Yeung, Alameh, Joselli, Yano
`
`35 U.S.C. §
`103(a)2
`103(a)
`103(a)
`
`Pet. 3. Patent Owner disputes Petitioner’s asserted grounds of
`unpatentability. See generally Prelim. Resp.
`
`
`
` LEVEL OF ORDINARY SKILL IN THE ART
`II.
`We consider the asserted grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art (POSITA). In assessing
`the level of ordinary skill in the art, various factors may be considered,
`including the “type of problems encountered in the art; prior art solutions to
`those problems; rapidity with which innovations are made; sophistication of
`the technology; and educational level of active workers in the field.” In re
`GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom
`Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir.
`1986)). “[O]ne or more factors may predominate.” Id.
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102, 103, and was effective on
`March 16, 2013. The ’085 patent claims the benefit of filing dates prior to
`the effective date of the applicable AIA amendments. See Ex. 1001, (codes
`30, 63). Therefore, we refer to the pre-AIA versions of 35 U.S.C. §§ 102,
`103.
`
`
`10
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`IPR2024-00041
`Patent 10,198,085 B2
`Relying on the declaration testimony of Dr. Bederson, Petitioner
`contends that an ordinarily skilled artisan for the ’085 patent:
`would have had 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, and
`human-computer interaction in mobile devices, with additional
`education substituting for experience and vice versa.
`
`Pet. 7 (citing Ex. 1002 ¶¶ 37–41). At this stage, Patent Owner “utilizes
`Petitioner’s proposed level of skill in the art.” Prelim. Resp. 7.
`For purposes of this Decision, we adopt Petitioner’s definition of the
`level of ordinary skill in the art. On the present record, we are satisfied that
`this definition comports with the level of skill necessary to understand and
`implement the teachings of the ’085 patent and the asserted prior art. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that
`the prior art itself can reflect appropriate level of ordinary skill in art).
`
`
`III. CLAIM CONSTRUCTION
`In interpreting the claims of the ’085 patent, we “us[e] the same
`claim construction standard that would be used to construe the claim[s] in a
`civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b)
`(2023). Accordingly, our claim construction standard is the same as that of
`a district court. See id. Under the standard applied by district courts, claim
`terms are generally given their plain and ordinary meaning, as would have
`been understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v.
`AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are
`only two exceptions to this general rule: (1) when a patentee sets out a
`
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`IPR2024-00041
`Patent 10,198,085 B2
`definition and acts as his own lexicographer, or (2) when the patentee
`disavows the full scope of a claim term either in the specification or during
`prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362,
`1365 (Fed. Cir. 2012).
`Petitioner “does not believe that any term requires construction.”
`Pet. 8. Patent Owner “agrees with Petitioner that claim construction is not
`warranted.” Prelim. Resp. 7.
`However, for the reasons discussed infra, we determine that at least
`the claim 1 terms “first power mode” and “second power mode” require
`explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368,
`1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms
`. . . that are in controversy, and only to the extent necessary to resolve the
`controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999))). We construe these terms below, in our
`analysis of Petitioner’s ground 1 challenge.
`
`
`IV. PRINCIPLES OF LAW
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
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`Patent 10,198,085 B2
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). 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 differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when in evidence, objective
`evidence of nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “[W]hen a patent claims a structure already known in
`the prior art that is altered by the mere substitution of one step for another
`known in the field, the combination must do more than yield a
`predictable result.” KSR, 550 U.S. at 416 (citing United States v. Adams,
`383 U.S. 39, 50‒51 (1966)). An obviousness inquiry is not limited to the
`prior art’s preferred embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480
`F.3d 1348, 1370 (Fed. Cir. 2007). We also recognize that prior art
`references must be “considered together with the knowledge of one of
`ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
`
`
`V. GROUND 1 – ALLEGED OBVIOUSNESS OVER YEUNG AND
`RUIZ
`Petitioner contends that claims 1–10 of the ’085 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Yeung in view of
`Ruiz. Pet. 20–54. Patent Owner opposes, arguing that several of the claim
`steps are not taught. Prelim. Resp. 10–16.
`
`
`3 Patent Owner does not present arguments or evidence of secondary
`considerations (i.e., objective indicia of non-obviousness) in its Preliminary
`Response. Therefore, secondary considerations do not constitute part of our
`analysis herein.
`
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`IPR2024-00041
`Patent 10,198,085 B2
`Independent Claim 1 Under Ground 1
`A.
`We focus our analysis on step 1[b], which we find is dispositive for
`Petitioner’s proposed Ground 1 challenge:
`Step 1[b]
`1.
`Step 1[b] of claim 1 recites: “switching said wristwatch from said first
`power mode to said second power mode when a wristturn has been
`detected.” Pet. 29.
`Under Ground 1, Petitioner argues that Yeung discloses controlling
`the audio recording function of a recorder based on the positioning of the
`recorder in a predetermined orientation, in which the ordinary artisan would
`have recognized this “powering up” as switching power modes. Pet. 29
`(citing Ex. 1005 ¶¶ 15, 3, 48, 52; Ex. 1002 ¶¶ 143–146, 155, 156).
`In support, Dr. Bederson testifies that “[a] POSITA would have
`understood that powering up the recording function would switch from a
`lower-power ‘first power mode’ to a higher-power ‘second power mode’
`because audio recording would consume additional processing power,
`including continuous speech sampling, analog-to-digital conversion, and
`signal processing.” Ex. 1002 ¶¶ 143–146, 155–156.
`Significantly, Dr. Bederson testifies: “I do not believe that any claim
`term requires explicit construction to resolve the issues presented in this
`Petition. I apply the plain and ordinary meaning to each claim term, as that
`plain and ordinary meaning would have been understood by a POSITA.”
`Ex. 1002 ¶ 123.
`However, Patent Owner contends “Petitioner fails to demonstrate that
`Yeung discloses multiple power modes.” Prelim. Resp. 10. In support,
`Patent Owner argues that “Petitioner equates activating functionality, i.e., an
`audio recorder, with switching power modes, but Petitioner presents no
`
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`Patent 10,198,085 B2
`evidence that Yeung changes power modes when the audio recorder is
`activated.” Id. (citing Pet. 29). Patent Owner additionally contends
`“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.” Id.
`Patent Owner asserts: “[t]he 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.” Id.
`In support, Patent Owner notes that “the ’085 Patent explicitly
`describes that various ‘functionalities’ can be activated and displayed by the
`user within one power mode . . . without switching power modes.” Prelim.
`Resp. 10–11 (citing Ex. 1001, 4:60–5:4). Patent Owner essentially contends
`Petitioner is conflating device functionality with device power modes. See
`Id. at 10 (“Petitioner presents no evidence that Yeung changes power modes
`when the audio recorder is activated.”) (citing Pet. 29).
`In rebuttal of Petitioner’s contention that activating the audio record
`function in Yeung purportedly teaches the claimed first and second power
`modes (Pet. 29), Patent Owner reproduces a portion of the ’085 patent in
`which various functions are performed without switching power modes, i.e.,
`within a single power mode:
`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
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`Patent 10,198,085 B2
`glass in the corresponding direction.
`Prelim. Resp. 11 (quoting Ex. 1001, 4:60–5:4 (emphasis added)) (alteration
`in original).
`
`As noted above, Petitioner “does not believe that any term requires
`construction.” Pet. 8. Patent Owner “agrees with Petitioner that claim
`construction is not warranted.” Prelim. Resp. 7. And Dr. Bederson also
`does “not believe that any claim term requires explicit construction to
`resolve the issues presented in this Petition.” Ex. 1002 ¶ 123.
`We disagree with Petitioner, Dr. Bederson, and Patent Owner on this
`point, because at least one of their disputes centers on the meaning of first
`and second power modes.
`We again emphasize that “[i]n an [inter partes review], the petitioner
`has the burden from the onset to show with particularity why the patent it
`challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (emphasis added).
`Here, in its Petition and Dr. Bederson’s supporting declaration (Ex. 1002
`¶ 123)), neither Petitioner nor Dr. Bederson has proposed any claim
`construction for the claim 1 terms “first power mode” and “second power
`mode.” See 37 C.F.R. § 42.104(b)(3) (the petition must set forth “how the
`challenged claim is to be construed.”).
`However, on this record, we determine the claim 1 terms “first power
`mode” and “second power mode” require explicit claim construction as a
`principal threshold issue in our institution decision. And Petitioner has not
`done so.
`To the extent that the Board may be required to construe claims terms
`in the absence of any explicit claim construction by the parties, as noted
`above, the “Board is required to construe ‘only those terms . . . that are in
`controversy, and only to the extent necessary to resolve the controversy.’”
`
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`Vivid Techs., 200 F.3d at 803. The claim construction standard set forth in
`Phillips (415 F.3d 1303) is applicable.
`Under Phillips, claim terms are generally given their ordinary and
`customary meaning as would be understood by one with ordinary skill in the
`art in the context of the specification, the prosecution history, other claims,
`and extrinsic evidence including expert and inventor testimony, dictionaries,
`and learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Our reviewing court guides
`that the specification “is always highly relevant to the claim construction
`analysis. Usually, it is dispositive; it is the single best guide to the meaning
`of a disputed term.” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic,
`Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
`Moreover, extrinsic evidence is unlikely to result in a reliable
`interpretation of patent claim scope unless considered in the context of the
`intrinsic evidence. Phillips, 415 F.3d at 1319. The court in Phillips stated:
`“different dictionaries may contain somewhat different sets of definitions for
`the same words. A claim should not rise or fall based upon the preferences
`of a particular dictionary editor, or the court’s independent decision,
`uninformed by the specification, to rely on one dictionary rather than
`another.” Id. at 1322.
`
`Accordingly, we give greatest weight to the intrinsic record, i.e., the
`Specification of the ’085 patent, for guidance as to the Patent Owner’s
`intended meaning of the claim 1 terms “first power mode” and “second
`power mode.” Turning to the Specification, we find the following pertinent
`descriptions in the ’085 patent:
`The first power mode could be a sleep mode, or standby
`mode, in which the power consumption is reduced but no
`
`17
`
`
`
`IPR2024-00041
`Patent 10,198,085 B2
`indications are displayed on the display. The second power
`mode could be an operating mode where indications are
`displayed on the display.
`Ex. 1001, 3:15–19 (emphasis added).
`In some embodiments, more than two power modes can
`be provided; for example, the real time clock 22 is preferably
`always powered on in power saving mode, so that the
`real time is not lost when the display 4 and the touch panel
`3b are switched off; it is possible however to switch the real
`time clock off in a deep sleep mode in order to prevent the
`battery from being totally discharged. Other components,
`such as the microcontroller 21, the touch panel 3b etc could
`have more than two different power modes, for example a
`hot power saving mode allowing for a very fast re-start, and a
`cold power saving mode in which restart is possibly slower
`or necessitates restarting an operating system.
`Ex. 1001, 5:58–6:2 (emphasis added).
`The device 1 can be switched from a first power mode,
`such as a power saving mode, to a second power mode, such as
`a time display mode, with a user gesture on the glass
`3a/touch panel 3b. The device 1 can automatically return to
`the first power mode, for example after a predetermined
`duration, or when no acceleration and/or no activity are
`detected.
`Ex. 1001, 6: 3–9 (emphasis added).
`The embedded power processing capabilities comprise a
`processor or other processing means for executing
`programmable software code for analysing the accelerations
`values delivered by the accelerometer, and for generating
`signals or values when certain conditions are met.
`In order to avoid undesired switches to the second power
`mode, which would switch the display on and reduce the
`operating time of the battery, it is necessary to discriminate
`between changes in the acceleration signals which are
`caused by a switch on gesture, such as a tap or a double tap,
`and any other acceleration caused when the wristwatch is
`
`18
`
`
`
`IPR2024-00041
`Patent 10,198,085 B2
`displaced or manipulated in normal use.
`Ex. 1001, 6:17–29.
`In the embodiment of the invention illustrated on FIG. 2,
`the power on signal 230 generated by the inertial sensor 23
`is used to wake up the touch panel 3b and/or the touch
`controller 24, or to switch those components from a low
`power mode to another power mode. Therefore, the touch
`panel 3b is switched off, or at least in low power mode, when
`the device 1 is in the first power mode, and is powered on,
`or at least partially powered on, after detection of a likely tap
`and generation of a wake up signal 230 by the accelerometer
`23. In one embodiment, the wake up signal 230 generated by
`the inertial sensor 23 triggers a switch on command of the
`touch panel 3b and/or of the touch controller 24 from a low
`power mode in which nothing is displayed and no finger
`touch can be detected, to an intermediate power mode where
`only a subset of electrodes of the touch panel is activated[.]
`Ex. 1001, 7:40–54 (emphasis added).
`FIGS. 7a to 7c schematically illustrate three steps of
`another method for switching the wristwatch 1 from a first
`power mode to a second power mode. This method can be
`used in the same wristwatch than the above described
`method, so that a user can decide to wake his wristwatch
`either with the above described method (for example with a
`tap on the glass 3a) or with this other method of FIGS. 7a
`to 7c.
`
`In this second method, a wristturn detection is performed
`for detecting rotation of the wrist and deciding if this
`rotation corresponds to predefined pattern, in which case the
`wristwatch should be switched to a second power mode for
`example in order to activate the display.
`Initially, the microcontroller 21 is in a low power mode,
`for example completely off. The touch controller 24 to
`which the accelerometer 23 is connected, and which has the
`responsibility to wake up the microcontroller 21, is in a sleep
`mode (low power mode), but will wake up when an interrupt
`in the accelerometer 23 occurs.
`
`19
`
`
`
`IPR2024-00041
`Patent 10,198,085 B2
`Ex. 1001, 9:29–48 (emphasis added).
`
`In one embodiment, transparent electrodes can be
`individually powered in order to put the touch panel in a low
`power mode with only some electrodes, for example electrodes
`in the middle, which are powered on and can detect finger
`contact on the corresponding part of the display; the remaining
`electrodes are not powered on in this low power mode.
`Ex. 1001, 4:53–59.
`Although the ’085 patent describes embodiments in which, “more
`than two power modes can be provided” (Ex. 1001, 5:58–59), for purposes
`of our claim construction in deciding whether institute an inter partes
`review, we focus on the corresponding supporting descriptions supra of the
`first and second power modes. As described within the ’085 patent,
`switching between first and second power modes seems to generally require
`switching physical components, e.g., electrodes, on or off as needed to
`conserve power. The conservation of power comes from a device being
`ready or not ready, set or not set, to perform a function, rather than actually
`performing or not performing a function.
`Petitioner has the burden to show how the first and second power
`modes of claim 1 of the ’085 patent might be alternatively interpreted as
`modes involving different power usage levels due to the selective usage of
`applications available for use, instead of different power usage levels due to
`switching physical components on or off, rendering them available or
`unavailable for use, consistent with the many supporting descriptions found
`in the ’085 patent, as reproduced above.
`Given Petitioner’s lack of any proposed claim construction for the
`first and second power
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