UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00289
`PATENT 8,872,646
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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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00289
`PATENT 8,872,646
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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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`IPR2018-00289
`U.S. Patent 8,872,646
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`Table of Contents
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`I.
`II.
`III.
`IV.
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`INTRODUCTION .................................................................................... 1
`THE ’646 PATENT .................................................................................. 1
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 2
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 2
`A.
`Claim Construction ......................................................................... 3
`1.
`“glitch” ................................................................................. 3
`2.
`“a change in dominant axis”................................................. 5
`3.
`“dominant axis logic to determine an idle sample
`value for a dominant axis of the mobile device
`based on the motion data” .................................................... 6
`“[the] dominant axis logic … [further] to compare
`a difference between a current sample value along
`the dominant axis determined based on the
`motion of the device and the idle sample value of
`the dominant axis against a threshold value” ....................... 7
`“computation logic to determine whether the
`motion caused a change in the dominant axis” .................... 8
`“power logic to wake up the device when the
`motion of the device indicates a change in the
`dominant axis of the device” ................................................ 9
`“power logic to move the device from the inactive
`state to an active state upon detection of a change
`in the dominant axis which is the axis
`experiencing the largest effect of gravity” ......................... 10
`“long average logic to calculate an average of
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`4.
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`5.
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`6.
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`7.
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`8.
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`ii
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`B.
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`C.
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`9.
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`2.
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`3.
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`IPR2018-00289
`U.S. Patent 8,872,646
`accelerations over a sample period” ................................... 12
`“device state logic to restore the device to a last
`active state” ........................................................................ 13
`The Petition’s Allegations Of So-Called “Well-Known
`Accelerometer Techniques” Is Inapposite And Is
`Evidence Of The Petition’s Failure To Show
`Reasonable Likelihood Of Unpatentability For Any
`Challenged Claim ......................................................................... 14
`1.
`The Petition Provides Only Conclusory
`Speculation, Through Its Declarant, Regarding
`The Alleged Combination of Pasolini And
`Goldman ............................................................................. 15
`The Petition Provides Only Conclusory
`Speculation, Through Its Declarant, Regarding
`The Alleged Combination of McMahan With
`Pasolini And Goldman ....................................................... 17
`The Petition Provides Only Conclusory
`Speculation, Through Its Declarant, Regarding
`The Alleged Combination of Mizell With Pasolini
`And Goldman ..................................................................... 19
`The Petition Provides Only Conclusory
`Speculation, Through Its Declarant, Regarding
`The Alleged Combination of Park With Pasolini
`And Goldman ..................................................................... 21
`No Prima Facie Obviousness for the “Glitches” and
`“Removing the One or More Glitches From the Motion
`Data” Limitations In All Independent Claims (Claims 1,
`13, and 20) .................................................................................... 23
`1.
`No Prima Facie Obviousness for “verifying
`whether the motion data includes one or more
`glitches and removing the one or more glitches
`from the motion data” (Claim 1) ........................................ 23
`No Prima Facie Obviousness for “a glitch
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`4.
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`2.
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`iii
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`3.
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`IPR2018-00289
`U.S. Patent 8,872,646
`corrector to determine whether the motion data
`includes one or more glitches and removing the
`one or more glitches from the motion data”
`(Claim 13) ........................................................................... 26
`No Prima Facie Obviousness for “a glitch
`corrector to determine whether the motion data
`includes one or more glitches and remove the one
`or more glitches from the motion data” (Claim
`20) ....................................................................................... 26
`The Petition Should Be Denied As To Challenged
`Dependent Claims 3, 5-11, And 14-18. ........................................ 27
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 27
`CONCLUSION ....................................................................................... 28
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`D.
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`V.
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`VI.
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`iv
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`Exhibit No.
`2001
`
`Description
`Declaration of Dr. William C. Easttom
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`IPR2018-00289
`U.S. Patent 8,872,646
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`I.
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`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00289 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 8,872,646 (“the ’646 patent” or “EX1001”)
`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’646 PATENT
`The ’646 patent is titled “Method And System For Waking Up A Device Due
`To Motion.” The ʼ646 patent issued October 28, 2014, from U.S. Patent Application
`No. 12/247,950 filed October 8, 2008.
`The inventors of the ’646 patent observed that continuous improvements to
`commercial electronic devices had allowed the users to enjoy many features and
`possible uses from a single mobile device. However, generally, the more
`applications a mobile device has, the faster the battery of the mobile device depletes,
`and therefore, it could be difficult to maximize battery life and provide a great user
`experience at the same time. EX1001, 1:12-20. The invention of the ’646 Patent
`came up with an innovative solution to wake up the mobile device due to motion.
`Id., 1:24-25. This occurs when the motion is real motion, as opposed to a jostle or a
`glitch. Id., 1:56-63. Such a solution allows the mobile device to remain in idle state
`to conserve battery.
`According to the invention of the ’646 Patent, a device enters an idle state,
`which is a low power mode, with sufficient power maintained to monitor at least one
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`sensor. Id., 2:10-27. The system is designed to ensure that when the device is picked
`up by a user, the device is moved from the idle state to an active state rapidly. By
`initiating the transition from the idle state to the active state without requiring user
`input, the user wait is reduced. Id., 2:34-41. However, if, for example, the table on
`which the device is resting is shaken, or the purse is jostled, the device should not
`wake up. This reduces power usage, because the device is not continuously being
`woken up from small motions which occur when someone walks near a table, sits
`down, or similarly causes small motions. Id., 2:46-51.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`Given that the Petition does not offer a definition of a person of ordinary skill
`in the art (“POSITA”), Patent Owner does not offer a competing definition for
`POSITA at this preliminary stage, but reserves the right to do so in the event that
`trial is instituted.
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`IV. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges:
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`2
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`Ground
`1
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`2
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`Claims
`1, 3, 5-7, 9-11, 13-15,
`17, and 20
`8, 16, and 18
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`IPR2018-00289
`U.S. Patent 8,872,646
`Reference(s)
`35 U.S.C. § 103 over Pasolini1, Goldman2,
`McMahan3, and Mizell4
`35 U.S.C. § 103 over Pasolini, Goldman,
`McMahan, Mizell, and Park5
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`A. Claim Construction
`The Petitioner has crafted constructions to fit its arguments. Such
`construction are wrong. Among other things, such constructions are impermissibly
`broad – violating the maxim that the broadest reasonable construction of a term must
`be consistent with the specification. Additionally, Petitioners construction of other
`terms only add ambiguity and serve no meaningful purpose for this proceeding.
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“need
`only be construed to the extent necessary to resolve the controversy”).
`
`
`1.
`“glitch”
`The Petition acknowledges that the patentee has acted as his own
`lexicographer where the specification defines the term: “In one embodiment, a glitch
`is a datum that indicates a motion outside an acceptable range. For example, it is
`extremely unlikely that a device would go from idle (e.g., no motion) to moving at
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` 1
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` EX1003, U.S. Patent No. 7,409,291
`2 EX1004, Using the LIS3L02AQ Accelerometer, Ron Goldman, Sun Microsystems
`Inc.
`3 EX1005, U.S. Patent No. 7,204,123
`4 EX1007, Using Gravity to Estimate Accelerometer Orientation,” David Mizell,
`5 EX1014, U.S. Patent No. 7,028,220
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`3
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`an acceleration of 64 feet per second squared (equivalent to 2 g).” EX1001, 6:36-
`40; Pet. 7. Therefore, to the extent this term should be construed, it should be
`construed to mean “a datum that indicates a motion outside an acceptable range.”
`Without explanation or reason, and despite acknowledging the express
`definition given by the specification, Petitioner seeks to construe this claim term
`such that “a ‘glitch’ includes a datum that is outside of an acceptable range.” Pet. 7
`(emphasis added). Petitioner’s construction should be rejected because it is too
`broad for at least two reasons. First, it is too broad because it seeks to expand the
`scope of the term to non-sensically include all data, whether it is outside or inside
`the “acceptable range.”. And second, it is also too broad because it fails to
`acknowledge that the term “glitch” is “a datum that indicates a motion outside an
`acceptable range.” Petitioner’s proposed construction ostensibly includes any datum
`of any kind, and not just directed to “a motion” as the specification requires. See In
`re Smith International, Inc., 871 F. 3d 1375, 1382-83 (Fed. Cir. 2017)(“The correct
`inquiry in giving a claim term its broadest reasonable interpretation in light of the
`specification … is an interpretation that corresponds with what and how the inventor
`describes his invention in the specification, i.e., an interpretation that is ‘consistent
`with the specification.’”); Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`(Fed. Cir. 2015)(“[T]he protocol of giving claims their broadest reasonable
`interpretation... does not include giving claims a legally incorrect interpretation”
`“divorced from the specification and the record evidence.”) (citations and internal
`quotation marks omitted). Because such a proposed definition is inconsistent with
`the specification, it should be rejected.
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`Petitioner has not and cannot establish prima facie obviousness through
`application of an incorrect construction. See Mentor Graphics Corp., v. Synopsys,
`Inc., IPR2014-00287, 2015 WL 3637569, at (Paper 31) *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). In any event, Petitioner fails to present a case of prima facie
`obviousness even under its own construction.
`
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`2.
`“a change in dominant axis”
`Similar to the above, Petitioner simultaneously acknowledges that the
`specification provides a definition for this term (“wherein the change in the
`dominant axis comprises a change in acceleration along the dominant axis”), yet
`Petitioner proposes a different construction. In this case, Petitioner proposes,
`without reasons or explanation, that “a change in the dominant axis” “includes at
`least a change in acceleration measured along the dominant axis.” Pet. 8. Petitioner’s
`proposed construction should be rejected because the specification itself provides
`the correct definition. Additionally, Petitioner’s proposed construction is unclear if
`it intends to include within its scope all acceleration measured along all axis, where
`it uses the phrase “includes at least”.
`Petitioner has not and cannot establish prima facie obviousness through
`application of an incorrect construction. See Mentor Graphics Corp., v. Synopsys,
`Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11,
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`5
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`3.
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`2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569
`(Fed. Cir. 2016). In any event, Petitioner fails to present a case of prima facie
`obviousness even under its own construction.
`
`
`“dominant axis logic to determine an idle sample value for a
`dominant axis of the mobile device based on the motion
`data”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a straight recitation of the claim language
`except for substituting the phrase “dominant axis logic” with the phrase: “hardware,
`software, or both.” Petitioner’s revisions serve no purpose and only injects
`ambiguity. Here, the “dominant axis logic” is clear on its face, it is logic “to
`determine an idle sample value for a dominant axis of the mobile device based on
`the motion data”, as defined by the claim language itself.
`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be. Moreover, a POSITA would understand that such a
`determination cannot be done in software alone, and must require some hardware,
`such as an accelerometer. See EX2001, ¶7.
`Finally, the Petition does not expressly contend that this claim term is
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`6
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`4.
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`governed by 35 U.S.C. § 112(6),6 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
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`“[the] dominant axis logic … [further] to compare a
`difference between a current sample value along the
`dominant axis determined based on the motion of the device
`and the idle sample value of the dominant axis against a
`threshold value”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a straight recitation of the claim language
`except for substituting the phrase “dominant axis logic” with the phrase: “hardware,
`software, or both.” Petitioner’s revisions serve no purpose and only injects
`ambiguity. Here, the “dominant axis logic” is clear on its face, as shown above, and
`the Petition omits a single word in place of its ellipses from Claim 15 – “further”.
`The omitted word makes even more clear that the “dominant axis logic” simply has
`an additional function “to compare a difference between a current sample value
`along the dominant axis determined based on the motion of the device and the idle
`sample value of the dominant axis against a threshold value.”
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` 6
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 9.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`7
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`IPR2018-00289
`U.S. Patent 8,872,646
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`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be. Moreover, a POSITA would understand that such a
`determination cannot be done in software alone, and must require some hardware,
`such as an accelerometer. See EX2001, ¶8.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),7 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
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`“computation logic to determine whether the motion caused
`a change in the dominant axis”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a straight recitation of the claim language
`except for substituting the phrase “computation logic” with the phrase: “hardware,
`software, or both”. Petitioner’s revisions serve no purpose and only injects
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`5.
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` 7
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet.10.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`8
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`U.S. Patent 8,872,646
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`ambiguity. Here the “computation logic” is clear on its face, and in this case, it is
`logic “to determine whether the motion caused a change in the dominant axis”, as
`defined by the claim language itself.
`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),8 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
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`“power logic to wake up the device when the motion of the
`device indicates a change in the dominant axis of the
`device”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a straight recitation of the claim language
`except for substituting the phrase “power logic” with the phrase: “hardware,
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`6.
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` 8
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 11.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`9
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`U.S. Patent 8,872,646
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`software, or both”. Petitioner’s revisions serve no purpose and only injects
`ambiguity. Here, the “power logic” is clear on its face, and in this case, it is logic
`“to wake up the device when the motion of the device indicates a change in the
`dominant axis of the device”, as defined by the claim language itself.
`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),9 and Patent Owner contends that it is not. For at
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
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`7.
`
`“power logic to move the device from the inactive state to an
`active state upon detection of a change in the dominant axis
`which is the axis experiencing the largest effect of gravity”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a recitation of the claim language except
`
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` 9
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` The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 12.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`10
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`for substituting the phrase “power logic” with the phrase: “hardware, software, or
`both”, and inserting the unnecessary phrase “that wakes up the device when the
`motion of the device indicates a change in the dominant axis of the device”.
`Petitioner’s revisions serve no purpose and only injects ambiguity. Here, the “power
`logic” is clear on its face, and in this case, it is logic “to move the device from the
`inactive state to an active state upon detection of a change in the dominant axis
`which is the axis experiencing the largest effect of gravity”, as defined by the claim
`language itself.
`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be. Further, Petitioner fails to provide any evidence or
`explanation for its proposed addition of “wakes up the device…”, and therefore,
`because Petitioner provides no support for its inclusion, Petitioner’s proposed
`construction should be rejected.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),10 and Patent Owner contends that it is not. For at
`
`
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`10 The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 13.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
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`11
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`8.
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`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
`
`“long average logic to calculate an average of accelerations
`over a sample period”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a straight recitation of the claim language
`except for substituting the phrase “long average logic” with the phrase: “hardware,
`software, or both”. Petitioner’s revisions serve no purpose and only injects
`ambiguity. Here, the “long average logic” is clear on its face, and in this case, it is
`logic “to calculate an average of accelerations over a sample period”, as defined by
`the claim language itself.
`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),11 and Patent Owner contends that it is not. For at
`
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`11 The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 14.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
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`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
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`9.
`“device state logic to restore the device to a last active state”
`This claim term is not governed by 35 U.S.C. § 112(6), and no construction
`is necessary. The claim term provides its own definition, as evidenced by
`Petitioner’s proposed definition, which is a straight recitation of the claim language
`except for substituting the phrase “device state logic” with the phrase: “hardware,
`software, or both”. Petitioner’s revisions serve no purpose and only injects
`ambiguity. Here, the “device state logic” is clear on its face, and in this case, it is
`logic “to restore the device to a last active state.
`Petitioner’s proposed construction leaves it unclear if it is seeking to exclude
`things like firmware or Field-Programmable Gate Arrays. And Petitioner’s proposed
`construction is further and additionally unclear if it is seeking to exclude anything
`and if so what that might be.
`Finally, the Petition does not expressly contend that this claim term is
`governed by 35 U.S.C. § 112(6),12 and Patent Owner contends that it is not. For at
`
`
`
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
`12 The Petition merely muses “However, to the extent Patent Owner overcomes the
`presumption against construction under 35 U.S.C. 112, sixth paragraph…” Pet. 15.
`But Petitioner provides no authority or evidence for its alleged “presumption” or its
`implicit shifting of its burden of proof. Nowhere does Petitioner contend the term is
`governed by 35 U.S.C. § 112(6) and the Board should give no weight to Petitioner’s
`conjectures.
`
`13
`
`
`
`IPR2018-00289
`U.S. Patent 8,872,646
`
`least those reasons, Patent Owner does not address 35 U.S.C. § 112(6) or Petitioner’s
`hypotheticals.
`
`B.
`
`“Well-Known
`The Petition’s Allegations Of So-Called
`Accelerometer Techniques” Is Inapposite And Is Evidence Of The
`Petition’s Failure To Show Reasonable Likelihood Of
`Unpatentability For Any Challenged Claim
`“[A] patent composed of several elements is not proved obvious merely by
`demonstrating that each of its elements was, independently, known in the prior art.”
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705
`(2007). The obviousness analysis must focus on the knowledge and motivations of
`the skilled artisan at the time of the invention. InTouch Techs., Inc. v. VGO
`Commc'ns, Inc., 751 F.3d 1327, 1348 (Fed. Cir. 2014). In a case of obviousness,
`there must be an explanation of why a person of ordinary skill in the art would
`modify the prior art references to create the claimed invention. Cutsforth, Inc. v.
`MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016) citing In re
`Kotzab, 217 F.3d 1365, 1371 (Fed.Cir.2000); In re Rouffet, 149 F.3d 1350, 1359
`(Fed.Cir.1998).
`Petitioner ostensibly provides its argument and rationale for the Petition at
`the start of the Petition:
`
`“Specifically, the claims of the ’646 Patent recite well-
`known accelerometer techniques that involve (i) removing
`glitches, (ii) capturing accelerometer samples while at rest,
`(iii) measuring the current acceleration, and (iv) waking
`the device from the low power state in response to
`detecting acceleration. However, before the ’646 Patent,
`POSITAs were already using such techniques.”
`
`14
`
`
`
`IPR2018-00289
`U.S. Patent 8,872,646
`
`Pet. 1.
`However, Petitioner’s rationale is inapposite, and cannot carry its burden to
`show a reasonable likelihood that the challenged claims are obvious or unpatentable.
`Petitioner has merely alleged that an enumeration of what it alleges as the elements
`of the invention of the ’646 Patent was known in the art. However, that is not only
`irrelevant to an obviousness analysis, it is insufficient. KSR, 550 U.S. 418.
`1.
`The Petition Provides Only Conclusory Speculation,
`Through Its Declarant, Regarding The Alleged
`Combination of Pasolini And Goldman
`The Petition merely provides conclusory statements and attorney argument
`that “A POSITA would have been motivated to use the enhanced accelerometer
`techniques described in Goldman with the device of Pasolini because Goldman’s
`techniques provided additional accelerometer features that improve Pasolini’s
`device.” Pet. 22. Petitioner purports to rely on its expert for support, however, its
`expert declaration merely parrots the paragraphs of the Petition. Compare Pet. 22-
`24 with EX1010, ¶¶ 74-79.
`Petitioner cannot merely speculate through its declarant, outside the four
`corners of the reference, to carry its burden. The Federal Circuit has instructed that
`“legal determinations of obviousness, as with such determinations generally, should
`be based on evidence rather than on mere speculation or conjecture.” Alza Corp. v.
`Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006); K/S HIMPP v. Hear-Wear
`Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014) (finding the PTAB correctly
`rejected conclusory assertions of what would have been common knowledge in the
`art).
`
`15
`
`
`
`IPR2018-00289
`U.S. Patent 8,872,646
`
`Further, the obviousness analysis must focus on the knowledge and
`motivations of the skilled artisan at the time of the invention. InTouch Techs, 751
`F.3d at 1348. And there must be an explanation of why a person of ordinary skill in
`the art would modify the prior art reference to create the claimed invention.
`Cutsforth, 636 Fed. Appx. at 577–78; In re Kotzab, 217 F.3d at 1371; In re Rouffet,
`149 F.3d at 1359.
`Petitioner’s first attorney argument here is the conclusory assertion that
`Pasolini and Goldman “address the same issue” (Pet. 22), and that using the
`techniques of Goldman with the Pasolini device would “enable the device of
`Pasolini to provide more robust calculations of acceleration data.” Pet. 23-24.
`Petitioner provides no support for these conclusory and speculative allegations other
`than the identical conclusory and speculative statements of its declarant. Moreover,
`even if it were true that Goldman would somehow provide “more robust calculations
`of acceleration data” (which Patent Owner does not concede), that does not amount
`to a reason to modify Pasolini. A sensor that is sensitive to a microgram and that
`could measure velocity would provide “more robust calculations” to a kitchen scale,
`but that wouldn’t provide a reason to combine them.
`Petitioner’s second attorney argument is that Goldman allegedly “use[d]
`programmatic features that enabled customization and flexibility in how the
`accelerometer signals are produced and used.” And that “[t]he design incentives and
`market forces at the time favored robust programming, such as offered by
`Goldman.” Again, Petitioner provides no support for its conclusory and speculative
`statements outside from the same conclusory and speculative statemen
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