Trials@uspto.gov
`571-272-7822
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`
`
`Paper 22
`Date: March 4, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`Uniloc 2017 LLC,
`Patent Owner.
`____________
`
`IPR2018-01664
`Patent 8,872,646 B2
`____________
`
`
`
`Before JENNIFER S. BISK, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Granting Patent Owner’s Motion to Amend to Cancel Claim 22
`Denying Patent Owner’s Motion to Amend to Substitute Claim 23
`35 U.S.C. § 318(a)
`
`

`

`IPR2018-01664
`Patent 8,872,646 B2
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`
`INTRODUCTION
`I.
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claim 22 of U.S. Patent
`No. 8,872,646 B2 (Ex. 1001, “the ’646 patent”). Uniloc Luxembourg, S.A.
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”).
`We granted Petitioner’s request and instituted an inter partes review of
`claim 22. Paper 7.
`Following institution, Patent Owner filed a non-contingent Motion to
`Amend, cancelling claim 22 and proposing substitute claim 23. Paper 10
`(“Mot. Amend”). Petitioner filed an Opposition to the Motion (Paper 11,
`“Mot. Amend Opp.”), Patent Owner filed a Reply (Paper 13, “Mot. Amend
`Reply”), and Petitioner filed a Sur-Reply (Paper 14, “Mot. Amend Sur-
`Reply”). A hearing was held on December 12, 2019. The Hearing
`Transcript (“Tr.”) is included in the record as Paper 21. Having considered
`the evidence of record, and for the reasons set forth below, we cancel claim
`22 and deny the Motion to Amend as to proposed substitute claim 23.
`
`II. BACKGROUND
`A. THE ’646 PATENT
`The ’646 patent is titled “Method and System for Waking Up a
`Device Due to Motion” and describes a device with an accelerometer that
`wakes up from a low power idle state in response to detecting motion.
`Ex. 1001, code (57), 1:27–28.
`Figure 3 of the ’646 patent is reproduced below.
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`Figure 3 is a flowchart for determining whether to wake up a device based
`on motion. Id. at 4:25–26. At block 315, the process gets sample motion
`data and calculates a current/updated acceleration average. Id. at 4:36–38.
`At block 320, the process determines whether the device is idle—i.e.,
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`whether it is not moving and there are no active user-interactive
`applications. Id. at 4:45–47. If the device is idle, the process continues to
`block 325 and determines if the device has experienced any motion larger
`than a minimum threshold. Id. at 4:49–55. If so, at block 330, the process
`determines if the movement is a real motion that warrants waking up the
`device—i.e., movement from being picked up by a user intending to use the
`device, as opposed to a mere jostle or bump. Id. at 4:61–5:2. If the
`movement is real, the process continues to blocks 335 and 340, where the
`process wakes up the device and restores it to either a last active state or a
`user-customized configuration. Id. at 5:3–12.
`Figure 4 of the ’646 patent is reproduced below.
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`Figure 4 is a flowchart of a process to create a long average of accelerations.
`Id. at 5:14–15. At block 410, the process sends motion data from an
`accelerometer through a glitch correcting logic, which removes abnormal
`data before passing it along to a long average logic. Id. at 5:18–23. At
`block 415, the long average logic adds the sampled motion data to a long
`average, to create an updated long average of accelerations. Id. at 5:24–26.
`The ’646 patent explains that “[i]n one embodiment, the long average logic
`maintains a long average only for the dominant axis (e.g., the axis on which
`the gravitational effect is detected),” whereas “[i]n another embodiment, the
`long average logic maintains an average for one or more axes.” Id. at 5:26–
`30. At block 420, the process determines the dominant axis using long
`averages of accelerations for a plurality of axes. Id. at 5:32–37.
`B. CHALLENGED AND SUBSTITUTE CLAIMS
`Claim 22, the Petition’s only challenged claim, depends from
`independent claim 20. Claims 20 and 22 are reproduced below.
`20. A system to wake up a mobile device comprising:
`a motion sensor to detect motion along three axes and generation
`motion data;
`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;
`a dominant axis logic to determine an idle sample value,
`comprising an average of accelerations over a sample period
`along a dominant axis, the dominant axis defined as an axis with
`a largest effect of gravity among the three axes; and
`a 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.
`Id. at 10:23–37.
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`22. The system of claim 20, further comprising:
`a device state logic to restore the device to one of: a last active
`state, a preset customized state.
`Id. at 10:45–47.
`Proposed substitute claim 23 is reproduced below, with language
`deleted from issued claim 22 indicated by brackets and language added to
`claim 22 indicated with underlining.
`23. A system to wake up a mobile device comprising:
`a motion sensor to detect motion along three axes and
`[[generation]] generate motion data;
`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, the one or more glitches each indicating a
`respective detected motion that is both within an operational
`range of the motion sensor and outside an acceptable range, the
`motion data containing less data as a result of the removal of
`the one or more glitches from the motion data;
`a dominant axis logic to determine a dominant axis and
`determine an idle sample value comprising an average of
`accelerations over a sample period along [[a]] the dominant
`axis, the dominant axis defined as an axis with a largest effect
`of gravity among the three axes; [[and]]
`a 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[[.]];
`and
`a device state logic to restore the device to one of: a last active
`state, a preset customized state.
`Mot. Amend, Appendix A.
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`C. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserted the following ground of unpatentability in the
`Petition. Pet. 16.
`
`Claim Challenged 35 U.S.C. §
`22
`103
`
`References
`Pasolini,1 Goldman,2 McMahan,3
`Mizell,4 Park5
`
`
`Because we grant Patent Owner’s request to cancel claim 22, we need not
`consider this ground.
`In opposition to the Motion to Amend, Petitioner asserts the following
`grounds of unpatentability. Mot. Amend Opp. 6 n.3.
`
`Claim Challenged 35 U.S.C. §
`23
`103
`
`23
`
`23
`
`23
`
`103
`
`103
`
`103
`
`References
`Pasolini, Goldman, McMahan,
`Mizell, Park, Marvit6
`Pasolini, Goldman, McMahan,
`Mizell, Park, Fabio7
`Pasolini, Goldman, Hyatt,8 Mizell,
`Park, Marvit
`Pasolini, Goldman, Hyatt, Fabio,
`Mizell, Park
`
`
`1 U.S. Patent No. 7,409,291 B2 (Aug. 5, 2008) (Ex. 1003, “Pasolini”).
`2 Ron Goldman, Using the LIS3L02AQ Accelerometer, Sun Microsystems
`Inc. (Feb. 23, 2007) (Ex. 1004, “Goldman”).
`3 U.S. Patent No. 7,204,123 B2 (Apr. 17, 2007) (Ex. 1005, “McMahan”).
`4 David Mizell, Using Gravity to Estimate Accelerometer Orientation,
`Proceedings of the Seventh IEEE International Symposium on Wearable
`Computers (2003) (Ex. 1007, “Mizell”).
`5 U.S. Patent No. 7,028,220 B2 (Apr. 11, 2006) (Ex. 1014, “Park”).
`6 U.S. Patent No. 7,180,502 B2 (Feb. 20, 2007) (Ex. 1015, “Marvit”).
`7 U.S. Patent No. 7,463,997 B2 (Dec. 9, 2008) (Ex. 1016, “Fabio”).
`8 U.S. Patent Appl. Pub. No. 2007/0268246 A1 (pub. Nov. 22, 2007)
`(Ex. 1017, “Hyatt”).
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`D. REAL PARTIES IN INTEREST
`Petitioner identifies Samsung Electronics America, Inc. and Samsung
`Electronics Co., Ltd. as the real parties in interest. Pet. 2. Patent Owner
`identifies Uniloc 2017 LLC, Uniloc USA, Inc., and Uniloc Licensing USA
`LLC as real parties in interest. Paper 4, 1–2.
`E. RELATED PROCEEDINGS
`The parties assert the ’646 patent is involved in Uniloc USA, Inc. v.
`Apple Inc., Case No. 4:18-cv-00361 (N.D. Cal. 2018); Uniloc USA, Inc. v.
`Samsung Electronics America, Inc., 2:17-cv-00652 (E.D. Tex. 2017); and
`Uniloc USA, Inc. v. Huawei Device USA, Inc., 2:17-cv-00746 (E.D. Tex.
`2017). Pet. 2; Paper 4, 2.
`
`III. MOTION TO AMEND
`Patent Owner’s non-contingent Motion to Amend cancels the only
`challenged claim, claim 22, and seeks to substitute new claim 23. Mot.
`Amend 1.
`
`A. THE APPLICABLE LAW
`In an inter partes review, amended claims are not added to a patent as
`of right, but rather must be proposed as a part of a motion to amend.
`35 U.S.C. § 316(d) (2012). The Board must assess the patentability of
`proposed substitute claims “without placing the burden of persuasion on the
`patent owner.” Aqua Prods., Inc. v. Matal, 872 F.3d 1290, 1328 (Fed. Cir.
`2017) (en banc); see Memorandum, “Guidance on Motions to Amend in
`view of Aqua Products” (Nov. 21, 2017) (available at
`https://www.uspto.gov/sites/default/files/
`documents/guidance_on_motions_to_amend_11_2017.pdf) (“Guidance”).
`Subsequent to the issuance of Aqua Products and the Board’s Guidance, the
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`Federal Circuit issued a decision in Bosch Automotive Service Solutions,
`LLC v. Matal, 878 F.3d 1027 (Fed. Cir. 2017) (“Bosch”), as well as a
`follow-up Order amending that decision on rehearing. See Bosch Auto. Serv.
`Sols., LLC v. Iancu, Order on Petition for Panel Rehearing, No. 2015-1928
`(Fed. Cir. Mar. 15, 2018).
`In accordance with Aqua Products, the Board’s Guidance, and Bosch,
`Patent Owner does not bear the burden of persuasion to demonstrate the
`patentability of the substitute claim presented in the Motion to Amend.
`Rather, ordinarily, “the petitioner bears the burden of proving that the
`proposed amended claims are unpatentable by a preponderance of the
`evidence.” Bosch, 878 F.3d at 1040 (as amended on rehearing). “The Board
`itself also may justify any finding of unpatentability by reference to evidence
`of record in the proceeding, for example, when a petitioner ceases to
`participate . . . .” Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper
`15 at 4 (PTAB Feb. 25, 2019) (precedential) (citing Bosch, 878 F.3d at
`1040). “Thus, the Board determines whether substitute claims are
`unpatentable by a preponderance of the evidence based on the entirety of the
`record, including any opposition made by the petitioner.” Id.
`Notwithstanding the foregoing, Patent Owner’s proposed substitute
`claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
`procedural requirements of 37 C.F.R. § 42.121. Id. Accordingly, Patent
`Owner must demonstrate: (1) the amendment proposes a reasonable number
`of substitute claims; (2) the proposed claims are supported in the original
`disclosure; (3) the amendment responds to a ground of unpatentability
`involved in the trial; and (4) the amendment does not seek to enlarge the
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`scope of the claims of the patent or introduce new subject matter. See
`35 U.S.C. § 316(d); 37 C.F.R. § 42.121 (2018).
`B. PREDICATE REQUIREMENTS
`1. Reasonable Number of Substitute Claims
`By statute, in a motion to amend, a patent owner may propose a
`reasonable number of substitute claims for each challenged claim. 35 U.S.C.
`§ 316(d)(1)(B). There is a rebuttable presumption that a reasonable number
`of substitute claims per challenged claim is one (1) substitute claim.
`37 C.F.R. § 42.121(a)(3). Patent Owner proposes a single substitute claim
`for the only cancelled claim, and therefore meets this requirement.
`2. Support in the Original Disclosure
`A motion to amend may not present substitute claims that introduce
`new subject matter. 35 U.S.C. § 316(d); 37 C.F.R. § 41.121(a)(2)(ii). New
`matter is any addition to the claims without support in the original
`disclosure. See TurboCare Div. of Demag Delaval Turbomach. v. Gen.
`Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001) (“When [an] applicant adds
`a claim . . . the new claim[] . . . must find support in the original
`specification.”).
`Substitute claim 23 parallels cancelled claim 22, except that it is
`written in independent form and adds three limitations: 1) “the one or more
`glitches each indicating a respective detected motion that is both within an
`operational range of the motion sensor and outside an acceptable range,”
`2) “the motion data containing less data as a result of the removal of the one
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`or more glitches from the motion data,” and 3) “a dominant axis logic to
`determine a dominant axis.” Mot. Amend, Appendix A.9
`Patent Owner asserts written description support in the originally filed
`disclosure of the subject patent for each proposed substitute claim. Mot.
`Amend 3–6. We have reviewed Patent Owner’s assertions and agree that the
`original specification supports Patent Owner’s proposed amendments. See
`id. at 4 (citing Ex 1002, Figs. 3–6, ¶¶ 10, 12, 16–17, 21–22, 33–34, 38, 50–
`57 as support for “the one or more glitches each indicating a respective
`detected motion that is both within an operational range of the motion sensor
`and outside an acceptable range” and “the motion data containing less data
`as a result of the removal of the one or more glitches from the motion data”);
`id. (citing Ex. 1002, Figs. 2, 4, ¶¶ 17, 23–25 as support for “a dominant axis
`logic to determine a dominant axis”).
`Petitioner contends in response only that “within an operational
`range” lacks written description support in the original specification. See
`Mot. Amend Opp. 1–5. We nonetheless agree with Patent Owner that the
`specification includes written description support for the amended claim
`language.
`As Patent Owner notes,
`the original application discloses “glitch correcting logic 235
`further may be used to discard non-human motions” that are
`nevertheless accurately detectable by the sensor. EX1002,
`pp. 12-13, ¶ 21. This example is further explained in the context
`
`
`9 The amended claim also makes several changes addressing clerical issues
`with original claim 22. See Mot. to Amend, Appendix A (changing
`“generation motion data” to “generate motion data,” changing “a dominant
`axis” to “the dominant axis,” and replacing a period in the middle of the
`claim with “; and.”).
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`of “a device [that] is not being used but is in a moving vehicle.”
`Id. While the vehicle’s motion is measurable by the sensor, it is
`considered a glitch that “can be discarded as not fitting the
`signature of human motion.” Id.
`Mot. Amend 5; see also Ex. 1001, 3:23–27. In short, we agree with Patent
`Owner that non-human motions due to a vehicle’s motion would be within
`the device’s operational range. Petitioner is correct that the specification
`also includes examples of motion outside the device’s operational range.
`See, e.g., Ex. 1001, 5:19–23 (describing “a glitch correcting logic which
`removes abnormal data from the motion data”); id at 6:56–65 (explaining
`“an excessive number of glitches may indicate a problem with the
`accelerometer”); id. at 3:33–37 (noting “glitches generally are indicative that
`the accelerometer or sensor is malfunctioning”). Those examples, however,
`do not undermine the specification’s additional support for a glitch that is
`within the device’s operational range. See Golight, Inc. v. Wal-Mart Stores,
`Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to
`include within each of their claims all of [the] advantages or features
`described as significant or important in the written description.”).
`3. Responding to a Ground of Unpatentability
`As stated in 37 C.F.R. § 42.121(a)(2)(i), “[a] motion to amend may be
`denied where . . . [t]he amendment does not respond to a ground of
`unpatentability involved in the trial.” In considering the motion, the entirety
`of the record is reviewed to determine whether a patent owner’s amendments
`respond to a ground of unpatentability involved in the trial. Once a
`proposed claim includes amendments to address a prior art ground in the
`trial, a patent owner also may include additional limitations to address, for
`example, Section 112 issues, if necessary. Lectrosonics, Paper 15 at 5–6.
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`We determine that the proposed amendments meet this requirement.
`They respond to Petitioner’s reliance on McMahan, which discloses
`“determining whether the measure [of an accelerometer] falls outside of an
`acceptable range.” Ex. 1005, code (57); see Mot. Amend 7. In addition, as
`Patent Owner notes, “[t]he amendment is also responsive to Petitioner’s
`argument that the original claim language does not explicitly require
`‘determining which of the three axes is the dominant axis.’” Mot. Amend 7
`(quoting Pet. 5). Petitioner does not dispute this aspect of the Motion to
`Amend.
`4. Not Enlarging the Scope of the Claims
`Proposed substitute claims may not enlarge the scope of the claims.
`35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii). Patent Owner
`establishes that the proposed substitute claim recites “verbatim” canceled
`claim 22, and “further recites a number of clerical and clarifying
`amendments.” Mot. Amend 2. Thus, Patent Owner concludes, “[t]o the
`extent scope is changed at all by these amendments, the scope can only be
`narrowed.” Id. Petitioner does not challenge this showing by Patent Owner,
`and we determine it to be adequate.
`5. Summary
`We determine that Patent Owner has satisfied the predicate
`requirements for considering a motion to amend as to substitute claim 23.
`
`C. OBVIOUSNESS ANALYSIS
`In its Opposition to the Motion to Amend, Petitioner asserts that
`proposed substitute claim 23 would have been obvious over Pasolini,
`Goldman, Hyatt, Fabio, Mizell, and Park. Mot. Amend Opp. 6 n.3; see id.
`at 9–11, 14–18, 22–25. For the reasons explained below, we determine
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`Petitioner has demonstrated by a preponderance of the evidence that the
`subject matter of substitute claim 23 would have been obvious over the
`combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park.
`1. Level of Ordinary Skill in the Art
`Petitioner asserts a person of ordinary skill in the art “would have had
`at least a Bachelor’s degree in Electrical Engineering, Computer
`Engineering, Computer Science, or equivalent, as well as at least two years
`of technical experience in the field of systems that use signals and sensory
`data (e.g., accelerometer data).” Ex. 1010 ¶ 13. Patent Owner does not
`assert a different ordinary level of skill in the art. We agree with and adopt
`Petitioner’s proposal because it is consistent with the ’646 patent, as well as
`the problems and solutions in the prior art of record. See Daiichi Sankyo Co.
`v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
`2. Claim Construction
`Patent Owner does not propose any terms for claim construction. See
`Mot. Amend 9 (explaining that proposed substitute claim 23 resolves the
`parties’ claim construction disputes). Although Petitioner proposes a
`construction for “motion data,” we conclude no express claim construction is
`necessary for our determination whether to grant Patent Owner’s Motion to
`Amend.10 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe
`terms ‘that are in controversy, and only to the extent necessary to resolve the
`
`
`10 The dispute over “motion data” relates to whether McMahan teaches the
`motion data containing less data as a result of the removal of the one or more
`glitches. See Mot. to Amend, 13–14; Mot. Amend Opp., 6–7. We need not
`resolve this issue because we do not rely on Petitioner’s grounds involving
`McMahan. See infra Section III.D.
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`controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))).
`3. Asserted Prior Art
`a. Pasolini (Ex. 1003)
`Pasolini is a U.S. patent titled “Device for Automatic Detection of
`States of Motion and Rest, and Portable Electronic Apparatus Incorporating
`It.” Ex. 1003, code (54). It teaches activating an electronic device from a
`standby mode in response to detected acceleration. See id. at 1:32–38, 1:66–
`2:4, 3:17–23. Pasolini teaches detecting static accelerations due to constant
`forces like gravity and dynamic accelerations due to non-constant forces. Id.
`at 2:66–3:7. In particular, Pasolini teaches picking up the device will wake
`it from the stand-by mode. Id. at 5:31–41.
`b. Goldman (Ex. 1004)
`Goldman is a publication by Sun Microsystems that teaches how to
`use an LIS3L02AQ accelerometer built into a Sun Spot sensor board.
`Ex. 1004, 1. As Petitioner’s expert, Dr. Irfan Essa, explains, Goldman
`describes various Java methods associated with the Application
`Programming Interfaces (APIs) for the Sun Spot sensor board, including
`obtaining acceleration along various axes or measuring tilt. Ex. 1010 ¶ 48
`(citing Ex. 1004, 1, 2). Goldman also teaches measuring acceleration
`relative to gravity and outputting acceleration when it exceeds a threshold.
`Id. ¶¶ 48–49 (citing Ex. 1004, 2).
`c. Hyatt (Ex. 1017)
`Hyatt is a U.S. patent publication directed to “electronic equipment,
`such as a mobile phone” that is “responsive to detected motion.” Ex. 1017,
`code (57). Relevant to this case, Hyatt teaches “a motion signal processing
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`circuit” that “filter[s] the output of the motion sensor 60 or . . . condition[s]
`the output . . . such that the indication of motion or an appropriate signal to
`represent motion to the control circuit 42 only is provided in instances where
`the user decidedly moves the mobile phone 10 in a prescribed manner.” Id.
`¶ 58. According to Hyatt, “signals representing brief or casual movement . .
`. such as a result of being carried by a user while walking, bouncing in a
`moving car, etc., [are] not registered as an intended motion.” Id.
`d. Fabio (Ex. 1016)
`Fabio is a U.S. patent directed to “a pedometer device” that
`“processes an acceleration signal relating to the acceleration in order to
`detect the occurrence of a step.” Ex. 1016, code (57). Relevant to this case,
`Fabio teaches “identifying the main vertical axis . . . as the axis of detection
`that has the highest mean acceleration value Accm (on account of gravity).”
`Id. at 8:18–20.
`e. Mizell (Ex. 1007)
`Mizell is a publication from the Proceedings of the Seventh IEEE
`International Symposium on Wearable Computers, titled “Using Gravity to
`Estimate Accelerometer Orientation.” Ex. 1007, 1. As Dr. Essa explains,
`Mizell “describes obtaining orientation-independent acceleration
`information, taking into account gravitational (static) acceleration as well as
`(dynamic) accelerations. Mizell describes an algorithm for calculating the
`gravity component on each axis by averaging sampled accelerometer data
`for each axis.” Ex. 1010 ¶ 52 (internal quotation marks omitted) (quoting
`Ex. 1007, 1).
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`f. Park (Ex. 1014)
`Park is a U.S. patent that teaches saving a device’s system status data
`when the device goes into a suspend mode. Ex. 1014, 4:12–14. The data is
`then used to restore the system to the state it was in before entering suspend
`mode. Id. at 5:36–40.
`4. Limitations in Proposed Substitute Claim 23
`a. “A system to wake up a mobile device”
`Proposed substitute claim 23’s preamble recites “[a] system to wake
`up a mobile device.” Petitioner asserts that, to the extent the preamble is
`limiting, Pasolini discloses this limitation because it teaches “a portable
`electronic apparatus” and “an activation device 10 (system) to wake up the
`mobile device.” Pet. 28 (citing Ex. 1003, 2:26–28, 2:42–44; Ex. 1010
`¶¶ 55–59).11 Patent Owner does not challenge Petitioner’s assertions in this
`regard. We agree with Petitioner that Pasolini discloses a system to wake up
`a mobile device.
`b. “a motion sensor to detect motion along three axes and generate
`motion data”
`Proposed substitute claim 23 requires “a motion sensor to detect
`motion along three axes and generate motion data.” Petitioner asserts the
`combination of Pasolini and Goldman teaches this limitation because
`“Pasolini’s device includes an activation device 10 that includes the ‘internal
`sensor’” and “‘[w]hen dynamic accelerations are detected along at least one
`of the three axes X, Y, or Z,’ the device is woken from a sleep state.” Id. at
`
`
`11 This Decision relies on the Petition for Petitioner’s arguments as to the
`limitations appearing in originally challenged claim 22 and on Petitioner’s
`Opposition to the Motion to Amend and Sur-Reply for Petitioner’s
`arguments as to the limitations Patent Owner added through amendment.
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`29 (citing Ex. 1003, 1:66–2:1, 2:26–34, 3:17–19; Ex. 1010 ¶¶ 61–64). In
`addition, Petitioner explains, “Goldman teaches programmatic techniques to
`receive motion data from a three-axis accelerometer system,” and
`“generate[ ] motion data for various Java methods.” Id. at 30 (citing
`Ex. 1004, 1; Ex. 1010 ¶¶ 65–66). Patent Owner does not challenge
`Petitioner’s assertions in this regard. We agree with Petitioner that the
`combined Pasolini/Goldman system teaches “a motion sensor to detect
`motion along three axes and generate motion data,” as recited in substitute
`claim 23.
`Reason to Combine Pasolini and Goldman
`Petitioner further asserts it would have been obvious to one skilled in
`the art to modify Pasolini’s device to include Goldman’s enhanced
`accelerometer techniques as a known method “to distinguish static
`acceleration (due to gravity) from dynamic acceleration (due to movement)
`when calculating acceleration.” Id. at 20–21 (citing Ex. 1010 ¶¶ 68–72).
`Petitioner explains, with relevant support from its expert, Dr. Essa, that
`“when analyzing acceleration signals, it is beneficial to factor in calibration,
`sampling rates, and tilt,” as Goldman teaches, “because the results are more
`accurate.” Id. at 21 (citing Ex. 1010 ¶ 71). Thus, Petitioner explains,
`combining Pasolini’s device with Goldman’s accelerometer techniques
`amounts to no more than “using the known techniques of Goldman to
`improve the similar device of Pasolini in the same way.” Id. at 22. Patent
`Owner does not challenge Petitioner’s assertions in this regard. We
`conclude Petitioner has articulated sufficient reasoning with rational
`underpinning to support the legal conclusion that its proffered combination
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`of Pasolini and Goldman would have been obvious to one of ordinary skill in
`the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
`c. “glitch corrector to determine whether the motion data includes one
`or more glitches and remove the one or more glitches from the motion
`data, the one or more glitches each indicating a respective detected
`motion that is both within an operational range of the motion sensor
`and outside an acceptable range, the motion data containing less data
`as a result of the removal of the one or more glitches from the motion
`data”
`Proposed substitute claim 23 requires 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, the one or more glitches each
`indicating a respective detected motion that is both within an operational
`range of the motion sensor and outside an acceptable range.” Petitioner
`explains that Hyatt teaches this limitation because
`Hyatt discloses “a motion signal processing circuit” that “filter[s]
`the output of the motion sensor 60 or . . . condition[s] the output
`using known techniques such that the indication of motion or an
`appropriate signal to represent motion to the control circuit 42
`only is provided in instances where the user decidedly moves the
`mobile phone 10 in a prescribed manner.”
`Mot. Amend Opp. 9 (quoting Ex. 1017 ¶ 58). Petitioner notes further,
`“Hyatt states that ‘signals representing brief or casual movement of the
`[device], e.g., a dead zone where slight movement of the [device], such as a
`result of being carried by a user while walking, bouncing in a moving car,
`etc., is not registered as an intended motion.” Id. at 9–10 (quoting Ex. 1017
`¶ 58). Hyatt blocks these unwanted signals using a “low pass filter 64 [that]
`removes or blocks signals representing casual motions or noise or spurious
`signals representing brief, unintended movement of the mobile phone 10 or
`casual movement of the mobile phone, such as may occur during walking
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`or bouncing in a moving vehicle.” Id. at 10 (quoting Ex. 1017 ¶ 59). Patent
`Owner does not challenge Petitioner’s assertions in this regard. Based on
`Hyatt’s disclosures, we agree with Petitioner that Hyatt teaches determining
`whether the motion data includes one or more glitches and removing the one
`or more glitches from the motion data. In addition, we agree with Petitioner
`that Hyatt teaches the one or more glitches each indicate a respective
`detected motion that is both within an operational range of the motion sensor
`and outside an acceptable range, as substitute claim 23 requires.
`Proposed substitute claim 23 further requires “the motion data
`containing less data as a result of the removal of the one or more glitches
`from the motion data.” Petitioner asserts that Hyatt teaches this limitation,
`as well. Id. at 14–15. As Petitioner explains, Hyatt’s system includes “a
`‘motion signal processing circuit 62,’ which receives motion data from the
`‘motion sensor 60.’” Mot. Amend Opp. 14 (quoting Ex. 1017 ¶ 58, Fig. 2).
`Petitioner further explains that Hyatt’s motion data contains less data as a
`result of glitch removal because Hyatt employs a low pass filter so that
`“[t]he motion signal processing circuit 62 may block from the control
`circuit 42 signals representing brief or casual movement.” Id. (quoting
`Ex. 1017 ¶ 58); see id. at 14–15 (citing Ex. 1017 ¶¶ 58–59, Figs. 3–5).
`Patent Owner asserts that Hyatt does not disclose “the motion data
`containing less data as a result of the removal of the one or more glitches
`from the motion data” because “Hyatt is directed to processing performed by
`the signal processing unit 62 that prevents a signal in its entirety from being
`provided as input to the control circuit 42.” Mot. Amend Reply 9–10.
`According to Patent Owner,
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`[a] signal that is never provided to control circuit 42 (because it
`is blocked/removed by signal processing circuit 62) cannot
`subsequently be removed from control circuit 42, much less
`removed from a collection of generated “motion data” that
`includes non-glitch data, such that “the motion data contain[s]
`less data as a result of the removal of the one or more glitches
`from the motion data,” as recited in substitute claim 23.
`Id. at 10–11. We disagree with Patent Owner’s argument.
`The limitation at issue requires “a glitch corrector to . . . remove . . .
`glitches from the motion data.” It does not require that the motion data be
`removed from any specific part of the system, such as from Hyatt’s control
`circuit 42 as Patent Owner’s argument implies. As Petitioner explains,
`“Hyatt discloses a motion sensor 60, which continuously ‘produces . . .
`output indicative of motion of the mobile phone 10.’” Mot. Amend Sur-
`Reply 9 (quoting Ex. 1017 ¶ 58). “This output is provided to the mo