HTC Corporation v. Uniloc 2017 LLC

1. Case Identification

• Patent #: 7,653,508
• Filed: August 23, 2018
• Petitioner(s): HTC Corporation and HTC America, Inc.
• Patent Owner(s): Uniloc Luxembourg S.A.
• Challenged Claims: 1-4, 6-8, 11-16, 19, and 20

2. Patent Overview

• Title: Method and device for monitoring human activity
• Brief Description: The ’508 patent relates to methods and devices for counting periodic human motions, such as steps, using an inertial sensor. The claims are directed to two primary concepts: (1) determining a "dominant axis" for a tri-axial accelerometer based on gravity and counting steps relative to that axis, and (2) utilizing a dual-mode counting system that switches from a "non-active" mode (where steps are buffered) to an "active" mode (where steps are counted) after initial motions are validated.

3. Grounds for Unpatentability

Ground 1: Claims 1-2 and 11-12 are obvious over Pasolini.

• Prior Art Relied Upon: Pasolini (Patent 7,463,997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pasolini taught all limitations of the dominant-axis-based claims. Pasolini disclosed a pedometer with a tri-axial accelerometer that identifies the "main vertical axis" as the one with the highest mean acceleration, which corresponds to the ’508 patent’s "dominant axis." Petitioner asserted that Pasolini taught continuously updating this axis "at each acquisition of a new acceleration sample" to account for orientation changes. Pasolini then counts steps by monitoring acceleration along this specific axis. For dependent claim 2, Petitioner argued Pasolini's method inherently uses acceleration measurements only along the dominant axis to count steps, as this is the primary purpose of identifying it. The arguments for device claims 11-12 mirrored those for method claims 1-2, mapping the functions to Pasolini's processing unit.

Ground 2: Claims 6-8, 15-16, and 19 are obvious over Fabio.

• Prior Art Relied Upon: Fabio (Patent 7,698,097).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Fabio taught the dual-mode counting system. Fabio's "first counting procedure" was argued to be a "non-active mode," as detected steps are buffered in a control counter (Nvc) without being added to the total step count (NVT). The system switches to a "second counting procedure" (an "active mode") after a sequence of steps is validated. This validation occurs by checking if steps fall within a "validation interval TV," which Petitioner equated to the ’508 patent's "cadence window." In the active mode, Fabio's device adds each validated step to the total count. Petitioner also mapped Fabio's logic for switching back to the non-active mode when steps are no longer detected to the limitations of claims 7 and 16.

Ground 3: Claims 3-4, 13-14, and 20 are obvious over Pasolini in view of Fabio.

• Prior Art Relied Upon: Pasolini (Patent 7,463,997) and Fabio (Patent 7,698,097).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground combined the teachings of the two references. Petitioner argued that Pasolini taught the base method of claim 1 (dominant axis), while Fabio supplied the missing elements of the dependent claims related to cadence and dynamic criteria. Specifically, Fabio's "validation interval TV," which is continuously updated based on the timing of the immediately preceding step, was argued to teach the "cadence window" that is "continuously updated" as required by claims 3 and 13. Furthermore, Pasolini’s use of dynamic, self-adapting thresholds for detecting acceleration peaks was argued to meet the "dynamic motion criterion" limitations of claims 4 and 14.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine the references to improve the accuracy of Pasolini's pedometer. Pasolini's basic step counting is susceptible to errors from non-periodic motions, a well-known problem that Fabio's regularity tests and validation intervals were explicitly designed to solve. A POSITA would therefore be motivated to integrate Fabio's known step validation techniques into Pasolini's dominant-axis system to achieve a more robust and accurate device.
  • Expectation of Success: The combination was presented as a predictable integration of complementary technologies in the same field (pedometer design), with a high expectation of success in achieving a more accurate step counter.

4. Key Claim Construction Positions

• Petitioner argued for the broadest reasonable construction for several "logic" terms (e.g., "dominant axis logic," "counting logic," "mode logic") to encompass hardware, software, or a combination thereof that performs the recited function, as described in the specification.
• As a key alternative argument, Petitioner contended that if these "logic" terms were construed as means-plus-function limitations under §112, sixth paragraph, the petition still identified the corresponding function and structure in the prior art. For example, the function of the "dominant axis logic" was mapped to Pasolini's processing unit executing operations to identify the main vertical axis. This dual-construction approach was central to the petition's arguments.

5. Relief Requested

• Petitioner requests the institution of an inter partes review (IPR) for claims 1-4, 6-8, 11-16, 19, and 20 of the ’508 patent and the cancellation of those claims as unpatentable under 35 U.S.C. §103.