Samsung Electronics America Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2018-01756
• Patent #: 7,653,508
• Filed: September 18, 2018
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-8, 11-16, 19, and 20

2. Patent Overview

• Title: Monitoring and Counting Periodic Human Motion
• Brief Description: The ’508 patent discloses methods and devices for monitoring human activity, such as counting steps, using an inertial sensor (e.g., an accelerometer). The invention aims to improve accuracy by dynamically assigning a "dominant axis" relative to gravity and using a "cadence window" to validate steps.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tamura and Pasolini - Claims 1, 2, 11, and 12 are obvious over Tamura in view of Pasolini.

• Prior Art Relied Upon: Tamura (Application # 2006/0010699) and Pasolini (Patent 7,463,997).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tamura, a pedometer application, discloses all elements of independent claims 1 and 11 except for the requirement of "continuously" determining the sensor's orientation. Tamura taught a mobile device with a three-axis tilt sensor that dynamically selects the axis most aligned with gravity (the "dominant axis") to count steps as the device's orientation changes. To supply the missing "continuously" element, Petitioner pointed to Pasolini, which teaches a pedometer that determines the main vertical axis "at each acquisition of a new acceleration sample" to account for orientation variations.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Pasolini's teaching of continuous orientation determination with Tamura's pedometer system. Since both references address pedometers, a POSITA would recognize that continuously updating the orientation in Tamura's device would improve the accuracy of the step count, preventing errors that arise from using a stale or incorrect dominant axis.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in this combination, as it involved applying a known technique (continuous sampling from Pasolini) to a known device (Tamura's pedometer) to achieve a predictable improvement in accuracy.

Ground 2: Obviousness over Tamura, Pasolini, and Fabio - Claims 3, 4, 5, 13, and 14 are obvious over Tamura and Pasolini in view of Fabio.

• Prior Art Relied Upon: Tamura (Application # 2006/0010699), Pasolini (Patent 7,463,997), and Fabio (Patent 7,698,097).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds upon the combination of Tamura and Pasolini to add limitations related to step validation. Petitioner contended that Fabio taught the limitations of claim 3, namely maintaining and "continuously updat[ing]" a "cadence window" based on actual cadence changes. Fabio described using a "validation interval TV" to confirm that a detected step occurs within an expected time frame relative to the previous step, thereby filtering out false positives. This validation interval is updated with each valid step, reflecting the user's current cadence. For claim 4, Petitioner argued that Pasolini taught using "dynamic motion criterion" by disclosing self-adaptive acceleration thresholds that are calculated on-the-fly.
  • Motivation to Combine: A POSITA would be motivated to integrate Fabio's validation techniques into the Tamura/Pasolini pedometer. Tamura was silent on the specific algorithms for validating steps, whereas Fabio provided detailed methods for improving step-counting accuracy. A POSITA would incorporate Fabio's use of a validation interval (cadence window) and dynamic thresholds to make the base system more robust and accurate.
  • Expectation of Success: The combination would yield predictable results. Applying Fabio's known step validation and filtering techniques to the pedometer of Tamura/Pasolini would predictably increase the accuracy of the final step count, which was a well-understood goal in the art.

Ground 3: Anticipation by Fabio - Claims 6, 7, 8, 15, 16, 19, and 20 are anticipated by Fabio.

• Prior Art Relied Upon: Fabio (Patent 7,698,097).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Fabio disclosed every limitation of this group of claims. Fabio's pedometer operated in a "non-active mode" (a first counting procedure where the user is considered at rest) in which steps are buffered but not added to the total count. After identifying a number of steps within appropriate "cadence windows" (Fabio's "validation interval TV"), the device switches to an "active mode" (a second counting procedure) where subsequent steps are counted to monitor human activity. Fabio also disclosed switching back from the active to the non-active mode if steps are no longer detected within the validation intervals (claim 7) and switching from a "sleep mode" when initial acceleration is detected (claim 8).
• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 5 over Tamura, Pasolini, and Fabio in view of Richardson (Patent 5,976,083), arguing Richardson taught adjusting a lower acceleration threshold based on a "moving average" of accelerations.

4. Key Claim Construction Positions

• "Dominant Axis" (claims 1, 11): Petitioner proposed this term be construed as "the axis most influenced by gravity," consistent with the patent specification and a prior Board decision. This construction was central to mapping Tamura, which selects the sensor axis that "most approximates the axis of gravity."
• "Cadence Window" (claims 3, 6, etc.): Petitioner proposed this term be construed as "a window of time since a last step was counted that is looked at to detect a new step," based on its explicit definition in the ’508 patent. This construction was key to mapping Fabio's "validation interval TV" to the claims.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be improper. The petition asserted that although other IPRs had been filed against the ’508 patent by Apple, Samsung was not a party to those proceedings and this was its first challenge. Critically, Petitioner argued its petition was not duplicative because its primary reference for more than half the challenged claims, Tamura, was not used in the Apple petitions or considered during original prosecution. Further, Petitioner's anticipation ground based on Fabio was distinct from Apple's obviousness ground using the same reference.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-8, 11-16, 19, and 20 of the ’508 patent as unpatentable.