Samsung Electronics America, Inc. v. Uniloc 2017 LLC

1. Case Identification

• 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: Method and Device for Monitoring and Counting Periodic Human Motions
• Brief Description: The ’508 patent relates to systems for monitoring and counting periodic human motions, such as steps, using an inertial sensor. The technology purports to improve accuracy over conventional pedometers by using a dynamically updated "dominant axis" relative to gravity and an adaptive "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 disclosed a mobile terminal with a three-axis tilt angle sensor (an inertial sensor) used as a pedometer. Tamura’s system dynamically selected the axis that "most approximates the axis of gravity" to count steps, thereby teaching the claimed method of continuously determining orientation, assigning a "dominant axis," and updating it as orientation changes (claim 1). Petitioner asserted that while Tamura disclosed determining orientation, Pasolini explicitly taught continuously determining orientation by sampling at each new acquisition to improve accuracy. The combination was argued to render the "dominant axis logic" and "counting logic" of claim 11 obvious, with Tamura's processing unit performing these functions.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Tamura's pedometer with Pasolini's continuous orientation sampling to improve the accuracy of step counting. Both references are in the same field and address the same problem of accurately counting steps with a portable device. An inaccurate orientation would lead to an inaccurate step count, providing a clear reason to incorporate Pasolini's improvement.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as implementing more frequent orientation sampling in a processor-based pedometer like Tamura's was a well-understood and predictable design choice.

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: Petitioner argued that while the Tamura/Pasolini combination taught the dominant axis features, it did not explicitly detail the claimed cadence-based step validation. Fabio was introduced to teach "maintaining a cadence window" that is "continuously updated as an actual cadence changes" (claim 3). Fabio’s system used a "validation interval TV" based on the immediately preceding step to validate a current step, which Petitioner mapped directly to the claimed "cadence window." Fabio also taught using dynamic motion criteria (thresholds) to identify steps, and Pasolini further taught making these thresholds "self-adaptive" based on a rolling average of accelerations to reflect current conditions (claims 4 and 5).
  • Motivation to Combine: A POSITA implementing the Tamura/Pasolini pedometer would look to references like Fabio to improve step validation and noise rejection, which Tamura did not detail. Fabio’s technique of using a validation interval to ensure regularity between steps was a known method for increasing accuracy. A POSITA would be further motivated to incorporate Pasolini's self-adaptive thresholds to allow the pedometer to adapt to different terrains or walking speeds.
  • Expectation of Success: Success was expected because Fabio stated its methods could be used in any portable device. Combining known validation techniques (Fabio) and adaptive thresholds (Pasolini) with a known pedometer architecture (Tamura) was argued to be a predictable application of known technologies.

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 alone disclosed every limitation of this claim group. Fabio taught a method of switching a pedometer between different operational modes. Its "first counting procedure" corresponded to the claimed "non-active mode," where steps are buffered in a variable (Nvc) but not added to the total count until a condition of regularity is met. After identifying a number of steps within "appropriate cadence windows" (Fabio's validation interval TV), the device switched to a "second counting procedure," corresponding to the claimed "active mode," where every subsequent step was counted. This mapped to the limitations of claims 6 and 15. Fabio also disclosed switching back from the active to non-active mode if steps were no longer detected within the validation intervals (claim 7) and switching from a "sleep mode" to the non-active mode upon detecting acceleration (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 that if Pasolini was found not to teach a rolling average, Richardson explicitly taught computing a moving average of acceleration to use as a baseline threshold for detecting steps.

4. Key Claim Construction Positions

• "Dominant Axis" (claims 1, 11): Petitioner proposed this term be construed as "the axis most influenced by gravity." This construction was argued to be supported by the patent’s specification and was critical for mapping prior art like Tamura, which described selecting the 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 definition in the ’508 patent. This construction allowed Petitioner to map the term to Fabio's "validation interval TV," which was defined based on the timing of the immediately preceding step.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. 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. Petitioner contended its petition was not a "follow-on" effort because it relied on different primary prior art (Tamura), presented different legal theories (anticipation by Fabio, whereas Apple argued obviousness), and challenged a claim (claim 20) that Apple had not challenged but which had been asserted against Samsung.

6. Relief Requested

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