Samsung Electronics America Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2018-01757
• Patent #: 8,712,723
• Filed: September 18, 2018
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-7 and 10-19

2. Patent Overview

• Title: Monitoring Human Activity Using Inertial Sensors
• Brief Description: The ’723 patent discloses methods and devices for monitoring periodic human motion, such as walking steps, using an inertial sensor. The purported improvements over the prior art involve dynamically assigning a "dominant axis" relative to gravity to orient the sensor data and using an adaptive "cadence window" to accurately detect and count steps.

3. Grounds for Unpatentability

Ground 1: Obviousness over Tamura and Fabio - Claims 1, 2, 10-12, and 14-17 are obvious over Tamura in view of Fabio.

• Prior Art Relied Upon: Tamura (Application # 2006/0010699) and Fabio (Patent 7,698,097).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Tamura taught a pedometer in a mobile device that uses a three-axis tilt angle sensor to count steps. Critically, Tamura disclosed dynamically selecting the axis that "most approximates the axis of gravity" for step counting, thereby teaching the "assigning a dominant axis" and "updating the dominant axis" limitations of independent claims 1, 10, and 14. However, Tamura was silent on the specific algorithm for how acceleration signals are processed to count a step. Petitioner asserted that Fabio supplied these missing details by teaching a method for accurately counting steps using a "validation interval" (the claimed "cadence window") and defined motion criteria (positive and negative acceleration thresholds).
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Fabio's detailed step-counting algorithm with Tamura's pedometer system to improve its accuracy. Because Tamura provided a system but lacked specifics on robust step detection, a POSITA would have looked to a reference like Fabio, which addresses that exact problem, to implement a known technique (using a validation interval and thresholds) in a known device (Tamura's pedometer) to achieve the predictable result of improved step-count accuracy.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references operate in the same technical field of accelerometer-based pedometers and address complementary aspects of the same problem.

Ground 2: Obviousness over Tamura, Fabio, and Pasolini - Claims 3, 4, 13, 18, and 19 are obvious over Tamura, Fabio, and Pasolini.

• Prior Art Relied Upon: Tamura (Application # 2006/0010699), Fabio (Patent 7,698,097), and Pasolini (Patent 7,463,997).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Tamura-Fabio combination by adding Pasolini to teach the limitation of claim 3, which required the motion criteria to be dynamic and "updated to reflect current conditions." While the Tamura-Fabio combination taught using fixed acceleration thresholds as motion criteria, Petitioner argued Pasolini explicitly taught an algorithm for "self-adaptive computation of acceleration thresholds." Pasolini disclosed calculating positive and negative reference thresholds "on-the-fly" to adapt to variations in detection conditions, such as a change in terrain or walking speed.
  • Motivation to Combine: A POSITA, having already combined Tamura and Fabio, would be motivated to incorporate Pasolini’s teachings to make the resulting pedometer more robust and accurate across varying conditions. Making the thresholds dynamic was a known method for improving pedometer performance, and Pasolini provided an explicit solution for doing so, allowing the device to adapt to different acceleration signal profiles.
  • Expectation of Success: Success was expected because all three references address step counting with accelerometers, and implementing Pasolini's dynamic threshold calculations into the Tamura-Fabio system was a straightforward modification for a POSITA.

Ground 3: Anticipation by Fabio - Claims 5, 6, and 7 are anticipated by Fabio.

• Prior Art Relied Upon: Fabio (Patent 7,698,097).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Fabio alone disclosed every element of claims 5-7. Claim 5 required "buffering a plurality of periodic human motions" and "identifying a number" of them within an "appropriate cadence window." Petitioner mapped this to Fabio's "first counting procedure," where recognized steps (valid control steps Nvc) are temporarily stored and counted but not added to the total step count until a regularity threshold is met, thus constituting "buffering." Fabio’s use of a "validation interval TV" to validate each step was argued to be the claimed "cadence window," which is updated based on the timing of the immediately preceding step. Claim 6 (switching from active to non-active mode) was mapped to Fabio switching from its "second counting procedure" to its "first counting procedure" when an interruption in locomotion is detected (i.e., steps are not identified in the cadence window).

• Additional Grounds: Petitioner asserted an additional obviousness challenge (Ground 4) against claims 5, 6, and 7 based on Tamura, Fabio, Pasolini, and Richardson (Patent 5,976,083), where Richardson was added to teach adjusting a lower threshold based on a "rolling average of accelerations."

4. Key Claim Construction Positions

• "Dominant Axis": Petitioner argued this term should be construed as "the axis most influenced by gravity," consistent with the patent's specification and a prior Board construction in a related IPR. This construction was central to mapping Tamura, which selects the axis that "most approximates the axis of gravity."
• "Cadence Window": Petitioner relied on the patent's explicit definition: "a window of time since a last step was counted that is looked at to detect a new step." This construction allowed Petitioner to map the term to Fabio's "validation interval TV," which is defined relative to the time of the immediately preceding step.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §314(a) or §325(d) would be improper. It asserted that although other IPRs had been filed against the ’723 patent by Apple Inc., Samsung was not a party to those proceedings and this was Samsung's first challenge. Furthermore, the petition presented new arguments and prior art, particularly Tamura as the primary reference, which was not considered during the original prosecution or in the Apple petitions. Petitioner contended that its grounds were not the same or substantially the same as those in the prior petitions and that instituting review would serve the interests of justice.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-7 and 10-19 of the ’723 patent as unpatentable.