Samsung Electronics America, Inc. v. Uniloc 2017 LLC

1. Case Identification

• Patent #: U.S. Patent No. 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 an Inertial Sensor
• Brief Description: The ’723 patent discloses methods and devices for monitoring periodic human motion, such as counting steps with a portable electronic device. The purported improvements over conventional pedometers involve dynamically assigning a "dominant axis" relative to gravity and using an adaptive "cadence window" to improve the accuracy of step detection.

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 mobile device with a three-axis tilt angle sensor (an inertial sensor) used as a pedometer. Tamura’s system dynamically selects the sensor axis that “most approximates the axis of gravity” to count steps, thereby disclosing the “dominant axis” limitation. However, Tamura was silent on the specific criteria for validating a step. Petitioner asserted that Fabio supplied these missing details by teaching a pedometer that validates a detected step by determining if it occurs within a "validation interval TV"—a time window based on the previous step’s timing—which corresponds to the claimed "cadence window." Fabio also taught using acceleration thresholds as the claimed "motion criteria."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Fabio’s specific step validation techniques with Tamura’s dominant-axis-based system. The motivation was to improve the accuracy of Tamura's pedometer by incorporating Fabio’s known methods for filtering out false positives and ensuring step regularity, resulting in a more reliable device.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because both references address the same technical problem (accurate step counting with inertial sensors) and their combination represented the application of a known technique (Fabio's validation logic) to a similar device (Tamura's pedometer) to achieve a predictable improvement in performance.

Ground 2: Obviousness over Tamura, Fabio, and Pasolini - Claims 3, 4, 13, 18, and 19 are obvious over the combination of 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 a dynamic motion criterion. While Fabio used fixed acceleration thresholds, Pasolini disclosed a pedometer with "self-adaptive" acceleration thresholds that are continuously calculated and updated on-the-fly. This allows the system to adapt to changes in user gait, speed, or terrain, thus teaching a "dynamic motion criterion updated to reflect current conditions."
  • Motivation to Combine: A POSITA, seeking to further improve the accuracy of the Tamura/Fabio pedometer, would be motivated to incorporate Pasolini’s self-adaptive thresholds. This would make the device more robust by allowing it to adapt to real-world variations in motion, a known challenge in the field.
  • Expectation of Success: Success was expected as all three references are in the pedometer art and address step counting using accelerometers. Integrating Pasolini's adaptive threshold algorithm into the combined Tamura/Fabio system was a predictable modification to enhance its adaptability.

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, 6, and 7. For claim 5, Fabio taught buffering a plurality of steps by tracking "valid control steps" (Nvc) that are not immediately added to the total step count until a certain regularity is established. For claim 6, Fabio taught switching from an "active mode" (a second counting procedure) to a "non-active mode" (a first counting procedure) when an interruption in locomotion is detected (i.e., when expected steps are not identified in the validation intervals). For claim 7, Fabio disclosed a "sleep mode" (a low-consumption wait state) from which the device switches to the non-active mode when acceleration is detected.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 4 and 19 based on the combination of Tamura, Fabio, Pasolini, and Richardson (Patent 5,976,083), where Richardson was cited to provide further teaching of adjusting a lower threshold based on a rolling average of accelerations.

4. Key Claim Construction Positions

• "Dominant Axis" (claims 1, 11, 14): Petitioner proposed this term be construed as "the axis most influenced by gravity." This construction was critical to map Tamura's disclosure of selecting the "axis which most approximates the axis of gravity" directly onto the claim language.
• "Cadence Window" (claims 1, 5, 6, 10, etc.): Petitioner proposed construing this term as "a window of time since a last step was counted that is looked at to detect a new step." This construction allowed Petitioner to equate Fabio’s "validation interval TV," which is defined based on the timing of the immediately preceding step, with the claimed cadence window.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) would be inappropriate. The petition highlighted 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. Petitioner asserted this factor weighed heavily against denial. Furthermore, the petition presented new arguments and prior art, including Tamura as a primary reference (which was not used in the Apple petitions) and an anticipation ground based on Fabio, distinguishing it from prior challenges and arguing against a finding that it presented the same or substantially the same art or arguments.

6. Relief Requested

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