Samsung Electronics America Inc v. Uniloc 2017 LLC

1. Case Identification

• Case #: IPR2019-00889
• Patent #: 7,653,508
• Filed: March 27, 2019
• Petitioner(s): Samsung Electronics America, Inc.
• Patent Owner(s): Uniloc 2017 LLC
• Challenged Claims: 1-4, 6-8, 11-16, 19, and 20

2. Patent Overview

• Title: Monitoring Human Activity Using Inertial Sensors
• Brief Description: The ’508 patent discloses methods and devices for monitoring human activity, such as counting steps, using an inertial sensor. The technology aims to improve accuracy by addressing two main concepts: (1) determining a "dominant axis" (the axis most influenced by gravity) that dynamically updates as the device's orientation changes, and using this axis for step counting; and (2) employing "non-active" and "active" modes to filter out incidental motions by buffering potential steps until a pattern of regular movement is confirmed.

3. Grounds for Unpatentability

Ground 1: Obviousness over Pasolini - 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 a pedometer device with a tri-axial accelerometer that renders the concept of a "dominant axis" obvious. Pasolini’s system identified a "main vertical axis" for step detection, defined as the axis with the highest mean acceleration due to gravity. Critically, Pasolini disclosed that this axis could be identified "at each acquisition of a new acceleration sample" to account for "variations in the orientation of the pedometer device." Petitioner contended this directly taught the limitations of continuously determining an orientation, assigning a dominant axis, updating it as orientation changes, and counting motions relative to that axis, as recited in independent claims 1 and 11.
  • Key Aspects: This ground asserted that Pasolini’s continuous updating of the "main vertical axis" is functionally identical to the ’508 patent’s "dominant axis logic."

Ground 2: Obviousness over Fabio - 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 asserted that Fabio disclosed the dual-mode step counting claimed in the ’508 patent. Fabio’s pedometer operated in a "first counting procedure" (equivalent to the claimed "non-active mode") where detected steps were buffered in a control step variable without being added to the final count. Upon meeting a regularity condition—determined by checking if steps occurred within a "validation interval" (equivalent to a "cadence window")—the device switched to a "second counting procedure" (the "active mode"). In this active mode, validated steps were added immediately to the total count. This process, Petitioner argued, directly mapped to the claimed method of running a device in a non-active mode where motions are buffered, and switching to an active mode after identifying periodic motions within a cadence window.

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

• Prior Art Relied Upon: Pasolini (Patent 7,463,997), Fabio (Patent 7,698,097).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground combined Pasolini's dynamic axis determination with Fabio's step validation and cadence logic. Petitioner argued that Pasolini provided the base pedometer that determines a dominant axis for counting. Fabio’s teachings on using a continuously updated "validation interval" (cadence window) and applying a regularity test would be added to Pasolini’s system. For example, claim 3’s limitation of "maintaining a cadence window... continuously updated as an actual cadence changes" was taught by Fabio’s disclosure of its validation interval being defined relative to the immediately preceding step. Claim 4's dynamic motion criterion was taught by Pasolini’s self-adaptive acceleration thresholds, which modified at each new sample acquisition to adapt to conditions.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Pasolini and Fabio to improve the accuracy of step counting. Pasolini’s device, while tracking orientation, was still susceptible to counting non-step motions as steps. Fabio was explicitly directed to solving this problem by using a regularity test to filter out "false positives." A POSITA would combine Fabio's known technique for improving accuracy with Pasolini's similar pedometer device to achieve the predictable result of a more robust step counter.
  • Expectation of Success: The combination was a straightforward application of a known accuracy-improving technique (Fabio) to a similar device (Pasolini) in the same field, with a predictable and expected outcome of enhanced performance.

4. Key Claim Construction Positions

• "dominant axis": Petitioner proposed the construction "the axis most influenced by gravity." This construction was central to mapping Pasolini’s disclosure of a "main vertical axis" determined by gravity to the challenged claims.
• "cadence window": Petitioner proposed the construction "a window of time since a last step was counted that is looked at to detect a new step." This aligned Fabio’s "validation interval," which was defined relative to the immediately preceding step, with the claimed term.
• "logic" terms (e.g., "dominant axis logic," "counting logic"): Petitioner argued that under the broadest reasonable interpretation, these terms should be understood as "hardware, software, or both." In the alternative, should a means-plus-function construction under §112, paragraph 6 be applied, Petitioner identified corresponding structure in the specification and argued the prior art disclosed equivalent structures.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) or §325(d) should be rejected. The petition was filed concurrently with a motion for joinder to an already-instituted proceeding (IPR2018-01589), a situation where the Board has previously declined to exercise such discretion. Petitioner further noted that its own prior petition (IPR2018-01756) was denied without consideration of the merits, meaning it has not had a full and fair opportunity to challenge the ’508 patent.

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-4, 6-8, 11-16, 19, and 20 of the ’508 patent as unpatentable.