Nintendo of America Inc.v.iLife Technologies, Inc.

Patent Trial and Appeal Board

Apr 28, 2016

09909404 (P.T.A.B. Apr. 28, 2016)

Trials@uspto.gov Paper No. 40
Tel: 571.272.7822 Filed: April 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
NINTENDO OF AMERICA INC. and NINTENDO CO., LTD.,
Petitioner,

v.

ILIFE TECHNOLOGIES,
Patent Owner.
_______________

Case IPR2015-00106
Patent 6,703,939 B2
_______________

Before JACQUELINE WRIGHT BONILLA, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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I. INTRODUCTION
A. Background
Nintendo of America Inc. and Nintendo Co., Ltd. (collectively,
“Petitioner”) filed a Corrected Petition (Paper 4, “Pet.”) requesting an inter
partes review of claims 1–3, 21, and 22 of U.S. Patent No. 6,703,939 B2
(Ex. 1001, “the ’939 patent”). iLife Technologies, Inc. (“Patent Owner”)
filed a Preliminary Response (Paper 9, “Prelim. Resp.”). On April 29, 2015,
pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims
1–3, 21, and 22 on the following grounds of unpatentability asserted by
Petitioner:
Reference Basis Claims
Yasushi1 § 103(a) 1–3
Unuma2 § 103(a) 1–3, 21, and 22
Decision on Institution (Paper 12, “Dec. Inst.”), 6–7, 35.
Patent Owner filed a Patent Owner Response (Paper 14, “PO Resp.”),
and Petitioner filed a Reply (Paper 21, “Pet. Reply”).
Petitioner relies on declarations of Dr. Gregory Francis Welch in
support of its Petition (Ex. 1002) and Reply (Ex. 1011). Patent Owner relies
on the declarations of Dr. Robert H. Sturges (Ex. 2006, “the Sturges
Declaration”), Michael L. Lehrman (Ex. 2007), Michael D. Halleck (Ex.
2008), Michael E. Halleck (Ex. 2009), Alan Owens (Ex. 2010), Edward L.
Massman (Ex. 2011), Don James (Ex. 2012), and Greg Younger (Ex. 2013)
in support of its Response. Petitioner refers to the deposition testimony of

1 Yasushi, JP H10-295649 (published Nov. 10, 1998) (Ex. 1003)
2 Unuma et al., EP 0 816 986 A2 (published Jan. 7, 1998) (Ex. 1004).
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Dr. Sturges in its Reply (Ex. 1010), and Patent Owner refers to the
deposition testimony of Dr. Francis (Ex. 2038).
In addition, Patent Owner filed a Motion to Exclude certain of
Petitioner’s evidence (Paper 29, “Mot. Excl.”). Petitioner filed an
Opposition (Paper 32, “Opp. Mot. Excl.”), and Patent Owner filed a Reply
(Paper 36, “Reply Mot. Excl.”).
Patent Owner filed supplemental claim construction briefing (Paper
26). Patent Owner also filed a Notice regarding New Arguments and
Belated Support (Paper 30) to which Petitioner filed a Response (Paper 33).
Patent Owner also filed a Motion for Observations (Paper 31) to which
Petitioner filed a Response (Paper 34).
A combined oral hearing in this proceeding and Cases IPR2015-
00105, IPR2015-00109, IPR2015-00112, IPR2015-0113, and IPR2015-
00115 was held on January 27, 2016. A transcript is entered in the record as
Paper 39 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine Petitioner has shown by a
preponderance of the evidence that claims 1–3, 21, and 22 of the ’939 patent
are unpatentable under 35 U.S.C. § 103(a). We also deny Patent Owner’s
Motion to Exclude.
B. Related Proceedings
The parties indicate that district court cases involving the ’939 patent
include iLife Technologies, Inc. v. Nintendo of America Inc., No. 3:13-cv-
04987 (N.D. Tex.), as well as other cases involving other defendants
including iLife Technologies Inc. v. AliphCom, No. 3:14-cv-03345 (N.D.
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Cal.); iLife Technologies Inc. v. Body Media, Inc., No. 2:2014-cv-00990
(W.D. Pa.); and iLife Technologies Inc. v. Fitbit, Inc., No. 3:2014-cv-03338
(N.D. Cal.). Pet. 1; Paper 7, 1.
Upon considering the other Petitions filed by the same Petitioner on
the same day, we also instituted inter partes review of claims in related U.S.
Patent Nos. 6,307,481 B1 (Case IPR2015-00105), 6,864,796 B2 (Case
IPR2015-00109), 7,095,331 B2 (Case IPR2015-00112), 7,145,461 B2 (Case
IPR2015-00113), and 7,479,890 B2 (Case IPR2015-00115).
C. The ’939 Patent
The ’939 patent relates to systems, and methods of operation thereof,
for evaluating movement of a body relative to an environment. Ex. 1001,
1:24–28. The ’939 patent indicates that prior art methods fail to discern
normal, acceptable, or unacceptable changes in levels of body activity. Id. at
1:53–57. The Specification acknowledges that “accelerometers that measure
both static and dynamic acceleration are known,” but states that “their
primary use has heretofore been substantially confined to applications
directed to measuring one or the other, but not both.” Id. at 2:1–4.
The Specification distinguishes between “static acceleration, or
gravity,” which is “a gauge of position,” versus “dynamic acceleration (i.e.,
vibration, body movement, and the like).” Id. at 1:65–1:1. The system
includes a sensor associated with the body that is operable to sense
repeatedly accelerative phenomena of the body (i.e., changes in velocity of
the body, whether in magnitude, direction, or both). Id. at 2:34–36. The
system is concerned with measuring both static and dynamic acceleration of
the body. Id. at 1:65–2:4, 6:23–34. The sensor can “comprise[] a plurality
of acceleration measuring devices and is not limited to a particular number
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of acceleration measuring devices.” Id. at 12:55–58. Each of the plurality
of acceleration measuring devices can be aligned parallel to the x-axis, y-
axis, and z-axis, respectively, of a three-dimensional Cartesian coordinate
system. Id. at 13:14–21.
The system further includes a processor that processes the sensed
accelerative phenomena as a function of at least one accelerative event
characteristic to determine whether the body movement is within
environmental tolerance. Id. at 2:37–44. The ’939 patent describes that the
accelerative event characteristic “will largely be defined by the specific
application.” Id. at 9:49–50. The processor “generates state indicia relative
the environment of interest, and determines whether the evaluated body
movement is within tolerance in the context of that environment.” Id. at
9:51–54. The ’939 patent describes that “‘tolerance’ would . . . be very
different for a monitored body of an elderly person . . . , a toddler, a box in a
freight car, a container of combustible gas, etc.” Id. at 9:54–57. The
processor can compare a measured set of coordinates with prerecorded sets
of coordinates that represent a type of motion in order to identify a match.
Id. at 17:51–60.
Figure 4 of the ’939 patent is reproduced below.

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Figure 4 depicts an operational flow diagram of exemplary method 400 of
programming processor 47 in accordance with a fall detection application of
the principles of the ’939 patent. Id. at 4:37–40, 8:21–25. Step 405 involves
generating a request for sampling measurements, either in response to an
executing operations program or upon initiation by a user. Id. at 3:36–40.
Sensor 25 senses x and y acceleration values and outputs measurement
signals that are filtered in step 410 to reduce the probability that an out-of-
tolerance abnormal movement will be determined incorrectly in response to
a single sharp impact. Id. at 8:43–47. Step 415 involves processor 47 using
the outputs from sensor 25 to determine a last stable position of the body.
Id. at 8:50–52. In Step 420, processor 47 uses ac voltage components of
each output from sensor 25 to check against a G force threshold value to see
if the threshold is exceeded, and thus, qualifies as a potential fall. Id. at 9:1–
10. In Step 425, processor 47 determines a fall by testing a post-impact
stream of samples against a tolerance. Id. at 9:11–14. In Step 430, a change
of body position greater than 45° or more from the last stable position may
lead to classification of the event as a debilitating fall. Id. at 9:21–24.
In Step 435, processor 47 adds the absolute values of the x and y last
stable positions and then determines whether the body is lying down if the
added value exceeds a value corresponding to 90° plus or minus 25%, after
setting the last stable position. Id. at 9:29–33. In Step 440, any impact that
exceeds a G force threshold is treated as a debilitating fall. Id. at 9:36–39.
“Exemplary processor 47 is programmed to distinguish between normal and
abnormal accelerative events . . . and, when an abnormal event is identified,
indicates whether the abnormal event is tolerable, or within tolerance.” Id.
at 12:16–21.
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D. Illustrative Claims
Independent claims 1 and 21 are illustrative of the claimed subject
matter, and are reproduced below.
1. A system that evaluates movement of a body relative to an
environment, said system comprising:
a sensor, associable with said body, that senses
accelerative phenomena of said body relative to a three
dimensional frame of reference in said environment, said sensor
comprising a plurality of acceleration measuring devices; and
a processor, associated with said sensor, that processes
said sensed accelerative phenomena of said body as a function of
at least one accelerative event characteristic to thereby determine
whether said evaluated body movement is within an
environmental tolerance, and to thereby determine whether said
body has experienced acceleration that represents one of a
plurality of different types of motion.

21. A method of operating a system to evaluate movement of a
body relative an environment wherein a sensor is associated with
said body, said method of operation comprising the steps of:
processing, with a processor, repeatedly sensed dynamic
and static accelerative phenomena of said body as a function of
at least one accelerative event characteristic to thereby determine
whether said evaluated body movement is within environmental
tolerance; and
determining whether said body has experienced
acceleration that represents one of a plurality of different types
of motion.
II. DISCUSSION
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir.
2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
890 (mem.) (2016). There is a presumption that a claim term carries its
ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp.,
288 F.3d 1359, 1366 (Fed. Cir. 2002); In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). A patentee may rebut this presumption,
however, by acting as his own lexicographer, providing a definition of the
term in the specification with “reasonable clarity, deliberateness, and
precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
absence of such a definition, limitations are not to be read from the
specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
In the Decision on Institution, we interpreted various claim terms of
the ’939 patent as follows:
Term Interpretation
“dynamic accelerative
phenomena”
“acceleration indicating vibration or
movement”
“static accelerative
phenomena”
“acceleration indicating position of the
body relative to the earth”

“within environmental
tolerance”
“acceptable based on criteria including a
specified value given the environment for
which body movement is being
evaluated”
Dec. Inst. 7–13.
The parties do not dispute these interpretations in the Patent Owner
Response or in the Petitioner Reply. See PO Resp. 28 (“[F]or purposes of
this Response, the following preliminary claim constructions from the
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Board’s decision to institute trial . . . are used.”); see Pet. Reply 1–11. Based
on our review of the complete record, we do not perceive any reason or
evidence that now compels any deviation from these interpretations.
In addition to the terms construed above, we address the construction
of “processor” and “a sensor . . . that senses accelerative phenomena of said
body relative to a three dimensional frame of reference in said
environment.”
1. “processor”
The specification of the ’939 patent defines “processor” to mean “any
device, system or part thereof that controls at least one operation, such a
device may be implemented in hardware, firmware or software, or some
suitable combination of at least two of the same.” Ex. 1001, 4:10–14.
Petitioner cites the definition and proposes it as the construction for
“processor.” Pet. 6 (citing Ex. 1001, 4:10–14). Patent Owner does not
dispute that construction. PO Resp. 28–29. We adopt that claim
construction here.
2. “accelerative event characteristic”
The specification defines “accelerative events” or “accelerative
phenomena” as “occurrences of change in velocity of the body (or
acceleration), whether in magnitude, direction or both, and including
cessation of activity or inactivity.” Ex. 1001, 5:20–24. Both parties cite the
definition and propose it as the construction for “acclerative event” or
“accelerative phenomena.” Pet. 6 (citing Ex. 1001, 5:22–25); PO Resp. 29
(citing Ex. 1001, 5:20–24). Consistent with that definition, we construe an
“accelerative event characteristic” as a characteristic of an accelerative
event, as defined above.
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3. “a sensor . . . that senses accelerative phenomena of said
body relative to a three dimensional frame of reference in
said environment”
Petitioner advocates a construction for the above-referenced claim
limitation in which a three-dimensional (“3D”) frame of reference is
“established by the sensor so that measurements can be taken relative to
each of the three axes of the 3D frame of reference.” Pet. Reply 3; see also
Ex. 1011 ¶ 15 (“In order to constitute a sensor that senses relative to a 3D
frame of reference as claimed, the sensor must have sensing capability in all
three axes to establish the required 3D frame of reference.”).
We authorized Patent Owner to file a sur-reply addressing the
construction of “relative to a three dimensional frame of reference” in this
proceeding. Paper 26. In the sur-reply, Patent Owner argues that a proper
construction of the claim language “does not require sensing or measuring
simultaneously in three directions or a three-dimensional coordinate
system.” Paper 26 (Patent Owner’s Supplemental Claim Construction
Briefing), 1; see also Ex. 2006 ¶ 106 (“The claim limitation recites sensing
accelerative phenomena ‘relative to a three dimensional frame of reference
in said environment,’ not ‘in each of three dimensions.’”).
Patent Owner argues that Petitioner’s construction would require at
least three accelerometers, rendering the term “plurality” superfluous. Paper
26, 1 (citing Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1159–60 (Fed. Cir. 2007)). We understand Patent Owner to be asserting that
if “a sensor . . . that senses accelerative phenomena . . . relative to a three
dimensional frame of reference” were to be construed to require sensing
along three axes, this would necessarily require three accelerometers,
thereby rendering it superfluous to recite that the “sensor compris[es] a
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plurality of acceleration measuring devices.” Ex. 1001, 19:55–57. We are
not persuaded by Patent Owner’s argument.
Although the plurality of acceleration devices can be three
accelerometers each aligned along one axis of a three dimensional
coordinate system (Ex. 1001, 19:66–20:2), as discussed in more detail
below, the plurality of acceleration devices can alternatively be two plural-
axis accelerometers in which a first plural-axis accelerometer is aligned
within a first plane of a three dimensional coordinate system and in which a
second plural-axis accelerometer is aligned within a second plane, and this
alternate configuration would also allow sensing along three axes (id. at
20:3–9). Thus, the reference to “a plurality of acceleration measuring
devices” in claim 1 is inclusive of at least two alternate embodiments, where
each comprise more than one, i.e., a plurality of, acceleration measuring
devices. See id. at 13:14–20 (“In one arrangement . . . accelerometer 910 is
aligned parallel to the x-axis . . . . Accelerometer 920 is aligned parallel to
the y-axis . . . . Accelerometer 930 is aligned parallel to the z-axis”), 15:25–
35 (“In an alternative advantageous embodiment . . . first axis of
accelerometer 910 is aligned parallel to the x axis and the second axis of
accelerometer [910] is aligned parallel to the y axis . . . [and] first axis of
accelerometer 920 is aligned parallel to the negative y axis and the second
axis of accelerometer 920 is aligned parallel to the z axis”). Accordingly,
we do not agree with Patent Owner’s premise that Petitioner’s claim
construction would render the term “plurality” superfluous per se.
Patent Owner also argues that “Petitioner’s construction imports
elements from dependent claims, [e.g.,] (Claim 3 (three accelerometers);
Claim 4 (3-D coordinate system)[;] Claims 5–6, 23–24 (measuring
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acceleration along three axes),” whereas “limitations in dependent claims
normally should not [] be read into the independent claim from which they
depend.” Paper 26, 1 (citing Karlin Tech, Inc. v. Surgical Dynamics, Inc.,
177 F.3d 968, 972 (Fed. Cir. 1999)). Although “the presence of a dependent
claim that adds a particular limitation gives rise to a presumption that the
limitation in question is not present in the independent claim” (Phillips v.
AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)), this doctrine leads only
to a presumption that the particular limitations of claims 3–6, 23, and 24
(e.g., three accelerometers each aligned along one axis of a three
dimensional coordinate system as recited in claim 3 or two plural axis
accelerometers aligned within first and second planes of a three dimensional
coordinate system as recited in claims 4 and 23) are not present in the
independent claim, not a presumption that a sensor capable of sensing in
three axes is not present in the independent claim.
Although we are not persuaded by Patent Owner’s arguments as set
forth above, we consider that claim terms are given their ordinary and
customary meaning as understood by one of ordinary skill in the art in the
context of the entire disclosure. Translogic Tech., 504 F.3d 1249 at 1257.
The ordinary and customary meaning of the term “relative to” is “with
regard to.” See The American Heritage Dictionary of the English Language,
available at https://www.ahdictionary.com/word/search.html?q=relative+to
(last visited Apr. 26, 2016) (Ex. 3003) (defining “relative to” as “[w]ith
regard to; concerning”); Merriam-Webster Dictionary, available at
http://www.merriam-webster.com/dictionary/relative%20to (last visited Apr.
26, 2016) (Ex. 3004) (defining “relative to” as “with regard to: in connection
with”); The Oxford English Dictionary, available at
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http://www.oed.com/view/Entry/161819?redirectedFrom=relative#eid (last
visited Apr. 26, 2016) (Ex. 3005) (defining “relative to” as “[h]aving
application or reference to; relating to.”).
There is nothing in the Specification that indicates a deviation from
this ordinary meaning. Accordingly, the plain language of the claim means
that the sensor senses accelerative phenomena of said body with regard to a
three dimensional frame of reference. We also interpret “three dimensional
frame of reference” to refer to “a system of axes (in three dimensions) in
relation to which position or motion can be defined.” See The Oxford
English Dictionary, available at
http://www.oed.com/view/Entry/317084?redirectedFrom=frame+of+referen
ce#eid (last visited Apr. 26, 2016) (Ex. 3006) (defining “frame of reference”
as “[a] system of coordinate axes in relation to which size, position, or
motion, can be defined;” see also Ex. 1001, 2:21–23 (“the present invention
introduces systems, as well as methods of operating such systems, for
evaluating movement of a body relative to an environment”), 2:49–52 (“the
sensor may be a plural-axis sensor that senses accelerative phenomena and
generates an output signal to the processor indicative of measurements of
both dynamic and static acceleration of the body in plural axes”). In other
words, the plain language of the claim refers to a sensor that senses
accelerative phenomena of said body with regard to a system of axes (in
three dimensions) in relation to which position or motion can be defined.
The Specification describes the term “sensor” broadly as “a device
that senses one or more absolute values, changes in value, or some
combination of the same, of at least the sensed accelerative phenomena.”
Ex. 1001, 2:45–48. The Specification describes “an advantageous
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embodiment” in which “the sensor may be a plural-axis sensor that senses
accelerative phenomena and generates an output signal to the processor
indicative of measurements of both dynamic and static acceleration of the
body in plural axes.” Id. at 2:48–53. The Specification explains that sensor
25 of Figure 1 is “for illustrative purposes only” (id. at 6:47–48), that “any
sensor that is capable of sensing accelerative phenomena relative to a body
may be used in lieu of, or even in conjunction with, sensor 25” (id. at 6:43–
47), and that “alternate orientations of sensor 25 may be used for different
applications” (id. at 6:47–49). Notably, the Specification also describes that
the x and y outputs of illustrative sensor 25 can distinguish a “fall” from
“normal body movement” (i.e., “disruption of a stable position”) “by a
concussive force followed by a distinctly different ending stable position.”
Id. at 8:7–11. Thus, measurements taken along two axes (i.e., x and y axes)
“sense,” i.e., obtain information about, accelerative phenomena of a body
relative to a 3D frame of reference, i.e., a fall.
Later on, the Specification further describes “an alternate
advantageous embodiment” with three acceleration measuring devices that
may each comprise a plural axis measuring device. Id. at 12:51–61. In one
arrangement, each acceleration measuring device is aligned parallel to the x-
axis, y-axis, and z-axis, respectively, of a three dimensional Cartesian
coordinate system, and measures accelerations in the x direction, y direction,
and z direction, respectively. Id. at 13:14–22. The Specification further
describes another “alternate advantageous embodiment” in which a first
plural-axis accelerometer has a first axis aligned parallel to the x axis and a
second axis aligned parallel to the y axis, and a second plural-axis
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accelerometer has a first axis aligned parallel to the negative y axis and a
second axis aligned parallel to the z axis. Id. at 15:25–35.
Even though the Specification describes particular embodiments in
which acceleration measuring devices are aligned parallel to (and
accelerations are measured in) the x direction, y direction, and z direction of
a three dimensional Cartesian coordinate system, we decline to import into
the claims limitations based on specific embodiments in the Specification.
See, e.g., SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“[A] particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (“[L]imitations are not to be read into the claims from the
specification.”) (citations omitted).
We determine that the claim language is broader than the particular
embodiments that measure acceleration along all three axes, and mirrors the
Specification’s broader reference to the use of any sensor that is capable of
sensing accelerative phenomena “relative to a body” (Ex. 1001, 6:43–47,
2:24–28). For example, as discussed above, the ’939 patent describes a “fall
detection application” (id. at 8:21–27), and indicates that the fall by a body
is detected through movement of the body in a left/right and/or forward/back
directions as well as position of the body, such as when a person is lying
down (id. at 8:1–20). Thus, in this embodiment, the ’939 patent refers to
taking measurements (using devices) from two axes to “sense” accelerative
phenomena of the body relative to a three dimensional frame of reference,
i.e., a “fall” of the body. Id.. The described fall detection application
provides context for how one of ordinary skill in the art would understand
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the term “relative to.” Construing the claims to encompass a system that
measures acceleration along either two or three axes (using devices within
the sensor), as way to “sense” acceleration phenomena of the body in
relation to a three dimensional frame of reference (e.g., a fall), is consistent
with the Specification.
For the foregoing reasons, we are not persuaded that the claim should
be construed to require the sensor to take measurements in all three axes, as
asserted by Petitioner. Petitioner argues that the claim cannot simply mean
“sensing or existing in 3D space regardless of the number of sensing axes on
the sensor” because such a construction would essentially render the claim
language meaningless. Pet. Reply 3. Petitioner argues that a two
dimensional (“2D”) sensor “exists in 3D space does not change the fact that
it only senses relative to a 2D frame of reference defined by the two sensing
axes 27 and 29.” Id. at 3–4 (citing Ex. 1007, 68 (Fig. 1)). Petitioner’s
declarant, Dr. Welch, also states that “a 2D sensor only senses relative to a
2D frame of reference (the two axes defined by the 2D sensor)” and notes
the examples of a tape measure and an altimeter that each exist in 3D space,
but are only capable of measuring relative to the one-dimensional frame of
reference established by each device. Ex. 1011 ¶¶ 14–15.
We are not persuaded by Petitioner’s argument. As discussed above,
not only does the Specification describe a sensor that exists and operates in
3D space, but the Specification also “show[s] use of a dual axis
accelerometer to distinguish movement of a body left/right (x axis),
forward/backward (y axis), and falling to the ground (z axis).” Paper 26, 2
(citing Ex. 1001, 8:3–22); see also Ex. 2006 ¶¶ 105–107. Accordingly, the
sensor senses accelerative phenomena of a body with regard to a system of
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axes (in three dimensions) in relation to which position or motion can be
defined. Thus, because we do not consider the recited sensor “to essentially
mean sensing or existing in 3D space regardless of the number of sensing
axes on the sensor” (Pet. Reply 3), Petitioner does not persuade us that a
“proper reading of the claim language . . . requires that a 3D frame of
reference be established by the sensor so that measurements can be taken
relative to each of the three axes of the 3D frame of reference.” See id.
Petitioner also argues that a person of ordinary skill in the art would
understand that sensing relative to a three dimensional frame of reference
requires three outputs from the sensor. Pet. Reply 4 (citing Ex. 1011 ¶ 15).
Petitioner asserts that, for example, sensing position relative to a 3D frame
of reference requires three outputs, X, Y, and Z in a 3D Cartesian frame of
reference, or R, θ, Φ in a 3D Polar frame of reference, as supported by the
Specification. Id. (citing Ex. 1001, 13:1–64). We are not persuaded by
Petitioner’s additional argument. As discussed above, even if the
Specification describes specific embodiments in which a sensor obtains
measurements along three axes, this does not mean that one of ordinary skill
in the art would understand three outputs (i.e., three devices) must be present
to meet the broader claim language of sensing relative to a three dimensional
frame of reference.
For the foregoing reasons, we construe “a sensor . . . that senses
accelerative phenomena of said body relative to a three dimensional frame of
reference in said environment” as “a sensor that senses accelerative
phenomena of a body with regard to a system of axes (in three dimensions)
in relation to which position or motion can be defined in the environment.”
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The recited “sensor” comprises a plurality of acceleration devices, i.e., at
least two devices, that measure acceleration along at least two axes.
B. Obviousness of Claims 1–3 over Yasushi
To prevail in its challenge of claims 1–3 as obvious over Yasushi,
Petitioner must prove unpatentability by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
1. Overview of Yasushi
Yasushi discloses a portable accident monitoring device and system
that may be carried by an individual. Ex. 1003, 1:5–7, 2:30–3:2. The
accident monitoring device comprises acceleration sensor 11 “which detects
acceleration along three axes orthogonal to each other and outputs
acceleration data.” Id. at 1:8–10; see also id. at 6:16–18. Acceleration
sensor 11 “comprises three sensing segments 11A each consisting of a
semiconductor element and connected to the mounting surface . . . of a
printed substrate.” Id. at 5:13–15. Sensing elements 11A are configured “to
detect the acceleration along three axes orthogonal to each other.” Id. at
5:15–16. Sensing elements 11A include sensor parts 11c that detect
acceleration. Id. at 5:17–26. Data memory 12 stores acceleration data. Id.
at 6:18–19.
The accident monitoring device further comprises analyzer 13 that
“analyzes the acceleration data of the three axes to distinguish the state of
the individual, walking, running, standing still, or falling, thereby constantly
knowing the body condition.” Id. at 5:29–6:1; see also id. at 7:7–8, Figs. 3–
6.
Figures 3–6 of Yasushi are reproduced below.
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Figures 3–6 depict acceleration data describing acceleration along the X-,
Y-, and Z-axes in a time series manner while an individual is walking,
running, standing still, or falling due to a seizure, respectively. Id. at 6:20–
7:6.
“[A] given length of time for which the state of falling lasts and a
given value of acceleration exceeding a normal range are preset.” Id. at 6:1–
3. Yasushi further discloses that “[i]f the state of falling lasting for a given
or longer length of time or an acceleration equal to or higher than a given
value is detected, . . . analyzer 13 outputs an abnormal signal.” Id. at 6:3–5.
Similarly, Yasushi discloses that “if the individual encounters a traffic
accident or the like and an acceleration equal to or higher than a given value
is detected, an abnormal signal is output.” Id. at 7:9–11.
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2. Priority Date
The ’939 patent issued from an application, which is a continuation-
in-part of application 09/396,991 (“the parent application”) filed on
September 15, 1999, now U.S. Patent No. 6,307,481, which Petitioner
challenges in IPR2015-00105. Ex. 1001, 1:4–5. The application that
matured into the ’939 patent also claims priority to provisional application
60/265,521 filed on January 31, 2001. Id. at 1:5–7.
Petitioner argues that claim 1 of the ’939 patent “recites the feature of
sensing acceleration ‘relative to a three dimensional frame of reference’”
and this feature was first disclosed in Provisional Application No.
60/265,521, filed January 31, 2001. Pet. 10 (citing Ex. 1001, claim 1; Ex.
1008). Petitioner asserts that the feature of sensing relative to a three
dimensional frame of reference was not added until the application that
matured into the ’939 patent, filed July 19, 2001, with a priority claim to
provisional application No. 60/265,521, filed January 31, 2001. Pet. Reply
2–3. Petitioner, thus, argues that “the earliest priority date to which the
claim 1 of the ’939 patent is entitled is January 31, 2001.” Pet. 10 (citing
Ex. 1009). Petitioner also states that Yasushi “was published on November
10, 1998” and “Yasushi is prior art under §102(b) to claims 1, 2, and 3 of the
’939 patent.” Id. at 11.
In the Decision on Institution, we determined that Patent Owner
showed that independent claim 1 is supported by the written description of
the parent application filed on September 15, 1999, because both the ’939
patent and the parent application describe sensing acceleration relative to a
three dimensional frame of reference, as required by these claims. Dec. Inst.
16 (citing Ex. 1001, 6:22–24, 8:2–3; Ex. 1007, 46:2–18).
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We considered Yasushi prior art under § 102(a)3 for purposes of the
Decision on Institution because Yasushi’s November 10, 1998 publication
date indicates that Yasushi’s portable accident monitoring device 1 was
described in a printed publication in a foreign country before September 15,
1999—the earliest priority date of the ’939 patent. Id. at 17. In our
Decision on Institution, we stated that “[a]t this stage of the proceeding, the
Board has not made a final determination with respect to . . . any underlying
factual and legal issues.” Id. at 35.
By presenting evidence and argument for antedating Yasushi, Patent
Owner appears to rely on the preliminary determination in the Decision on
Institution, and does not provide further evidence or argument showing why
the challenged claims are supported by the written description of the priority
application so as to be entitled to a priority date of at least September 15,
1999. See, e.g., PO Resp. 1.
In order to receive the benefit of the filing date of an application
previously filed in the United States, the subsequent application for patent
must be for an invention disclosed in the manner provided in 35 U.S.C.
§ 112, first paragraph. 35 U.S.C. § 120; see also 37 C.F.R. § 1.78; Tronzo v.
Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (discussing requirements
of claiming benefit of priority date of earlier application under 35 U.S.C.
§ 120).4 To satisfy 35 U.S.C. §112, first paragraph, the written description

3 Applications filed before March 16, 2013 are governed by pre-AIA 35
U.S.C. § 102 and 103. Manual of Patent Examining Procedure § 2159.01.
4 The subsequent application must also be filed before the patenting or
abandonment of or termination of proceedings on the first application or on
an application similarly entitled to the benefit of the filing date of the
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must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the claimed invention. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). One shows
“possession” of the invention by describing the invention using such
descriptive means as words, structures, figures, diagrams, formulas, etc. that
fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997). The issue of whether the written
description requirement has been satisfied is a question of fact. Wang Labs.,
Inc. v. Toshiba Corp., 993 F.2d 858, 865 (Fed. Cir. 1993).
We determine whether Patent Owner has provided sufficient evidence
to support that the written description requirement has been satisfied with
respect to the limitation of independent claim 1 for “a sensor, associable
with said body, that senses accelerative phenomena of said body relative to a
three dimensional frame of reference in said environment.” Ex. 1001,
19:47–49. In its arguments regarding the construction of “relative to a three
dimensional frame of reference in said environment,” Patent Owner explains
that the Specification “describes using two accelerometers oriented along
perpendicular axes to evaluate movement of a body relative to a three-
dimensional environment.” Paper 26, 2 (citing Dec. Inst. 16). Patent Owner
also explains that the Specification “show[s] use of [a] dual axis

previously filed application and contain or be amended to contain a specific
reference to the previously filed application. 35 U.S.C. § 120; see also 37
C.F.R. § 1.78. In this case, the application that matured into the ’939 patent
was filed on July 19, 2001, which is before the patenting of the parent
application on October 23, 2001. Ex. 1001, 1; Ex. 1007, 8. The application
that matured into the ’939 patent contained a specific reference to the parent
application. Ex. 1006, 38.
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accelerometer to distinguish movement of a body left/right (x axis),
forward/backward (y axis), and falling to the ground (z axis).” Id. (citing
Ex. 1001, 8:1–20).
The Sturges Declaration further explains that
[t]he ’481 Patent describes . . . two accelerometers as being
employed to evaluate body movement “relative to an
environment.” IPR2015-00105, Exhibit 1001 at Abstract, 1:66
to 2:2. The ’481 Patent also describes how measurements by the
two accelerometers in the x and y directions allow inferences
regarding body orientation with respect to three dimensions (x,
y, and z): when static acceleration measurements from either
accelerometer change from less than 1 G (when a monitored
person is standing upright) to about 1 G in the combined x and y
directions (after the person has fallen). IPR2015-00105, Exhibit
1001 at 7:9–30 and 8:39–49. The x and y accelerometers
described in the ’481 Patent thus sense accelerative phenomena
“relative to a three dimensional frame of reference in said
environment.
Ex. 2006 ¶ 107; see also Ex. 1010, 200:21–201:1 (“[Using a two-axis
accelerometer to measure acceleration or accelerative phenomena relative to
a three-dimensional frame of reference] can be accomplished by
understanding that gravity in this context is constant and in one direction and
that if the X and Y axis are – are reading a number and one considers the
overall magnitude of those two numbers taken together, one can conclude
what the third axis would be reading.”). See also Ex. 1007, 18 (the ’481
patent referring to “FIGS. 3a to 3d illustrate exemplary strip chart records of
output of the sensor introduced in FIGS. 1 and 2 taken during illustrative
situations”); Ex. 1001; 4:34–36 (the ’939 patent referring to “FIGS. 3A to
3D illustrate exemplary strip chart records of output of the sensor introduced
in FIGS. 1 and 2 taken during illustrative situations”).
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Petitioner argues that Patent Owner is wrong that “the two axes sensor
[of Figure 1] also senses along a third axis.” Pet. Reply 5. We do not find
this argument persuasive for the reasons discussed above in relation to claim
construction. In view of how we have construed the claims at issue, Patent
Owner does not need to show written description support in its priority
documents for a system that measures acceleration along all three axes, but
rather must show support for a sensor that senses accelerative phenomena
with regard to a system of axes (in three dimensions) in relation to which
position or motion can be defined. As discussed above, in certain
embodiments, such sensing can be accomplished by measuring acceleration
along two axes.
Petitioner also argues that “a third sensor would need to be added to a
two axis accelerometer in order to sense relative to a 3D frame of reference.”
Pet. Reply 5 (citing Ex. 1010, 9:25–10:22; 26:20–27:8). Although Dr.
Sturges indicates that he “would have had to add another accelerometer
orthogonal to the other two” in order “to establish a three-dimensional
coordinate system” (Ex. 1010, 10:18–22), we do not find this testimony
persuasive to support that a third sensor would be needed in order to sense
relative to a three dimensional frame of reference. This portion of testimony
relates to how three accelerometers can establish a three-dimensional
coordinate system, not whether acceleration measurements in two
dimensions provides information regarding a body relative to a 3D frame of
reference. See id. at 9:25–10:22. As discussed above, the ’939 patent
describes a system that specifically contemplates a fall detection application
for a body, which contemplates the up/down (z axis), i.e., measures
acceleration along two axes to obtain information about (sense acceleration
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phenomena of) a body relative to a 3D frame of reference. Ex. 1001, 8:21–
27.
As to Dr. Sturges’ further testimony that a dual-axis accelerometer
would not establish a three-dimensional coordinate system (Ex. 1010, 27:4–
8), we do not find this testimony persuasive to support a finding that a third
sensor is needed in order to sense relative to a three dimensional frame of
reference. A dual axis accelerometer alone, without additional information
regarding the system/environment in which it will be operating, is different
from a dual axis accelerometer defined to be in a particular orientation. For
example, consistent with our discussion above regarding disclosures in the
Specification, Dr. Sturges has testified that a third axis could be defined
even if there was no sensing along that axis. See, e.g., Ex. 1010, 45:15–21
(“Q. So how is that Z axis—so it’s drawn in there as a third dimension, but
what is defining that Z axis? A. That those axes are relative to the space in
which the instrument exists, and the axes are attached so that we can see the
– the frame of reference clearly in that figure.”). Accordingly, we determine
that Patent Owner has shown sufficiently how the parent application (filed
on September 15, 1999) describes sensing acceleration phenomena of a body
relative to a 3D frame of reference, as recited in the challenged claims.
Petitioner also argues that two inventors of the ’939 patent “confirmed
that sensing acceleration relative to a 3D frame of reference requires sensing
along three axes (‘up and down, front to back, and side to side’).” Pet.
Reply 5 (citing Ex. 2007, 11; Ex. 2008, 19). We also are not persuaded by
this argument, which essentially contends that disclosure of three
acceleration measuring devices is required to establish written description
support here. As discussed above, a sensor that comprises two acceleration
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devices, which measure acceleration in two axes, can suffice to show written
description support of the claims at issue. Accordingly, Petitioner has not
persuaded us that the parent application, to which priority is claimed, lacks a
sensor that senses accelerative phenomena relative to a three dimensional
frame of reference, even if Patent Owner refers us to a description of a
relevant system in the priority document that is not exactly the same as a
system described in the ’939 patent.
Petitioner also argues that inferring orientation in a third dimension
does not meet the language of the claim that refers to a sensor that “senses
accelerative phenomena . . . relative to a three dimensional frame of
reference.” Pet. Reply 6. In other words, Petitioner argues that “[s]ensing is
very different from inferring.” Id. (citations omitted). As explained above,
we construe the claims to refer to a sensor that senses accelerative
phenomena of a body with regard to a system of axes (in three dimensions)
in relation to which position or motion can be defined in the environment.
There is nothing in this construction that would require sensing along each
of the three axes. Petitioner does not dispute that there is sensing in at least
the x and y directions of the frame of reference in the parent application to
which priority is claimed, such that there is sensing of accelerative
phenomena relative to a system of axes. Position or motion is then defined
in the system of axes in three dimensions in order to detect a fall. Ex. 1007,
18 (4:13–16), 20 (7:9–45).
Petitioner further argues that that the disclosures in the ’481
specification:
explain that the x and y outputs of the accelerometers, as shown
in Figs. 3a to 3d, can be used to determine if the body has fallen
over (or rotated) to the left or right, and/or has fallen over (or
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rotated) in the forward or backward direction. These disclosures
confirm the well-known fact that accelerometers can be used as
tilt sensors, for sensing pitch and/or roll of a body, due to the fact
that gravity provides a constant acceleration (i.e., ‘static
acceleration’). Tellingly absent from the disclosure of the ’481
application is any suggestion that orientation around a third or
vertical Z axis (often referred to as the up/down or ‘yaw’ axis)
can be sensed or inferred through the use of accelerometers. This
is because it is well-known to one skilled in the art that it is not
possible to sense (or even infer) yaw rotation using the
accelerometers disclosed in the ’481 application. (Ex. 1012, par.
27). Thus, contrary to Dr. Sturges’ declaration, sensing or even
inferring orientation with respect to a 3D frame of reference is
not possible using the accelerometers as disclosed in the ’481
application. Dr. Sturges even admitted this fact at his deposition.
(See Ex. 1011 at 56:25–58:2; 71:20–72:3.)
Pet. Reply 6–7.
Petitioner’s argument does not persuade us the written description of
the parent application lacked support for sensing accelerative phenomena of
a body relative to a three dimensional frame of reference. Even if “yaw”
(i.e., rotation about the z axis, as discussed in the block quote above) cannot
be determined with the disclosed dual axis accelerometer, this does not take
away from the fact that the sensor senses accelerative phenomena of a body
with regard to a system of axes (in three dimensions) in relation to which
position or motion can be defined. The ’939 patent describes a relevant
system that detects a fall, i.e., a movement along all three axes, including the
up/down z axis, by sensing acceleration along the x and y axes, i.e., sensing
accelerative phenomena relative to a three dimensional frame of reference.
Ex. 1001, 8:1–20 (referring to “x and y outputs of sensor 25 during a fall by
a body to the right”). The parent priority document likewise describes
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measuring movement along two axes to detect a fall. Ex. 1007, 18 (4:13–
16), 20 (7:9–45).
For the foregoing reasons, we determine that Patent Owner has shown
sufficiently that the written description of the parent application filed on
September 15, 1999, conveyed with reasonable clarity that the inventors
were in possession of a sensor that sensed accelerative phenomena of a body
with regard to a system of axes (in three dimensions) in relation to which
position or motion could be defined in the environment, in accordance with
the construction of the claim as set forth above. Accordingly, we determine
that claim 1 is entitled to a priority date of September 15, 1999.
In the Decision on Institution, we also noted that “entitlement to
priority is decided on a claim-by-claim basis, and various claims may be
entitled to different priority dates.” Dec. Inst. 15 (quoting X2Y Attenuators,
LLC v. Int’l Trade Comm’n, 757 F.3d 1358, 1366 (Fed. Cir. 2014)).
Petitioner’s basis for asserting that dependent claims 2 and 3 lack written
description support in the parent application filed on September 15, 1999
appears to be their dependence on independent claims 1 and 11. Pet. Reply
5 (citing Ex. 1011 ¶¶ 11–23). Patent Owner asserts that dependent claim 2 is
also entitled to a priority date of at least September 15, 1999. Prelim. Resp.
13. Patent Owner makes no such assertion regarding dependent claim 3
being entitled to the September 15, 1999 priority date. See id.
Petitioner bears the burden of going forward with evidence that there
is art prior to the application date of the ’939 patent that either anticipates or
renders obvious the claims of the ’939 patent, which it has. Patent Owner
then has the burden of going forward with evidence (i) that the prior art does
not actually anticipate or render obvious the claims, or (ii) that the alleged
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prior art is not actually prior art because the challenged claim is entitled to
the benefit of a filing date prior to the date of the alleged prior art. The
second item requires Patent Owner to show why the written description in
the earlier application supports the claim. See Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008).
Dependent claim 2 recites “wherein one of said plurality of different
types of motion is one of: no motion, a successful attempt to change
position, an unsuccessful attempt to change position, an unsuccessful
attempt to change position, a motion of a body moving with a gait, a motion
of a body moving with a gait associated with a disability, a swaying motion,
a near fall, and a fall.” Ex. 1001, 19:60–65, 21. Dependent claim 3 recites
“wherein said plurality of acceleration measuring devices comprises three
accelerometers in which each accelerometer is aligned along one axis of a
three dimensional coordinate system.” Id. at 19:66–20:2. Patent Owner has
made only a naked assertion that dependent claim 2 is entitled to a priority
date of at least September 15, 1999 (Prelim. Resp. 13), but has made no
effort to come forward with evidence as to why dependent claims 2 and 3
are entitled to the benefit of the filing date of the parent application to which
priority is claimed.
For the foregoing reasons, we determine that Patent Owner has not
met its burden of production to show sufficiently that the written description
of the parent application filed on September 15, 1999 conveyed with
reasonable clarity that the inventors were in possession of the subject matter
of dependent claims 2 and 3. Accordingly, we determine that dependent
claims 2 and 3 are not entitled to a priority date of September 15, 1999.
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3. Antedating Yasushi
Patent Owner bears the burden to establish the facts necessary to
overcome Yasushi’s publication date.5 See In re Facius, 408 F.2d 1396,
1403–04 (CCPA 1969) (holding, in a prosecution context, that an earlier
filed reference was prima facie available as prior art and placing the burden
on the party claiming prior invention to overcome that reference). Patent
Owner may meet its burden by providing evidence that the publication date
of the reference is not “before the invention thereof by the applicant for a
patent,” that is, antedating Yasushi. 35 U.S.C. § 102(a).
a. Claim 1
Yasushi was published on November 10, 1998. As described above,
claim 1 of the ’939 patent is entitled to a priority date of September 15,
1999. Thus, Yasushi is available as prior art against this claim under 35
U.S.C § 102(a) unless Patent Owner establishes (i) a reduction to practice
before November 10, 1998, or (ii) conception before November 10, 1998,
followed by a diligent reduction to practice. Purdue Pharma L.P. v.
Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001) (“To
antedate . . . an invention, a party must show either an earlier reduction to
practice, or an earlier conception followed by a diligent reduction to
practice.”) (emphasis added) (citation omitted).
Reduction to practice is a question of law predicated on subsidiary
factual findings. Brown v. Barbacid, 276 F.3d 1327, 1332 (Fed. Cir. 2002).
To establish an actual reduction to practice, the inventor must prove that:

5 Even though Patent Owner bears the burden of production in antedating a
reference, the burden of persuasion to prove unpatentability of the
challenged claims remains with Petitioner. See 35 U.S.C. § 316(e).
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(1) an embodiment of the invention was constructed that meets all the
limitations of the claims at issue; and (2) the inventor appreciated that the
invention would work for its intended purpose. Cooper v. Goldfarb, 154
F.3d 1321, 1327 (Fed. Cir. 1998). The invention does not have to be at a
commercially satisfactory stage of development for an actual reduction to
practice, but must have been sufficiently tested to demonstrate that it will
work for its intended purpose. See, e.g., Scott v. Finney, 34 F.3d 1058, 1062
(Fed. Cir. 1994) (citing numerous cases wherein the character of the testing
necessary to support an actual reduction to practice varied with the
complexity of the invention and the problem it solved).
It is well settled that an inventor’s testimony alone is insufficient to
establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1170 (Fed. Cir. 2006). Instead, the party seeking to prove an
actual reduction to practice must proffer evidence corroborating that
testimony. Id. “Sufficiency of corroboration is determined by using a ‘rule
of reason’ analysis, under which all pertinent evidence is examined when
determining the credibility of an inventor’s testimony.” Id. (citation
omitted). Corroboration may be testimony of a witness, other than the
inventor, to the actual reduction to practice, or it may consist of evidence of
surrounding facts and circumstances independent of information received
from the inventor. Id.
Patent Owner proffers declarations from the listed inventors of
the ’939 patent (Ex. 2007–2008, 2011), and the listed inventors of the parent
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application (Ex. 2007, 2009–2010).6 Patent Owner also proffers the
Declarations of Don James (Ex. 2012) and Greg Younger (Ex. 2013), who
are identified as corroborating witnesses. Patent Owner further provides
several supporting exhibits (Ex. 2015–2035).
The inventor and witness declarations support a finding that the
inventors constructed a working prototype of a relevant fall detection
device, and tested it on human subjects in August 1998. Ex. 2007 ¶¶ 17–18
(stating that “the first prototype did include the same Analog Devices
ADXL220 accelerometer, Texas Instruments MSP430PM microprocessor,
and RF transmitter” and the “first prototype was actually tested on human
subjects at HWI in August 1998”); Ex. 2008 ¶ 15; Ex. 2009 ¶ 15; Ex. 2010
¶ 15; Ex. 2012 ¶ 19 (corroborating witness stating that the “first prototype
was actually tested on human subjects at HWI in August 1998” and the
“prototype used a dual-axis accelerometer to measure the person’s
movement and orientation, as well as a microprocessor with code configured
to process the sensed static and dynamic acceleration to determine if the user
had experienced a real fall”); Ex. 2013 ¶ 19. The inventors constructed a
working prototype on a solderless breadboard instead of a printed circuit
board, but included the same accelerometer, microprocessor, and RF
transmitter as later designs. Ex. 2007 ¶ 17; Ex. 2008 ¶ 18; Ex. 2009 ¶ 18;
Ex. 2010 ¶ 18; Ex. 2012 ¶ 18; Ex. 2013 ¶ 18. As stated by inventors, and
corroborated by other witnesses, “the prototype used a dual-axis

6 Patent Owner states that “[a]ll the inventors filed certificates of correction
. . . , reflecting that Michael L. Lehrman, Alan R. Owens, Michael D.
Halleck, and Michael E. Halleck, were all co-inventors of all the iLife
Patents. Later patents also included another inventor, Ed Massman.” PO
Resp. 19.
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accelerometer to measure the person’s movement and orientation, as well as
a microprocessor with code configured to process the sensed static and
dynamic acceleration to determine if the user had experienced a real fall as
opposed to normal daily activities such as walking, sitting, standing, or lying
down.” Ex. 2007 ¶ 18; Ex. 2008 ¶ 19; Ex. 2009 ¶ 19; Ex. 2010 ¶ 19; Ex.
2012 ¶ 19; Ex. 2013 ¶ 19. The inventor and witness declarations further
support the finding that the inventors tested the prototype in August 1998,
and based on success in that testing, formal engineering drawings were
prepared for production release. Ex. 2007 ¶¶ 18, 20–21; Ex. 2008 ¶¶ 21–22;
Ex. 2009 ¶¶ 21–22; Ex. 2010 ¶¶ 21–22; Ex. 2012 ¶¶ 21–22; Ex. 2013 ¶¶ 21–
22.
Inventor and corroborating witness declarations support a finding that
the inventors prepared formal engineering drawings (Ex. 2031) that included
a printed circuit board layout. Ex. 2007 ¶ 21 (citing Ex. 2030 (“Drawing
Number Assignment Log”)); Ex. 2008 ¶ 22; Ex. 2009 ¶ 22; Ex. 2012 ¶ 22.
The inventors assembled additional field prototypes constructed of printed
circuit boards, loaded them with code, and tested them by late September
1998. Ex. 2007 ¶¶ 26, 30. The inventors also built a prototype with the
particular printed circuit board corresponding to drawing IAF680R1 on or
around September 23, 1998. Ex. 2008 ¶ 28 (citing Ex. 2032); Ex. 2009 ¶ 28
(citing Ex. 2032); Ex. 2012 ¶ 28 (citing Ex. 2032); Ex. 2013 ¶ 28 (citing Ex.
2032). The inventors also created a new layout IAF683R1 on September 23,
1998. Ex. 2008 ¶ 29 (citing Ex. 2030); Ex. 2012 ¶ 29 (citing Ex. 2030); Ex.
2013 ¶ 29 (citing Ex. 2030). The prototypes “performed as expected and
were suitable for their intended purpose of movement evaluation and fall
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detection when tested in August and September of 1998.” Ex. 2007 ¶ 30;
Ex. 2009 ¶ 28; Ex. 2012 ¶ 28; Ex. 2013 ¶ 28.
Accordingly, Patent Owner has provided declarations from inventors
and corroborating witnesses supporting a finding that the inventors designed,
made, and tested fall detection systems embodying the subject claims of the
patent at issue in August and September of 1998. PO Resp. 3–19, 35–38
(citing Ex. 2007–2013). Patent Owner also has provided contemporaneous
notes and records from this time period supporting that a finding that the
inventors actually reduced to practice a first working embodiment in August
1998. Id. (citing Ex. 2015–2035). Patent Owner provides additional
evidence that the inventors created a second generation embodiment with the
same basic elements and component parts as the first embodiment on or
about September 23, 1998. Id. at 37 (citing Ex. 2007 ¶¶ 26, 28; Ex. 2008–
2010, 2012–2013 ¶¶ 28, 34).
Patent Owner’s evidence also supports a finding that the first working
embodiment “was an intelligent personal emergency response system
(‘iPERS’) capable of monitoring the movements of an elderly person and
automatically detecting real falls as opposed to normal daily activity.” Id. at
35–36 (citing Ex. 2007–2010, 2012–2013 ¶ 4); see also id. at 11 (stating
“[a]ll witnesses agree that the device worked for its intended purpose of
distinguishing real falls from normal activities”). This corresponds to the
claimed system “that evaluates movement of a body relative to an
environment.” Ex. 1001, 19:45–46.
Patent Owner’s evidence supports a finding that the inventors created
a working embodiment that used a dual-axis accelerometer to measure the
person’s movement and orientation. PO Resp. 36 (citing Ex. 2007 ¶ 19; Ex.
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2008–2010, 2012–2013 ¶ 20); see also id. at 10–11. Patent Owner’s
evidence supports that the working embodiment was “configured to process
the sensed static and dynamic acceleration.” Id. at 36 (citing 2007 ¶ 18; Ex.
2008–2010, 2012–2013 ¶ 19). Patent Owner’s evidence supports that the
working embodiment “evaluated movement of the body relative to a three-
dimensional frame of reference (up and down, front to back, and side to
side).” Id. at 37 (citing Ex. 2007 ¶ 30; Ex. 2008–2010, 2012–2013 ¶ 34).
This corresponds to the claimed “sensor, associable with said body, that
senses accelerative phenomena of said body relative to a three dimensional
frame of reference in said environment, said sensor comprising a plurality of
acceleration measuring devices.” Ex. 1001, 19:47–51. As to a plurality of
acceleration measuring devices in the working embodiment, Patent Owner
has provided evidence indicating that its working embodiment included
“multi-vector sensors,” i.e., a plurality of sensors. See, e.g.. Ex. 2007 ¶ 30;
Ex. 2008 ¶ 34; Ex. 2009 ¶ 34; Ex. 2010 ¶ 34; Ex. 2012 ¶ 34; Ex. 2031, 15
(depicting two accelerometers). Cooper, 154 F.3d at 1327 (“In order to
establish an actual reduction to practice, the inventor must prove . . . he
constructed an embodiment . . . that met all the limitations”).
Patent Owner’s evidence (Ex. 2007 ¶ 19; Ex. 2008–2010, 2012–2013
¶ 20; Ex. 2019 at 1–2) supports a finding that the inventors conceived and
actually reduced to practice, before the critical date, a working embodiment
that used “a microprocessor with code configured to process the sensed
static and dynamic acceleration to determine if the user had experienced a
real fall as opposed to normal daily activities.” PO Resp. 35 (citing Ex.
2007 ¶ 18; Ex. 2008–2010, 2012–2013 ¶ 20); see also id. at 10–11. This
corresponds to the claimed “processor, associated with said sensor, that
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processes said sensed accelerative phenomena as a function of at least one
accelerative event characteristic.” Ex. 1001, 19:52–54.
Patent Owner’s evidence supports a finding that the “first working
[prototype] . . . was an intelligent personal emergency response system
(‘iPERS’) capable of . . . automatically detecting real falls as opposed to
normal daily activity, such as walking, sitting, standing, and lying down”
(PO Resp. 35–36 (citing Ex. 2007–2010, 2012–2013 ¶ 4)) and that “the
device worked for its intended purpose of distinguishing falls from normal
activities, such as walking, sitting, standing, and lying down” (id. at 37
(citing Ex. 2007 ¶¶ 23–24; Ex. 2008–2010, 2012–2013 ¶ 24–25)). See also
Ex. 2019 at 1 (stating “it would be possible to tell if that person were
standing or lying down or in a position somewhere between those two” and
“[t]o accurately determine that the individual has fallen and not merely
laying down or going down stairs etc, software intelligence is programmed
into a microprocessor to accomplish the evaluation of the sensor output”).
This corresponds to the phrase “to thereby determine whether said body has
experienced acceleration that represents one of a plurality of different types
of motion.” Ex. 1001, 19:56–59.
Patent Owner’s evidence also supports that the working embodiment
was “programmed to measure both static and dynamic acceleration forces to
evaluate changes in the wearer’s movement and orientation to determine if
the person had fallen based on observed dynamic accelerative forces
indicating a hard impact of at least 3Gs coupled with a change in static
accelerative forces of at least 45 degrees within a specified timeframe.” PO
Resp. 36 (citing Ex. 2007 ¶ 23; Ex. 2008–2010, 2012–2013 ¶ 24) see also id.
at 3 (citing Ex. 2016), 10 (citing Ex. 2007 ¶ 19; Ex. 2008–2010, 2012–2013
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¶ 20). This corresponds to the phrase “to thereby determine whether said
evaluated body movement is within an environmental tolerance.” Ex. 1001,
19:55–56.
The filed declarations with associated exhibits sufficiently evidence
that the inventors conceived and reduced to practice a physical construct of
the invention, as well as engaged in testing of the invention in a manner that
demonstrated that it worked for its intended purpose, by September 1998.
Ex. 2007 ¶¶ 17–21; Ex. 2008 ¶¶ 18–22; Ex. 2009 ¶¶ 18–22; Ex. 2010 ¶¶ 18–
22; Ex. 2012 ¶¶ 18–22; Ex. 2013 ¶¶ 18–22. Accordingly, Patent Owner has
presented sufficient evidence to support that the inventors actually reduced
to practice embodiments of claim 1 by September 1998, which is before the
first publication of Yasushi on November 10, 1998. The full record
indicates that Petitioner does not present adequate argument or evidence to
challenge the sufficiency of the testimony and evidence submitted by Patent
Owner that demonstrates an actual reduction to practice prior to November
10, 1998. See Pet. Reply 2– 7 (Petitioner arguing that its construction of
“relative to a three dimensional frame of reference” disqualifies the
accelerometers of Patent Owner’s reduction to practice evidence); see also
Tr. 140:9–13 (Patent Owner’s counsel stating “there is substantial
uncontroverted, well corroborated evidence in the record, uncontroverted by
the Petitioner, that establish iLife conceived and reduced to practice the
invention before the publication date of Yasushi, November 10, 1998”).
Thus, we determine that Yasushi does not qualify as prior art with respect to
claim 1 of the ’939 patent.
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Because Yasushi is not prior art as to claim 1, Petitioner has failed to
demonstrate, by a preponderance of the evidence, that claim 1 would have
been obvious over Yasushi under 35 U.S.C. § 103(a).
b. Claims 2 and 3
Petitioner argues that all of the claimed elements are disclosed by
Yasushi, but that “even if a difference between Yasushi and the claims could
be shown, a [person of ordinary skill in the art] would have found any such
alleged difference to be insignificant and obvious in view of Yasushi.” Pet.
14.
In particular, Petitioner argues that Yasushi discloses a “system that
evaluates movement of a body relative to an environment” because Yasushi
evaluates movement of a body, such as an aged person, relative to the
person’s environment. Id. at 15 (citing Ex. 1003, 2:30–3:2, 5:23–26, 5:29–
6:1; Ex. 1002 ¶ 45, App. C).
For “a sensor, associable with said body, that senses accelerative
phenomena of said body relative to a three dimensional frame of reference in
said environment,” Petitioner argues that Yasushi discloses a sensor attached
to the lower back of an individual to detect acceleration relative to a three
dimensional frame of reference as the individual moves. Id. (citing Ex.
1003, 5:23–26, 6:16–18; Ex. 1002 ¶ 46, App. C). For a “sensor comprising
a plurality of acceleration measuring devices,” Petitioner argues that
acceleration sensor 11 of Yasushi comprises three sensing elements 11A. Id.
(citing Ex. 1003, 5:13–22; Ex. 1002 ¶ 47, App. C).
Regarding “a processor, associated with said sensor, that processes
said sensed accelerative phenomena as a function of at least one accelerative
event characteristic,” Petitioner argues that Yasushi discloses an analyzer 13
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that receives signals from sensor 11 regarding sensed accelerative
phenomena and processes the acceleration data as a function of at least one
accelerative event characteristic when Yasushi’s system distinguishes
between various movements or conditions. Pet. 16 (citing Ex. 1003, 1:11–
13, 4:9–12, 5:29–6:1, 6:20–7:6, Figs. 3–6; Ex. 1002 ¶ 48, App. C).
For “to thereby determine whether said evaluated body movement is
within environmental tolerance,” Petitioner argues that “Yasushi’s analyzer
13 determines whether the evaluated body movement is within an
environmental tolerance, such as whether the state of falling lasts for ‘a
given or longer length of time’ or whether an acceleration is ‘equal to or
higher than a given value.’” Pet. 17 (citing Ex. 1003, 6:1–5; Ex. 1002 ¶ 49,
App. C).
For “to thereby determine whether said body has experienced
acceleration that represents one of a plurality of different types of motion,”
Petitioner argues that analyzer 13 of Yasushi “determines whether the body
has experienced acceleration representative of, e.g., walking, running,
standing still, or failing, which are different types of motion.” Pet. 17–18
(citing Ex. 1003, 5:29–6:1; Ex. 1002 ¶¶ 49–50, App. C).
As to dependent claim 2, which recites “wherein said one of said
plurality of different types of motion is one of: no motion, a successful
attempt to change position, an unsuccessful attempt to change position, a
motion of a body moving with a gait, a motion of a body moving with a gait
associated with a disability, a swaying motion, a near fall, and a fall” (Ex.
1001, 19:60–65), Petitioner argues that Yasushi’s system determines a
plurality of different types of motion, “includ[ing] several of the types
identified in this claim, including no motion (e.g., ‘standing still’) and a fall,
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among others.” Pet. 18–19 (citing Ex. 1003, 1:11–13, 5:29–6:1, 6:28–7:3;
Ex. 1002 ¶¶ 51–52, App. C).
As to dependent claim 3, which recites “wherein said plurality of
acceleration measuring devices comprises three accelerometers in which
each accelerometer is aligned along one axis of a three dimensional
coordinate system” (Ex. 1001, 19:66–20:2), Petitioner argues that “Yasushi
discloses a portable accident monitoring device comprising acceleration
sensor 11 ‘which detects acceleration along three axes orthogonal to each
other and outputs acceleration data.’” Pet. 19–20 (citing Ex. 1003, 1:8–10).
Petitioner further argues that “[t]he sensor is attached to the lower back of an
individual to detect acceleration relative to a three dimensional frame of
reference (‘along the three, X-, Y-, and Z-, axes’) as the individual moves
within their environment.” Id. at 20 (citing Ex. 1003, 5:23–26, 6:16–18; Ex.
1002 ¶¶ 53–54, App. C).
In its Patent Owner Response, Patent Owner did not provide any
evidence or testimony contrary to the evidence and testimony provided by
Petitioner regarding the disclosure of Yasushi. Our Scheduling Order in this
case cautioned Patent Owner that “any arguments for patentability not raised
in the [Patent Owner] [R]esponse will be deemed waived.” Paper 13, 3.
The Board’s Trial Practice Guide, furthermore, states that the Patent Owner
Response “should identify all the involved claims that are believed to be
patentable and state the basis for that belief.” Office Patent Trial Practice
Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). As the Board has
stated, our governing statute and Rules “clearly place some onus on the
patent owner, once trial is instituted, to address the material facts raised by
the petition as jeopardizing patentability of the challenged claims.” Johnson
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Health Tech Co. v. Icon Health & Fitness, Inc., Case IPR2013-00463, slip
op. at 12 (PTAB Jan. 29, 2015) (Paper 41). By providing evidence only of
conception and reduction to practice before the November 10, 1998
publication date of Yasushi (see, e.g., PO Resp 1, 3–19, 35–38), Patent
Owner has conveyed to the Board that the only basis for its belief that the
challenged claims are patentable is that Yasushi does not qualify as prior art.
As described in connection with our analysis of the priority date, we
determined that Patent Owner did not meet its burden of production to show
sufficiently that the written description of the parent application filed on
September 15, 1999 conveyed with reasonable clarity that the inventors were
in possession of the subject matter of dependent claims 2 and 3. Because
dependent claims 2 and 3 have not been shown to be entitled to a priority
date of September 15, 1999, Yasushi (with its printed publication date of
November 10, 1998, which is more than one year before the January 31,
2001 priority date to which dependent claims 2 and 3 are entitled) remains
prior art under 35 U.S.C. § 102(b) as to dependent claims 2 and 3.7

7 Even assuming arguendo that dependent claims 2 and 3 were entitled to a
priority date of September 15, 1999, thereby enabling Patent Owner to
antedate Yasushi with respect to the subject matter embodying dependent
claims 2 and 3, Patent Owner has not sought to antedate the subject matter of
dependent claims 2 and 3. See PO Resp. 1 (Patent Owner asserting that
Yasushi “cannot be used to invalidate claim 1, and the Board should find
that claim 1 is patentable over Yasushi”); id. at 35 (“Patent Owner antedates
Yasushi with respect to claim 1 and eliminates it as a ground for rejection by
showing prior conception and reduction to practice before the date of
publication of November 10, 1998.”); id. at 38 (citing Ex. 2006 ¶¶ 110–115)
(“Patent Owner’s expert, Dr. Sturges, has evaluated the evidence
summarized above and concluded that the devices constructed and tested by
the Patent Owners before November 10, 1998, were embodiments of the
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After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we conclude that Petitioner has demonstrated, by
a preponderance of the evidence, that dependent claims 2 and 3 would have
been obvious over Yasushi under 35 U.S.C.§ 103(a).
C. Obviousness of Claims 1–3, 21, and 22 over Unuma
Petitioner contends that claims 1–3, 21 and 22 of the ’939 patent
would have been obvious over Unuma. Pet. 20–54. In its Petition,
Petitioner provides a claim chart, and relies on a Declaration by Dr. Gregory
Francis Welch (Ex. 1002). Id.
1. Overview of Unuma
Unuma discloses a method and system for automatically recognizing
motions and actions of moving objects, such as humans. Ex. 1004, Abstract,
2:3–6. Figures 1 and 2 of Unuma are reproduced below.

’939 patent that included each of the required claim elements of at least
claims 1 and 21.”).
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Figure 1 provides a block diagram of a motion and action recognition
device, and Figure 2 depicts a view of outputs from an acceleration sensor
attached to the waist of an object under observation. Id. at 4:23–25. The
sensor in Figure 2 “takes measurements of acceleration applied to the human
body in the direction of its height,” and output results 20 indicate time series
data derived from human motions, where “data items 21 and 22 denote
cyclic acceleration changes during walking or running, data item 23
represents a single acceleration change, and data item 24 stands for a state of
no acceleration in which gravitational acceleration is not detected because
the object is lying down.” Id. at 6:31–37.
When discussing Figure 2, Unuma explains that “[a]fter the above
data items [21-24] are digitized by the A/D converter 4 [shown in Figure 1],
the digitized data are subjected to time-frequency analysis (e.g., Fourier
transformation), which is a typical technique of signal analysis.” Id. at 6:38–
39. The result of that time-frequency analysis “is a frequency spectrum
body 25,” such that “data items 21 through 24 are matched with frequency
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spectra 26, 27, 28 and 29 respectively.” Id. at 6:39–41; Fig. 2. Unuma
states that “[b]ar graphs of the analyzed result represent spectrum intensities
of the frequency components acquired through Fourier transformation,”
where “[t]he frequency characteristic differs from one motion to another,”
and “[t]he differences constitute the characteristic quantities of the motions
involved.” Id. at 6:41–43.
Unuma goes on to state:
With this embodiment, the characteristic quantities that
serve as reference data used by the signal processing unit 7 for
motion/action recognition are extracted and saved in advance
from the motions and actions whose characteristic quantities are
known. The reference data thus saved are stored into the
characteristic quantity database 6 via a path 9 in Fig. 1 (process
30 in Fig. 2).
The signal processing unit 7 for motion/action recognition
continuously receives characteristic quantity data 10 from the
characteristic quantity extraction unit 5, the data 10 being derived
from the ongoing motions/actions of the object 1 under
observation. The data 10 are compared with the reference data
11 made up of the stored characteristic quantities of various
motions/actions in the database 6. That is, the currently
incoming characteristic quantity is correlated with the stored
characteristic quantities in the database 6. At any point in time,
the motion/action corresponding to the characteristic quantity
having the highest level of correlation is judged to be the
motion/action currently performed by the object 1 under
observation. The judged result is output by the output unit 8.
Id. at 6:44–54.
Unuma also teaches that “[o]ne way of correlating measurements with
reference data is shown illustratively in Fig. 29, but is not limited thereto.”
Id. at 6:55. That correlation involves “acquiring a frequency component
F(m) which corresponds to characteristic quantity data 10 in the form of
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measured waveform spectra representing the motions/actions of the object
1,” where data 10 is “normalized so as to satisfy” a particular expression
(i.e., equation), as presented on page 7 of Unuma. Id. at 6:55–7:54 (referring
to frequency component F(m), corresponding to data 10, and frequency
component G(m), corresponding to reference data 11, and that both are
“normalized”).
Figure 3 of Unuma is reproduced below:

Figure 3 depicts “an explanatory view of typical results of time
frequency analysis based on wavelet transformation.” Ex. 1004, 4:26. As
presented in Figure 1, processing unit 7 compares data 10 with reference
data 11 made up of “stored characteristic quantities of various
motions/actions in . . . database 6.” Id. at 6:50–51. In accordance with a
wavelet transformation analysis method illustrated in Figure 3, “a motion of
‘walk’ yields characteristic values 214 on level C (213),” “a ‘squatting’
motion produces characteristic values 215 on level A (211),” and “a
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‘running’ motion generates characteristic values 216 on levels B (212) and C
(213).” Id. at 8:14–16.
Unuma states that its system applies “to a setup where supervisors or
custodians in charge of people who are socially vulnerable and need
protection or of workers working in isolation are automatically notified of a
dangerous situation into which their charge may fall for whatever reason.”
Id. at 16:5–7. Unuma discloses that a processing unit stores and
continuously monitors “history data” in reference to “motion patterns” held
in a specific motion pattern storage unit. Id. at 16:22–23. In this context,
Unuma explains that:
A specific motion pattern is a combination of multiple
motions necessary for recognizing a specific action such as “a
sudden collapse onto the ground” or “a fall from an elevated
location.”
For example, the action of “a sudden collapse onto the
ground” is recognized as a motion pattern made up of a motion
of “a walking or standing still posture” followed by a motion of
“reaching the ground in a short time” which in turn is followed
by a motion “lying still on the ground.” Similarly, the action of
“a fall from an elevated location” is recognized as a motion
pattern constituted by motions of “climbing,” “falling,” “hitting
obstacles,” “reaching the ground” and “lying still,” occurring in
that order.
Id. at 16:23–30.
In addition, Unuma discloses that its system allows “reporting or not
reporting the recognized motion pattern depending on where the incident is
observed,” which is “useful in averting a false alarm provoked by an
apparent collapsing motion of the object under observation when in fact the
object is lying on a couch for examination at a hospital or climbing onto the
bed at home.” Id. at 17:3–7.
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Unuma also presents Figures 33–36. Figures 33 and 36 are depicted
below.

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Figures 33 and 36 each show “an example wherein a motion is
recognized by using the method of recognition provided by the present
invention,” where “a result of the recognition is displayed by animation
using computer graphics.” Id. at 27:45–47. Specifically, diagram (a) in
each figure shows a “measured waveform,” where the horizontal and vertical
axes represent time and acceleration, respectively. Id. at 27:53–55.
“[D]iagram (b) shows an average value of the measured waveform shown in
the diagram (a) or the direct-current component of the waveform.” Id. at
27:56–58. Diagram (e) presents a body-movement spectrum “obtained as a
result of carrying out a frequency analysis of the measured waveform shown
in the diagram (a),” and diagram (g) “shows the result of the recognition by
animation using computer graphics.” Id. at 28:1–30. In Figure 33, diagram
(g) depicts a computer animation of a subject in a briskly walking motion; in
Figure 36, diagram (g) depicts a subject in a state of a lying-down posture.
Id. at Figs. 33, 36.
Unuma further presents Figure 43, shown below.

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Figure 43 depicts a diagram showing a display of a sequence of
motion states leading to an emergency. Id. at 5:47–48; 31:28–45. Figure 43
depicts time period 1130, during which a patient walks briskly; period 1131,
during which the patient walks more slowly; period 1132, during which the
patient stands still; period 1133, during which the patient collapses; and
period 1134, during which the patient is “lying down and does not move any
more.” Id. at 31:36–39. Unuma states that, by repeating the process, “a
sequence of motion states leading to the event of an emergency can be
displayed repeatedly.” Id. at 31:39–41.
In relation to Figures 47–49, Unuma teaches that the “state of a
motion is recognized” (id. at 24:58) and, “[i]n addition, the gradient of a
human body, that is, the state of the upright/leaning posture of the human
body, can be recognized from an average value of variations in acceleration
observed by an acceleration sensor. . . . The magnitude of the direct-current
component is used to find the gradient of the human body which is, in turn,
utilized for forming a judgment on the state of the upright/leaning posture of
the human body. Id. at 24:58–25:26.
2. Analysis—claims 1–3, 21, and 22
Petitioner contends that claims 1–3, 21 and 22 of the ’939 patent
would have been obvious over Unuma. Pet. 20–54. Petitioner argues that
Unuma teaches or suggests a system that comprises all recited elements of
independent claims 1 and 21. Id. at 24. For example, Petitioner argues that
Unuma discloses a system that evaluates movement of a body relative to an
environment, e.g., a particular motion, action, and/or work of a patient. Id.
at 25 (citing Ex. 1004, 2:3–6, 13:47–49, 30:30–32, Fig. 1; Ex. 1002 ¶ 58,
App. D). Petitioner also contends that “signal processing unit 7” in Unuma
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corresponds to the “processor” of the challenged claims, and the
“acceleration sensor,” associated with processing unit 7 in Unuma,
corresponds to the recited “sensor for sensing dynamic and static
accelerative phenomena” of the body. Id. at 25–26. We discuss particular
claim limitations below.
a. “sensor, associable with said body, that senses
accelerative phenomena of said body relative to a
three dimensional frame of reference in said
environment” or “a sensor . . . associated with said
body”
Petitioner contends that Unuma discloses an acceleration sensor
attached to an object under observation. Pet. 25 (citing Ex. 1004, 11:53–54).
Petitioner contends that the sensor senses accelerative phenomena of the
body relative to a three dimensional frame of reference in the environment.
Id. at 25–26 (citing Ex. 1004, 8:41–45, Fig. 8; Ex. 1002 ¶ 59, App. D)
(discussing that measurements can also be taken “in other directions, such as
acceleration changes measured in the crosswise and lengthwise directions”
in addition to “measurements taken . . . in the object’s vertical direction”).
We are persuaded that Unuma teaches “a sensor, associable with said body,
that senses accelerative phenomena of said body” as recited in independent
claim 1 and “a sensor . . . associated with said body” as recited in
independent claim 21. Id. at 25–26, 32.
b. “sensor comprising a plurality of acceleration
measuring devices”
Petitioner contends that the sensor comprises a plurality of
acceleration measuring devices. Pet. 26 (citing Ex. 1004, 6:26, 31) (stating
that “[e]ither a single or a plurality of measuring instruments may be used.”).
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We are persuaded that Unuma teaches a “sensor comprising a plurality of
acceleration measuring devices” as recited in independent claim 1. Id.
c. “processor, associated with said sensor, that
processes said sensed accelerative phenomena of said
body as a function of at least one accelerative event
characteristic” or “processing, with a processor . . .
accelerative phenomena of said body as a function of
at least one accelerative event characteristic”
Petitioner contends that Unuma discloses a processor, namely,
processing unit 7. Pet. 26–28 (citing Ex. 1004, 6:17–20). Petitioner further
contends that processing unit 7 processes “acceleration signals (i.e., sensed
accelerative phenomena of a body) as a function of characteristic quantities
of the motions involved (i.e., accelerative event characteristics).” Id. at 26–
27. Petitioner explains that Unuma discloses various analysis methods for
the sensed data, such as Fourier transformation frequency analysis, wavelet
transformation, time frequency analysis, or any other appropriate frequency
analysis scheme. Id. at 27 (citing Ex. 1004, 6:41–43, 8:7–10); see also id. at
21 (explaining that processing unit 7 correlates extracted data with reference
data containing previously acquired characteristic quantities of motions and
actions, and “[t]he motion or action represented by the characteristic
quantity with the highest degree of correlation is recognized [as] an[]
output.”).
Petitioner further contends that Unuma’s “system is able to
distinguish between various accelerative events using characteristics
thereof.” Id. For example, Petitioner points out that motions of “climbing,”
“falling, “hitting obstacles,” and “reaching the ground” can be recognized by
their respective characteristics of “upward acceleration greater than
gravitational acceleration,” “zero acceleration in all directions (because of
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free fall),” “intense acceleration occurring in different directions in a short
time,” and “suffering a considerably strong acceleration.” Id. (citing Ex.
1004, 16:31–34). Consequently, Petitioner argues that Unuma discloses a
processor that processes sensed accelerative phenomena as a function of an
accelerative event characteristic. Id. at 27–28 (citing Ex. 1002 ¶ 61, App.
D).
Patent Owner contends that Unuma does not teach or suggest
processing sensed accelerative phenomena “as a function of at least one
accelerative event characteristic to thereby determine whether said
evaluated body movement is within environmental tolerance,” as recited in
claims 1 and 21. PO Resp. 47. Patent Owner discusses how the claim term
“accelerative events” refers to “occurrences of change in velocity of the
body (or acceleration), whether in magnitude, direction or both.” Id. at 47–
48. Patent Owner then argues that when Unuma normalizes “both the
frequency components F(m) of observed motion and the frequency
components G(m) of the reference motion,” that normalization removes
“magnitude information” for the sensed dynamic acceleration. Id. at 48
(citing Ex. 1004, 6:55–7:15; Ex. 2006 ¶¶ 55–57). Patent Owner also argues
that Unuma’s “use of absolute values of the frequency component
differences removes direction information from the sensed dynamic
acceleration.” Id. at 49–52 (discussing Ex. 1004, 6:55–7:24, Fig. 29). Thus,
according to Patent Owner, Unuma does not process the recited phenomena
“as a function of at least one accelerative event characteristic.” Id. at 51
(emphasis omitted); Ex. 1001, claims 1 and 21.
As discussed above, in relation to its “normalization” position, Patent
Owner refers us to “[o]ne way of correlating measurements with reference
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data [that] is shown illustratively in Fig. 29.” PO Resp. 48–52 (referring to
Ex. 1004, 6:55–7:54). Even assuming such “normalization” “scales all of
the frequency component magnitudes so that the sum of all frequency
components F(m) is equal to 1 and the sum of all frequency components
G(m) is equal to 1” (PO Resp. 48), we are not persuaded that doing so
eliminates any and all information regarding magnitude and direction from
the sensed accelerations.
Petitioner presents responsive evidence that “the normalization data
used by Unuma still has a magnitude, it is just in the form of a normalized
magnitude.” Pet. Reply 11 (citing Ex. 1010, 151:1–153:8) (Dr. Sturges
agreeing that “the sine is clearly used to get that average”); Ex. 1011 ¶¶ 52–
54 (indicating that a “proper average cannot be calculated without using the
magnitude and direction (up and down) values of the waveform”).
Petitioner also presents evidence that the normalized magnitudes
“distinguish between similarly normalized accelerative events.” Ex. 1011
¶ 53 (citing Ex. 1004, 16:26–30).
We determine that Petitioner establishes sufficiently that Unuma
teaches or suggests a “processor, associated with said sensor, that processes
said sensed accelerative phenomena of said body as a function of at least one
accelerative event characteristic” as recited in claim 1 or “processing, with a
processor . . . accelerative phenomena of said body as a function of at least
one accelerative event characteristic” as recited in claim 21.
d. “to thereby determine whether said evaluated body
movement is within an environmental tolerance”
Petitioner contends that Unuma’s processor processes the recited
phenomena, sensed as a function of an accelerative event characteristic, to
determine “whether said evaluated body activity is within environmental
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tolerance” as recited in the challenged claims, “or, conversely, in an
emergency state of collapse.” Pet. 28.
As Petitioner points out, Unuma’s system recognizes “a motion
pattern made up of a motion of ‘a walking or standing-still posture’ followed
by a motion of ‘reaching the ground in a short time’ . . . followed by a
motion ‘lying still on the ground’” as “the action of ‘a sudden collapse onto
the ground.’” Id. at 28, 34–36 (citing Ex. 1004, 16:26–30, 13:26–34, Figs
39, 42 and 43). We agree with Petitioner that Unuma’s system makes a
determination (in a hospital environment, for example) as to whether the
body movement is indicative of an emergency state of collapse or,
conversely, within environmental tolerance. Id. at 28–29. We also agree
with Petitioner that the recognized motion pattern may, or may not, be
reported as an emergency state of collapse “depending on where the incident
is observed.” Id. at 29, 35 (citing Ex. 1004, 17:3–7).
Patent Owner contends that Unuma “merely attempts to recognize
different types of motions through pattern matching, without regard for
whether that body movement is within tolerance.” PO Resp. 52. Patent
Owner contends that “mere recognition of movement as consistent with a
fall is insufficient to determine whether such movement is acceptable, or
within tolerance.” Id. Patent Owner also argues that Unuma indicates that
some collapses result in false alarms, and that Unuma “suggests various
techniques for verifying that an apparent collapse” is a state of emergency.
Id. at 53. Thus, according to Patent Owner, Unuma fails to teach or suggest
determining tolerability based on processing sensed static and dynamic
acceleration. Id.
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Patent Owner’s contentions do not persuade us. In Figure 39, for
example, Unuma discloses detecting whether a collapse corresponds to a
state of emergency, which also involves determining whether body activity
is within environmental tolerance, i.e., not in a state of emergency. Ex.
1004, 30:24–42, Fig. 39. When considering disclosures in Unuma regarding
Figures 39 and 42, for example, we agree with Petitioner that “[a]t a
minimum[,] a person of ordinary skill in the art would have found it obvious
in view of Unuma’s disclosed determinations regarding body movements
within particular environments that trigger, for example, alarms and reports,
to provide a determination of whether said evaluated body movement is
within an environmental tolerance.” Pet. 29, 35–36; see also Ex. 1004,
17:3–7 (discussing “reporting”). Moreover, we are persuaded that a
determination of whether an evaluated body movement is “within an
environmental tolerance” results from the previously described processing of
sensed accelerative phenomena as a function of at least one accelerative
event characteristic, as taught Unuma. Thus, we are persuaded that Unuma
teaches or suggests the subject matter recited in the “thereby” language of
the claims. See Oxford Dictionaries, available at
http://www.oxforddictionaries.com/us/definition/american_english/thereby
(Ex. 3007) (defining “thereby” as “By that means; as a result of that”).
We determine that Petitioner establishes sufficiently that Unuma
teaches or suggests “to thereby determine whether said evaluated body
movement is within environmental tolerance,” as recited in claims 1 and 21.
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e. “to thereby determine whether said body has
experienced acceleration that represents one of a
plurality of different types of motion” or “determining
whether said body has experienced acceleration that
represents one of a plurality of different types of
motion”
Petitioner contends that “Unuma’s processor determines whether a
body has experienced acceleration that represents, for example, the
following types of motions: ‘walking,’ ‘running,’ ‘squatting[,]’ and ‘lying
down.’” Pet. 29 (citing Ex. 1004, 6:31–37, Figs. 2, 3; Ex. 1002 ¶ 63). We
are persuaded that Unuma teaches sensing of accelerative phenomena of said
body “to thereby determine whether said body has experienced acceleration
that represents one of a plurality of different types of motion” as recited in
independent claim 1 or “determining whether said body has experienced
acceleration that represents one of a plurality of different types of motion” as
recited in independent claim 21.
f. Claim 21—“processing . . . repeatedly sensed
dynamic and static accelerative phenomena of said
body as a function of at least one accelerative event
characteristic”
Independent claim 21 is “[a] method of operating a system to evaluate
movement of a body relative [to] an environment” that includes limitations
similar to the “system” of independent claim 1. Ex. 1001, 21:14–25. Claim
21, however, additionally recites “processing, with a processor, repeatedly
sensed dynamic and static accelerative phenomena of said body as a
function of at least one accelerative event characteristic.” Id. (emphasis
added).
In addition to the above, Petitioner points to Figure 3 of Unuma as
showing that Unuma’s acceleration sensors substantially continuously
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measure dynamic and static (gravitational) acceleration of the body. Pet. 33.
Petitioner also points us to where Unuma teaches that “processing unit 7 for
motion/action recognition continuously receives characteristic quantity data
10 from the characteristic quantity extraction unit 5, the data 10 being
derived from the ongoing motions/actions of the object 1 under observation.”
Id. (emphasis added) (citing Ex. 1004, 6:48–50). Petitioner adequately
establishes that Unuma discloses the “repeatedly” component in independent
claim 21. Patent Owner does not address the “repeatedly” component of
independent claim 21. See PO Resp. 38–53.
As to the processing of both dynamic and static accelerative
phenomena, Petitioner argues that Unuma discloses continuous
measurement of both dynamic and static acceleration of the body. Pet. 33–
34 (citing Ex. 1004, 6:31–37, 48–50, 16:31–34, Figs. 2–3). Petitioner
contends the sensor in Figure 2, for example, “takes measurements of
acceleration applied to the human body in the direction of its height.” Id. at
33. In addition, “[o]utput results 20 from the acceleration sensor indicate
specific time series data items 21 through 24 derived from human motions of
‘walking,’ ‘running,’ ‘squatting’ and ‘lying down.’” Id. at 33–34. Petitioner
also points to “data item 24” as indicating “a state of no acceleration in
which gravitational acceleration is not detected because the object is lying
down.” Id. at 34.
Petitioner further contends that Unuma’s processing unit 7 senses the
above-mentioned “dynamic and static (gravitational) acceleration of the
body as a function of at least one accelerative event characteristic, as
illustrated in Fig. 3.” Pet. 33. As noted above, “accelerative event” means
“occurrences of change in velocity of the body (or acceleration), whether in
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magnitude, direction or both, and including cessation or activity or
inactivity.” Ex. 1001, 5:20–24. Petitioner argues that Unuma’s processing
unit 7 continuously receives characteristic quantity data 10 from
characteristic quantity extraction unit 5, “the data 10 being derived from the
ongoing motions/actions of the object” under observation. Pet. 33 (citing
Ex. 1004, 6:48–50); Ex. 1003, Fig. 1. In relation to “ongoing
motions/actions” data, the sensor in Unuma, as depicted in Figure 2, for
example, “takes measurements of acceleration applied to the human body in
the direction of its height,” and generates output results 20 that indicate the
motions of “walking,” “running,” “squatting,” and “lying down.” Id. at 33–
34 (citing Ex. 1004, 6:31–37, 16:31–34).
Patent Owner addresses the patentability of independent claim 21
separately from independent claim 1 with respect to whether Unuma
discloses processing of both dynamic and static accelerative phenomena, as
required in independent claim 21 (but not in independent claim 1). PO Resp.
39–47. More particularly, Patent Owner responds to Petitioner’s contentions
by arguing that the processor of Unuma only processes sensed dynamic
acceleration information, but not both dynamic and static accelerative
information/phenomena, as required in challenged independent claim 21.
Specifically, Patent Owner asserts “[i]n using the accelerometer output
illustrated in Figures 2 and 3, Unuma processes only dynamic acceleration to
recognize motion patterns and disregards or filters out static acceleration.”
PO Resp. 39 (emphasis omitted). In support, Patent Owner relies on
teachings in Unuma and a declaration by Dr. Sturges (Ex. 2006). Id. at 39–
52.
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Patent Owner contends that the time frequency analysis used in
Unuma, such as Fourier or wavelet transformation, uses “only the dynamic
(vibration) component of the sensed total acceleration” to create the
frequency spectrum shown in Figure 2 or the wavelet components shown in
Figure 3. Id. at 41 (citing Ex. 2006 ¶¶ 37–51, 56–58, 60–64, 72).
In support, in relation to Figure 3, for example, Patent Owner
contends that “frequency components F(m) and G(m) form the sole basis for
the comparison of the observed and reference motion using a correlation
function H(m).” Id. (referring to Ex. 1004, 7:20–7:24; Ex. 2006 ¶¶ 56–58).
According to Patent Owner, that comparison is what processor 7 does when
it processes data, and Unuma only processes frequency components
generated from the dynamic acceleration information, and “does not suggest
using any aspect of the sensed static acceleration data to correlate or
recognize motions.” Id. (citing Ex. 2006 ¶¶ 48–50), 44 (stating that “static
acceleration information is effectively filtered out, and is not employed”)
(citing Ex. 2006 ¶¶ 39–42, 48). Patent Owner contends that “[e]ven with
respect to lying down, the absence of wavelet components in Figure 3
merely indicates the absence of dynamic acceleration.” Id. at 41–42.
Patent Owner presents similar arguments regarding the “frequency
analysis” depicted in Figure 2. PO Resp. 43–47. In relation to both Figures
2 and 3, Patent Owner repeats its contention that Unuma “teaches and
encourages use of methods that filter out and disregard static acceleration.”
Id. at 45 (citing Ex. 2006 ¶¶ 42, 47). According to Patent Owner, Unuma
does not “disclose or teach processing both dynamic and static acceleration
to thereby determine whether motion is within environmental tolerance.” Id.
at 47.
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The analysis by Patent Owner and its expert, Dr. Sturges, however,
does not persuade us that Unuma fails to teach processing of sensed dynamic
and static accelerative phenomena as a function of at least one accelerative
event characteristic For example, Unuma’s system obtains data from an
acceleration sensor, such as data items 21–24 in Figure 2, or acceleration
changes 210 in Figure 3, for example—which include gravitational (static)
acceleration information—and such data “are digitized by the A/D converter
4” and “subjected to time-frequency analysis.” Ex. 1004, 6:31–39. Patent
Owner proposes that the digitation and/or time-frequency analysis causes all
static data to be “effectively filtered out” before any comparison/processing
step takes place. PO Resp. 44, 2, 39, 42, 45. In support, Patent Owner and
its expert rely on disclosures in Unuma regarding “[o]ne way of correlating
measurements with reference data [that] is shown illustratively in Fig. 29.”
Ex. 1004, 6:55–7:54; PO Resp. 49–52 (referring to Ex. 1004, 6:55–7:54).
Patent Owner also cites to paragraphs in Dr. Sturges’ Declaration discussing
an “average value T (denoted by reference numeral 2003) of the powers of
all spectrum components excluding the direct-current component (that is, the
0th-order harmonic),” as depicted in Figure 47C. Ex. 1004, 6:55–7:54; PO
Resp. 43–44 (referring to Ex. 2006 ¶ 42, which cites Exhibit 1004, 21:22–
34).
We agree with Petitioner, however, that other disclosures in Unuma
describe processing both “static and dynamic components of the acceleration
signal to determine both movement of the body and the ‘gradient’ (position)
of the body relative to earth.” Pet. Reply 7. For instance, when discussing
Figures 47–49, Unuma indicates that the “state of a motion is recognized”
(Ex. 1004, 24:58), but also that “the gradient of a human body, that is, the
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state of the upright/leaning posture of the human body, can be recognized
from an average value of variations in acceleration observed by an
acceleration sensor.” Ex. 1004, 24:58–25:26. Unuma states that “[t]he
magnitude of the direct-current component is used to find the gradient of the
human body which is, in turn, utilized for forming a judgment on the state of
the upright/leaning posture of the human body.” Ex. 1004, 25:24–26; see
also Ex. 1001, 6:28–30 (describing a “direct current (dc) voltage
component” as corresponding “to an angle relative to earth (i.e., static
acceleration component related to gravity”).
In addition, in Figures 33–36 of Unuma, “diagram (b) shows an
average value of the measured waveform shown in the diagram (a) or the
direct-current component of the waveform.” Ex. 1004, 27:56–28:1. We
agree with Petitioner that Unuma’s teachings in relation to Figure 33
indicate that an acceleration average, as shown in diagram (b) of the
measured waveform, can be calculated in order to analyze the static
component of the waveform for purposes of determining the posture of the
body relative to earth, as depicted in diagram (g), which shows “the result of
the recognition by animation using computer graphics,” i.e., body movement
(dynamic acceleration) and posture (static acceleration). Pet. Reply 8; Ex.
1004, 28:1–30. Figure 36 depicts similar processing of such information,
but presents a lying-down posture in diagram (g), rather than a brisk upright
walking motion, as shown in diagram (g) in Figure 33.
Moreover, even to the extent that we were to agree that Unuma filters
out static acceleration as part of its wavelet or frequency analysis, this in and
of itself is an indication of processing, in that the processor would subject
the static acceleration data to examination so as to filter it out. See Merriam-
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Webster Dictionary, available at http://www.merriam-
webster.com/dictionary/process (Ex. 3008) (defining “process” as “to
subject to examination or analysis .”).
Accordingly, even if “the absence of wavelet components in Figure 3 merely
indicates the absence of dynamic acceleration” “[e]ven with respect to lying
down” (PO Resp. 41–42 (citing Ex. 2006 ¶ 49)), for example, Unuma’s
processor would examine the static acceleration data so as to filter it out.
Thus, even accepting the “filter out” argument by Petitioner, we find that
Unuma processes both “sensed dynamic and static accelerative phenomena,”
as required in claim 21.
In addition, we agree with Petitioner that Unuma teaches or suggests,
when discussing Figures 33–36, for example, processing “sensed dynamic
and static accelerative phenomena as a function of at least one accelerative
event characteristic” as recited in claim 21, i.e., teaches or suggests
processing relevant accelerative phenomena as a function of magnitude and
direction. Ex. 1004, 27:45–28:55; Pet. Reply 10–11. The processing of
“normalized” information results in an output corresponding to dynamic and
static accelerative information, as depicted by computer graphics or pictures
of sensed objects, as shown in Figures 1, 33–36 and 43 in Unuma. Because
the processing results in such an output, Unuma’s system must, at least in
some capacity, “process” dynamic and static accelerative information as a
function of occurrences of change in velocity or acceleration of the sensed
body, in magnitude and/or direction. See Merriam-Webster Dictionary,
available at http://www.merriam-webster.com/dictionary/process (Ex. 3009)
(defining “process” as “to take in and organize for use ”).
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g. Conclusion regarding claims 1–3, 21, and 22
We determine that Petitioner has shown by a preponderance of the
evidence that Unuma teaches or suggests a system or method comprising all
limitations of independent claims 1 and 21. In addition, Petitioner presents
detailed arguments and evidence that dependent claims 2, 3, and 22 are
unpatentable as obvious over Unuma. See Pet. 30–31, 36–37 (citing Ex.
1004, 6:26, 31–37, 8:41–45, 14:42, Figs. 2, 3, 8; Ex. 1002 ¶ 65–68, 75–76,
App. D). Patent Owner does not address the patentability of those claims
separately from independent claims 1 and 21. See PO Resp. 38–53. The
information presented in the Petition satisfies Petitioner’s burden with
respect to those dependent claims.
III. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
The party moving to exclude evidence bears the burden of proof to
establish that it is entitled to the relief requested, e.g., that the material
sought to be excluded is inadmissible under the Federal Rules of Evidence.
See 37 C.F.R. §§ 42.20(c), 42.62(a).
Patent Owner moves to exclude paragraphs 11–32 of Exhibit 1011
(Reply declaration testimony of Petitioner’s expert, Dr. Welch) as
“conclusory” and presenting “legal arguments upon which this expert lacks
any basis to testify.” Mot. Excl. 2. Patent Owner also argues that the
paragraphs comprise new claim construction arguments regarding “what is
required to satisfy the ‘relative to a three dimensional frame of reference’
limitation in the context of claims 1, 2, 21, and 22 of the ’939 Patent and
whether there is support for such a limitation in the ’481 Patent.” Id. at 1.
According to Patent Owner, Petitioner should have presented such
arguments in the Petition. Id. at 2.
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Patent Owner also moves to exclude paragraphs 37–41 of Exhibit
1011 as comprising new claim construction arguments regarding “what is
required to ‘process’ sensed static and dynamic accelerative phenomena in
the context of claim 21.” Mot. Excl. 3. According to Patent Owner,
Petitioner should have presented such arguments in the Petition. Id. (citing
37 C.F.R. § 42.104(b)(3); 77 Fed. Reg. 48,756, 48,768; The Scotts Co. v.
Encap, LLC, IPR2013-00110, Paper 79, 5–6 (PTAB June 24, 2014)). In
addition, Patent Owner moves to exclude paragraphs 41–43, 45, and 51–54
of Exhibit 1011 as comprising new arguments discussing new portions of
Unuma that were not presented in the Petition nor Dr. Welch’s opening
declaration (Exhibit 1002). Mot. Excl. 3–4. More particularly, Patent
Owner argues that those paragraphs discuss Figures 5(b), 33–36, and 48
along with their accompanying text in Unuma, but neither the Petition nor
Patent Owner’s Response examine those portions of Unuma. Id. at 4.
Petitioner opposes and argues that “[a] motion to exclude is not a
mechanism to argue that a reply contains new arguments.” Opp. Mot. Excl.
2 (citing Vibrant Media, Inc. v. General Electric Co.. IPR2013-00170, Paper
56, 31 (PTAB June 26, 2014)). Petitioner further opposes and argues that it
properly submitted Dr. Welch’s reply declaration testimony in direct
response to arguments and evidence raised by Patent Owner in its Response.
Id. More particularly, Petitioner points out that it submitted the reply
declaration testimony in direct response to Patent Owner’s “assertions that
Yasushi allegedly ‘does not qualify as prior art and cannot be used to
invalidate claim 1’” and to Patent Owner’s “assertion that the challenged
claims are allegedly not obvious over Unuma ‘because the claims at issue
require (1) sensing and processing of both body movement and changes in
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orientation of the body; (2) evaluation of movement according to
accelerative event characteristics, which are vectors including magnitude,
direction, or both; and/or (3) making an acceptability determination based on
the specified criteria relative to the environment of interest—none of which
is disclosed or taught by Unuma.” Id. at 3 (emphasis omitted).
As Petitioner points out, normally, a motion to exclude is available to
parties to explain why certain evidence is inadmissible, and is not the proper
place to raise arguments regarding the scope of a reply. Trial Practice
Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012); Liberty Mutual
Insurance Co. v. Progressive Casualty Insurance Co., Case No. CBM2012-
00002, Paper 66, slip op. at 62 (PTAB Jan. 23, 2014) (stating that a motion
to exclude “is not a mechanism to argue that a reply contains new arguments
or relies on evidence necessary to make out a prima facie case”). That said,
rather than deny Patent Owner’s motion on that basis, we address the points
raised in the Motion to Exclude to clarify the issues raised therein.
As an initial matter, Patent Owner’s assertions that the testimony is
“conclusory” and presents “legal argument” (Mot. Excl. 2) might impact
how we weigh the testimony, but does not persuade us to exclude it.
Moreover, we determine that Patent Owner’s Response contains affirmative
contentions that Yasushi does not qualify as prior art in view of Patent
Owner’s proposed claim construction, and that Unuma fails to disclose
processing of static acceleration to determine whether evaluated body
movement is within environmental tolerance (see, e.g., PO Resp. 1–2, 51,
53). Such contentions differ from mere argument that Petitioner has failed
to offer adequate evidence in its Petition to establish that Yasushi or Unuma
discloses the subject matter of recited elements in 1–3, 21, and 22. Thus, we
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determine that Petitioner properly submitted the identified paragraphs of Dr.
Welch’s reply declaration to rebut Patent Owner’s arguments made in its
Patent Owner Response. Accordingly, we deny Patent Owner’s Motion to
Exclude.
IV. NOTICE REGARDING NEW ARGUMENTS AND BELATED
SUPPORT
Patent Owner filed a “Notice Regarding New Arguments and Belated
Support.” Paper 30. Patent Owner contends that certain pages of
Petitioner’s Reply include new arguments regarding “what elements are
required to sense accelerative phenomena ‘relative to a three dimensional
frame of reference within said environment’” and regarding how Petitioner
contends Unuma (i) “processes static acceleration;” (ii) “discloses
processing magnitude and direction of acceleration’” and (iii) “discloses
using tolerances.” Id. at 1–2. Patent Owner further contends that certain
pages of Petitioner’s Reply rely on certain portions of Unuma “not cited or
mentioned in their Petition or supporting declaration.” Id. Patent Owner
contends that it “had no opportunity to respond [to] or address in its
Response or responsive evidence” these new arguments and evidence. Id. at
1.
Petitioner filed a Response to Patent Owner’s Notice, in which
Petitioner asserts that the arguments “are directly responsive to [Patent
Owner’s assertions] that Yasushi allegedly ‘does not qualify as prior art and
cannot be used to invalidate claim 1” and “are directly responsive to [Patent
Owner’s] assertion that the challenged claims are allegedly not obvious over
Unuma ‘because the claims at issue require (1) sensing and processing of
both body movement and changes in orientation of the body; (2) evaluation
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of movement according to accelerative event characteristics, which are
vectors including magnitude, direction, or both; and/or (3) making an
acceptability determination based on the specified criteria relative to the
environment of interest – none of which is disclosed or taught by Unuma.’”
Paper 33, 1–2 (emphasis omitted).
During trial, we stated that “[i]n rendering its Final Written Decision,
the Board will determine what weight, if any, is to be given to all of the
presented evidence and arguments in accordance with the rules of the
Board.” Paper 23, 3.
The mere fact that a petitioner submits rebuttal testimony that relies
on new evidence not previously identified in the petition does not suffice to
establish its impropriety. The very nature of a reply is to rebut the patent
owner’s response. 37 C.F.R. § 42.23(b). As described above in connection
with our analysis of Patent Owner’s Motion to Exclude, we determine that
Petitioner’s reliance on the identified arguments and evidence was
responsive to arguments raised in the Patent Owner Response as to the
applicability of Yasushi as prior art and as to the entirety of the teachings of
Unuma, and accordingly, have given appropriate consideration to the
identified arguments and evidence relating to the contentions regarding the
applicability of Yasushi as prior art and relating to the contentions regarding
the entirety of Unuma.
V. CONCLUSION
Taking account of the arguments and evidence presented during trial,
we determine that Petitioner establishes by a preponderance of the evidence
that claims 1–3, 21, and 22 of the ’939 patent are unpatentable based on the
following grounds of obviousness under 35 U.S.C. § 103(a):
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A. Claims 2 and 3 under 35 U.S.C. § 103(a) as obvious over
Yasushi; and
B. Claims 1–3, 21, and 22 under 35 U.S.C. § 103(a) as
obvious over Unuma.
VI. ORDER
For the foregoing reasons, it is
ORDERED that claims 1–3, 21, and 22 of the ’939 patent are
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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FOR PETITIONER:

Joseph S. Presta
Robert W. Faris
NIXON & VANDERHYE, P.C.
jsp@nixonvan.com
rwf@nixonvan.com

FOR PATENT OWNER:

Daniel E. Venglarik
David M. Doyle
Michael C. Wilson
S. Wallace Dunwoody
MUNCK WILSON MANDALA LLP
PTAB-ILIF@munckwilson.com
dvenglarik@munckwilson.com
ddoyle@munckwilson.com
mwilson@munckwilson.com
wdunwoody@munckwilson.com