Brain Synergy Institutev.Ultrathera Technologies, Inc.

Patent Trial and Appeal Board

Jun 16, 2015

12744896 (P.T.A.B. Jun. 16, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Date: June 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BRAIN SYNERGY INSTITUTE, LLC,
Petitioner,

v.

ULTRATHERA TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2015-00515
Patent 8,702,631 B2
____________

Before LINDA E. HORNER, MEREDITH C. PETRAVICK, and
WILLIAM V. SAINDON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Petitioner filed a Petition requesting an inter partes review (Paper 1, “Pet.”)1
of claims 1‒11 of U.S. Patent No. 8,702,631 B2 (Ex. 1001, “the ’631 patent”).
Pet. 1. Patent Owner filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
We have jurisdiction under 35 U.S.C. § 314, which provides that an inter
partes review may not be instituted “unless . . . there is a reasonable likelihood
that the petitioner would prevail with respect to at least 1 of the claims challenged
in the petition.” We have reviewed the Petition, the evidence cited therein, and the
Preliminary Response. For the reasons discussed below, we determine that
Petitioner has not demonstrated a reasonable likelihood of prevailing with respect
to any of the challenged claims of the ’631 patent.
A. Related Matters
Petitioner has sued Patent Owner for infringing claims 2–6, 8–10, 13–16 of
U.S. Patent No. 6,800,062 (Ex. 1003, “Epley”) in Brain Synergy Institute, LLC v.
Ultrathera Technologies, Inc., Case No. 1:13-cv-01471, pending in the United
States District Court for the District of Colorado (“the Colorado litigation”).
Pet. 6. Petitioner relies on Epley in each of the grounds of challenge presented in
the Petition. Id. at 8; Ex. 1003.
U.S. Patent Application No. 13/957,226, filed August 1, 2013, now pending,
is a continuation of U.S. Patent Application No. 12/744,896, filed October 22,
2010, now the ’631 patent, which Petitioner challenges in the present matter.
B. The ’631 Patent
The ’631 patent describes a system and method for administering vestibular2
stimulation to a subject. Ex. 1001, 2:17‒38. The system and method “employ[] a

1 The Petition, as filed, did not provide pagination. A reproduction of the Petition,
with pagination referenced therein, is attached as an appendix to this Decision.
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computer controlled multi-axis rotational motion device to move a human subject
in specific controllable motions with specific controllable angular acceleration.”
Id. at 3:20‒24. Figure 1 depicts a vestibular stimulation system configured to
rotate around two axes of rotation. Id. at 2:45‒46.3 Figure 1 is reproduced below.

Figure 1 depicts a vestibular stimulation system configured
to rotate around two axes of rotation.
Figure 1 depicts subject 101 seated in chair 102 of vestibular stimulation
system 100, which provides for rotation of subject 101 about pitch axis 104 and

2 The vestibular system includes the parts of the inner ear and brain that help
control balance and eye movements. Ex. 1001, 1:18‒21.
3 Although the ’631 patent discloses another embodiment, depicted in Figure 2, in
which the system rotates about three axes, the claims of the patent are limited to
the two-axis embodiment. Ex. 1001, 23:5‒24:36. Accordingly, we limit our
discussion to the two-axis embodiment disclosed in the ’631 patent.
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yaw axis 106. Ex. 1001, 5:14‒20. Chair 102 is rotationally supported on base 110
via yaw shaft 112 and rotational bearing system 114. Id. at 5:20‒24. Chair 102 is
rotated around yaw axis 106 by yaw axis motor 116. Id. at 5:27‒28. Chair 102 is
also supported on U-shaped support frame 120 and operably linked to pitch shaft
118 via bearing cases 114 and 116 at opposing ends of pitch shaft 118. Id. at 5:22‒
23, 5:43‒49. Chair 102 is rotated around pitch axis 104 by pitch axis motor 122.
Id. at 5:50‒51. Rotation around yaw axis 106 and pitch axis 104 can be continuous
with no limitation on the rotation characteristics or the number of rotations. Id. at
5:37‒40, 5:56‒60. In operation, rotations of chair 102 around pitch axis 104 and
yaw axis 106 are independent, and can occur either separately or simultaneously.
Id. at 6:3‒5. Vestibular stimulation can be administered to a subject using system
100 to alter the response of the subject to a variety of stimuli or to treat a number
of developmental disorders. Id. at 15:4‒12.
C. Illustrative Claim
Petitioner challenges all of the claims in the ’631 patent, of which claims 1
and 9 are independent. Claim 1 is reproduced below.
1. A method of administering a dose of vestibular
stimulation to a subject, comprising:
administering to a subject in a two-axis rotational
device a dose of vestibular stimulation,
wherein said two-axis rotational device comprises a
pitch axis of rotation directly inside a yaw axis of
rotation, with the proviso that the device does not
comprise a roll axis of rotation, the rotation of each said
pitch and yaw axis is independent of the other axis of
rotation, the rotation velocity and acceleration around
each said pitch and yaw axis controlled by a computer
system, and said dose comprises a measurable and
repeatable pattern of acceleration intensity and frequency
around said pitch axis of rotation for a first duration and
said yaw axis of rotation for a second duration, said
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rotational device configured to allow continuous rotation
through more than 360 degrees around each said axis of
rotation independently and simultaneously; and
measuring the vestibular stimulation applied to said
subject by said computer system.
Ex. 1001, 23:5‒24.
D. Prior Art and Asserted Grounds
Petitioner challenges the claims of the ’631 patent based on four grounds
using three references. Pet. 8. Petitioner asserts claims 1, 2, and 4‒11 of the ’631
patent are unpatentable under 35 U.S.C. § 103(a) over Okamoto4 in view of Epley5
and over Epley in view of Newman6. Id. Petitioner further asserts claim 3 of the
’631 patent is unpatentable under 35 U.S.C. § 103(a) over Okamoto in view of
Epley and Graybiel7 and over Epley in view of Newman and Graybiel.

4 JP Hei 07[1995]-60290 B2, published June 28, 1995 (translated version)
(Ex. 1002). The Petitioner includes a certification of translation with the translated
version of Okamoto. 37 C.F.R. § 42.63(b) requires that translations must be
accompanied by “an affidavit attesting to the accuracy of the translation.” The
certificate of translation submitted by the Petitioner is not a proper affidavit
because it was not made under oath and does not include the acknowledgement
that “willful false statements and the like are punishable by fine or imprisonment,
or both.” 37 C.F.R. § 1.68. The Patent Owner does not contest the accuracy of the
translation submitted by the Petitioner. For purposes of disposing of the Petition,
the Board will consider the certified translation.
5 U.S. Patent No. 6,800,062 B2, issued October 5, 2004 (Ex. 1003).
6 U.S. Patent No. 4,710,129, issued December 1, 1987 (Ex. 1004).
7 Ashton Graybiel, Prevention of Motion Sickness in the Slow Rotation Room by
Incremental Increases in Strength of Stimulus, in FOURTH SYMPOSIUM ON THE
ROLE OF THE VESTIBULAR ORGANS IN SPACE EXPLORATION, NASA SP-187 109–
115 (Nat’l Acad. of Scis. 1970) (Ex. 1005).
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II. ANALYSIS
A. Claim Construction
The Board interprets the claims of an unexpired patent using the broadest
reasonable interpretation in light of the specification of the patent in which they
appear. 37 C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,766 (Aug. 14, 2012).
Petitioner proposes constructions for “dose of vestibular stimulation,” “a
pitch axis of rotation directly inside a yaw axis of rotation,” “a measurable and
repeatable pattern,” “continuous rotation,” “independently and simultaneously,”
“independently and continuously,” “measuring the vestibular stimulation,” and
“chaotic pattern or regular repeating pattern.” Pet. 12–17. Patent Owner does not
contest the Petitioner’s proposed constructions for these claim terms and does not
propose its own construction of any claim terms. We need to construe only
“simultaneously,” “continuously,” and “continuous rotation” in reaching our
decision. “[C]laim terms need only be construed ‘to the extent necessary to
resolve the controversy.’” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
1361 (Fed. Cir. 2011) (quoting Vivid Techs., Inc. v. Am Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999)).
“simultaneously”
Independent claim 1 of the ’631 patent recites that “said rotational device
[is] configured to allow continuous rotation through more than 360 degrees around
each said [pitch and yaw axes] of rotation independently and simultaneously.”
Ex. 1001, 23:19‒22 (emphasis added). Petitioner proposes that the claim recitation
“independently and simultaneously . . . should be interpreted to mean that the
variables associated with pitch and yaw axes – e.g., acceleration, deceleration,
velocity, etc. – are separately controlled and the axes can rotate at the same time.”
Pet. 15 (citing Ex. 1001, 5:5‒7; 6:3‒7; 13:24‒27) (emphasis added).
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With respect to “simultaneous” rotation, the ’631 patent describes that “[i]n
operation, rotation of chair 102 around pitch axis 104 and yaw axis 106 are
independent, and can occur either separately or simultaneously.” Ex. 1001, 6:3‒5.
Thus, the Specification distinguishes between separate rotation about the pitch and
yaw axes at different times versus simultaneously rotation about these axes at the
same time. We interpret the term “simultaneously”, as used in claim 1, when read
in light of the Specification, to mean that the device can be rotated about the pitch
and yaw axes at the same time.
“continuously” and “continuous rotation”
Independent claim 1 of the ’631 patent recites that the two-axis rotational
device is “configured to allow continuous rotation through more than 360 degrees
of rotation around each said axis of rotation independently and simultaneously.”
Ex. 1001, 23:19‒22 (emphasis added). Independent claim 9 of the ’631 patent
recites each axis of the two-axis rotational device “operating independently and
continuously from the other axis and configured to allow continuous rotation
through more than 360 degrees of rotation around each said axis.” Ex. 1001,
24:19‒22 (emphases added). Petitioner proposes that the claim recitation
“continuous rotation” in claims 1 and 9 “should be interpreted to mean an
unlimited number of rotations with or without stopping.” Pet. 14‒15 (citing
Ex. 1001, 5:37‒40, 58‒60, 6:55‒58, 7:13‒16, 29‒32, 12:1‒3) (emphasis added).
Petitioner further proposes that the claim recitation “independently and
continuously” in claim 9 “should be interpreted to mean that the variables
associated with pitch and yaw axes – e.g., acceleration, deceleration, velocity, etc.
– can be separately controlled and the axes can rotate an unlimited number of
times.” Pet. 15‒16 (emphasis added).
The ’631 patent describes that “[r]otation around yaw axis 106 can be
continuous indefinitely in a single rotational direction, without any limitation on
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the rotation characteristics or number of rotations.” Ex. 1001, 5:37‒40. The ’631
patent provides a similar description for rotation around pitch axis 104, stating that
“[r]otation around pitch axis 104 thus can be continuous in a single rotational
direction indefinitely, without any limitation on the number of rotations.” Id. at
5:58‒60. The ’631 patent further describes that “[t]he system can rotate through
all 360 degrees in each axis in a controlled and continuous (i.e.[,] unlimited
rotations) amount.” Id. at 12:1‒3. The ’631 patent describes that a dose of
vestibular stimulation can include a “number of starts and stops,” thus implying
that “continuous” does not mean an indefinite rotation without any stops. Id. at
11:50‒54.
We interpret the phrase “continuous rotation,” as used in claims 1 and 9, and
the term “continuously” as used in claim 9, when read in light of the Specification,
which describes continuous rotation as referring to an unlimited number of
rotations, to refer to a device that is able to rotate the subject an unlimited number
of times through more than 360 degrees around each axis of rotation.
B. Petitioner’s Showing in Petition
A petition for inter partes review must “identif[y], in writing and with
particularity, each claim challenged, the grounds on which the challenge to each
claim is based, and the evidence that supports the grounds for the challenge to each
claim.” 35 U.S.C. § 312(a)(3). According to 37 C.F.R. § 42.104(b)(4), a petition
for inter partes review “must identify how the construed claim is unpatentable
under the statutory grounds on which the petitioner challenges the claims, and must
specify where each element of the claim is found in the prior art patents or printed
publications relied upon.” Similarly, 37 C.F.R. § 42.22(a)(2) states that each
petition must include “[a] full statement of the reasons for the relief requested,
including a detailed explanation of the significance of the evidence including
material facts, and the governing law, rules, and precedent.” The Office Patent
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Trial Practice Guide suggests that parties requesting inter partes review should
“avoid submitting a repository of all the information that a judge could possibly
consider, and instead focus on concise, well-organized, easy-to-follow arguments
supported by readily identifiable evidence of record.” 77 Fed. Reg. 48,756, 48,763
(Aug. 14, 2012). Petitioner’s brief summary, quotations, citations, and reproduced
figures from Okamoto, Epley, and Newman fail to: (1) specify sufficiently where
each element of independent claims 1 and 9 are found in the references, and
(2) constitute a detailed explanation of the significance of the quotations, citations,
and figures from the references to the claimed subject matter.
1. Petitioner’s Reading of “simultaneously” on the Prior Art
With respect to the first asserted ground of unpatentability of claims 1, 2,
and 4‒11 under 35 U.S.C. § 103(a) as unpatentable over Okamoto and Epley, the
Petition does not point to adequate evidence showing where either Okamoto or
Epley discloses rotation about each axis simultaneously. Pet. 24 (discussing in
section VI.A.1(d) where Epley and Okamoto allegedly disclose independent
rotation of the pitch and yaw axes, but failing to discuss rotation “simultaneously”
as claimed); id. at 25 (in section VI.A.1(g), citing, without further explanation,
where Epley and Okamoto allegedly disclose “continuous rotation” for both the
pitch and yaw axes but failing to discuss rotation “simultaneously” as claimed).
The Petition fails to provide adequate explanation as to where rotation about the
pitch and yaw axes “simultaneously” is disclosed in Okamoto or Epley and does
not provide adequate analysis showing why rotation “simultaneously” about each
axis would have been obvious to one having ordinary skill in the art at the time of
the invention in light of the teachings of Okamoto and Epley. See also Pet. 18‒23
(general discussion of Okamoto and Epley failing to address adequately
simultaneous rotation of pitch and yaw axes).
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With respect to the third asserted ground of unpatentability of claims 1, 2,
and 4‒11 under 35 U.S.C. § 103(a) as unpatentable over Epley and Newman, the
Petition fails to point to adequate evidence showing where either Epley or
Newman discloses rotation about each axis simultaneously. Pet. 40 (discussing in
section VI.C.1(d) where Epley and Newman allegedly disclose independent
rotation of the pitch and yaw axes, but failing to discuss rotation “simultaneously”
as claimed); id. (in section VI.C.1(g), citing, without further explanation, where
Epley allegedly discloses “continuous rotation” for both the pitch and yaw axes,
but failing to discuss rotation “simultaneously” as claimed). The Petition does not
provide adequate explanation as to where rotation “simultaneously” about the pitch
and yaw axes is disclosed in Epley or Newman and does not provide adequate
analysis showing why rotation “simultaneously” about each axis would have been
obvious to one having ordinary skill in the art at the time of the invention in light
of the teachings of Epley and Newman. See also Pet. 35‒38 (general discussion of
Epley and Newman failing to address simultaneous rotation of pitch and yaw
axes).
2. Petitioner’s Reading of “continuously” and
“continuous rotation” on the Prior Art
With respect to the first asserted ground of unpatentability of claims 1, 2,
and 4‒11 under 35 U.S.C. § 103(a) as unpatentable over Okamoto and Epley, in
the discussion of Okamoto, the Petitioner asserts that first driving device 28 can
“continuously rotate the cockpit 27 360° around the pitch axis Y” and second
driving device 30 can “continuously rotate the cockpit 27 360° around the yaw
axis Z.” Pet. 18 (citing Ex. 1002, 10:10‒11:14, 12:13‒24, 13:7‒8; Figs. 1 and 3‒
4); id. at 25, 29 (citing Ex. 1002, 13:7‒9).
Okamoto discloses that “θz and θy [the angles of rotation about the pitch
axis and yaw axis, respectively] are possible for continuous rotation; in general,
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when used within ± 180°, the necessary movement can be sufficiently obtained,
and high-speed movement is possible.” Ex. 1002, 13:7‒9. Without more
explanation in the Petition of the understanding of one of ordinary skill in the art as
to this cited disclosure in Okamoto, the bare reference in Okamoto to “continuous
rotation” is not sufficient evidence of the ability of Okamoto’s system to rotate a
subject an unlimited number of times through more than 360 degrees of rotation
around each axis. Further, Okamoto describes, in the same sentence, that rotation
within ±180° provides sufficient movement. This implies that a single rotation
might be sufficient in the system of Okamoto. We reviewed the other cited
passages of Okamoto relied on in the Petition, and did not find adequate disclosure
of a device that is configured to allow an unlimited number of rotations or rotation
through more than 360°. Id. at 10:10‒11:14, 12:13‒24.
In the discussion of Epley, the Petitioner asserts that “[t]he maneuvering
device 18 can ‘take any one of a number of different forms’ including a two-axis
device capable of continuously rotating a subject through 360° around each axis.”
Pet. 19 (citing Ex. 1003, 9:59‒62, 6:66‒7:7, 10:20‒31); id. at 25, 29 (citing
Ex. 1003, 7:1–3, 8:30–37). Epley discloses that “for optimum positional testing
and particular repositioning strategy, it would be very advantageous to have an
automated system capable of positioning subjects through 360° in all three degrees
of angular freedom (pitch, roll and yaw).” Ex. 1003, 6:66‒7:3. Epley further
discloses that “a subject can be positioned through 360-degrees in any angle of the
roll, yaw or pitch planes of the subject relative to the linear track and the direction
of oscillation, thus providing a manner to test the otolithic organ through any plane
of its functionality.” Id. at 8:32‒37.
Although these cited passages of Epley disclose the ability of the system to
allow for rotation of a subject through 360° of rotation in any plane, it is not
adequate evidence of the ability of Epley’s system to rotate the subject an
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unlimited number of times through more than 360 degrees of rotation around each
axis. We reviewed the other cited passages of Epley relied on in the Petition, and
did not find adequate disclosure of an unlimited number of rotations or rotation
through more than 360°. Ex. 1003, 9:59‒62, 10:20‒31.
With respect to the third asserted ground of unpatentability of claims 1, 2,
and 4‒11 under 35 U.S.C. § 103(a) as unpatentable over Epley and Newman, the
Petitioner makes no assertion that Newman discloses continuous rotation through
more than 360° around each axis of rotation. Pet. 35‒38, 43‒45. As to Epley, the
Petitioner makes the same assertions as to the disclosure of Epley as relied on in
the first asserted ground. Id. at 35, 40, 44. For the reasons provided above in the
analysis of the first asserted ground, we do not find sufficient evidence presented
in the petition of a disclosure in Epley of a device capable of an unlimited number
of rotations through more than 360°.
The remaining challenges, asserting unpatentability of dependent claims 2,
4–8, 10, and 11 under the first and third asserted grounds and asserting
unpatentability of dependent claim 3 under the second and fourth asserted grounds,
are based on the same inadequate showings as to the unpatentability of
independent claims 1 and 9 over the disclosures of Okamoto, Epley, and Newman
discussed above.
III. CONCLUSION
On the record before us, Petitioner has not demonstrated a reasonable
likelihood of prevailing on the assertions that the combined teachings of Okamoto
and Epley and the combined teachings of Epley and Newman render unpatentable
claims 1, 2, and 4‒11 and that the combined teachings of Okamoto, Epley, and
Graybiel and the combined teachings of Epley, Newman, and Graybiel render
unpatentable claim 3.
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IV. ORDER
In view of the foregoing, it is hereby:
ORDERED that no inter partes review of the ’631 patent is instituted and
that all grounds set forth in the Petition challenging the ’631 patent are denied.

PETITIONER:

Joshua Randall
Scott Nielson
HOLLAND & HART, LLP
jnrandall@hollandhart.com
scnielson@hollandhart.com

PATENT OWNER:

Timothy Worrall
Alyssa K. Sandrowitz
Michael P. Dulin
POLSINELLI PC
tworrall@polsinelli.com
asandrowitz@polsinelli.com

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
CASE NO.............................................................................................................TBD
U.S. PATENT NO .......................................................................................8,702,631
PATENT ISSUE DATE ......................................................................... 22 Apr 2014
PATENT FILING DATE .......................................................................26 Nov 2008
FIRST NAMED INVENTOR................................................................ Kevin Maher
TITLE.............................................. “Vestibular Stimulation Systems and Methods”

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PETITION FOR INTER PARTES REVIEW
OF U.S. PATENT NO. 8,702,631
2

Table of Contents
I. INTRODUCTION ............................................................................................ 6
II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW ........ 6
A. Grounds for Standing (37 C.F.R. § 42.104(a)) ...................................... 6
B. Notice of Real Party in Interest (37 C.F.R. § 42.8(b)(1)) ..................... 6
C. Notice of Related Matters (37 C.F.R. § 42.8(b)(2)) .............................. 6
D. Notice of Lead and Backup Counsel and Service Information (37
C.F.R. § 42.8(b)(3) and 42.8(b)(4)) ....................................................... 7
E. Payment of Fees (37 C.F.R. §§ 42.15(a)) .............................................. 7
F. Proof of Service ...................................................................................... 7
G. Identification of Claims Being Challenged (37 C.F.R. § 42.104(b)) .... 7
III. BACKGROUND AND OVERVIEW OF THE ’631 PATENT ..................... 8
A. Content of the ’631 Patent ..................................................................... 8
B. Prosecution History of the ’631 Patent ................................................ 10
IV. PERSON HAVING ORDINARY SKILL IN THE ART ............................. 11
V. CLAIM CONSTRUCTION ........................................................................... 12
A. Applicable Law .................................................................................... 12
B. Broadest Reasonable Construction of Claim Terms ........................... 12
1. “dose of vestibular stimulation”. ............................................... 12
2. “a pitch axis of rotation directly inside a yaw axis of
rotation” ..................................................................................... 13
3. “a measurable and repeatable pattern” ...................................... 14
4. “continuous rotation” ................................................................. 14
5. “independently and simultaneously” ......................................... 15
6. “independently and continuously” ............................................ 15
7. “measuring the vestibular stimulation” ..................................... 16
8. “chaotic pattern or regular repeating pattern” ........................... 17
3

VI. DETAILED EXPLANATION OF THE GROUNDS FOR
UNPATENTABILITY ................................................................................... 17
A. Ground 1: Claims 1-2 and 4-11 Are Obvious Over Okamoto in
View of Epley ....................................................................................... 17
1. Claim 1 ...................................................................................... 23
2. Claim 2 ...................................................................................... 26
3. Claim 4 ...................................................................................... 26
4. Claim 5 ...................................................................................... 26
5. Claim 6 ...................................................................................... 27
6. Claim 7 ...................................................................................... 27
7. Claim 8 ...................................................................................... 28
8. Claim 9 ...................................................................................... 28
9. Claim 10 ..................................................................................... 30
10. Claim 11 ..................................................................................... 30
B. Ground 2: Claim 3 Is Obvious Over Okamoto in View of Epley
and Graybiel ......................................................................................... 31
1. Claim 3 ...................................................................................... 34
C. Ground 3: Claims 1-2 and 4-11 Are Obvious Over Epley in View
of Newman ........................................................................................... 35
1. Claim 1 ...................................................................................... 39
2. Claim 2 ...................................................................................... 41
3. Claim 4 ...................................................................................... 41
4. Claim 5 ...................................................................................... 42
5. Claim 6 ...................................................................................... 42
6. Claim 7 ...................................................................................... 42
7. Claim 8 ...................................................................................... 43
8. Claim 9 ...................................................................................... 43
9. Claim 10 ..................................................................................... 45
4

10. Claim 11 ..................................................................................... 45
D. Ground 4: Claim 3 Is Obvious Over Epley in View of Newman
and Graybiel ......................................................................................... 46
1. Claim 3 ...................................................................................... 49
VII. CONCLUSION ............................................................................................... 49
5

Table of Exhibits

Exhibit Reference
1001 U.S. Patent No. 8,702,631
1002 Japanese Patent No. H07-60290B2 (Okamoto)
1003 U.S. Patent No. 6,800,062 (Epley)
1004 U.S. Patent No. 4,710,129 (Newman)

1005
Ashton Graybiel, Prevention of Motion Sickness in the Slow Rotation
Room by Incremental Increases in Strength of Stimulus, Fourth
Symposium on the Role of the Vestibular Organs in Space Exploration,
National Academy of Sciences, p. 109-115 (1970) (8 pp.) (Graybiel)
1006 File History of U.S. Patent No. 8,702,631
6

I. INTRODUCTION
Petitioner Brain Synergy Institute, LLC requests inter partes review of
claims 1-11 of U.S. Patent No. 8,702,631 (the ’631 patent) assigned to Ultrathera
Technologies, Inc.
II. REQUIREMENTS FOR PETITION FOR INTER PARTES REVIEW
A. Grounds for Standing (37 C.F.R. § 42.104(a))
Petitioner certifies that the ’631 patent is available for inter partes review
and Petitioner is not barred or estopped from requesting inter partes review
challenging the claims on the grounds identified in this Petition.
B. Notice of Real Party in Interest (37 C.F.R. § 42.8(b)(1))
The real party in interest is Brain Synergy Institute, LLC.

C. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
Petitioner has sued the patent owner for infringing claims 2-6, 8-10, 13-16 of

U.S. Patent No. 6,800,062 (the Epley reference) in Brain Synergy Institute, LLC v.
Ultrathera Technologies, Inc., Case No. 13-cv-01471, pending in the United States
District Court for the District of Colorado (“the Colorado litigation”).
According to Patent Office records, pending U.S. patent application
13/957,226 claims priority to the ’631 patent and thus may be affected by these
proceedings.
7

D. Notice of Lead and Backup Counsel and Service Information
(37 C.F.R. § 42.8(b)(3) and 42.8(b)(4))

Lead Counsel Back-Up Counsel
Joshua Randall (Reg. No. 50,719)
Holland & Hart, LLP
222 South Main, Suited 2200
Salt Lake City, UT 84101
Telephone: (801) 799-5841
Fax: (801) 799-5700
jnrandall@hollandhart.com
Scott Nielson (Reg. No. 50,755)
Holland & Hart, LLP
222 South Main, Suited 2200
Salt Lake City, UT 84101
Telephone: (801) 660-4400
Fax: (801) 799-5700
scnielson@hollandhart.com

E. Payment of Fees (37 C.F.R. §§ 42.15(a))
The Director is authorized to charge the fees specified in 37 C.F.R. §
42.15(a) to Deposit Account No. 08-2623.
F. Proof of Service
Proof of service of this Petition on the patent owner at the correspondence
address of record for the ’631 patent as well as the patent owner’s counsel of
record in the Colorado litigation is attached.
G. Identification of Claims Being Challenged (37 C.F.R. § 42.104(b))
Petitioner requests claims 1-11 of the ’631 patent be found unpatentable and
canceled in view of the following prior art. Each of these references is a patent or
publication issued/published more than one year before the earliest claimed filing
date of the ’631 patent and is therefore prior art under 35 U.S.C. § 102(b) (pre-
AIA). An English translation of the Okamoto reference is included along with an
affidavit attesting to the accuracy of the translation. Petitioner has annotated the
Okamoto reference to include line numbers (in red font) that are not in the original.
8

Exhibit

Reference

Pub. Date
Of record
in ’631
Patent
1002 Japanese Patent No. H07-60290B2 (Okamoto) 28 Jun 1995 No
1003 U.S. Patent No. 6,800,062 (Epley) 5 Oct 2004 Yes
1004 U.S. Patent No. 4,710,129 (Newman) 1 Dec 1987 No

1005
Ashton Graybiel, Prevention of Motion Sickness
in the Slow Rotation Room by Incremental
Increases in Strength of Stimulus, Fourth
Symposium on the Role of the Vestibular
Organs in Space Exploration, National
Academy of Sciences, p. 109-115 (1970) (8
pp.) (Graybiel)

1970

No

Specifically, as discussed in detail below, Petitioner requests cancellation on the
following grounds:
Ground Claims Description
1 1-2 and 4-11 Obvious over Okamoto in view of Epley
3 3 Obvious over Okamoto in view of Epley and Graybiel
2 1-2 and 4-11 Obvious over Epley in view of Newman
4 3 Obvious over Epley in view of Newman and Graybiel

III. BACKGROUND AND OVERVIEW OF THE ’631 PATENT
A. Content of the ’631 Patent
The ’631 patent is directed to systems and methods for vestibular stimulation
in humans. The vestibular system is located in the inner ear and includes three
semi-circular canals and five sense organs. ’631 patent 3:62-65; Figs. 6A-6B. The
vestibular system is used to maintain balance by monitoring motion of the head
and stabilizing the eyes relative to the environment. Id. 1:18-21.
9

The ’631 patent discloses using a computer controlled multi-axis rotational
motion device to stimulate the vestibular system of a subject. Id. 3:20-26. The
device can rotate a subject around one, two, or three rotational axes individually or
simultaneously in a controlled manner. Id. 2:21-23. A computer system controls the
movement of the device and collects and stores data. Id. 2:23-24. The computer
system can independently vary the intensity of acceleration, frequency of
acceleration, and duration of movement of the subject. Id. 2:34-37.
The ’631 patent discloses two embodiments of vestibular stimulation
devices: a two dimensional device that rotates around the pitch and yaw axes and a
three dimensional device that rotates around the pitch, yaw, and roll axes. Id. 5:2-4.
The two dimensional device is described in greater detail because it is the
embodiment covered by the claims. The claims do not cover the three dimensional
device.
The two dimensional device rotates 360 degrees around the pitch and yaw
axes. Id. 5:5-10, 16-18. The rotation around each axis can be continuous and
independent of the other axis. Id. An annotated copy of Fig. 1 from the ’631 is
reproduced below to show the two dimensional device and the pitch and yaw axes.
10

The relationship of the pitch and yaw axes to each other is not explicitly
described in the ’631 patent, but is shown in Fig. 1. The yaw axis 106 is the
outermost axis because it is mechanically connected to the base 110 without going
through the pitch axis 104. The pitch axis 104 is inside the yaw axis 106 because it
is mechanically connected to the base 110 through the yaw axis 106 – i.e., the pitch
shaft 118 is connected to the U-shaped frame 120 which is connected to the yaw
shaft 112 which is connected to the base 110. The pitch axis 104 is directly inside
the yaw axis 106 because it is mechanically connected to the yaw axis 106 without
going through an intervening axis of rotation such as a roll axis.
B. Prosecution History of the ’631 Patent
The patent owner originally filed claims that broadly cover vestibular
stimulation using one, two, or three axis rotation devices. Ex. 1006, pp. 278-285,
11

Preliminary Amendment, 26 May 2010. The examiner rejected the claims as being
anticipated by or obvious in view of Epley and/or U.S. Patent No. 4,710,128
(Wachsmuth).
Over the course of prosecution, the patent owner amended the claims until
only two independent claims (and associated dependent claims) remained and they
were limited to a two axis rotation device having a pitch axis directly inside a yaw
axis and no roll axis. Id. pp. 93-97, Amendment, 24 Sep 2013; Id. p. 26, Notice of
Allowance, 24 Feb 2014 (Examiner’s Amendment).
The examiner noted in the Reason for Allowance section that the claims
were allowed because none of the cited prior art discloses “a two axis rotational
device comprising a pitch axis of rotation directly inside a yaw axis of rotation
with the proviso that the device does not comprise a roll axis of rotation.” Id. pp.
26-27, Notice of Allowance, 24 Feb 2014. The examiner also noted that Epley is
the closest prior art and otherwise satisfies the remainder of the limitations in the
allowed claims. Id.
IV. PERSON HAVING ORDINARY SKILL IN THE ART
The ’631 patent describes the invention as relating to vestibular stimulation.
’631 patent 1:34-36. Petitioner submits that one of skill in the art in this field
would have at least a degree in a field related to human physiology plus practical
experience with vestibular stimulation.
12

V. CLAIM CONSTRUCTION
A. Applicable Law
A claim subject to inter partes review “shall be given its broadest reasonable
construction in light of the specification of the patent in which it appears.” 37
C.F.R. § 42.104(b). To the extent there is any ambiguity regarding the “broadest
reasonable construction” of a term, the ambiguity should be resolved in favor of
the broadest construction absent amendment by the patent owner. Final Rules, 77
Fed. Reg. at 48699.
B. Broadest Reasonable Construction of Claim Terms
The terms in the claims that require construction are shown below.

1. “dose of vestibular stimulation”
Claim 1 recites administering a “dose of vestibular stimulation.” This should
be interpreted to mean a defined combination of one or more of the following
variables: (a) the rate of acceleration around the pitch, roll, and/or yaw axes, (b)
number of accelerations, (c) duration of accelerations, (d) frequency of changes in
accelerations, (e) the velocity around the pitch, roll, and/or yaw axes, (f) number of
starts and stops, (g) pause time, (h) rotation direction, (i) changes in rotation
direction, (j) single or multi-axis rotation, (k) duration of the total profile, and the
like.
13

The ‘631 patent describes a dose of vestibular stimulation as a “defined
combination of one or more variables as discussed herein.” ’631 patent 12:11-12. It
then goes on to list the variables in the previous paragraph. Id. 11:47-12:19.
2. “a pitch axis of rotation directly inside a yaw axis of
rotation”
Independent claims 1 and 9 recite a two-axis rotational device having “a
pitch axis of rotation directly inside a yaw axis of rotation.” This should be
interpreted to mean that the rotational device is mechanically structured so that the
yaw axis is between the pitch axis and the mounting base and there is no
intervening axis of rotation between the pitch axis and the yaw axis.
The ’631 patent does not describe the relationship of the two axes to each
other beyond what is shown in Fig. 1. Referring to Fig. 1, reproduced above, the
pitch axis 104 is inside the yaw axis 106 because it is mechanically connected to
the base 110 through the yaw axis 106 – e.g., the pitch shaft 118 is connected to
the U-shaped frame 120 which is connected to the yaw shaft 112 which is
connected to the base 110. The pitch axis 104 is directly inside the yaw axis 106
because it is mechanically connected to the yaw axis 106 without the presence of
an intervening axis of rotation.
The patent owner confirmed this interpretation during prosecution as shown
by the following statement included in an interview summary: “Applicant clarified
that ‘a pitch axis of rotation directly inside a yaw axis of rotation’ was interpreted
14

to define the pitch axis connected to the yaw axis without an intervening roll axis.”
Ex. 1006, p. 74, Applicant-Initiated Interview Summary, 24 Sep 2013.
3. “a measurable and repeatable pattern”
Independent claims 1 and 9 recite that the rotational device provides “a
measurable and repeatable pattern” of acceleration intensity, acceleration
frequency, and velocity (only claim 9 recites velocity). This should be interpreted
to mean a pattern that is capable of being measured and repeated.
With regard to the term “measurable,” the ’631 patent explains that the
computer system can measure various variables associated with the rotational
device including the angle of the axes, direction of rotation, acceleration rate,
velocity, duration, and the like. ’631 patent 11:15-17; 17:4-10. Thus, the pattern is
measurable if the same or similar variables are capable of being measured.
With regard to the term “repeatable,” the ’631 patent explains that the
computer system can be used to precisely repeat a pattern of acceleration intensity,
acceleration frequency, etc. Id. 14:8-17. Thus, the pattern is repeatable if it is
capable of being replicated or reproduced.
4. “continuous rotation”
Independent claims 1 and 9 recite that the rotational device allows
“continuous rotation” through more than 360 degrees of rotation. This should be
interpreted to mean an unlimited number of rotations with or without stopping.
15

The ’631 patent explains that continuous rotation refers to the ability of the
rotational device to rotate around an axis an unlimited number of times. ’631
patent 5:37-40, 58-60; 6:55-58; 7:13-16, 29-32; 12:1-3. For example, the ’631
patent states that the rotational device “can rotate through all 360 degrees in each
axis in a controlled and continuous (i.e., unlimited rotations) amount.” Id. 12:1-3.
There is no indication that “continuous rotation” means that the rotational
device must rotate continually without stopping. The ’631 patent is largely silent
on this point. However, it implies that “continuous rotation” includes “starts and
stops” when it describes a dose of vestibular stimulation as including “starts and
stops.” Id. 11:50-54.
5. “independently and simultaneously”
Independent claim 1 recites that the pitch and yaw axes rotate
“independently and simultaneously.” This should be interpreted to mean that the
variables associated with pitch and yaw axes – e.g., acceleration, deceleration,
velocity, etc. – are separately controlled and the axes can rotate at the same time.
’631 patent 5:5-7; 6:3-7; 13:24-27.
6. “independently and continuously”
Independent claim 9 recites that the pitch and yaw axes operate
“independently and continuously.” This should be interpreted to mean that the
variables associated with the pitch and yaw axes – e.g., acceleration, deceleration,
16

velocity, etc. – can be separately controlled and the axes can rotate an unlimited
number of times.
The interpretation of this phrase is a combination of the terms
“independently” and “continuously” both of which were construed in the previous
two sections.
7. “measuring the vestibular stimulation”
Independent claim 1 recites “measuring the vestibular stimulation” applied
to the subject by the computer system. This should be interpreted to mean
recording input variables to the rotational device and/or recording physiological
information about the subject.
The ’631 patent describes measuring vestibular stimulation in two ways.

First, by quantifying and recording the input variables such as: (a) the rate of
acceleration around the pitch, roll, and/or yaw axes, (b) number of accelerations,
(c) duration of accelerations, (d) frequency of changes in accelerations, (e) the
velocity around the pitch, roll, and/or yaw axes, (f) number of starts and stops, (g)
pause time, (h) rotation direction, (i) changes in rotation direction, (j) single or
multi-axis rotation, (k) duration of the total profile, and the like. ’631 patent 11:47-
12:19. Second, by collecting, displaying, and recording physiological information
about the subject. Id. 2:25-27; 3:41-48; 11:18-19, 36-41; 14:51-57; 20:3-19.
17

8. “chaotic pattern or regular repeating pattern”
Dependent claim 2 recites that the pattern of acceleration is a “chaotic
pattern or regular repeating pattern.” The term “chaotic pattern” should be
interpreted to mean a series of unpredictable and arrhythmic changes in the
frequency and/or intensity of acceleration. ’631 patent 13:31-33; Figs. 7 and 9. The
term “regular repeating pattern” should be interpreted to mean a series of
predictable and rhythmic changes in the frequency and/or intensity of acceleration.
Id. 13:57-62; Figs. 8, 10-11.
VI. DETAILED EXPLANATION OF THE GROUNDS FOR
UNPATENTABILITY
The claims cover use of a two-axis rotational device having a pitch axis
positioned directly inside a yaw axis and no roll axis to provide vestibular
stimulation to a human subject. The only reason the Patent Office allowed the
claims was because it could not find a similar two-axis rotational device in the
prior art. However, as shown below, such devices are known and it would be
obvious to use them to provide vestibular stimulation.
A. Ground 1: Claims 1-2 and 4-11 Are Obvious Over Okamoto in
View of Epley
Okamoto was not of record during prosecution of the ’631 patent. Epley was
considered but not in combination with Okamoto. All references to Okamoto are to
the English translation included as Exhibit 1002.
18

Okamoto discloses a motion simulator including a cockpit 27 rotatably
mounted to a U-shaped frame 29 that is rotatably mounted to a fixed frame 31.
Okamoto 12:11-20; Figs. 3-4. Annotated copies of Figs. 3-4 are reproduced below
to show the motion simulator. The X axis is the roll axis, the Y axis is the pitch
axis, and the Z axis is the yaw axis. Id. 12:7-10.

In Figs. 3-4, the first driving device 28 is an electric motor that can
continuously rotate the cockpit 27 360° around the pitch axis Y. Id. 12:13-17; 13:7-
8; Figs. 3-4. The second driving device 30 includes an electric motor 104 that can
continuously rotate the cockpit 27 360° around the yaw axis Z. Id. 12:17-24;
10:10-11:14; 13:7-8; Fig. 1. The cockpit 27 does not rotate around the roll axis X.

The second driving device 30 is the device shown in Fig. 1 of Okamoto. It
can move the cockpit 27 linearly along the X, Y, and Z axes as well as rotate it
19

around the yaw axis Z. Id. 12:17-20; 10:10-11:14; Fig. 1. For example, the second
driving device 30 can move the cockpit 27 side to side in the X and Y directions
using the eccentric rotors 3, 4 and the motors 101, 102. Id. It can also move the
cockpit 27 up and down in the Z direction using the screw rod 6 and motor 103. Id.
The motion simulator has the pitch axis Y directly inside the yaw axis Z.
The yaw axis Z of the second driving device 30 is the output axis 9 shown in Fig.
1. Id. 12:17-20; 10:21-22; 11:2, 9-10. The output axis 9 is attached to the underside
of the U-shaped frame 29. Id. The next axis connected to the yaw axis Z is the pitch
axis Y. There is no intervening axis.
The motion simulator is used in medical applications to stimulate and
measure bodily sensations. Id. 17:7-10. Okamoto fails to explicitly disclose using a
computer system to control the motion simulator.
Epley discloses an automated, computer controlled system for vestibular
stimulation. Epley, abstract. The system includes vestibular stimulation algorithms
21 stored in a computer 20 that controls a spatial maneuvering device 18. Id. 9:29-
59; 10:47-57. The maneuvering device 18 can “take any one of a number of
different forms” including a two-axis device capable of continuously rotating a
subject through 360° around each axis. Id. 9:59-62; 6:66-7:7; 10:20-31. An
annotated copy of Fig. 1 in Epley is reproduced below to show the various
components of the system.
20

It would have been obvious to use the computer system in Epley to control
the motion simulator in Okamoto because doing so constitutes nothing more than
combining prior art elements according to known methods to yield predictable
results. MPEP 2143(I)(A). This rationale is supported by the following findings. Id.
First, Okamoto and Epley disclose all of the claimed subject matter with the only
difference being the lack of an actual combination of Okamoto and Epley into a
single reference (see the claim-by-claim analysis below). Second, one of skill in the
art could have combined the motion simulator in Okamoto with the computer
21

system in Epley using known methods for controlling mechanical devices with a
computer system. Third, the motion simulator in Okamoto and the computer system
in Epley perform the same functions when combined as they do separately. In
both situations, the motion simulator in Okamoto functions as the mechanical
device that holds a subject and enables the subject to move in three-dimensional
space and the computer functions to control the mechanical device. Fourth, one of
skill in the art would have recognized that the result of the combination is
predictable – i.e., the computer system controls the motion simulator in the manner
disclosed in Epley.
It also would have been obvious to use the computer system in Epley to
control the motion simulator in Okamoto because doing so constitutes nothing
more than using a known technique (i.e., the computer system in Epley) to improve
a similar device in the same way (i.e., the motion simulator in Okamoto and the
spatial maneuvering device in Epley are similar devices). MPEP 2143(I)(C). This
rationale is supported by the following findings. Id. First, the motion simulator in
Okamoto is a base device upon which the claimed invention can be seen as an
improvement. The improvement is the use of a computer system to control
movement of the motion simulator. Second, the spatial maneuvering device in
Epley is comparable to the motion simulator in Okamoto and has been improved in
the same way as the claimed invention (i.e., by being controlled by a computer
22

system). Third, one of skill in the art could have applied the known improvement
technique in Epley (i.e., the computer system) to the motion simulator in Okamoto
with predictable results (i.e., the computer system controls the motion simulator in
the manner disclosed in Epley).
It also would have been obvious to use the computer system in Epley to
control the motion simulator in Okamoto because doing so constitutes nothing
more than applying a known technique (i.e., the computer system in Epley) to a
known device (i.e., the motion simulator in Okamoto) ready for improvement to
yield predictable results. MPEP 2143(I)(D). This rationale is supported by the
following findings. Id. First, the motion simulator in Okamoto is a base device
upon which the claimed invention can be seen as an improvement. The
improvement is the use of a computer system to control movement of the motion
simulator. Second, Epley discloses a known technique that is applicable to the
motion simulator in Okamoto (i.e., using a computer to control the device). Third,
one of ordinary skill in the art would have recognized that applying the known
technique (i.e., using a computer to control the device) to the motion simulator in
Okamoto would yield the predictable result of an improved motion simulator
controlled in the manner disclosed in Epley.
It also would have been obvious to use the computer system in Epley to
control the motion simulator in Okamoto because doing so provides the motion
23

simulator in Okamoto with a comprehensive, automated, programmed method of
testing and treating a subject’s vestibular system as taught by Epley. Epley 3:22-
27; 7:40-46; MPEP 2143(I)(G). One of ordinary skill in the art would reasonably
expect to be successful using the computer system in Epley to control the motion
simulator in Okamoto because the computer system in Epley is already used to
control a similar spatial maneuvering device.
A detailed explanation of how the combined references satisfy the claim
limitations is given below.
1. Claim 1
(a) “A method of administering a dose of vestibular stimulation to a
subject, comprising:”
Epley discloses methods for creating “vestibular activity which [are] directly
related to spatial motion (including acceleration) and/or orientation.” Epley
abstract; 1:40-45. This includes administering a quantifiable measure of applied
stimuli using a computer to automate the process and measure parameters such as
acceleration and velocity. Id. 3:16-49; 11:19-32.
(b) “administering to a subject in a two-axis rotational device a dose
of vestibular stimulation,”
(c) “wherein said two-axis rotational device comprises a pitch axis of
rotation directly inside a yaw axis of rotation, with the proviso
that the device does not comprise a roll axis of rotation,”
24

See the discussion of limitation (a) above for a description of how Epley
administers a dose of vestibular stimulation. Epley discloses administering the dose
using a maneuvering device having two axes. Epley 9:59-62.
Okamoto discloses using a two-axis motion simulator to stimulate and
measure bodily sensations in medical related applications. Okamoto 12:7-10, 13-
17; 17:7-10; Figs. 3-4. Okamoto discloses that the motion simulator has the pitch
axis Y directly inside the yaw axis Z and does not include a roll axis of rotation. Id.
12:7-10, 13-17, 22-24; Figs. 3-4. The pitch axis Y is directly inside the yaw axis Z
because the motion simulator is structured so that the yaw axis Z is between the
pitch axis Y and the fixed frame 31 and there is no intervening rotation axis
between the pitch axis Y and the yaw axis Z. The above description of Okamoto
explains this in greater detail.
(d) “the rotation of each said pitch and yaw axis is independent of
the other axis of rotation,”
Epley discloses that the maneuvering device can position a subject through
360° in any angle of the pitch and yaw axes thereby making it inherent that the
pitch and yaw axes rotate independently of each other. Epley 7:1-3; 8:30-37.
Okamoto discloses using separate motors 28, 104 to rotate the pitch and yaw
axes independently of each other. Okamoto 12:13-17; 11:2; Figs 1, 3-4.
(e) “the rotation velocity and acceleration around each said pitch and
yaw axis controlled by a computer system,”
25

Epley discloses using a computer system to control the velocity and
acceleration around the pitch and yaw axes. Epley 1:28-32; 8:63-67; 10:1-7, 56-67;
11:19-32; 13:5-39.

(f) “and said dose comprises a measurable and repeatable pattern of
acceleration intensity and frequency around said pitch axis of
rotation for a first duration and said yaw axis of rotation for a
second duration,”
Epley discloses automating movement around the axes according to a
preprogrammed, repeatable pattern having segments of various durations. Epley
1:28-32; 3:16-49; 7:47-64; 8:63-67; 10:1-7, 56-67; 11:19-32.
(g) “said rotational device configured to allow continuous rotation
through more than 360 degrees around each said axis of rotation
independently and simultaneously; and”
Epley discloses that the maneuvering device can rotate continuously through
360° for both the pitch and yaw axes. Epley 7:1-3; 8:30-37. Okamoto discloses the
same for the motion simulator. Okamoto 13:7-9. See the discussion of limitation
(d) above for a description of how Epley and Okamoto satisfy the requirement that
the rotation is independent.
(h) “measuring the vestibular stimulation applied to said subject by
said computer system.”
Epley discloses measuring the vestibular stimulation applied to the subject.

Epley 3:10-49; 7:40-46; 8:45-56; 14:4-8.
26

2. Claim 2
(a) “A method according to claim 1, wherein said pattern of
acceleration is a chaotic pattern or regular repeating pattern
around at least one of said axes of rotation.”
Epley discloses a chaotic pattern of acceleration in the form of impulsive or
ramp movements that include “rapid, unexpected, passive acceleration and/or
deceleration.” Epley 23:61-24:32.
Epley discloses a regular repeating pattern of acceleration as part of the
canalith repositioning procedure. Id. 26:15-28:11. The subject is maneuvered
through three positions using a regular pattern of acceleration. Id. At each position,
the nystagmus response is measured and if a #1 nystagmus response is detected, the
process is repeated. Id 27:61-63. The result is a regular repeating pattern of
acceleration.
3. Claim 4
(a) “A method of improving sensory integration in a subject,
comprising administering vestibular stimulation to the subject
according to claim 1, wherein the subject has a disorder or
condition selected from balance disorder, cerebral palsy, Down
Syndrome, autism, traumatic brain injury, and stroke.”
Epley discloses treating subjects who have dizziness, vertigo, and balance
problems. Epley 1:6-14.
4. Claim 5
(a) “A method according to claim 1, wherein the vestibular
stimulation is controlled by the subject.”
27

Epley discloses that the vestibular stimulation can be controlled by the
subject. Epley 1:28-32; 7:48-51; 10:1-5, 47-55; 12:52-62.
5. Claim 6
(a) “A method of claim 1, wherein the dose of vestibular stimulation
comprises one or more inversions of the subject relative to the
ground.”
Epley discloses inverting the subject relative to the ground. Epley 8:10-20;
10:9-19; Fig. 3. Epley discloses inverting the subject as part of the benign
paroxysmal positional vertigo procedure and the canalith repositioning procedure.
Id. 25:28-28:11. Specifically, Epley describes rotating the subject backward 120°
around the pitch axis as part of both procedures, which is sufficient to invert the
subject. Id. 25:33-38; 26:61-65.
6. Claim 7
(a) “The method of claim 6, wherein the dose of vestibular
stimulation is administered by altering one or more properties
selected from the group consisting of the rate of rotation, degree
of inverted position, time at said inverted position, number of
inversions, length of time at non-inverted positions, and total
duration of time in the rotational device.”
Epley discloses administering the vestibular stimulation by altering the rate
of rotation (i.e., acceleration), degree of inverted position, time at the inverted
position, number of inversions, length of time at non-inverted positions, and the
total duration of time in the rotational device as part of the benign paroxysmal
positional vertigo procedure and the canalith repositioning procedure. Epley 25:28-
28

28:11. Epley alters all of these parameters as part of performing these procedures.
Id.
7. Claim 8
(a) “The method of claim 1, wherein the mass of the subject is rotated
about the center of rotation of the pitch axis of rotation and the
yaw axis of rotation.”
Epley discloses the subject seated so that the mass of the subject rotates
about the center of rotation of the pitch axis and the yaw axis. Epley 10:8-17; Fig.
2. Okamoto discloses the same configuration. Okamoto 12:5-10; Figs. 3-6 (Figs. 5-
6 in Okamoto show the subject relative to the X, Y, and Z axes).
8. Claim 9
(a) “A system for administering vestibular stimulation to a subject
comprising:”
Epley discloses a comprehensive system including a maneuvering device
used to “create vestibular activity which is directly related to spatial motion
(including acceleration) and/or orientation.” Epley abstract; 1:40-45.
(b) “a two-axis rotational device configured to rotate a subject
around a pitch axis of rotation directly inside a yaw axis of
rotation, with the proviso that the device is not configured to
rotate a subject around a roll axis of rotation,”
Epley discloses a maneuvering device having two axes. Epley 9:59-62.

Okamoto discloses using a two-axis motion simulator to stimulate and
measure bodily sensations in medical related applications. Okamoto 12:7-10, 13-
17; 17:7-10; Figs. 3-4. Okamoto discloses that the motion simulator has the pitch
29

axis Y directly inside the yaw axis Z and does not include a roll axis of rotation. Id.
12:7-10, 13-17, 22-24; Figs. 3-4. The pitch axis Y is directly inside the yaw axis Z
because the motion simulator is structured so that the yaw axis Z is between the
pitch axis Y and the fixed frame 31 and there is no intervening rotation axis
between the pitch axis Y and the yaw axis Z. The above description of Okamoto
explains this in greater detail.
(c) “each said axis operating independently and continuously from
the other axis and configured to allow continuous rotation
through more than 360 degrees of rotation around each said
axis;”
Epley and Okamoto both disclose that the axes operate independently. Epley
discloses that the maneuvering device can position a subject through 360° in any
angle of the pitch and yaw axes thereby making it inherent that the pitch and yaw
axes rotate independently of each other. Epley 7:1-3; 8:30-37. Okamoto discloses
using separate motors 28, 104 to rotate the pitch and yaw axes independently of
each other. Okamoto 12:13-17; 11:2; Figs 1, 3-4.
Epley and Okamoto both disclose that the respective maneuvering device
and motion simulator can rotate continuously through 360° around both the pitch
and yaw axes. Epley 7:1-3; 8:30-37; Okamoto 13:7-9.
(d) “the rotational device under the control of a computer system, the
computer system including computer executable instructions to,
when implemented, provide a measurable and repeatable pattern
of acceleration intensity, acceleration frequency, and velocity
around each said axis of rotation.”
30

Epley discloses using a computer system to control the maneuvering device.

Epley 1:28-32; 8:63-67; 10:1-7, 56-67; 11:19-32; 13:5-39. Epley discloses

automating movement around the axes according to a preprogrammed, repeatable
pattern having segments of various durations. Id. 1:28-32; 3:16-49; 7:47-64; 8:63-
67; 10:1-7, 56-67; 11:19-32.

9. Claim 10
(a) “A system according to claim 9, wherein the computer system is
further configured to provide visual stimuli to said subject.”
Epley discloses providing visual stimuli to the subject using light occluding
goggles, screens, and images. Epley 13:25-34; 21:46-49.
10. Claim 11
(a) “A kit comprising: a system according to claim 9; and instructions
for administering a dose of vestibular stimulation.”
The only difference between this claim and the system disclosed by the
combination of Epley and Okamoto is the presence of the instructions. However,
the instructions are not given any patentable weight because adding instructions to
an otherwise known product is insufficient to distinguish it from the prior art.
Astrazeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064-65 (Fed. Cir. 2010) (holding

that prior precedent “foreclosed the argument that simply adding new instructions
to a known product creates the functional relationship necessary to distinguish the
produce from the prior art.”).
31

B. Ground 2: Claim 3 Is Obvious Over Okamoto in View of Epley
and Graybiel
Okamoto and Epley are described in Ground 1. Graybiel is described below.
Epley was considered during prosecution of the ’631 patent but not in combination
with Okamoto and Graybiel.
Okamoto discloses a motion simulator used in medical applications to
stimulate and measure bodily sensations. Okamoto 17:7-10. Epley discloses an
automated, computer controlled system that can be used to control a motion
simulator to produce vestibular stimulation. Epley, abstract. Okamoto and Epley do
not explicitly disclose increasing the vestibular stimulation in increments in
successive administrations.
Graybiel discloses that motion sickness can be prevented by incrementally
increasing the strength of vestibular stimulation in successive administrations.
Graybiel p. 111-113 (the section titled “Adaptation Through Control of the
Subject’s Head Motions and Velocity of the SRR”). Specifically, Graybiel
discloses rotating subjects at incrementally increasing velocities while the subjects
moved their heads in a predetermined pattern. Id. The procedure was most
effective when, at each step, the subjects were stressed to the limits of their
tolerance without showing overt symptoms of motion sickness. Id. p. 115.
It would have been obvious to use the computer system in Epley to control
the motion simulator in Okamoto for the reasons given in Ground 1. The following
32

are the reasons it would be obvious to modify the combination of Okamoto and
Epley to include the vestibular stimulation methods in Graybiel.
It would have been obvious to incrementally increase the vestibular
stimulation in successive administrations because doing so constitutes nothing
more than combining prior art elements according to known methods to yield
predictable results. MPEP 2143(I)(A). This rationale is supported by the following
findings. Id. First, Okamoto, Epley, and Graybiel disclose all of the claimed
subject matter with the only difference being the lack of an actual combination of
the references into a single reference (see the claim-by-claim analysis below).
Second, one of skill in the art could have used known methods to operate the
motion simulator in Okamoto and the computer system in Epley to incrementally
increase the vestibular stimulation – e.g., provide instructions to the computer
system that result in increasing the rotational velocity for a patient in increments as
disclosed in Graybiel. Third, the motion simulator in Okamoto and the computer
system in Epley perform the same functions when combined as they do separately.
The only difference is that they are instructed to follow the procedure disclosed in
Graybiel – i.e., incrementally increase the vestibular stimulation to treat motion
sickness. Fourth, one of skill in the art would have recognized that the result of the
combination is predictable – i.e., incrementally increasing the vestibular
stimulation will prevent motion sickness as disclosed in Graybiel.
33

It also would have been obvious to incrementally increase the vestibular
stimulation in successive administrations because doing so constitutes nothing
more than using a known technique (i.e., the vestibular stimulation procedure in
Graybiel) to improve a similar method in the same way (i.e., the vestibular
stimulation techniques in Epley and Graybiel are similar methods). MPEP
2143(I)(C). This rationale is supported by the following findings. Id. First, the
vestibular stimulation methods disclosed in Epley are the base methods upon which
the claimed invention can be seen as an improvement. The improvement is the
use of the vestibular stimulation methods disclosed in Graybiel to prevent
motion sickness. Second, the vestibular stimulation methods in Graybiel are
comparable to the vestibular stimulation methods disclosed in Epley and have been
improved in the same way as the claimed invention (i.e., incremental increases in
vestibular stimulation in successive administrations). Third, one of skill in the art
could have applied the known improvement technique in Graybiel (i.e., the
incrementally increasing vestibular stimulation methods) to the vestibular
stimulation methods in Epley with predictable results (i.e., the computer system
controls the motion simulator to provide incrementally increasing amounts of
vestibular stimulation in successive administrations).
It also would have been obvious to incrementally increase the vestibular
stimulation in successive administrations because doing so provides an effective
34

method of preventing motion sickness in humans as taught by Graybiel. See
discussion of Graybiel above; MPEP 2143(I)(G). One of ordinary skill in the art
would reasonably expect to be successful using the vestibular stimulation methods
in Graybiel to treat motion sickness because it’s simply a matter of operating the
computer system in Epley and the motion simulator in Okamoto in a specific way.
A detailed explanation of how the combined references satisfy the claim
limitations is given below.
1. Claim 3
(a) “A method according to claim 2, wherein the vestibular
stimulation is increased by increments in successive
administrations of vestibular stimulation.”
Graybiel discloses incrementally increasing the amount of vestibular
stimulation in successive administrations. Graybiel p. 111-113 (the section titled
“Adaptation Through Control of the Subject’s Head Motions and Velocity of the
SRR”); Table 2; Figs. 2-3. Figures 2-3 of Graybiel graphically show the
incremental increase of vestibular stimulation in the form of the increased RPM of
the slow rotation room. The procedure is disclosed as being most effective when, at
each step, the subjects were stressed to the limits of their tolerance without showing
overt symptoms of motion sickness. Id. p. 115.
35

C. Ground 3: Claims 1-2 and 4-11 Are Obvious Over Epley in View
of Newman
Epley is described in Ground 1. Newman is described below. Epley was
considered during prosecution of the ’631 patent but not in combination with
Newman.
Epley discloses an automated, computer controlled system for vestibular
stimulation using a two axis maneuvering device 18 capable of continuously
rotating a subject through 360° around each axis. Epley 9:59-62; 6:66-7:7; 10:20-
31. Epley does not explicitly disclose that the device has a pitch axis directly inside
a yaw axis.
Newman discloses a simulation device that can simulate an aircraft cockpit
or space capsule. Newman 1:56-60. The device includes a cabin 14 rotatably
mounted to an upstanding yoke 10, which is rotatably mounted to a base 18. Id.
2:46-50; 3:6-10. The cabin 14 rotates around the pitch axis via horizontal shaft 16
and around the yaw axis via vertical shaft 12. Id. 2:28-33; 3:10-13. Fig 1 of
Newman is reproduced below.
36

The pitch axis of the simulation device in Newman is directly inside the yaw
axis. The vertical shaft 12 defines the yaw axis and is connected to the bottom of
the yoke 10. Id. Fig. 1. The horizontal shaft 16 defines the pitch axis and is
connected to the upright arms of the yoke 10 thereby making the pitch axis inside
the yaw axis. There is no intervening rotational axis between the pitch axis and the
yaw axis thereby making the pitch axis directly inside the yaw axis. Id.
It would have been obvious to use the simulation device in Newman with the
computer system in Epley because doing so constitutes nothing more than choosing
from a finite number of identified, predictable solutions, with a reasonable
expectation of success. MPEP 2143(I)(E). This rationale is supported
37

by the following findings. Id. First, at the time of the invention, Epley
acknowledged that a spatial maneuvering device can have two axes that are capable
of continuously rotating a subject through 360° around each axis. Epley 9:59-62;
6:66-7:7; 10:20-31. Second, there are only six axial configurations that such
a maneuvering device can have – i.e., pitch inside yaw, yaw inside pitch, pitch
inside roll, roll inside pitch, yaw inside roll, and roll inside yaw. Third, one of
ordinary skill in the art could have pursued these six solutions with a reasonable
expectation of success.
It also would have been obvious to use the simulation device in Newman
with the computer system in Epley because doing so constitutes nothing more than
simple substitution of one known element for another to obtain predictable results.
MPEP 2143(I)(B). This rationale is supported by the following findings. Id. First,
Epley discloses a computer controlled system for vestibular stimulation that differs
from the claimed subject matter by the substitution of a two axis maneuvering
device having the pitch axis directly inside the yaw axis for the disclosed generic
two axis maneuvering device. Second, a two axis maneuvering device and its
function is known in the art as shown in Newman. Third, one of ordinary skill in
the art could have substituted the two axis maneuvering device in Newman for the
generic two axis maneuvering device disclosed in Epley with predictable results –
38

i.e ., the computer system controls the simulation device in the manner disclosed in
Epley.
It also would have been obvious to use the simulation device in Newman
with the computer system in Epley because doing so constitutes nothing more than
combining prior art elements according to known methods to yield predictable
results. MPEP 2143(I)(A). This rationale is supported by the following findings.
Id. First, Epley and Newman disclose all of the claimed subject matter with the
only difference being the lack of an actual combination of Epley and Newman into
a single reference (see the claim-by-claim analysis below). Second, one of skill in
the art could have combined the simulation device in Newman with the computer
system in Epley using known methods for controlling mechanical devices with a
computer system. Third, the simulation device in Newman and the computer
system in Epley perform the same functions when combined as they do separately.
In both situations, the simulation device in Newman performs the function of
holding an occupant and moving under computer control and the computer system
in Epley functions to control a simulation device. Fourth, one of skill in the art
would have recognized that the result of the combination is predictable – i.e., the
computer system controls the simulation device in the manner disclosed in Epley.
A detailed explanation of how the combination of references satisfies the
claim limitations is given as follows.
39

1. Claim 1
(a) “A method of administering a dose of vestibular stimulation to a
subject, comprising:”
Epley discloses methods for creating “vestibular activity which is directly
related to spatial motion (including acceleration) and/or orientation.” Epley
abstract; 1:40-45. This includes administering a quantifiable measure of applied
stimuli using a computer to automate the process and measure parameters such as
acceleration and velocity. Id. 3:16-49; 11:19-32.
(b) “administering to a subject in a two-axis rotational device a dose
of vestibular stimulation,”
(c) “wherein said two-axis rotational device comprises a pitch axis of
rotation directly inside a yaw axis of rotation, with the proviso
that the device does not comprise a roll axis of rotation,”
See the discussion of limitation (a) above for a description of how Epley
administers a dose of vestibular stimulation. Epley discloses administering the dose
using a maneuvering device having two axes. Epley 9:59-62.
Newman discloses a two-axis simulation device that can be used to simulate
an aircraft cockpit or space capsule. Newman 1:56-60. The simulation device has
the pitch axis directly inside the yaw axis and does not include a roll axis of
rotation. The above description of Newman explains this in greater detail.
(d) “the rotation of each said pitch and yaw axis is independent of the
other axis of rotation,”
40

Epley discloses that the maneuvering device can position a subject through
360° in any angle of the pitch and yaw axes thereby making it inherent that the
pitch and yaw axes rotate independently of each other. Epley 7:1-3; 8:30-37.
Newman discloses using separate motors 20, 22 to rotate the pitch and yaw
axes independently of each other. Newman 3:10-13; Figs 1-2.
(e) “the rotation velocity and acceleration around each said pitch and
yaw axis controlled by a computer system,”
Epley discloses using a computer system to control the velocity and
acceleration around the pitch and yaw axes. Epley 1:28-32; 8:63-67; 10:1-7, 56-67;
11:19-32; 13:5-39.

(f) “and said dose comprises a measurable and repeatable pattern of
acceleration intensity and frequency around said pitch axis of
rotation for a first duration and said yaw axis of rotation for a
second duration,”
Epley discloses automating movement around the axes according to a
preprogrammed, repeatable pattern having segments of various durations. Epley
1:28-32; 3:16-49; 7:47-64; 8:63-67; 10:1-7, 56-67; 11:19-32.
(g) “said rotational device configured to allow continuous rotation
through more than 360 degrees around each said axis of rotation
independently and simultaneously; and”
Epley discloses that the maneuvering device can rotate continuously through
360° for both the pitch and yaw axes. Epley 7:1-3; 8:30-37. See the discussion of
limitation (d) above for a description of how Epley and Newman satisfy the
requirement that the rotation is independent.
41

(h) “measuring the vestibular stimulation applied to said subject by
said computer system.”
Epley discloses measuring the vestibular stimulation applied to the subject.

Epley 3:10-49; 7:40-46; 8:45-56; 14:4-8.

2. Claim 2
(a) “A method according to claim 1, wherein said pattern of
acceleration is a chaotic pattern or regular repeating pattern
around at least one of said axes of rotation.”
Epley discloses a chaotic pattern of acceleration in the form of impulsive or
ramp movements that include “rapid, unexpected, passive acceleration and/or
deceleration.” Epley 23:61-24:32.
Epley discloses a regular repeating pattern of acceleration as part of the
canalith repositioning procedure. Id. 26:15-28:11. The subject is maneuvered
through three positions using a regular pattern of acceleration. Id. At each position,
the nystagmus response is measured and if a #1 nystagmus response is detected, the
process is repeated. Id 27:61-63. The result is a regular repeating pattern of
acceleration.
3. Claim 4
(a) “A method of improving sensory integration in a subject,
comprising administering vestibular stimulation to the subject
according to claim 1, wherein the subject has a disorder or
condition selected from balance disorder, cerebral palsy, Down
Syndrome, autism, traumatic brain injury, and stroke.”
42

Epley discloses treating subjects who have dizziness, vertigo, and balance
problems. Epley 1:6-14.
4. Claim 5
(a) “A method according to claim 1, wherein the vestibular
stimulation is controlled by the subject.”
Epley discloses that the vestibular stimulation can be controlled by the
subject. Epley 1:28-32; 7:48-51; 10:1-5, 47-55; 12:52-62.
5. Claim 6
(a) “A method of claim 1, wherein the dose of vestibular stimulation
comprises one or more inversions of the subject relative to the
ground.”
Epley discloses inverting the subject relative to the ground. Epley 8:10-20;
10:9-19; Fig. 3. Epley discloses inverting the subject as part of the benign
paroxysmal positional vertigo procedure and the canalith repositioning procedure.
Id. 25:28-28:11. Specifically, Epley describes rotating the subject backward 120°
around the pitch axis as part of both procedures, which is sufficient to invert the
subject. Id 25:33-38; 26:61-65.
6. Claim 7
(a) “The method of claim 6, wherein the dose of vestibular
stimulation is administered by altering one or more properties
selected from the group consisting of the rate of rotation, degree
of inverted position, time at said inverted position, number of
inversions, length of time at non-inverted positions, and total
duration of time in the rotational device.”
43

Epley discloses administering the vestibular stimulation by altering the rate
of rotation (i.e., acceleration), degree of inverted position, time at the inverted
position, number of inversions, length of time at non-inverted positions, and the
total duration of time in the rotational device as part of the benign paroxysmal
positional vertigo procedure and the canalith repositioning procedure. Epley 25:28-
28:11. Epley alters all of these parameters as part of performing these procedures.
Id.
7. Claim 8
(a) “The method of claim 1, wherein the mass of the subject is rotated
about the center of rotation of the pitch axis of rotation and the
yaw axis of rotation.”
Epley discloses the subject seated so that the mass of the subject rotates
about the center of rotation of the pitch axis and the yaw axis. Epley 10:8-17; Fig.
2. Newman also discloses that the subject is seated so that the mass of the subject
is rotated about the center of rotation of the pitch axis and the yaw axis. Newman
Fig. 1.
8. Claim 9
(a) “A system for administering vestibular stimulation to a subject
comprising:”
Epley discloses a comprehensive system including a maneuvering device
used to “create vestibular activity which is directly related to spatial motion
(including acceleration) and/or orientation.” Epley abstract; 1:40-45.
44

(b) “a two-axis rotational device configured to rotate a subject
around a pitch axis of rotation directly inside a yaw axis of
rotation, with the proviso that the device is not configured to
rotate a subject around a roll axis of rotation,”
Epley discloses a maneuvering device having two axes. Epley 9:59-62.

Newman discloses a two-axis simulation device that can be used to simulate
an aircraft cockpit or space capsule. Newman 1:56-60. The simulation device has
the pitch axis directly inside the yaw axis and does not include a roll axis of
rotation. The above description of Newman explains this in greater detail.
(c) “each said axis operating independently and continuously from
the other axis and configured to allow continuous rotation
through more than 360 degrees of rotation around each said
axis;”
Epley and Newman both disclose that the axes operate independently. Epley
discloses that the maneuvering device can position a subject through 360° in any
angle of the pitch and yaw axes thereby making it inherent that the pitch and yaw
axes rotate independently of each other. Epley 7:1-3; 8:30-37. Newman discloses
using separate motors 20, 22 to rotate the pitch and yaw axes independently of each
other. Newman 3:10-13; Figs 1-2.
Epley discloses that the maneuvering device can rotate continuously through
360° around both the pitch and yaw axes. Epley 7:1-3; 8:30-37.
(d) “the rotational device under the control of a computer system, the
computer system including computer executable instructions to,
when implemented, provide a measurable and repeatable pattern
45

of acceleration intensity, acceleration frequency, and velocity
around each said axis of rotation.”
Epley discloses using a computer system to control the maneuvering device.

Epley 1:28-32; 8:63-67; 10:1-7, 56-67; 11:19-32; 13:5-39. Epley discloses

automating movement around the axes according to a preprogrammed, repeatable
pattern having segments of various durations. Id. 1:28-32; 3:16-49; 7:47-64; 8:63-
67; 10:1-7, 56-67; 11:19-32.

9. Claim 10
(a) “A system according to claim 9, wherein the computer system is
further configured to provide visual stimuli to said subject.”
Epley discloses providing visual stimuli to the subject using light occluding
goggles, screens, and images. Epley 13:25-34; 21:46-49.
10. Claim 11
(a) “A kit comprising: a system according to claim 9; and instructions
for administering a dose of vestibular stimulation.”
The only difference between this claim and the system disclosed by the
combination of Epley and Newman is the presence of the instructions. However,
the instructions are not given any patentable weight because adding instructions to
an otherwise known product is insufficient to distinguish it from the prior art.
Astrazeneca LP v. Apotex, Inc., 633 F.3d 1042, 1064-65 (Fed. Cir. 2010) (holding

that prior precedent “foreclosed the argument that simply adding new instructions
46

to a known product creates the functional relationship necessary to distinguish the
produce from the prior art.”).
D. Ground 4: Claim 3 Is Obvious Over Epley in View of Newman
and Graybiel
Epley is described in Ground 1, Newman is described in Ground 3, and
Graybiel is described in Ground 2. Epley was considered during prosecution of the
’631 patent but not in combination with Newman and Graybiel.
Epley discloses an automated, computer controlled system that can be used
to control a two axis maneuvering device 18 to produce vestibular stimulation.
Epley, abstract; 9:59-62; 10:20-31. Newman discloses a two axis simulation
device. Newman 1:56-60. Epley and Newman do not explicitly disclose increasing
the vestibular stimulation in increments in successive administrations of vestibular
stimulation. Graybiel discloses that motion sickness can be prevented by
incrementally increasing the strength of vestibular stimulation in successive
administrations. Graybiel p. 111-113 (the section titled “Adaptation Through
Control of the Subject’s Head Motions and Velocity of the SRR”); see discussion
in Ground 2 for greater detail about Graybiel.
It would have been obvious to use the simulation device in Newman with the
computer system in Epley for the reasons given in Ground 3. The following are the
reasons it would be obvious to modify the combination of Epley and Newman to
include the vestibular stimulation methods in Graybiel.
47

It would have been obvious to incrementally increase the vestibular
stimulation in successive administrations because doing so constitutes nothing
more than combining prior art elements according to known methods to yield
predictable results. MPEP 2143(I)(A). This rationale is supported by the following
findings. Id. First, Epley, Newman, and Graybiel disclose all of the claimed subject
matter with the only difference being the lack of an actual combination of the
references into a single reference (see the claim-by-claim analysis below). Second,
one of skill in the art could have used known methods to operate the computer
system and simulation device produced by the combination of Epley and Newman
to incrementally increase the vestibular stimulation – e.g., provide instructions to
the computer system that result in increasing the rotational velocity for a patient in
increments as disclosed in Graybiel. Third, the computer system in Epley and the
simulation device in Newman perform the same functions when combined as they
do separately. The only difference is that they are instructed to follow the procedure
disclosed in Graybiel – i.e., incrementally increase the vestibular stimulation
to treat motion sickness. Fourth, one of skill in the art would have recognized
that the result of the combination is predictable – i.e., incrementally increasing
the vestibular stimulation will prevent motion sickness as disclosed in Graybiel.
48

It also would have been obvious to incrementally increase the vestibular
stimulation in successive administrations because doing so constitutes nothing
more than using a known technique (i.e., the vestibular stimulation procedure in
Graybiel) to improve a similar method in the same way (i.e., the vestibular
stimulation techniques in Epley and Graybiel are similar methods). MPEP
2143(I)(C). This rationale is supported by the following findings. Id. First, the
vestibular stimulation methods disclosed in Epley are the base methods upon which
the claimed invention can be seen as an improvement. The improvement is the
use of the vestibular stimulation methods disclosed in Graybiel to prevent
motion sickness. Second, the vestibular stimulation methods in Graybiel are
comparable to the vestibular stimulation methods disclosed in Epley and have been
improved in the same way as the claimed invention (i.e., incremental increases in
vestibular stimulation in successive administrations). Third, one of skill in the art
could have applied the known improvement technique in Graybiel (i.e., the
incrementally increasing vestibular stimulation methods) to the vestibular
stimulation methods in Epley with predictable results (i.e., the computer system
controls the motion simulator to provide incrementally increasing amounts of
vestibular stimulation in successive administrations).
It also would have been obvious to incrementally increase the vestibular
stimulation in successive administrations because doing so provides an effective
49

method of preventing motion sickness in humans as taught by Graybiel. See
discussion of Graybiel above; MPEP 2143(I)(G). One of ordinary skill in the art
would reasonably expect to be successful using the vestibular stimulation methods
in Graybiel to treat motion sickness because it is simply a matter of operating the
computer system in Epley and the simulation device in Newman in a specific way.
A detailed explanation of how the combined references satisfy the claim
limitations is given below.
1. Claim 3
(a) “A method according to claim 2, wherein the vestibular
stimulation is increased by increments in successive
administrations of vestibular stimulation.”
Graybiel discloses incrementally increasing the amount of vestibular
stimulation in successive administrations. Graybiel p. 111-113 (the section titled
“Adaptation Through Control of the Subject’s Head Motions and Velocity of the
SRR”); Table 2; Figs. 2-3. Figures 2-3 of Graybiel graphically show the
incremental increase of vestibular stimulation in the form of the increased RPM of
the slow rotation room. The procedure is disclosed as being most effective when, at
each step, the subjects were stressed to the limits of their tolerance without showing
overt symptoms of motion sickness. Id. p. 115.
VII. CONCLUSION
For the reasons set forth above, Petitioner submits that it has established a
reasonable likelihood that it will prevail on each of the claims of the ’631 patent.
50

Accordingly, this Petition should be granted, inter partes review should be
instituted, and claims 1-11 of the ’631 patent should be found unpatentable and
canceled.
Respectfully submitted,

Date: 30 December 2014 /Scott Nielson/
Scott Nielson
Attorney for Petitioner
Reg. No. 50,755
51

CERTIFICATE OF SERVICE

I certify that on 30 December 2014 a copy of this PETITION FOR INTER
PARTES REVIEW, EXHIBITS 1001-1006, and PETITIONER’S POWER OF
ATTORNEY were served in the manner indicated on the following attorney of
record:
VIA UPS OVERNIGHT DELIVERY

(1) Timothy Worrall
Polsinelli PC
900 West 48th Place, Suite 900
Kansas City, MO 64112

(2) Michael P. Dulin
Polsinelli PC
1515 Wynkoop Street, Suite 600
Denver, CO 80202

Respectfully submitted, Date:
30 December 2014 /Scott Nielson/
Scott Nielson
Attorney for Petitioner
Reg. No. 50,755

Scott Nielson
Holland & Hart LLP
222 South Main Street
Salt Lake City, UT 84101
Email: scnielson@hollandhart.com
T: 801-660-4400
F: 801-799-5700