throbber
Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-00315
`U.S. Patent No. 8,929,965
`
`
`DECLARATION OF DR. LUCA POLLONINI
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Page 1
`
`VALENCELL EXHIBIT 2009
`IPR2017-00315
`
`

`

`
`
`lPR20l7-00315
`
`Patent 8,929,965
`
`Patent Owner Response to Petition for Inter Partes Review of
`
`US. Patent No. 8,929,965
`
`Declaration of Dr. Luca Pollonini
`
`I, Luca Pollonini, do hereby declare and state, under penalty of perjury under
`
`the laws of the United States of America, that all statements made herein of my
`
`own knowledge are true and correct and that all statements made on information
`
`and belief are believed to be true; and further that these statements were made with
`
`the knowledge that Wlllfill false statements and the like so made are punishable by
`
`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Executed on September 22, 2017, at Manvel, Texas.
`
`
`
`Luca Pollonini
`
`Page 2
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`IPR2017-00315
`Patent 8,929,965
`
`I.
`
`Introduction
`
`1. My name is Dr. Luca Pollonini. I have been asked to submit this
`
`declaration on behalf of Valencell, Inc. (“Valencell” or “Patent Owner”) in
`
`connection with Patent Owner’s response (the “Response”) to the petition (the
`
`“Petition”) of Apple Inc. (“Apple” or “Petitioner”) for inter partes review of U.S.
`
`Patent No. 8,929,965 (“the ’965 patent”). Valencell’s Response, I understand, is
`
`being submitted to the Patent Trial and Appeal Board (“PTAB” or the “Board”) of
`
`the United States Patent and Trademark Office in this proceeding having case
`
`number IPR2017-00315.
`
`2.
`
`I have been retained as a technical expert by Patent Owner to study and
`
`provide my opinions on the technology claimed in, and the patentability of the claims
`
`of the ’965 patent with respect to the . My opinions in this declaration will concern
`
`those claims instituted in case number IPR2017-00315: claims 1-12.
`
`3.
`
`As part of my study, I have reviewed and am familiar with the
`
`specification of the ’965 patent. I understand that the ’965 patent has been provided
`
`as Exhibit 1001. Previously, Patent Owner filed its Preliminary Response (Paper 6,
`
`referred to as the “Preliminary Response”) to the Petition (Paper 2, referred to as the
`
`“Petition”). And the Board issued its Decision (Paper 9, referred to and cited to as
`
`the “Institution Decision”).
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`
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`2
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`IPR2017-00315
`Patent 8,929,965
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`A. Background and Qualifications
`
`4.
`
`I understand that I may be called to testify regarding this declaration
`
`including my background, qualifications, and experience relevant to the issues in
`
`this inter partes review proceeding.
`
`5.
`
`In this section, I discuss my educational background, work experience,
`
`and other relevant qualifications. My curriculum vitae is attached as Appendix A.
`
`6.
`
`I have over seventeen years of experience in biomedical optics, which
`
`I matured both in academia and industry. I am currently an Assistant Professor of
`
`Engineering Technology at the University of Houston, where I direct the Optical
`
`BioImaging Laboratory. My research activity is focused on the design, development
`
`and validation of optical devices and instruments for non-invasive sensing of
`
`physiological parameters of interest in healthcare. In particular, my lab operates in
`
`the field of optical brain imaging for measurement of cerebral blood flow, wearable
`
`optical sensors for early detection of pressure ulcers, and other applications based
`
`on near infrared spectroscopy.
`
`7.
`
`I have also co-founded two companies, Nirox (established in 2005 in
`
`Italy) and Performance Athlytics (established in 2013 in Texas), both of which are
`
`currently active in the biomedical sensing arena. More specifically, Nirox is an
`
`engineering consulting and product development firm that produces optical
`
`instruments for measuring tissue oxygenation, whereas Performance Athlytics
`
`
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`3
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`

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`IPR2017-00315
`Patent 8,929,965
`
`(doing business formerly as BSX Athletics and now as LVL Technologies) develops
`
`and sells several types of wearable sensors for quantifying physical activity and body
`
`hydration. I held a position of R&D director at Nirox from its inception to 2007
`
`before moving to the United States to pursue my academic career.
`
`8.
`
`I hold an M.S. in Electrical Engineering and a Ph.D in Information
`
`Engineering from University of Brescia (Italy) in 2000 and 2004, respectively. After
`
`graduation, I held a Research Associate position at the NASA Glenn Research
`
`Center in Cleveland, OH, where I contributed to the development of ophthalmic
`
`instruments based on dynamic light scattering and autofluorescence for early
`
`detection of eye diseases in astronauts. After leaving Nirox, I received post-doctoral
`
`training at the University of Texas at Houston (2007-2008) and the University of
`
`Houston (2008-2010). My academic career continued at the University of Houston
`
`as a research faculty until 2015, when I transitioned to the assistant professorship
`
`position that I currently hold.
`
`9.
`
`At the time of this Declaration, I have published a total of 45 peer-
`
`review journal and conference papers and delivered several invited talks and
`
`seminars in the area of biomedical optics and biophotonics at universities and
`
`research conferences. I am also a co-inventor in one issued patent (licensed to
`
`Performance Athlytics) and three pending patents.
`
`
`
`4
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`IPR2017-00315
`Patent 8,929,965
`
`10.
`
`I have been an active participant in the profession since 2011 as a
`
`member and since 2015 as a senior member of the IEEE (Institute of Electrical and
`
`Electronics Engineers) and its Engineering in Medicine and Biology Society
`
`(EMBS), as a communication committee member of the Society for Functional Near
`
`Infrared Spectroscopy, and as an Associate Editor of the IEEE Journal of
`
`Translational Engineering in Medicine and Biology. I have also served as a
`
`panelist/reviewer for the National Science Foundation since 2013.
`
`11. Recently, I have organized and chaired a special session of engineering
`
`and clinical applications of functional near infrared spectroscopy at the 2015 Annual
`
`Meeting of the Engineering in Medicine and Biology Society (EMBS) held in Milan,
`
`Italy, and I will be the local organizer and chair of start-up panelists of the 2018
`
`IEEE International Instrumentation & Measurement Technology Conference
`
`(I2MTC) to be hosted in Houston, TX.
`
`B. Compensation
`
`12.
`
`I am being compensated for the time I spend on this case at a rate of
`
`$325 per hour. I am also being reimbursed for reasonable and customary expenses
`
`associated with my work and testimony in this investigation. My compensation is
`
`not contingent upon the outcome of this matter or the substance of my testimony.
`
`
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`5
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`IPR2017-00315
`Patent 8,929,965
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`C. Information Considered
`
`13. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials. I have
`
`reviewed the relevant papers and exhibits submitted in this proceeding up to the date
`
`of this declaration, including the opinion of Petitioner’s declarant, Dr. Majid
`
`Sarrafzadeh whose declaration I have cited as “Sarrafzadeh Decl.” I have also
`
`reviewed the deposition testimony of Dr. Sarrafzadeh which I cite to herein as
`
`“Sarrafzadeh Depo.” and provide the deposition page and line number in the format
`
`“page:line number(s).” In forming my opinions, I have considered the materials that
`
`I identify in this declaration and those listed in Appendix B.
`
`14.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Petitioner. I may also consider additional documents and
`
`information in forming any necessary opinions – including documents that may not
`
`yet have been provided to me.
`
`15. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`
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`Patent 8,929,965
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`D. Legal Standards
`
`16.
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the ’965 patent, I am relying upon certain basic legal principles that counsel
`
`has explained to me.
`
`17. First, I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious from what was
`
`known before the invention was made.
`
`18.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and generally
`
`includes patents and printed publications (e.g., books, journal publications, articles
`
`on websites, product manuals, etc.).
`
`19.
`
`I understand that in this proceeding the Petitioner has the burden of
`
`proving by a preponderance of the evidence that the claims of the ’965 patent are
`
`anticipated by or obvious in light of the prior art under the corresponding instituted
`
`grounds. I understand that “a preponderance of the evidence” is evidence sufficient
`
`to show that a fact is more likely true than it is not.
`
`20.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications. My analysis below compares
`
`the claims to patents and printed publications that are prior art, which has been cited
`
`by the Petitioner.
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`
`
`7
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`IPR2017-00315
`Patent 8,929,965
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`21.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the claim.
`
`Second, the prior art can be shown to have made the claim “obvious” to a person of
`
`ordinary skill in the art. My understanding of the applicable legal standards for
`
`obviousness is set forth below.
`
`1. Anticipation
`
`22.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art. I have applied these standards
`
`in my analysis of whether claims of the ’975 Patent were anticipated at the time of
`
`the invention.
`
`23.
`
`I understand that a patent claim is “anticipated” by a single prior art
`
`reference if that reference discloses each element of the claim in a single
`
`embodiment. A prior art reference may anticipate a claim inherently if an element is
`
`not expressly stated, but only if the prior art necessarily includes the claim
`
`limitations.
`
`24.
`
` I understand that the test for anticipation is performed in two steps.
`
`First, the claims must be interpreted to determine their meaning. Second, a prior art
`
`reference is analyzed to determine whether every claim element, as interpreted in
`
`the first step, is present in the reference. If all the elements of a patent claim are
`
`present in the prior art reference, then that claim is anticipated and is invalid.
`
`
`
`8
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`IPR2017-00315
`Patent 8,929,965
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`
`
`2. Obviousness
`
`25.
`
`I understand that a patent for a claimed invention may not be obtained
`
`if the differences between the subject matter sought to be patented and the prior art
`
`are such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said subject
`
`matter pertains. And when considering obviousness of a combination of known
`
`elements, the operative question is whether the improvement is more than the
`
`predictable use of prior art elements according to their established functions.
`
`26.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
`
` The scope and content of the prior art;
`
` The differences between the prior art and the claims at issue;
`
` The knowledge of a person of ordinary skill in the pertinent art; and
`
` Whatever objective factors indicating obviousness or non-obviousness may
`
`be present in any particular case.
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`
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`Patent 8,929,965
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`27.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done by using hindsight, but must be done using the perspective of a person of
`
`ordinary skill in the relevant art as of the effective filing date of the patent claim.
`
`28.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by the infringer or others in the
`
`field; the taking of licenses under the patent by others; expressions of surprise by
`
`experts and those skilled in the art at the making of the invention; and the patentee
`
`proceeded contrary to the accepted wisdom of the prior art.
`
`29.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
`
`that solution obvious in another related field. I also understand that market demands
`
`or design considerations may prompt variations of a prior art system or process,
`
`either in the same field or a different one, and that these variations will ordinarily be
`
`considered obvious variations of what has been described in the prior art.
`
`30.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation, that variation would have been considered obvious. I
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`IPR2017-00315
`Patent 8,929,965
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`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
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`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation.
`
`31.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but instead
`
`can take account of the “ordinary innovation” and experimentation that does no more
`
`than yield predictable results, which are inferences and creative steps that a person
`
`of ordinary skill in the art would employ.
`
`32.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge possessed
`
`by a person having ordinary skill in the art. I understand that all these issues may be
`
`considered to determine whether there was an apparent reason to combine the known
`
`elements in the fashion claimed by the patent at issue.
`
`33.
`
`I understand that the obviousness analysis cannot rely solely on a
`
`“teaching, suggestion, and motivation” from the prior art. I understand that a person
`
`of ordinary skill attempting to solve a problem will not be led only to those elements
`
`of prior art designed to solve the same problem. I understand that steps suggested by
`
`
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`Patent 8,929,965
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`common sense are important and should be considered. I understand that the prior
`
`art does not need to be directed towards solving the same problem that is addressed
`
`in the patent. Further, the individual prior art references themselves need not all be
`
`directed towards solving the same problem.
`
`34.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or lead away from the line of inquiry disclosed
`
`in the reference(s). A reference does not “teach away” from an invention simply
`
`because the reference suggests that another embodiment of the invention is better or
`
`preferred. My understanding of the doctrine of teaching away requires a clear
`
`indication that the combination should not be attempted (e.g., because it would not
`
`work or explicit statements saying the combination should not be made). I
`
`understand that a person of ordinary skill is also a person of ordinary creativity.
`
`3. Claim Construction
`
`35.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable interpretation consistent with the specification as it would be
`
`interpreted by one of ordinary skill in the art. Under a broadest reasonable
`
`interpretation, words of the claim must be given their plain meaning, unless such
`
`meaning is inconsistent with the specification. The plain meaning of a term means
`
`the ordinary and customary meaning given to the term by those of ordinary skill in
`
`
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`Patent 8,929,965
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`the art at the time of the invention. The ordinary and customary meaning of a term
`
`may be evidenced by a variety of sources, including the words of the claims
`
`themselves, the specification, drawings, and prior art. However, I understand that
`
`the best source for determining the meaning of a claim term is the specification –
`
`and that the greatest clarity is obtained when the specification serves as a glossary
`
`for the claim terms. The presumption that a term is given its ordinary and customary
`
`meaning may be rebutted by the applicant by clearly setting forth a different
`
`definition of the term in the specification.
`
`36.
`
`I understand that the broadest reasonable interpretation does not mean
`
`the broadest possible interpretation. Rather, the meaning given to a claim term must
`
`be consistent with the ordinary and customary meaning of the term (unless the term
`
`has been given a special definition in the specification), and must be consistent with
`
`the use of the claim term in the specification and drawings. Further, the broadest
`
`reasonable interpretation of the claims must be consistent with the interpretation that
`
`those skilled in the art would reach.
`
`II. The ’965 Patent
`
`37.
`
`I understand that the prior art and patent disclosures are judged from
`
`the perspective of a person of ordinary skill in the art at the time of the invention.
`
`For the purposes of my analysis in this declaration, I have used the date as used by
`
`petitioner’s declarant, that is: February 25, 2009 as the relevant time period.
`
`
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`Patent 8,929,965
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`38.
`
`I understand that: the person of ordinary skill in the art is a hypothetical
`
`person who is presumed to have known the relevant art at the time of the invention.
`
`Factors that may be considered in determining the level of ordinary skill in the art
`
`may include but are not limited to: the type of problems encountered in the art; the
`
`prior art solutions to those problems; the rapidity with which innovations are made;
`
`the sophistication of the technology; and the educational level of active workers in
`
`the field. In a given case, every factor may not be present, and one or more factors
`
`may predominate. A person of ordinary skill in the art is also a person of ordinary
`
`creativity and the hypothetical person having ordinary skill in the art to which the
`
`claimed subject matter pertains would, of necessity have the capability of
`
`understanding the scientific and engineering principles applicable to the pertinent
`
`art.
`
`39.
`
`In particular, Petitioner’s Declarant states:
`
`a person having ordinary skill in the art at the relevant time would have
`
`had at least a four-year degree in electrical engineering, computer
`
`engineering, or related field of study, or equivalent experience, and at
`
`least two years of experience in studying or developing physiological
`
`sensors. A person of ordinary skill in the art would also have been
`
`familiar with optical system design and signal processing.
`
`Sarrafzadeh Decl. at ¶ 43. For the purposes of my analysis in this proceeding,
`
`I have applied the Petitioner’s definition above.
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`40. At the relevant time period, there was a “growing market demand for
`
`personal health and environmental monitors, for example, for gauging overall health
`
`and metabolism during exercise, athletic training, dieting, daily life activities,
`
`sickness, and physical therapy.” ’965 patent at column 1, lines 27-30. There was also
`
`a “growing interest in generating and comparing health and environmental exposure
`
`statistics of the general public and particular demographic groups.” ’965 patent at
`
`column 1, lines 33-36. But “methods of collecting these statistics may be expensive
`
`and laborious, often utilizing human-based recording/analysis steps at multiple
`
`sites.” ’965 patent at column 1, lines 39-41.
`
`41. The ’965 patent discloses that “improved ways of collecting, storing
`
`and analyzing physiological information are needed.” ’965 patent at column 1, lines
`
`42-43. Furthermore, the ’965 Patent provides “improved ways of seamlessly
`
`extracting physiological information from a person during everyday life activities,
`
`especially during high activity levels, may be important for enhancing fitness
`
`training and healthcare quality, promoting and facilitating prevention, and reducing
`
`healthcare costs.” ’965 patent at column 1, lines 43-48.
`
`42. To address these needs, the ’965 patent teaches a “sensor module for
`
`detecting and/or measuring physiological information from a subject” that “includes
`
`a housing with at least one optical emitter and at least one optical detector supported
`
`by the housing. A first light guide is in optical communication at a proximal end
`
`
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`with the at least one optical emitter and is configured to deliver light from the at least
`
`one optical emitter into a body of a subject via an exposed end surface configured to
`
`engage a body part such as a portion of an ear of the subject. A second light guide is
`
`also used in optical communication with the at least one optical detector and is
`
`configured to collect light from the body of the subject.” ’965 patent at Abstract.
`
`43.
`
`In particular, the improvements described in the ’965 Patent provides
`
`for an improvement in collecting physiological information for monitors such as a
`
`heart rate monitor that provided more accurate results than prior art monitors, due in
`
`part to customizing the field of view. The ’965 Patent achieves this by providing,
`
`among other things, a first light guide that delivers light from a light emitter at one
`
`end, and engaging the subject’s body. ’965 Patent, 40:8-32. The acronym PPG stands
`
`for photoplethysmography, a technique used to detect volumetric changes in blood
`
`in peripheral circulation using light. While heart rate monitors, including PPG
`
`sensors, have existed for a long time, uch systems struggled with providing accurate
`
`results when the subject was moving or exposed to strong ambient light such as
`
`sunlight. See, for example, Allen (Exhibit 1021), at R5, which states “For example,
`
`artefact can arise from ambient light interference but can be reduced in several ways:
`
`by suitable probe attachment to the skin (e.g. using a dark Velcro wrap-around cuff),
`
`by further shading of the study site area and performing measurements in subdued
`
`lighting, and by electronic filtering (e.g. light modulation filtering.” and “Ambient
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`light interference in PPG-based systems has also been discussed” by other
`
`references. In short, In short, it was known at the time of the invention that PPG-
`
`based heart rate monitors were adversely affected by the presence of surrounding
`
`light noise, and research efforts were devoted to improve accuracy. Besides
`
`reducing the effect of presence of external light, improving the signal-to-noise ratio
`
`of PPG sensors was generally desirable at the time of invention, especially for
`
`wearable applications
`
`44. Removal of these noise artifacts such that a very accurate measurement
`
`can be made, can depend much more on where and how the signal is collected than
`
`the amount of signal collected. Simply filtering and processing the collected signal
`
`as was conventional wisdom would not necessarily improve the sensor’s accuracy.
`
`As provided by the ’965 patent, Valencell has disclosed novel ways of collecting the
`
`PPG signal including physical configurations and attributes of the sensor that
`
`reduces noise in the signal. One of the main objects of the ’965 Patent’s invention,
`
`for wearable devices, is reducing noise at the physical layer (also called opto-
`
`physics) this provides a less noisy optical signal resulting in a cleaner PPG signal
`
`and/or reduces the burden on the post-capture optical signal filtering which would
`
`reduce battery power requirements for the sensor as it reduces the need for more
`
`complex or additional processing of the collected signal. See ’965 Patent at 35:51-
`
`36:15.
`
`
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`17
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`IPR2017-00315
`Patent 8,929,965
`
`45. A significant issue with wearable heart rate monitors is managing the
`
`signal-to-noise ratio. Before the relevant time period, sensor designers focused on
`
`devices such as Numaga, producing (and thus measuring) as much light as possible
`
`during PPG. I note that Numaga’s configuration is designed with what appears to be
`
`encapsulated LED emitters and photodiodes. This follows what was the
`
`conventional wisdom as these devices were used to generate as much light as
`
`possible and to detect as much light as possible while attempting to maximally bock
`
`external light. The reasoning is based on the theory that the more light collected, the
`
`more signal collected. The more signal collected, the better PPG signal-to-noise ratio
`
`could be produced, to the advantage of measurement accuracy. Valencell came up
`
`with physical design improvements to make the best, most efficient use of the light
`
`produced and thus allowing the system as a whole to use less power by realizing that
`
`by configuring the optics to deliver light to specific parts of the body, then the signal-
`
`to-noise ratio becomes lower due to substantially increased noise, even though you
`
`are producing and collecting more light. The schematic illustration below shows a
`
`sensor configured according to an embodiment of the ’965 patent, on the left,
`
`compared to a configuration from the prior art, on the right.
`
`
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`18
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`IPR2017-00315
`Patent 8,929,965
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`
`
`46.
`
`In particular, in the ’965 Patent, Valencell proposed to add light guides
`
`with an exposed end surface (labeled 119 c) especially configured to engage a
`
`specific body part. (i.e., “configured to engage a portion of a body of the subject”).
`
`’965 Patent 35:51-36:16. For example, as shown by the flat surface in Figs. 24A-
`
`24B of the ’965 patent to configured to engage a portion of an ear. Id. The ’965
`
`Patent discusses situations where a wider “field of view” would be preferable: “In
`
`some cases, a wider field of view may be important to measure more light from a
`
`broader range along the body” Id. But for the ear, a narrow “field of view” would be
`
`preferable: “for example, a light guide 119 with a flat-faced surface 119 c within the
`
`earbud 10 of FIGS. 24A-24B may focus the field of view to the region between the
`
`anti-tragus and concha of the ear.” Id. This region results in fewer motion artifacts
`
`resulting in less optical scatter from physical motion and thus results in less noise in
`
`
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`19
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`IPR2017-00315
`Patent 8,929,965
`
`the optical signal. Id. This the narrower field of view would improve the sensor’s
`
`accuracy by minimizing the motion noise:
`
`A less noisy optical signal may result in a cleaner PPG signal upon
`
`analog or digital filtering of the optical signal. In contrast, a rounded
`
`distal end of a light guide as with the surface 119 c of FIG. 31 may
`
`capture a greater PPG signal but an even greater amount of motion
`
`artifact related optical scatter.
`
`’965 Patent 35:51-36:16.
`
`47. The use of light guides in this manner, as suggested by the ’965 patent,
`
`that engage the body of the user minimize the increased motion noise, while still
`
`allowing for sufficient light collection. This sets the ’965 Patent apart from prior art
`
`solutions like Numaga, which did not use a light guide, but merely engage the skin
`
`with the same prior art light emitter (nor does Numaga express any need or desire
`
`for motion noise removal).
`
`III. Patentability Analysis of the ’965 Patent
`
`A. Claim Constructions
`
`1. Distal Free End
`
`48.
`
`In my opinion, the term “distal free end” in the ’965 means “the end
`
`opposite the proximal end of the light guide that is remote and unencumbered from
`
`the corresponding light emitter or detector.”
`
`
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`20
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`IPR2017-00315
`Patent 8,929,965
`
`49. A POSA would have understood the plain and ordinary meaning of the
`
`word “free” with respect to the claimed light guide as “unencumbered” or
`
`“unfettered” from the base. This understanding is consistent with the specification
`
`which references “free end” in two places: the first, referencing “the free end 119 C
`
`of the light guide 119” of Fig. 26; and the second referencing the “free end surface
`
`119 C of the light guide 119” of Fig 31. ’965 Patent, 37:50-61; 38:44-61. Both of
`
`these are plainly referring to the distal end (the remote end that is unencumbered by
`
`the base) of the elongated light guides in each of Figures 26 and 31.
`
`2. Distal End
`
`50.
`
`I understand that the term “distal end” has been construed to mean “an
`
`end opposite of the proximal end.” I agree with that construction.
`
`3. Light Guide
`
`51.
`
`I understand that the term “light guide” has been construed to mean “a
`
`mechanism for delivering light along a path.” I agree with that construction.
`
`B. Ground 1
`
`52.
`
`I disagree with Dr. Sarrafzadeh’s opinion that Numaga renders claims
`
`1, 2, and 12 of the ’965 patent obvious for at least the following reasons.
`
`53. Numaga discloses a pulse wave sensor that emits light onto a “pulse
`
`[sic.] of the wrist of a test subject” and “detects the subject’s pulse waves from the
`
`light that is reflected by the red corpuscles within the arteries.” Numaga, ¶ [0001].
`
`
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`21
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`IPR2017-00315
`Patent 8,929,965
`
`54. Numaga purports to improve upon a particular construction in the art
`
`by removing the light shielding tube 26 and acrylic board 25 (shown in Fig.2)
`
`separating the light emitter and light receivers from the wrist. Numaga, ¶ [0005] –
`
`[0006].
`
`
`
`Figure 2
`
`
`
`55. Nuamaga suggests that the improved configuration is shown in Fig. 1.
`
`
`
`Figure 1
`
`
`
`56. Numaga introduced the shell support member 29, as shown in Fig. 1.
`
`Numaga does not modify the component 21b, which has been translated as a “light
`
`guide part.”
`
`
`
`22
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`Page 23
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`IPR2017-00315
`Patent 8,929,965
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`57.
`
`In neither device shown in Fig. 1 nor Fig. 2 does the component 21b
`
`deliver light along a path. Component 21b provides no path at all. Numaga explains
`
`that a light shielding tube 26 is necessary to ensure that “light from the light emitting
`
`device 21 is not incident on the light receiving device 22.” See Numaga, ¶ [0003].
`
`Component 21b does not limit the path through which light can depart, as shown in
`
`the annotated figure below:
`
`
`
`58. Component 21b does not limit the light to any particular path, but
`
`allows the emitted light to go in multiple directions. Thus, in my opinion, a POSA
`
`would not v

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