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
`
`
`
`
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`
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD 
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00316
`U.S. Patent No. 8,989,830
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE PURSUANT TO
`35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`IPR2017-00316
`Pat. No. 8,989,830
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`
`
`I. 
`
`Table of Contents
`
`Introduction ..................................................... Error! Bookmark not defined. 
`A.  Grounds in the Petition .................................................................................. 7 
`B.  Legal Standards for Instituting an Inter Partes Review ................................ 8 
`1.  Inter Partes Review ....................................................................................... 8 
`2.  Obviousness .................................................................................................. 9 
`C.  Petitioner Has Not Met Its Burden of Proof to Establish that It Is Entitled to
`the Requested Relief. ................................. Error! Bookmark not defined. 
`II.  Overview of the ’830 Patent ............................................................................ 11 
`III.  Summary of the References Asserted in the Grounds of the Petition ............. 15 
`A.  Haahr ........................................................................................................... 15 
`B.  Hicks ........................................................... Error! Bookmark not defined. 
`C.  Asada ........................................................................................................... 18 
`D.  Hannula ....................................................... Error! Bookmark not defined. 
`IV.  Claim Construction .......................................................................................... 21 
`A.  Standards for Claim Construction ............................................................... 21 
`B.  Petitioner Erred in Its Proposed Broadest Reasonable Construction of
`“Cladding Material.” ................................................................................... 22 
`C.  Construction of “near” (Claims 1 and 11) ................................................... 23 
`V.  Petitioner Has Not Shown a Reasonable Likelihood That at Least One Claim
`of the ’830 Patent is Unpatentable. ................ Error! Bookmark not defined. 
`A.  The Petition Fails to Comply with 35 U.S.C. § 312(a)(3) and 37 C.F.R. §§
`42.22(a)(2) and 42.104(b)(4). .................... Error! Bookmark not defined. 
`1.  Petitioner Misunderstands That Haahr’s Photodiode is Arranged in a
`Concentric Arrangement for Optimizing the Collection of Backscattered
`
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`
`Reflected Light, Not Light Transmitted from the Body.Error! Bookmark
`not defined. 
`2.  Petitioner Further Fails to Appreciate That the Cladding Material Operates
`with the Light Transmissive Material of the Inner Layer to Confine Light for
`its Delivery to the Body and Back to the Detector.Error! Bookmark not
`defined. 
`3.  Petitioner Fails to Explain How Persons of Ordinary Skill in the Art Would
`Have Considered the Significant Design Differences Between Haahr, Hicks,
`and Asada. .................................................. Error! Bookmark not defined. 
`4.  Petitioner’s Expert Merely Parrots Attorney Argument from the Petition and
`Places into the Declaration. ........................ Error! Bookmark not defined. 
`5.  The Inconsistencies Between the Assertions of the Petition and the Prior Art
`Demonstrate that Petitioner has Failed to Provide Sufficient Notice to the
`Patent Owner of the Grounds for Unpatentability.Error! Bookmark not
`defined. 
`B.  Ground 1: Petitioner Fails to Demonstrate that Haahr Discloses Every
`Element of Claims 1-4, 8-10, 12-14, 18-20.Error! Bookmark not defined. 
`1.  Haahr Teaches “collection of backscattered light” Without Any Limitation
`as to the Angle Between the Light Collected and Delivered to the Photodiode
`and the Light Emitted by the LEDs. ........................................................... 25 
`2.  Petitioner Fails to Sufficiently Support any Inherency that Haahr Teaches
`Configuring a Light Transmissive Material Such That Light Collected and
`Delivered to the Photodiode is Substantially Parallel to the Direction at
`Which the Light Was Delivered to the Body.Error!
`Bookmark
`not
`defined. 
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`3.  Persons of Ordinary Skill Would Not Have Understood Claims 2, 3, 4, 8, 9,
`10, 12, 13, 14, 18, 19, and 20 to be Obvious in View of Haahr. ........ Error!
`Bookmark not defined. 
`C.  Ground 2: Petitioner Fails to Demonstrate that Persons of Ordinary Skill
`Would Have Been Motivated to Combine Haahr and Hicks. ............. Error!
`Bookmark not defined. 
`D.  Ground 3: Petitioner Fails to Demonstrate that Persons of Ordinary Skill
`Would Have Been Motivated to Combine Haahr, Asada, and Hannula. ... 33 
`1.  Petitioner Fails to Address the Significant Differences Between Haahr and
`Asada and the Impact of those Differences on the Motivation to Combine
`the References. ............................................................................................ 33 
`2.  Persons of Ordinary Skill Would Not Have Been Motivated to Utilize
`Multiple Photodetectors in Haahr, Instead of A Single Large Area
`Photodetector To Reduce the Impact of Motion Artifacts. ......................... 39 
`VI.  Conclusion ....................................................................................................... 43 
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`I.
`
`INTRODUCTION
`
`Patent Owner Valencell, Inc. (“Patent Owner” or “Valencell”) respectfully
`
`submits this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107, responding to the Petition for Inter Partes Review (the “Petition”) filed by
`
`Apple Inc. (“Petitioner” or “Apple”) regarding the claims of U.S. Patent No.
`
`8,989,830 (the “’830 patent”) to LeBoeuf et. al, provided as Petitioner’s Exhibit
`
`1001.
`
`Petitioner bears the burden of demonstrating that there is a reasonable
`
`likelihood that at least one of the claims challenged in the petition is unpatentable.
`
`37 C.F.R. § 42.108(c). Although the patent owner is not required to file a Preliminary
`
`Response to the Petition (37 C.F.R. § 42.107(a)), Valencell takes this opportunity to
`
`point out substantive and procedural reasons for denying institution of trial.
`
`As discussed in detail below, Petitioner fails to show that Haahr discloses
`
`limitations in the independent claims 1 and 11, including a “light transmissive
`
`material is configured to deliver light from the at least one optical emitter to the body
`
`of the subject along a first direction and to collect light from the body of the subject
`
`and deliver the collected light in a second direction to the least one optical detector,
`
`wherein the first and second directions are substantially parallel.” ’830 patent,
`
`30:47-55 (emphasis added). This element is essential to all challenged claims, and
`
`without it, Petitioner cannot satisfy its burden for any of Grounds 1-5.
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`IPR2017-00316
`Pat. No. 8,989,830
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`Moreover, Petitioner fails under Grounds 2-5 to meet its burden show that the
`
`challenged claims, as a whole, would have been obvious to one of skill in the art.
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`Instead, Petitioner improperly picks and chooses elements from the references,
`
`ignoring the content of the actual disclosures. This approach suffers from improper
`
`hindsight bias. Further, Petitioner has not shown sufficient reasons to combine the
`
`various embodiments and references. Thus, the Petition does not demonstrate a
`
`reasonable likelihood that any of the proposed grounds of unpatentability will
`
`succeed for any claim of the ’830 patent.
`
`This Preliminary Response is timely under 35 U.S.C. § 313 and 37 C.F.R. §§
`
`1.7, 42.107(b), as it is filed on or before three months from the December 13, 2016
`
`mailing date of the Notice of Filing Date Accorded to Petition and Time for Filing
`
`Patent Owner Preliminary Response. Paper 3, 1. For purposes of this Preliminary
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`Response, Patent Owner has limited its identification of deficiencies in the Petition
`
`and does not intend to waive any arguments not addressed in this Preliminary
`
`Response.
`
`Under the AIA, petitioners choose which claims of a patent to include in a
`
`petition. The statute refers to these as the “challenged” claims. 35 U.S.C.
`
`§ 312(a)(3) (requiring an IPR petition to “identif[y], in writing and with
`
`particularity, each claim challenged”); 35 U.S.C. § 314(a). The Board should reject
`
`the Petition because it fails to sufficiently identify or explain its invalidity theories
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`with the particularity as required by § 312(a)(3) and the relevant regulations. Among
`
`other things, the Petition fails to specify with particularity where each element of the
`
`claims is found in the references or to expressly identify the differences between the
`
`claims and the prior art in the Petitioner’s assertions of obviousness. Instead,
`
`Petitioner improperly seeks to place the burden to discern the differences on Patent
`
`Owner and the Board. Further, the Petition consists of conclusory arguments, broad
`
`and inaccurate assertions about the prior art, and improper incorporation of
`
`extraneous additional argument from the declaration of its expert, which is
`
`conclusory in its own right. Because the Petition fails to show that all of the claimed
`
`limitations are present in the prior art for each of the independent claims and
`
`petitioner fails to provide sufficient fact-based analysis with a rational underpinning
`
`to support its conclusions, the Petitioner has failed to meet its burden to show a
`
`reasonable likelihood that any of the challenged claims of the ’830 patent are invalid
`
`and thus the Board should deny all grounds for unpatentability.
`
`A. Grounds in the Petition
`
`The Petition challenges the validity of claims 1-20 of the ’830 patent on three
`
`grounds. Ground 1 is the only ground of alleged obviousness challenging
`
`independent claims 1 and 11 based a single reference, Haahr, a purported printed
`
`publication (Ex. 1020). All of the Grounds 1-3 rely on Haahr as allegedly disclosing
`
`or rendering obvious independent claims 1 and 11. Thus, if the Board finds that
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`Haahr does not disclose or render obvious all limitations of claims 1 and 11, then
`
`Grounds 1-3 must fail. Petitioner’s Grounds are summarized as follows:
`
`Ground References
`
`1
`
`2
`
`3
`
`Haahr
`
`Haahr in view of Hicks
`Haahr in view of Asada and
`in further view of Hannula
`
`Basis
`
`§103
`
`§103
`
`§103
`
`Dependent
`Claims
`2-4, 8-10, 12-
`14, and 18-20
`5, 15
`
`6, 16
`
`Independent
`Claims
`1, 11
`
`
`
`
`
`
`
`B.
`
`Legal Standards for Instituting an Inter Partes Review
`
`1.
`
`Inter Partes Review
`
`Institution of an inter partes review is improper unless “the information
`
`presented in the petition . . . shows that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” 35 U.S.C. § 314(a) (emphasis added). The petitioner has “the burden of
`
`proving a proposition of unpatentability by a preponderance of the evidence.” 35
`
`U.S.C. § 316(e) (emphasis added). Thus, unless the Petition demonstrates a
`
`likelihood of success on the invalidity grounds, the Board should not institute
`
`review. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380-81 (Fed. Cir. 2016)
`
`(“[T]he Board must base its decision on arguments that were advanced by a party,
`
`and to which the opposing party was given a chance to respond.”) (emphasis added).
`
`Critically, “the petition must specify where each element of the claim is found in the
`
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`prior art patents or printed publications relied upon,” if it does not, the Board should
`
`deny review. 37 C.F.R. § 42.104(b)(4) (emphasis added).
`
`2. Obviousness
`
`In each of the asserted grounds, Petitioner alleges that the challenged claims
`
`in the ground would have been obvious in view of the cited prior art. Under 35
`
`U.S.C. § 103(a), a patent may only be held obvious when “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.” In
`
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Court set out a
`
`specific framework for applying the statutory language of § 103:
`
`Under § 103, the scope and content of the prior art are to be determined;
`differences between the prior art and the claims at issue are to be
`ascertained; and the level of ordinary skill in the pertinent art resolved.
`Against this background, the obviousness or nonobviousness of the
`subject matter is determined.
`
`Id. at 17–18 (emphasis added). “While the sequence of these questions might be
`
`reordered in any particular case, the factors continue to define the inquiry that
`
`controls.” KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 407 (2007).
`
`The Supreme Court has held that whether a patent claiming the combination
`
`of prior art elements would have been obvious is determined by whether the
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`improvement is more than the predictable use of prior art elements according to their
`
`established functions. Id. at 417. To reach this conclusion, however, requires more
`
`than a mere showing that the prior art includes separate references covering each
`
`individual limitation in the claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d
`
`1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing
`
`that a person of ordinary skill at the time of the invention would have selected and
`
`combined those prior art elements in the normal course of research and development
`
`to yield the claimed invention. Id.
`
`Further, in determining the differences between the prior art and the claims,
`
`the question under 35 U.S.C. § 103 is not whether the differences themselves would
`
`have been obvious, but whether the claimed invention as a whole would have been
`
`obvious. Litton Indus. Products, Inc. v. Solid State Systems Corp., 755 F.2d 158
`
`(Fed. Cir. 1985) (“It is elementary that the claimed invention must be considered as
`
`a whole in deciding the question of obviousness.”); see also Stratoflex, Inc. v.
`
`Aeroquip Corp., 713 F.2d 1530, 1537 (Fed. Cir. 1983) (“the question under 35
`
`U.S.C. § 103 is not whether the differences themselves would have been obvious.
`
`Consideration of differences, like each of the findings set forth in Graham, is but an
`
`aid in reaching the ultimate determination of whether the claimed invention as a
`
`whole would have been obvious.”).
`
`“To satisfy its burden of proving obviousness, a petitioner cannot employ
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`IPR2017-00316
`Pat. No. 8,989,830
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`mere conclusory statements. The petitioner must instead articulate specific
`
`reasoning, based on evidence of record, to support the legal conclusion of
`
`obviousness.” In re Magnum Oil Tools, 829 F.3d at 1380 (emphasis added). In
`
`review of an inter partes review, the Federal Circuit has stated that “[c]ombinations
`
`that change the ‘basic principles under which the [prior art] was designed to
`
`operate,’, or that render the prior art ‘inoperable for its intended purpose,’…may fail
`
`to support a conclusion of obviousness.” Plas-Pak Indus., Inc. v. Sulzer Mixpac AG,
`
`600 F. App’x 755, 758 (Fed. Cir. 2015) (citing In re Ratti, 270 F.2d 810, 813 (CCPA
`
`1959) and In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). Moreover, Petitioner must
`
`show some reason why a person of ordinary skill in the art would have thought to
`
`combine available elements, as evidenced by the prior art, to reach the claimed
`
`invention. KSR, 550 U.S. at 418.
`
`II. Overview of the ’830 Patent
`The ’830 patent discloses that “improved ways of collecting, storing and
`
`analyzing physiological information are needed.” ’830 patent, 1:42-43. To address
`
`this need, the ’830 patent discloses a “monitoring device configured to be attached
`
`to the body of a subject.” Id. at Abstract. Embodiments of the ’830 patent include a
`
`light-guiding earbud (shown below in Figure 3), as well as device configured to fit
`
`over a finger, and a device configured to attach to the body in the form of a bandage.
`
`
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`11
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`IPR2017-00316
`Pat. No. 8,989,830
`
`
`One of the techniques discussed in the ’830 patent pertains to the orientation
`
`of the optical emitter and the optical detector. For example, the ’830 patent explains
`
`that the “optical emitter 24 and optical detector 26 are each oriented such that their
`
`respective primary emitting and detecting planes P1, P2 are each facing a respective
`
`direction A3, A2 that is substantially parallel with direction A1.” Id. at 14:52-59.
`
`Figure 3 illustrates such a configuration:
`
`
`
`Id., Fig. 3 (annotated).
`
`The ’830 patent further discloses a layer of cladding material 21 that is applied
`
`to (or near) the inner surface of the inner body portion and a layer of cladding
`
`material is applied to (or near) the outer surface of the inner body portion, to define
`
`the light-guiding region 19. ’830 patent, 28:30-34. The cladding material is
`
`annotated in the following image:
`
`
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`12
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`IPR2017-00316
`Pat. No. 8,989,830
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`
`
`
`
`
`
`
`’830 patent, Fig. 3 (coloring added to highlight relevant features).
`
`As shown in Figure 3, a light-guiding earbud includes a cover 18. ’830 patent,
`
`14:21-22. The cover includes “light transmissive material in optical communication
`
`with an optical emitter 24 and detector 26.” Id., 14:14-16. The cover 18 also includes
`
`“cladding material 21 on an inner surface 18b thereof and on an outer surface 18a
`
`thereof, as illustrated.” Id., 14:17-18.
`
`Regarding the configuration of the cover 18 in relation to the light guiding
`
`region 19 and the orientation of light delivered to the body by emitter 24 and
`
`collected and delivered to the detector 26, the ’830 patent discloses:
`
`
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`13
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`IPR2017-00316
`Pat. No. 8,989,830
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`
`The optical detector 26 and optical emitter 24 are configured to detect
`and generate light substantially parallel to the light-guiding region 19
`of the light guide 18. For example, the light guide 18 defines an axial
`direction A1. The optical emitter 24 and optical detector 26 are each
`oriented such that their respective primary emitting and detecting
`planes P1, P2 are each facing a respective direction A3, A2 that is
`substantially parallel with direction A1.
`Id., 14:52-59 (emphasis added). As shown in Figure 3, the light guiding region 19
`
`of the light guide 18 “is defined by cladding material 21 that helps confine light
`
`within the light guiding region 19.” Id., 14:60-63.
`
`The elements of the above embodiments are claimed in claims 1 and 11 of the
`
`’830 patent. Claim 1, which is illustrative of the other independent claim 11 recites
`
`the following elements, (labelled using Petitioner’s annotations):
`
`1[.P]. A monitoring device configured to be attached to the body
`of a subject, comprising:
`[1.1] an outer layer and an inner layer secured together,
`[1.2] the inner layer comprising light transmissive material, and
`having inner and outer surfaces;
`[1.3] a base secured to at least one of the outer and inner layers
`and comprising at least one optical emitter and at least one
`optical detector;
`[1.4] a layer of cladding material near the outer surface of the
`inner layer; and
`
`
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`14
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`IPR2017-00316
`Pat. No. 8,989,830
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`
`[1.5] at least one window formed in the layer of cladding material
`that serves as a light-guiding interface to the body of the
`subject,
`[1.6] wherein the light transmissive material is in optical
`communication with the at least one optical emitter and
`the at least one optical detector, wherein the light
`transmissive material is configured to deliver light from
`the at least one optical emitter to the body of the subject
`along a first direction and to collect light from the body of
`the subject and deliver the collected light in a second
`direction to the at least one optical detector, wherein the
`first and second directions are substantially parallel.
`’830 patent, 30:35-55.
`
`The Petition attempts to characterize the ’830 patent as “nothing more than
`
`what was already known in the prior art.” Petition, 2. But, as discussed below, the
`
`Petition fails to demonstrate the reasonable likelihood that one having ordinary skill
`
`in the art would have combined or modified the cited art since the proposed
`
`combinations of prior art do not result in disclosure of each and every element the
`
`claimed invention.
`
`III. Summary of the References Asserted in the Grounds of the Petition
`A. Haahr
`
`Haahr discloses “a wearable health system (WHS) for non-invasive and
`
`wireless monitoring of physiological signals.” Haahr, 66. The system is “an
`
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`electronic patch where sensors, low power electronics, and radio communication are
`
`integrated in an adhesive material of hydrocolloid polymer making it a sticking
`
`patch.” Haahr, 66. The sensor is “made of a concentric backside Silicon photodiode
`
`with a hole in the middle for the two light sources” that are “suitable for reflectance
`
`pulse oximetry.” Haahr, 66. Unlike the claims of the ’830 patent, Haahr does not
`
`have an “inner layer comprising light transmissive material” [1.2] “wherein the light
`
`transmissive material is configured to deliver light from the at least one optical
`
`emitter to the body of the subject along a first direction and to collect light from the
`
`body of the subject and deliver the collected light in a second direction to the at least
`
`one optical detector, wherein the first and second directions are substantially
`
`parallel.” [1.6] Instead, Haahr describes (in Figure 2) that the “assembled patch”
`
`shown is “a pulse oximetry sensor made as a concentric photodiode around two
`
`LEDs placed in the center.” Haahr, 67-68. The photodiode of Haahr is “concentric
`
`around the LEDs and hence optimized for collection of backscattered light from the
`
`tissue.” Haahr, 69 (emphasis added).
`
`In Figure 5, Haahr shows a plastic housing that sets on top of the blue
`
`concentrically-shaped photodiode.
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`
`
`
`Haahr, Fig. 5 (annotated). Haahr does not disclose a light guide to deliver light
`
`in directions that are substantially parallel to the direction light was emitted to the
`
`body. Instead, in Haahr as shown by the annotations to Figure 5 below backscattered
`
`light (red arrows) is collected by the photodiode from all directions without any
`
`configuration that guides light in any direction.
`
`Haahr, Fig. 5 (annotated).
`
`
`
`That is, Haahr shows cladding to guide the light emitted from the two central
`
`LEDs directly above the LEDs. But Haahr’s photodiode area is round to receive light
`
`from as many angles as possible. Haahr further recognizes that “radii [of the
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`photodiode area] on a specific body location” affects the “signal to noise ratio.”
`
`Haahr, 69 (emphasis added). Haahr adds that “[t]he photodiodes are also patterned
`
`with Aluminum on the side of the light entrance to give a well-defined area of light
`
`gathering.” Haahr, 69. Regarding where on the body the Electronic Patch is located,
`
`Haahr discloses that “the Electronic Patch is mounted directly to the truncus or
`
`greater muscles groups” and that [t]he Electronic Patch is not compatible with the
`
`typical locations for pulse oximetry i.e. the finger.” Haahr, 70 (emphasis added).
`
`B. Asada
`
`Asada discloses a wearable biosensor (“WBS”) as “a ring sensor for
`
`ambulatory, telemetric, [and] continuous health monitoring.” Asada, 28. The
`
`disclosed WBS “combines miniaturized data acquisition features with advanced
`
`photophlethysmographic (PPG) techniques to acquire data related to the patient’s
`
`cardiovascular state using a method that is far superior to existing fingertip PPG
`
`sensors.” Id., 28. Asada further specifies that “[t]he WBS hardware solution must be
`
`adequate to make reliable physiologic measurements during activities of daily living
`
`or even more demanding circumstances such as fitness training or military battle.”
`
`Id., 28. Major design considerations are “[c]ompactness, stability of signal, motion
`
`and other disturbance rejection, durability, data storage and transmission, and low
`
`power consumption.” Id., 28. Asada adds that “[a] challenge unique to wearable
`
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`IPR2017-00316
`Pat. No. 8,989,830
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`sensor design is the trade-off between patient comfort, or long-term wearability, and
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`reliable sensor attachment.” Id., 28-29.
`
`The WBS of Asada is a ring sensor that aims for “long-term wearability and
`
`reliable sensor attachment” and “[s]ince continuous monitoring requires a device
`
`that must be noninvasive and worn at all times, a ring configuration for the sensor
`
`unit is a natural choice.” Asada, 30 (emphasis added). Asada adds that “the finger
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`is one of the best places for WBS sensor attachment [and] [t]he primary vasculature
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`of the finger is located near the surface and therefore makes it optimal for
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`monitoring arterial blood flow using noninvasive optoelectronic sensors.” Id., 30
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`(emphasis added).
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`One way to address the difficulties of “diverse ambient lighting conditions”
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`and “reduced power consumption” so that the “whole sensor system must run
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`continually using a small battery” is to “measure the finger motion with another
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`sensor or a second PD and use it as a noise reference for verifying the signal as well
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`as for canceling the disturbance and noise.” Asada, 30. To cancel noise, the PPG
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`ring sensor of Asada utilizes a “PD-B as a noise reference, a noise cancellation filter
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`can be built to eliminate the noise of PD-A that correlates with the noise reference
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`signal.” Id., 33. This configuration is shown in the prototype of Figure 15, below.
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`19
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`IPR2017-00316
`Pat. No. 8,989,830
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`Id., Fig. 15.
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`“The dual photodetector design shown in Figure 6 provides both main signal
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`and noise reference that are distinct [which] allows us to implement noise-canceling
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`filters effectively despite complex motion artifact.” Asada, 34 (emphasis added). In
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`the prototype, “[b]oth transmittal (PD-A) and reflective (PD-B) were mounted on
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`the sensor band.” Id., 36. Figure 8 shows that “the noise-canceling filter combines
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`two sensor signals; one is the main signal captured by PD-A and the other is the
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`noise reference obtained by PD-B.” Id., 33.
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`Asada, Fig. 8. Asada further describes:
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`20
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`IPR2017-00316
`Pat. No. 8,989,830
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`The main signal mostly consists of the true pulsatile signal, but it does
`contain some noise. If we know the proportion of the noise contained
`in the main signal, we can generate the noise of the same magnitude
`by attenuating the noise reference signal and then subtract the noise
`from the main signal to recover the true pulsatile signal.
`Id., 33 (emphasis added). The PPG ring sensor configured to attach to a finger
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`requires a second detector to provide a noise reference signal to obtain the true
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`pulsatile signal.
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`IV. Claim Construction
`A.
`Standards for Claim Construction
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`The claim terms in the ’830 patent are given their broadest reasonable
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`interpretation (“BRI”) in the instant proceeding, as the ’830 patent is an unexpired
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`patent. See, 37 C.F.R. § 42.100(b). Although claim terms are given their broadest
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`reasonable interpretation, claims are not interpreted in a vacuum but are part of and
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`read in light of the specification. Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810 F.2d
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`1113, 1116 (Fed. Cir. 1987). The terms are also given their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art in the context of
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`the specification. In re Trans logic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`The construction that stays true to the claim language and most naturally aligns with
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`the inventor’s description is likely the correct interpretation. Renishaw PLC v.
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`Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998).
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`21
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`IPR2017-00316
`Pat. No. 8,989,830
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`A claim term is presumed to be given its ordinary and customary meaning
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`absent the patent clearly setting forth a different definition of the term in the
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`specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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`Petitioner proposes the construction of two claim terms: “cladding material”
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`and “near” discussed below.
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`B.
`
`Its Proposed Broadest Reasonable
`in
`Petitioner Erred
`Construction of “Cladding Material.”
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`The broadest reasonable interpretation of the term “cladding material” is “a
`
`material that confines light within a region.” The specification states that “[t]he light
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`guiding region 19 of the light guide 18 in the illustrated embodiment of FIG. 3 is
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`defined by cladding material 21 that helps confine light within the light guiding
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`region 19.” ’830 patent, 14:62-64 (emphasis added); see also id., 29:46-50 (“A layer
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`of cladding material 21 is applied to (or near) the outer surface 74a of the inner body
`
`portion 74 and a layer of cladding material 21 is applied to (or near) the inner surface
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`74b of the inner body portion 74, as illustrated, to define a light-guiding region 19.”);
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`see also id. at 16:16-25; 16:66-17:12; 18:46-48; 18:60-19:4; 28:30-43. The ’830
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`patent also includes numerous illustrations that demonstrate that the “cladding
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`material” is understood to confine light within a region. For example, in Figure 3,
`
`shown below, the cladding material 21 defines the region 19 that confines the light
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`111 and 110:
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`
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`22
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`IPR2017-00316
`Pat. No. 8,989,830
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`’830 patent, Fig. 3 (coloring added to highlight relevant features). Cladding 21 in
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`red shown on or near both the inner and outer surfaces of the inner layer. Also
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`highlighted is light guiding region 19 shown in yellow.
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`Petitioner’s proposed construction ignores the specification and deprives the
`
`term “cladding” of its proper meaning. As such, Petitioner’s construction is not the
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`broadest reasonable interpretation. Rather, the broadest reasonable construction of
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`the term “cladding material” is “a material that confines light within a region.”
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`C.
`
`Petitioner’s Construction of “near” (Claims 1 and 11) Essentially
`Renders the Limitation Meaningless
`
`Petitioner incorrectly argues that the term “near” should be construed as
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`“within a short distance.” Petition, 14. Petitioner asserts that the term “near” is
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`23
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`IPR2017-00316
`Pat. No. 8,989,830
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`described in the specification as: “[a] layer of cladding material 21 is applied to (or
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`near) the outer surface 74a of the inner body portion 74 and a layer of cladding
`
`material 21 is applied to (or near) the inner surface 74b of the inner body portion
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`74.” Petition, 14 (citing ’830 patent at 29:46-50). However, Petitioner’s construction
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`does not comport with the cited language. In particular, Petitioner’s construction
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`may very well read that cladding material on the outer surface of the inner body
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`might correspond to the claimed cladding material near the inner surface of the inner
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`body.
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`For the purposes of this Preliminary Response, Patent Owner does not
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`acquiesce to Petitioner’s construction and disputes that the construction proposed by
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`Petitioner is proper under the “broadest reasonable interpretation” standard. Patent
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`Owner notes, however, that construction of this term is not necessary to deny the
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`Petition and therefore does not take a position regarding the construction of the term
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`at this time.
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`V.
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`Petitioner Failed to Show a Reasonable Likelihood of Success on the
`Petitioned Grounds.
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`Petitioner has the burden to establish that it is entitled to the requested relief.
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`37 C.F.R. § 42.20(c). That b