Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 7
` Entered: June 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VALENCELL, INC.
`Patent Owner.
`____________
`
`IPR2017-00316
`Patent 8,989,830 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108
`
`
`
`
`
`

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`IPR2017-00316
`Patent 8,989,830 B2
`
`I. INTRODUCTION
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–6, 8–16, and 18–20 (“the challenged claims”) of U.S.
`Patent No. 8,989,830 B2 (Ex. 1001, “the ’830 patent”) pursuant to 35 U.S.C.
`§§ 311–319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”).
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Taking into account Patent Owner’s
`Preliminary Response, and for the reasons that follow, we conclude that the
`information presented in the Petition does not establish that there is a
`reasonable likelihood that Petitioner will prevail in challenging claims 1–6,
`8–16, and 18–20 as unpatentable under 35 U.S.C § 103(a). Pursuant to 35
`U.S.C. § 314, we hereby decline to institute an inter partes review of any
`challenged claim of the ’830 patent.
`
`B. Related Proceedings
`
`The parties indicate that the ’830 patent is at issue in Valencell, Inc. v.
`Apple Inc., Case No. 5:16-cv-00001 (E.D.N.C), and Valencell, Inc. v. Fitbit,
`Inc., Case No. 5:16-cv-00002 (E.D.N.C). Pet. 3; Paper 5, 1. Patent Owner
`indicates the ’830 patent is also at issue in Valencell, Inc. v. Bragi Store,
`LLC, Case No. 5:16-cv-00895 (E.D.N.C.). Paper 5, 1.
`
`In addition to this Petition, Petitioner indicates that it filed another
`inter partes review petition challenging claims of the ’830 patent (IPR2017-
`00317), and also filed another inter partes review petition (IPR2017-00318)
`
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`IPR2017-00316
`Patent 8,989,830 B2
`challenging claims of U.S. Patent No. 8,886,269 B2, which is the parent of
`the ’830 patent. Pet. 3.
`
`C. The ’830 Patent
`
`The ’830 patent is entitled “Wearable Light-Guiding Devices For
`
`Physiological Monitoring” and issued on March 24, 2015 from an
`application filed on September 12, 2014. Ex. 1001, [22], [45], [54]. The
`’830 patent claims priority to U.S. Patent Application No. 14/184,364, filed
`on February 19, 2014 (now U.S. Patent No. 8,886,269 B2), and U.S. Patent
`Application No. 12/691,388, filed on January 21, 2010 (now U.S. Patent
`8,700,111 B2). Id. at [63].
`
`The ’830 patent is directed to monitoring devices configured to be
`attached to the body of a subject. Ex. 1001, Abstract. The monitoring
`devices may include physiological sensors to measure, for example, heart
`rate, pulse rate, breathing rate, and a variety of other physical parameters.
`Id. at 4:33–67. The sensors, for example, may be photoplethysmography
`(“PPG”) sensors for measuring blood flow properties, such as blood oxygen
`level. Id. at 3:67–4:5. The ’830 patent discloses various embodiments of
`the monitoring devices, such as that depicted in Figures 22A and 22B,
`reproduced below.
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`IPR2017-00316
`Patent 8,989,830 B2
`
`Figure 22A is a top plan of an embodiment of monitoring device configured
`to be attached to the finger of a subject, and Figure 22B is a cross-sectional
`view of the monitoring device. Ex. 1001, 8:16–20. The monitoring device
`that fits over the finger in these figures has outer body portion 72 that may
`include a flex circuit, and base 50 secured to inner body portion 74 and outer
`body portion 72. Id. at 28:1–10, 28:15–16. Base 50 supports optical emitter
`24, optical detector 26, and optical noise detector 26´. Id. at 28:19–21.
`Layer of cladding material 21 is applied to (or near) outer surface 74a of
`inner body portion 74, as well as inner surface 74b, to serve as a light guide
`to deliver light from optical emitter 24 to the finger and collect light from
`the finger and deliver it to optical detectors 26, 26´. Id. at 28:30–38.
`“[W]indows 74w are formed in the cladding material 21 and serve as light-
`guiding interfaces to the finger.” Id. at 28:44–46. The device also may be
`embodied in “a patch, such as a bandage that sticks on a person’s body.” Id.
`at 11:53–58.
`
`The ’830 patent discloses an embodiment of the invention illustrated
`in Figure 3, reproduced below.
`
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`IPR2017-00316
`Patent 8,989,830 B2
`
`
`Figure 3 depicts an embodiment of monitoring device showing a side section
`view of a headset with a light-guiding earbud. Ex. 1001, 7:19–21. Earbud
`30 includes optical detector 26 and optical emitter 24. Id. at 14:52–53.
`Cladding material 21 is used to confine light within light guiding region 19.
`Id. at 14:60–63.
`
`Claim 1, reproduced below, is illustrative of the challenged claims of
`the ’830 patent.
`1. A monitoring device configured to be attached to the body of a
`subject, comprising:
`an outer layer and an inner layer secured together, the inner
`layer comprising light transmissive material, and having inner
`and outer surfaces;
`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;
`a layer of cladding material near the outer surface of the inner
`layer; and
`at least one window formed in the layer of cladding material
`that serves as a light-guiding interface to the body of the
`
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`IPR2017-00316
`Patent 8,989,830 B2
`subject, 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.
`Ex. 1001, 30:35–55.
`
`D. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts the following grounds of unpatentability:
`Ground Claim(s)
`Reference(s)
`§ 103
`1–4, 8–14, 18–20 Haahr1
`§ 103
`5, 15
`Haahr and Hicks2
`§ 103
`6, 16
`Haahr, Hannula3, and Asada4
`
`Pet. 6.
`
`II. ANALYSIS
`A. Claim Construction
`
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`
`1 Rasmus G. Haahr, A Wearable “Electronic Patch” for Wireless
`Continuous Monitoring of Chronically Diseased Patients, PROCEEDINGS OF
`THE 5TH INTERNATIONAL WORKSHOP ON WEARABLE AND IMPLANTABLE
`BODY SENSOR NETWORKS, JUNE 1–3, 2008 (Ex. 1020).
`2 U.S. Patent No. 6,745,061 B1 (issued June 1, 2004) (Ex. 1008).
`3 U.S. Patent No. 7,190,986 B1 (issued March 13, 2007) (Ex. 1009).
`4 H. Harry Asada, Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors, IEEE ENGINEERING IN MEDICINE AND
`BIOLOGY MAGAZINE, Vol. 22, Issue 3, May-June 2003. (Ex. 1005).
`
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`Patent 8,989,830 B2
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`approach). Under that standard, and absent any special definitions, we give
`claim terms their ordinary and customary meaning, as they would be
`understood by one of ordinary skill in the art at the time of the invention.
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Although the parties propose claim constructions for some terms, at
`this juncture of the proceeding, we determine that it is not necessary to
`provide an express interpretation of any term of the claims.
`B. Alleged Obviousness of Claims 1–4, 8–14, and 18–20 over Haahr
`  Petitioner contends that claims 1–4, 8–14, and 18–20 would have been
`obvious over Haahr. Pet. 25–43. To support its contentions, Petitioner
`provides explanations as to how the prior art discloses each claim limitation.
`Id. Petitioner also relies upon the Declaration of Brian W. Anthony, Ph.D.
`(Ex. 1003) to support its positions. Patent Owner counters that Petitioner
`does not establish and sufficiently support that the prior art teaches some
`claim limitations. Prelim. Resp. 24–32. Based on the evidence of record,
`we are not persuaded that the Petition is sufficient to account for the
`teaching of all the limitations of the claims.
` We begin our discussion with a brief summary of Haahr, and then
`address the evidence and the basis for the contentions and arguments.
`1. Haahr (Ex. 1020)
`Haahr generally discloses an optical biosensor for wireless monitoring
`of physiological signals. Ex. 1020, 54 (Abstract). The optical biosensor is
`in the form of an electronic patch. Id. The biosensor has a printed circuit
`
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`IPR2017-00316
`Patent 8,989,830 B2
`board (“PCB”) which has sensors, electronics, and radio communications
`components. Id. at 55. Figures 3, 4, and 5 are reproduced below.
`
`
`
`
`Figure 3 depicts a PCB, Figure 4 depicts a disassembled parts view, and
`Figure 5 depicts an assembled patch. Ex. 1020, 56. Haahr’s biosensor has
`two light-emitting diodes (“LEDs”) in the center and a circular photodiode
`(depicted in blue in Figure 5). Id. at 55. A frame around the LEDs prevents
`light from travelling directly from the LEDs into the photodiode. Id.
`2. Analysis
`Petitioner contends that Haahr discloses a monitoring device as
`claimed, and refers to Fig. 4 of Haahr, as annotated, to show the
`correspondence of the recited limitations to Haahr’s structures. See Pet. 16,
`25–37. Annotated Figure 4 of Haahr is reproduced below.
`
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`Patent 8,989,830 B2
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`
`
`Figure 4 (annotated) is a view of a CAD drawing of Haahr with Petitioner’s
`annotations shown in red. Pet. 16 (citing Ex. 1020, Fig. 4; Ex. 1003 ¶ 52).
`
`As depicted, Petitioner asserts that the “cladding” limitation of claim
`1 is taught by layer (f) of Haahr. Pet. 27. Petitioner also asserts the “first”
`layer is layer (g), with its “inner” and “outer” surfaces on either side, and
`layer (g) teaches the “light transmissive material” of claim 1. Id. at 25–26,
`31. Petitioner contends that the PCB is the claimed “base,” and the “optical
`emitter” and “optical detector” are Haahr’s LEDs and concentric
`photodiode, respectively. Id. at 26–27. Petitioner relies upon Haahr’s
`disclosure of the multiple windows in the plastic housing bottom portion to
`serve as “at least one window formed in the layer of cladding material that
`serves as a light-guiding interface to the body of the subject.” Id. at 28
`(citing Ex. 1020, 68).
`
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`The Petition relies upon Figures 4 and 5 of Haahr for the teaching that
`its LEDs and photodiode are in optical communication by the transmission
`of light from the LEDs into the body of a subject in one direction, and with
`reflected light passing through the window above the photodiode in a second
`direction. Pet. 29 (citing Ex. 1003 ¶ 76). Petitioner further asserts that:
`A POSA would have understood that in Haahr’s device, at least
`some of the light emitted from the LEDs through the bio-
`compatible window into the body in the first direction is
`reflected back through the bio-compatible window from the
`body
`to
`the photodiode
`in a second direction
`that
`is
`“substantially parallel” to the first direction. ([Ex. 1003] ¶77.)
`By way of example, some of the light emitted from the LEDs in
`Haahr will be emitted in a direction that is orthogonal to the
`PCB on which the sensor, which includes the LEDs and
`photodiode, is mounted. (See [Ex.] 1020, Figures 2, 4, and 5;
`[Ex. 1003] ¶ 77.) As the emitted light is reflected and refracted
`within the patient’s body—often multiple times—some of the
`emitted light will be received back at the photodiode along a
`path that is also orthogonal to the PCB, but in the opposite
`direction as the light emitted from the LEDs into the body.
`([Ex. 1003] ¶ 77.) These opposite forward and reflected
`orthogonal directions are, by their very nature, parallel. (Id.)
`A POSA would have understood that some light emitted from
`the LEDs is emitted at an angle that is nearly orthogonal to the
`sensor and that some light received at the photodiode is
`received in the opposite direction at an angle that is also nearly
`orthogonal to the sensor. (Id.) The directions of the emitted
`and received light are thus “substantially parallel,” as recited
`in claim 1. (Id.)
`Pet. 29–30 (emphases added).
`Dr. Anthony states that PPG measurements may be performed using
`either transmission or reflective modes, one of ordinary skill in the art would
`have been familiar with these modes, and that one mode could be adapted
`for use with the other. Ex. 1003 ¶ 75 (citing Ex. 1013, 7–8; Ex. 1014, 405;
`Ex. 1015, 912). Petitioner asserts that a person of ordinary skill in the art
`
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`“would have understood that Haahr describes the reflection mode, where the
`LED(s) and photodetector are both mounted facing the same side of the
`vascular bed.” Id. (citing Ex. 1013, 8; Ex. 1014, 405; Ex. 1015, 912). It is
`further stated that, “[i]n reflection mode, only a small fraction of the incident
`light is backscattered by the subcutaneous layers. [] The backscattered light
`intensity reaching the skin surface is typically distributed over a relatively
`large area surrounding the LEDs.” Id. (citing Ex. 1015, 914).
`Patent Owner contends that institution should be denied because
`Haahr fails to teach the claim 1 limitation that light delivered to the optical
`detector is substantially parallel to the emitted light. Prelim. Resp. 16–18,
`25–32. Patent Owner argues that the Petition’s argument that “some” light
`that is collected and delivered to the photodiode in a direction that “may” be
`parallel is insufficient to meet the standard for institution of inter partes
`review, that is, the evidence provided by Petitioner is insufficient to establish
`a reasonable likelihood that Haahr teaches the claim limitation. Id. at 26.
`Patent Owner avers that Haahr’s square frames prevent the light going from
`the LEDs into the photodiode, and its concentric photodiode is optimized to
`collect backscattered light from the LEDs, but there is no disclosure of a
`light guide or other means in Haahr that delivers light in directions that are
`substantially parallel to the direction light was emitted because
`“backscattered light . . . is collected by the photodiode from all directions
`without any configuration that guides light in any direction.” Id. at 26–27.
`Patent Owner thus argues that Haahr is not configured in a manner to collect
`and deliver light in the manner recited in the challenged claims, and
`“[i]nstead, Haahr collects as much backscattered light as it can without
`regard to the angle at which it was collected and delivered to the
`photodiode.” Id. at 28–29. Patent Owner further alleges that, although
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`Patent 8,989,830 B2
`Petitioner assumes that “some of the emitted light will be received back at
`the photodiode along a path that is also orthogonal to the PCB, but in the
`opposite direction as the light emitted from the LEDs into the body,” there is
`no further explanation or evidence provided in support of this short of
`Petitioner’s declarant referring to the emitted light being reflected and
`refracted multiple times—but this does not necessarily mean that light will
`be delivered in an orthogonal direction. Id. at 30–31.
`On this record, we are not persuaded that Petitioner presents sufficient
`evidence to support a finding that Haahr discloses a device where “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,” as required by independent claims 1
`and 11. Here, even assuming that some of the light emitted from the LEDs
`is in an orthogonal direction, Petitioner’s declarant fails to provide
`supporting evidence or persuasive explanation why some of the
`backscattered light would also be delivered to the photodiode in an
`orthogonal direction. Dr. Anthony refers to the emitted light being reflected
`and refracted and changing direction within a patient’s body, but provides
`only a conclusory view that one of ordinary skill in the art would know that
`some of the light would be received by the photodiode in an orthogonal
`angle. See Ex. 1003 ¶ 77. Speculation alone is insufficient to support a
`finding of a reasonable likelihood of prevailing in showing obviousness.
`
`Accordingly, in light of Petitioner’s failure to demonstrate a
`reasonable likelihood of prevailing on its assertion that independent claims 1
`
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`Patent 8,989,830 B2
`and 11 are obvious over Haahr, the obviousness challenges to dependent
`claims 2–4, 8–10, 12–14, and 18–20 also fail.
`
`C. Alleged Obviousness of Claims 5 and 15 over Haahr and Hicks
`
`Petitioner contends that claims 5 and 15 are unpatentable under 35
`
`U.S.C. § 103(a) over Haahr and Hicks. Pet. 44–46. Claim 5 depends
`directly from claim 1, and claim 15 depends directly from claim 11. Ex.
`1001, 30:66–31:2, 32:14–17. As discussed above in the ground based on
`Haahr alone, Petitioner has not shown sufficiently that Haahr discloses the
`“substantially parallel” limitation of claims 1 and 11. Petitioner does not
`allege that Hicks teaches this limitation, but rather relies upon Hicks to teach
`the additional limitations recited in claims 5 and 15. Pet. 45–46. In light of
`Petitioner’s failure to demonstrate a reasonable likelihood of prevailing on
`its assertion that claims 1 and 11 are obvious over Haahr, the obviousness
`ground also based, in part, on Haahr, that challenges dependent claims 5 and
`15 also fails.
`D.
`
`Alleged Obviousness of Claims 6 and 16 over Haahr,
`Asada, and Hannula
`Petitioner contends that claims 6 and 16 are unpatentable under 35
`
`U.S.C. § 103(a) over Haahr, Asada, and Hannula. Pet. 46–53. Claim 6
`depends directly from claim 1, and claim 16 depends directly from claim 11.
`Ex. 1001, 31:3–12, 32:18–27. As discussed above for the ground based on
`Haahr alone, Petitioner has not shown sufficiently that Haahr discloses the
`“substantially parallel” limitation of claims 1 and 11. Petitioner does not
`allege that Asada or Hannula teaches this limitation of claims 1 and 11, but
`rather relies upon Asada and Hannula to teach the additional limitations
`recited in claims 5 and 15. Pet. 49–53. In light of Petitioner’s failure to
`demonstrate a reasonable likelihood of prevailing on its assertion that claims
`
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`IPR2017-00316
`Patent 8,989,830 B2
`1 and 11 are obvious over Haahr, the obviousness ground also based, in part,
`on Haahr, that challenges dependent claims 6 and 16 also fails.
`
`III. CONCLUSION
`
`For the foregoing reasons, the information presented in the Petition
`
`does not demonstrate that there is a reasonable likelihood that Petitioner
`would prevail in challenging claims 1–6, 8–16, and 18–20 as unpatentable
`under 35 U.S.C § 103(a).
`
`IV. ORDER
`
`
`
`Accordingly, it is:
`
`ORDERED that the Petition is denied as to claims 1–6, 8–16, and 18–
`20 of the ’830 patent; and
`FURTHER ORDERED that no inter partes review is instituted.
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`IPR2017-00316
`Patent 8,989,830 B2
`
`PETITIONER:
`
`Michael D. Specht
`Michelle K. Holoubek
`Jason A. Fitzsimmons
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`mspecht-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jfitzsimmons-PTAB@skgf.com
`PTAB@skgf.com.
`
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bcpc-law.com
`
`
`
`15
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