`
`
`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
`_____________________
`
`
`PETITIONER’S REQUEST FOR
`REHEARING OF INSTITUTION DECISION
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`
`I.
`
`II.
`
`
`Standard of Review.......................................................................................... 1
`
`The Board overlooked statements and supporting evidence regarding
`the “substantially parallel” element of claims 1 and 11. ................................. 2
`
`A.
`
`B.
`
`The Board overlooked that the “substantially parallel” element
`is merely the “ordinary manner” of operation for non-invasive
`optical biosensors and that Dr. Anthony provided evidentiary
`support for this opinion. ........................................................................ 3
`
`The Board overlooked Petitioner’s and Dr. Anthony’s
`affirmative statements about how Haahr’s device functions and
`that Patent Owner mischaracterized those statements. ......................... 6
`
`III. The Board misapprehended Petitioner’s “orthogonal” example and
`overlooked that the claims only require “substantially parallel”
`directions. ......................................................................................................... 8
`
`IV. The Board misapplied its own rules regarding finding disputes of fact
`in favor of the Petitioner at institution by improperly crediting Patent
`Owner’s unsupported attorney argument over Petitioner’s extensive
`evidence of what a POSA would have understood about Haahr’s
`device. ............................................................................................................11
`
`V.
`
`Conclusion .....................................................................................................13
`
`
`
`
`
`
`- i -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`Petitioner Apple Inc. (“Apple”) respectfully requests rehearing under 37
`
`C.F.R. §§ 42.71(c) and (d)(2) and that the Board reconsider and reverse its decision
`
`not to institute inter partes review of claims 1-6, 8-16, and 18-20 of U.S. Patent
`
`No. 8,989,830 (“the ’830 Patent) in IPR2017-00316.
`
`Patent Owner mischaracterized Petitioner’s position with respect to the
`
`“substantially parallel” element of the independent claims. Patent Owner
`
`characterized Petitioner’s position as “[t]he argument that Haahr is configured such
`
`that ‘some’ light is collected and delivered to the photodiode in a direction that
`
`may be parallel to the direction at which it was delivered to the body is not
`
`sufficient to establish the likelihood that Haahr teaches the claimed invention.”
`
`(Paper 6, POPR, p. 26 (emphasis original).) As explained below, this is a gross
`
`mischaracterization of Petitioner’s argument. The Board overlooked
`
`this
`
`mischaracterization, which appears to have influenced the Board’s analysis. While
`
`apparently misdirected by the Patent Owner’s mischaracterization, the Board
`
`overlooked Petitioner’s expert’s testimony, supported by significant corroborating
`
`references, that support the conclusion that Haahr does disclose and render obvious
`
`the “substantially parallel” element.
`
`I.
`
`Standard of Review
`
`The applicable standard for a request for rehearing is set forth in 37 C.F.R. §
`
`42.71(d), which provides in relevant part:
`
`- 1 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`A party dissatisfied with a decision may file a single
`request for rehearing without prior authorization from the
`Board. The burden of showing a decision should be
`modified lies with the party challenging the decision. The
`request must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and
`the place where each matter was previously addressed in
`a motion, an opposition, or a reply.
`The Board reviews a decision on whether to institute trial for an abuse of
`
`discretion. 37 C.F.R. § 42.71(c).
`
`II. The Board overlooked statements and supporting evidence regarding
`the “substantially parallel” element of claims 1 and 11.
`
`Independent claims 1 and 11 each recite:
`
`“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” (referred to herein as “the
`
`‘substantially parallel’ claim element”).
`
`The Board overlooked Petitioner’s statements and supporting evidence cited
`
`in the Petition and by Dr. Anthony regarding this element. Instead, the Board gave
`
`credence to Patent Owner’s mischaracterization of Petitioner’s position.
`
`- 2 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`A. The Board overlooked that the “substantially parallel” element is
`merely the “ordinary manner” of operation for non-invasive
`optical biosensors and that Dr. Anthony provided evidentiary
`support for this opinion.
`
`In analyzing
`
`the “substantially parallel” claim element,
`
`the Board
`
`overlooked Petitioner’s statement that this merely recites “the ordinary manner by
`
`which non-invasive optical biosensors, such as Haahr’s Electronic Patch, operate.”
`
`(Petition, pp. 29, 35 (emphasis added).) Indeed, this statement is absent from the
`
`Board’s summary of Petitioner’s positions. (Institution Decision, pp. 8-11.) Yet as
`
`shown in the Petition excerpts below, Petitioner specifically cited Dr. Anthony’s
`
`Declaration corroborating this assertion, including the underlying documents that
`
`Dr. Anthony relied on for support:
`
`This final limitation of independent claim 1 recites the
`ordinary manner by which non-invasive optical
`biosensors, such as Haahr’s Electronic Patch, operate.
`(Anthony Decl., ¶75
`(citing APL1013, pp. 7-8;
`APL1014, p. 405; APL1015, p. 912).)
`…
`Again, this final limitation of independent claim 11
`recites the ordinary manner by which non-invasive
`optical biosensors, such as Haahr’s Electronic Patch,
`operate. (Anthony Decl., ¶88 (citing APL 1013, pp. 7-8;
`APL1014, p. 405; APL1015, p. 912).)
`(Petition, pp. 29, 35.)
`
`- 3 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`In the cited portions of Dr. Anthony’s Declaration, he opined that “a POSA
`
`would have understood” that the “substantially parallel” claim element is the
`
`“ordinary manner” in which non-invasive optical biosensors operate. (Anthony
`
`Decl., ¶¶75, 88.) Dr. Anthony cited three references as the basis for his opinion.
`
`(Anthony Decl., ¶¶75, 88 (citing APL1013, pp. 7-8; APL1014, p. 405; APL1015,
`
`p. 912).) The cited portions of these references describe that reflectance pulse
`
`oximetry detects “backscattered” light using optical elements that are “located on
`
`the same plane on the same body surface” (APL1014, p. 405), for example, where
`
`“the LEDs and PD are both mounted side-by-side on the same planar substrate”
`
`(APL1015, p. 912). (Anthony Decl., ¶¶75, 88.) And Dr. Anthony also cited an
`
`example sensor design (APL1013, p. 8) that–as shown below–is similar to the
`
`“patch, such as a bandage that sticks on a person’s body” that the Board
`
`acknowledged falls within the scope of claims 1 and 11. (Institution Decision, p. 4
`
`(quoting ’830 Patent, 11:53-58).)
`
`- 4 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`
`
`
`
`
`
`Ex. 1013, p. 8
`(Anthony Decl. ¶29)
`
`
`
`
`
`Ex. 1001, Annotated FIG. 23 (Petition, p. 9;
`
`
`Anthony Decl., ¶40)
`
`It is with this backdrop and knowledge of the prior art that Dr. Anthony
`
`attested that a POSA would have understood that the “substantially parallel” claim
`
`element is simply the “ordinary manner” in which non-invasive optical biosensors–
`
`like those in Haahr and the ’830 Patent–operate. By overlooking these critical
`
`statements–supported by record evidence–the Board abused its discretion in
`
`determining not to institute trial. Thus the Board should reverse its decision, and
`
`instead institute inter partes review.
`
`- 5 -
`
`
`
`B.
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`The Board overlooked Petitioner’s and Dr. Anthony’s affirmative
`statements about how Haahr’s device functions and that Patent
`Owner mischaracterized those statements.
`
`Further to the point that the “substantially parallel” claim element recites
`
`nothing more than the “ordinary manner” in which non-invasive optical biosensors
`
`operate, Petitioner and Dr. Anthony affirmatively explained how the emitted and
`
`detected light travels in Haahr’s device:
`
`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. (Id. at ¶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 APL1020, Figures 2, 4, and 5; Anthony
`Decl., ¶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. (Anthony Decl., ¶77.) These opposite
`
`- 6 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`forward and reflected orthogonal directions are, by their
`very nature, parallel. (Id.)
`
`(Petition, pp. 29-30 (emphasis added); see also Petition, p. 36.)
`
`Dr. Anthony likewise used affirmative language in describing the light path
`
`in Haahr. (Anthony Decl., ¶¶77, 90.) Indeed, Dr. Anthony made these statements in
`
`view of his decades of experience designing and working with non-invasive optical
`
`biosensors (Anthony Decl., ¶¶6-13), his knowledge of the prior art (Anthony Decl.,
`
`¶¶27-38, 75, 88), and his familiarity with what a POSA would have understood
`
`about how these devices function (Anthony Decl., ¶¶25-26, 75-77, 88-90).
`
`Patent Owner, however, flagrantly mischaracterized Petitioner’s position,
`
`alleging that “[t]he argument that Haahr is configured such that ‘some’ light is
`
`collected and delivered to the photodiode in a direction that may be parallel to the
`
`direction at which it was delivered to the body is not sufficient to establish the
`
`likelihood that Haahr teaches the claimed invention.” (Paper 6, POPR, p. 26
`
`(emphasis original).) First, Patent Owner neglected that the claim element requires
`
`only that the directions be “substantially parallel” not “parallel.” Second, Petitioner
`
`did not state that light delivered to the photodiode “may” be parallel to the light
`
`emitted into the body. Rather, Petitioner and Dr. Anthony both stated that light
`
`delivered to the photodiode “is” substantially parallel, for example, light “will” be
`
`- 7 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`orthogonal to the printed circuit board (“PCB”). This distinction is not simply
`
`semantics.
`
`Indeed, the Board overlooked the affirmative statements by Petitioner and
`
`Dr. Anthony and also overlooked and was misled by Patent Owner’s
`
`mischaracterization thereof. Specifically, the Board’s inclusion of Patent Owner’s
`
`mischaracterization in the Institution Decision suggests that the Board’s decision
`
`was influenced by Patent Owner’s mischaracterization. (Institution Decision, Paper
`
`7, p. 11.) Thus, the Board abused its discretion in determining not to institute inter
`
`partes review. Accordingly, the Board should reverse its decision, and instead
`
`institute inter partes review.
`
`III. The Board misapprehended Petitioner’s “orthogonal” example and
`overlooked that the claims only require “substantially parallel”
`directions.
`
`The Petition, supported by Dr. Anthony’s Declaration, first stated generally
`
`that at least some of the light emitted from Haahr’s LEDs into the body is reflected
`
`back from the body and received by the photodiode in a “substantially parallel”
`
`direction because this is the “ordinary manner” by which such non-invasive optical
`
`biosensors operate. (Petition, pp. 29-30, 36; Anthony Decl., ¶¶77, 90.) Petitioner
`
`then cited Dr. Anthony’s concrete example, where the emitted and received light is
`
`actually parallel–when emitted and received in a direction orthogonal to the PCB–
`
`to highlight that a POSA would have understood that the directions of emitted and
`
`- 8 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`received light are thus at least “substantially parallel,” which is all that claims 1
`
`and 11 require:
`
`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
`APL1020, Figures 2, 4, and 5; Anthony Decl., ¶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. (Anthony Decl., ¶77.)
`
`(Petition, pp. 30 (emphasis added), 36; see also Anthony Decl., ¶90.)
`
`The Board’s rationale for denying inter partes review was only that “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.” (Institution Decision, p. 12.) In so stating,
`
`it is clear that the Board misapprehends the “orthogonal” example. Petitioner was
`
`not trying to–and did not need to–prove that the light in Haahr’s device is emitted
`
`and received in orthogonal directions. Indeed, the Board overlooked that Petitioner
`
`- 9 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`and Dr. Anthony also stated that “[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.” (Petition, pp.
`
`30, 36 (citing Anthony Decl. ¶¶77, 90) (emphasis added).) And accordingly, these
`
`directions are “substantially parallel.” (Petition, pp. 30, 36-37 (citing Anthony
`
`Decl. ¶¶77, 90).) These examples are based on Dr. Anthony’s decades of
`
`experience designing and working with non-invasive optical biosensors (Anthony
`
`Decl., ¶¶6-13), his knowledge of the prior art (Anthony Decl., ¶¶27-38, 75, 88),
`
`and his familiarity with what a POSA would have understood about how these
`
`devices function (Anthony Decl., ¶¶25-26, 75-77, 88-90). They are not, as the
`
`Board stated, “only a conclusory view” or “[s]peculation alone”. (Institution
`
`Decision, Paper, 7, p. 12.)
`
`Moreover, in focusing only on the “orthogonal” example, the Board
`
`overlooked that the claims only require “substantially parallel” directions. As
`
`provided above, Petitioner and Dr. Anthony also asserted that some light is emitted
`
`and received in directions that are “nearly orthogonal” (i.e., substantially
`
`orthogonal) and thus “substantially parallel.” (Petition, pp. 30, 36; Anthony Decl.,
`
`¶¶77, 90.) Because the claims require only “substantially parallel” directions, the
`
`Board’s focus on the “orthogonal” example is misplaced. Indeed, Patent Owner is
`
`- 10 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`well-aware of the approximation of such a term, having so argued in the inter
`
`partes review of the ’830 Patent’s parent patent. (IPR2107-00318, Paper 6, POPR,
`
`p. 10 (“See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d
`
`1298, 1311 (Fed. Cir. 2003) (“we hold that the phrase ‘generally parallel’ envisions
`
`some amount of deviation from exactly parallel.”). As the Federal Circuit has
`
`explained, “words of approximation, such as ‘generally’ and ‘substantially,’ are
`
`descriptive terms commonly used in patent claims to avoid a strict numerical
`
`boundary to the specified parameter.” Id. at 1310-11 (internal quotations
`
`omitted).”)
`
`Thus, by misapprehending the “orthogonal” example and overlooking that
`
`the claims only require “substantially parallel” directions, the Board abused its
`
`discretion in its decision not to institute inter partes review. Accordingly, the
`
`Board should reverse its decision, and instead institute inter partes review.
`
`IV. The Board misapplied its own rules regarding finding disputes of fact in
`favor of the Petitioner at institution by improperly crediting Patent
`Owner’s unsupported attorney argument over Petitioner’s extensive
`evidence of what a POSA would have understood about Haahr’s device.
`
`Rule 42.108(c) indicates that “a genuine issue of material fact created by
`
`such testimonial evidence will be viewed in the light most favorable to the
`
`petitioner solely for purposes of deciding whether to institute a inter partes
`
`review.” (Amendments to the Rules of Practice for Trials Before the Patent Trial
`
`- 11 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`and Appeal Board, 81 Fed. Reg. 18750, 18763 (April 1, 2016).)
`
`While the ultimate question of obviousness is a question of law, it is based
`
`on the underlying finding of facts. Here, the specific fact is whether Haahr’s device
`
`discloses or suggests the “substantially parallel” claim element. Petitioner
`
`presented evidence–in the form of expert testimony–that a POSA would have
`
`understood that Haahr does disclose or suggest this element. (Petition, pp. 29-31,
`
`35-37; Anthony Decl., ¶¶75-78, 88-91.) Patent Owner did not present any evidence
`
`to the contrary, merely providing unsupported attorney argument that Haahr does
`
`not disclose the “substantially parallel” claim element. (POPR, Paper 6, pp. 25-32.)
`
`Even had Patent Owner presented opposing evidence, the Board’s own rules
`
`dictate that the Board find in favor of the Petitioner’s evidence at the institution
`
`stage. 37 C.F.R. § 42.108(c).
`
`Should Patent Owner be able to present a cogent argument and evidence
`
`during trial regarding the “substantially parallel” claim element, then the Board
`
`will have an opportunity to weigh the evidence to make a final decision on
`
`patentability. At this stage, however, the Board’s own rules provide that any
`
`disputes of fact be weighed in favor of the Petitioner. Thus, the Board’s disregard
`
`for Petitioner’s evidence of how a POSA would have understood the functionality
`
`of Haahr’s device shows that the Board abused its discretion in determining not to
`
`- 12 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`institute inter partes review. Accordingly, the Board should reverse its decision,
`
`and instead institute inter partes review.
`
`V. Conclusion
`The Board overlooked statements and supporting evidence regarding the
`
`“substantially parallel” element, misapprehended the “orthogonal” example, and
`
`overlooked that the claims only require “substantially parallel” directions. Further,
`
`the Board misapplied its own rules regarding factual disputes, improperly crediting
`
`Patent Owner’s unsupported and misleading attorney argument over Petitioner’s
`
`expert testimony of what a POSA would have understood about Haahr’s device.
`
`Accordingly, the Board should grant rehearing under 37 C.F.R. § 42.71 and
`
`institute inter partes review of claims 1-6, 8-16, and 18-20 of the ’830 Patent based
`
`on the Grounds set forth in the Petition.
`
`
` Michael D. Specht (Reg. No. 54,463)
`Attorney for Petitioner
`
`
`
`
`Date: June 30, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`
`
`- 13 -
`
`
`
`IPR2017-00316
`U.S. Patent No. 8,989,830
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies that a true and correct copy of the foregoing
`
`PETITIONER’S REQUEST FOR REHEARING OF INSTITUTION
`
`DECISION was served on June 30, 2017, in its entirety on the following counsel
`
`of record for Patent Owner:
`
`Justin B. Kimble (Lead Counsel)
`Nick Kliewer (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bcpc-law.com
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`Date: June 30, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`/Michael D. Specht/
`
`
`
`
` Michael D. Specht (Reg. No. 54,463)
`Attorney for Petitioner
`
`
`
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