Paper No. 9
`Trials@uspto.gov
`571-272-7822 Entered: July 20, 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 Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`

`

`IPR2017-00316
`Patent 8,989,830 B2
` 
`
`I. INTRODUCTION
`Apple Inc., (hereafter “Petitioner”) filed a Request for Rehearing (Paper 8,
`“Req. Reh’g”) of the Decision entered in this case (Paper 7, “Dec.”), in which we
`denied the Petition for inter partes review of claims 1–6, 8–16, and 18–20 of U.S.
`Patent No. 8,989,830 B2 (“the ’830 patent,” Ex. 1001). In its Request for
`Rehearing, Petitioner contends that (1) we overlooked statements and supporting
`evidence related to the “substantially parallel” limitation of the claims; (2) we
`misapprehended the “orthogonal” example and overlooked that the claims at issue
`require only “substantially parallel” directions; and (3) we misapplied rules related
`to finding for petitioners in disputes of material fact. Req. Reh’g 1–13. For the
`reasons set forth below, Petitioner’s Request for Rehearing is denied. 
`
`II. DISCUSSION
`
`A party requesting rehearing has the burden to show a decision should be
`
`modified by specifically identifying all matters the party believes were
`misapprehended or overlooked, and the place where each matter was addressed
`previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When
`rehearing a decision on institution, we review the decision for an abuse of
`discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is
`based on an erroneous interpretation of law, if a factual finding is not supported by
`substantial evidence, or if the decision represents an unreasonable judgment in
`weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
`Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`We address the Petitioner’s contentions outlined above in turn.
`
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`IPR2017-00316
`Patent 8,989,830 B2
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`
`1. Alleged Failure to Consider Statements and Supporting Evidence Related to the
`“Substantially Parallel” Claim Limitations
`As to Petitioner’s assertion that we overlooked Petitioner’s statements and
`supporting evidence cited in the Petition and provided by Dr. Anthony regarding
`the limitation of claims 1 and 11 that “the first and second directions [of light] are
`substantially parallel”; we did not. See Req. Reh’g 2–8. Specifically, Petitioner
`argues that we overlooked the opinions of Dr. Anthony concerning his
`understanding of the ordinary manner in which non-invasive optical biosensors,
`and more particularly, concerning how the asserted prior art, i.e., the Haahr
`electronic patch, operate. Id. at 3–4. Petitioner refers to three references cited by
`Dr. Anthony (Ex. 1003 ¶¶ 75, 88 (citing Ex. 1013, 7–8; Ex. 1014, 405; Ex. 1015,
`912), that are alleged to have formed the basis of his opinion. Id. at 4. Petitioner
`also contends that the Decision overlooks affirmative statements made by
`Petitioner and Dr. Anthony concerning how the emitted and detected light travels
`in Haahr’s device, and that Patent Owner mischaracterized Petitioner’s positions.
`Id. at 6–8.
`As we discuss in the Decision, however, the Petition fails to demonstrate a
`reasonable likelihood of prevailing on its assertion that the challenged claims are
`obvious because it failed to sufficiently demonstrate that Haahr teaches the
`limitation of “substantially parallel.” Dec. 10–14. In the Decision, we considered
`the understanding of the prior art relating to this claim term from the point of view
`of one of ordinary skill in the art, as represented by Dr. Anthony. See id. at 10–11.
`For the alleged general understanding of the “ordinary manner” of operation,
`which we considered, or the more specific representations made in the Petition
`concerning teachings of “substantially parallel,” we found that Dr. Anthony failed
`to provide evidence or persuasive explanation in support of his views on the
`disputed claim limitation. See id. at 12. Testimony that is not supported by
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`IPR2017-00316
`Patent 8,989,830 B2
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`sufficient underlying facts fails to persuade. See 37 C.F.R. § 42.65(a) (“Expert
`testimony that does not disclose the underlying facts or data on which the opinion
`is based is entitled to little or no weight.”); see also Rohm and Haas Co. v. Brotech
`Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). Here, Petitioner points to Exhibits
`1013, 1014, and 1015, as evidence that was overlooked that serves to support Dr.
`Anthony’s testimony. We considered those references (see Dec. 10–11), and agree
`that they disclose LED and photosensor locations on the body surface, which is
`similar to Haahr’s configuration, and detection of backscattered light detection on
`that plane. However, these references fail to explain or provide evidence
`supporting the contention that the light delivered and collected are in directions
`that are “substantially parallel” to each other, which is the operative claim
`limitation at issue. As such, we did not credit Dr. Anthony’s opinions on this
`issue. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6
`(Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons
`supporting it.”).
`
`2. Alleged Misapprehension of Petitioner’s “Orthogonal” Example and That the
`Claims Require Only That “Substantially Parallel” Limitations Be Taught
`Petitioner also argues that we misapprehended the “orthogonal” discussion
`
`in the Petition, and it is used as an example “to highlight that a POSA would have
`understood that the directions of emitted and received light are thus at least
`‘substantially parallel.’” Req. Reh’g 8–9. Petitioner asserts that it was not trying
`to, nor did it need to, prove that the light in Haahr is emitted and received in
`orthogonal directions. Id. at 9. Petitioner contends that we overlooked the
`statements in the Petition concerning light emitted at angles that are “nearly
`orthogonal.” Id. at 9–10. Petitioner also asserts that the claims recite only that the
`light directions be “substantially parallel,” and Dr. Anthony’s assertion that some
`
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`IPR2017-00316
`Patent 8,989,830 B2
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`light is emitted and received in directions that are “nearly orthogonal” (i.e.,
`substantially orthogonal) are, thus, “substantially parallel,” and our focus on the
`“orthogonal” example is misplaced. Id. at 10. We disagree with Petitioner’s
`arguments.
`
`Here, the fundamental issue is that institution was denied based upon failure
`to provide sufficient evidence to support that Haahr teaches the “substantially
`parallel” claim limitation, including a lack of evidence or persuasive explanations
`for Dr. Anthony’s opinions. Dec. 12. The evidence considered in the Decision
`was not based solely upon the proofs provided for “orthogonal,” but upon the
`totality of the evidence. See id. Support for the alleged Haahr teachings in the
`Petition and in the Dr. Anthony’s declaration rely, however, in large part, on
`arguments relating to light transmitted in “orthogonal” or “nearly orthogonal”
`directions. Pet. 29–30 (citing Ex. 1003 ¶ 77); Dec. 10. We determined that Dr.
`Anthony’s testimony on the orthogonal issue, that is, that light is received in an
`orthogonal direction, was conclusory. See Dec. 12. Thus, the orthogonal example
`failed to provide sufficient support for Dr. Anthony’s view of Haahr’s teachings.
`Moreover, Petitioner and Dr. Anthony then go on to state 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 “some light received at the photodiode is
`received in the opposite direction at an angle that is also nearly orthogonal to the
`sensor.” Ex. 1003 ¶ 77. Although Dr. Anthony refers to the emitted light being
`reflected and refracted and changing direction within a patient’s body, there is no
`factual support provided as to why the directions would be “nearly orthogonal” in
`the view of one or ordinary skill in the art—except perhaps by bootstrapping the
`“nearly orthogonal” opinion onto the conclusory opinion of “orthogonal” example.
`See id. Absent facts in support of why the directions of the light would be “nearly
`
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`IPR2017-00316
`Patent 8,989,830 B2
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`orthogonal,” rather than at other angles, we also do not credit Dr. Anthony’s
`testimony on this issue. After consideration of Petitioner’s arguments, we remain
`persuaded that the supporting evidence is insufficient to support the teaching of the
`“substantially parallel” limitation of claims 1 and 11.
`
`3. Alleged Misapplication of Rules Regarding Disputes of Fact
`
`Petitioner further alleges that, under Section 42.108(c), the Board was
`
`required to weigh disputes of fact in favor of Petitioner, and with that, institution
`should have been granted. Req. Reh’g 11–13. More specifically, Petitioner argues
`that its evidence of how a person of ordinary skill would have understood the
`functionality of Haahr’s device should be weighed in its favor. Id. at 12.
`Petitioner contends that Patent Owner provided only unsupported attorney
`argument and did not present any evidence contrary to Petitioners’ assertions. Id.
`As such, it is alleged that we abused our discretion in not instituting review. Id. at
`11–12. We do not agree.
`
`As an initial matter, Section 42.108(c) states that we need to take into
`account patent owner’s preliminary response, and any testimonial evidence, “but a
`genuine issue of material fact created by such testimonial evidence will be viewed
`in the light most favorable to the petitioner.” 37 C.F.R. § 42.108(c). Here, no
`testimonial evidence was provided by Patent Owner, therefore, this provision does
`not apply. Accordingly, we did not misapply the rules in our Decision.
`
`Additionally, Petitioner bears the burden of providing a petition that
`supports the ground that there is a reasonable likelihood of unpatentability of one
`or more claims. See 37 C.F.R. § 42.108(c). We review and assess the weight of
`the evidence provided, and as discussed above, we are not required to take every
`statement by a Petitioner’s declarant as established fact, but rather view statements
`in light of the underlying facts or data on which the opinion is based. After
`
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`IPR2017-00316
`Patent 8,989,830 B2
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`consideration of Petitioner’s arguments, we remain persuaded that the evidence
`and supporting explanations provided in the Petition are insufficient for institution.
`III. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we abused
`
`our discretion, or that we misapprehended or overlooked any issue, in denying
`institution of inter partes review in this case.
`IV. ORDER
`Accordingly, it is ORDERED that Petitioner’s Request for Rehearing is
`
`denied.
`
`
`
`
` 
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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.
`mspecht-PTAB@skgf.com
`holoubek-PTAB@skgf.com
`jfitzsimmons-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`jrastegar@bcpc-law.com
` 
`
` 
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