Apple Inc. and Fitbit, Inc.
`Petitioners
`
`v.
`Valencell, Inc.
`Patent Owner
`
`Case IPR2017-00317
`
`U.S. Patent No. 8,989,830
`
`Patent Owner’s Demonstrative Exhibits
`
`In support of Its Conditional Motion to Amend
`
`Oral Hearing, February 27, 2018
`
`R. Scott Rhoades
`
`
`Petitioners
`
`v.
`Valencell, Inc.
`Patent Owner
`
`Case IPR2017-00317
`
`U.S. Patent No. 8,989,830
`
`Patent Owner’s Demonstrative Exhibits
`
`In support of Its Conditional Motion to Amend
`
`Oral Hearing, February 27, 2018
`
`R. Scott Rhoades
`
`
`
`U.S. Patent No. 8,989,830
`Substitute Claim 21
`
`Claim 21 – Substitute for Claim 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 and at least one
`motion sensor;
`
`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 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;
`
`wherein the base comprises a signal processor configured to receive and
`
`process signals produced by the at least one optical detector and the motion
`sensor to (i) reduce footstep motion artifacts from the at least one optical
`detector during running by the subject and (ii) extract physiological and
`motion parameters.
`
`2
`
`
`
`U.S. Patent No. 8,989,830
`Substitute Claim 30
`
`Claim 30 – Substitute for Claim 11
`
`A monitoring device configured to be attached to the body of a subject
`comprising:
`
`,
`
`a first layer comprising light transmissive material, the first layer having
`inner and outer surfaces;
`
`a base secured to the first layer and comprising at least one optical
`emitter and at least one optical detector and at least one motion
`sensor;
`
`a layer of cladding material near the inner and outer surfaces of the
`first 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 subject, wherein the light
`transmissive material is in optical communication with the at least one
`optical emitter and the at least one optical detector, and 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;
`
`wherein the base comprises a signal processor configured to receive and
`process signals produced by the at least one optical detector and the
`motion sensor to (i) reduce footstep motion artifacts from the at least
`one optical detector during running by the subject and (ii) extract
`physiological and motion parameters.
`
`3
`
`
`
`U.S. Patent No. 8,989,830
`
`Valencell’s Motion to Amend Should Not Be Denied
`
`“Both by statute and by its own rules, the Board has only limited grounds for
`denying a motion to amend: (1) if the amendment ‘does not respond to a ground
`of unpatentability involved in the trial,’ 37 C.F.R. § 42.121
`, or (2) if the amendment
`‘seeks to enlarge the scope of the claims of the patent or introduce new subject
`matter,’ id.”
`
`Aqua Products, Inc. v. Matal, 872 F.3d. 1290, 1306 (Fed. Cir. 2017) .
`
` Valencell’s proposed amendments are responsive to a
`
`ground of unpatentability and do not enlarge the scope
`of the patent. Valencell’s Motion should be granted.
`
`4
`
`
`
`U.S. Patent No. 8,989,830
`
`Substitute Claims 21-38 Satisfy the Scope Requirement of 37
`C.F.R. § 42.121
`
`“[a] proposed substitute claim is not responsive to an alleged ground of
`
`unpatentability of a challenged claim if it does not either include or narrow
`
`each feature of the challenged claim being replaced.”
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Final Written Decision, Paper 26 (P.T.A.B. June 11, 2013).
`
`5
`
`
`
`U.S. Patent No. 8,989,830
`
`Petitioners’ Asserted Prior Art Combination
`
`• Petitioners’ propose the combination of Goodman + Han
`
`renders claims 21 – 24, 27, 28, 30 – 33, 36 and 37 obvious
`
`6
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`No Motivation to Combine Goodman and Han
`
`The Federal Circuit has warned that when a POSITA would have
`
`known how to combine references and would have been motivated
`to do “based on the ‘modular’ nature of the claimed components,”
`such analysis is “fraught with hindsight bias.”
`
`In re ActiveVideoNetworks, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012).
`
`7
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Goodman
`
`• Goodman’s device is a flexible and disposable plastic strip
`
`• Goodman’s device is intended to address the issues present with
`
`sensors comprised of appreciable mass or high aspect ratios
`
`Ex. 1007
`
`8
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Han
`
`•
`
`•
`
`“Han describes a ring-type electronic device or ‘finger band sensor.’”
`Patent Owner’s Reply, Paper 32 at p. 6.
`
`“The [Han] device is composed of a number of components with large
`
`mechanical structure to secure it to a finger and a battery for
`power.”
`
`Id.
`
`Ex. 1104, Figure 1
`
`9
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`No Motivation to Combine Goodman and Han
`
`• The device of Han adds significant complexity, size, weight and
`mass, all of which defeat Goodman’s intended form and
`
`function.
`
`Petitioners’ Opposition,
`
` Paper 28 at p. 8.
`
`10
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`No Motivation to Combine Goodman and Han
`
`• “Goodman’s device is flexible and disposable while the Han
`
`device is a large, sturdy, solid ring with several expensive
`components attached to it.”
`
`Patent Owner’s Reply, Paper 32 at p. 8.
`
`Goodman Device
`
`Han Device
`
`Ex. 1007
`
`Ex. 1104, Figure 1
`
`11
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`No Motivation to Combine Goodman and Han
`
`• the size, weight, and costs of the additional components of Han would
`defeat the purpose of the flexible and disposable device of Goodman
`
`Ex. 1007 at Col. 2, lns. 54-68
`
`12
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`No Motivation to Combine Goodman and Han
`
`Prior art references “must be read as a whole and consideration must be given
`
`where the references diverge and teach away from the claimed invention.”
`
`AkzoN.V. v. U.S. Int’l Trade Com’n, 808 F.2d 1471, 1481 (Fed. Cir. 1986).
`
`“A reference may be said to teach away when a person of ordinary skill, upon
`
`reading the reference, would be discouraged from following the path set
`
`out in the reference, or would be led in a direction divergent from the path
`that was taken by the applicant.”
`
`In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
`
`13
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`No Motivation to Combine Goodman and Han
`
`• Goodman teaches away from a circumferential device such as a
`“tight” ring—as disclosed in Han
`
`Ex. 1007, Col. 5, lns. 56-68
`
`14
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Combination Does Not Render Substitute Claims Obvious
`
`• Combination of Goodman and Han fails to disclose:
`
`“A signal processor configured to receive and process signals
`
`produced by the at least one optical detector and the motion
`
`sensor to (i) reduce footstep motion artifacts from the at least
`one optical detector during running by the subject and (ii)
`extract physiological and motion parameters”
`
`as set forth in substitute independent claims 21 and 30.
`
`15
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Combination Does Not Render the Substitute Claims
`
`Obvious
`
`• At high motion, such as during running, the noise associated with footsteps
`
`is strong enough to overwhelm the smaller signal associated with heart
`
`rate, and so the footstep-related contribution dominates the overall signal.
`Ex. 1001 at Col. 25, lns. 27-31.
`
`• Running is different from walking and jogging as the magnitude of footstep-
`related artifacts is considerably greater due to the increased frequency
`and force exerted on the feet as an individual runs. Titus Declaration, ¶ 17.
`
`• For example, Dr. Anthony, Petitioners’ expert, testified that a sprinter can
`reach speeds of over 20 miles per hour (“mph”) and a marathon runner may
`reach speeds of over 10 mph. (Ex. 2150, Deposition of Dr. Anthony, 123:4-10 and
`124-5:10.)
`
`• The footstep-related artifacts, at these speeds, would overwhelm a heartrate
`sensor. Titus Declaration, ¶ 17.
`
`16
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Combination Does Not Render the Substitute Claims
`
`Obvious
`
`• Han fails to disclose filtering sufficient to address the
`
`footstep-related artifacts of running.
`
`• Han never even addresses the footstep related artifacts
`
`of running
`
`17
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Combination Does Not Render the Substitute Claims
`
`Obvious
`
`• Han only discloses finger and/or hand waving at 3Hz without either
`
`ever contacting a surface for its simulation
`
`o The motion artifacts of finger and/or hand waving are quite
`different than the footstep-related artifacts during running
`
`Ex. 1104, Table 2
`
`18
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Combination Does Not Render the Substitute Claims
`
`Obvious
`
`• Accordingly, nothing in Han discloses “a signal processor
`configured to receive and process signals produced by the
`
`at least one optical detector and the motion sensor to (i)
`
`reduce footstep motion artifacts from the at least one
`optical detector during running by the subject and (ii)
`extractphysiological and motion parameters.”
`
`• Han merely discloses waving a hand at 3Hz for its
`
`simulation.
`
`19
`
`
`
`U.S. Patent No. 8,989,830
`Goodman + Han
`
`Combination Does Not Render the Substitute Claims
`
`Obvious
`
`• Therefore, a Goodman in view of Han does not disclose or
`teach how to “reduce footstep motion artifacts,” Substitute
`Claims 21 and 30 are not rendered obvious by Goodman in
`
`view of Han.
`
`• As Dependent Claims 22 – 29 and 21 - 38 all depend from
`
`Substitute Claims 21 and 30, Dependent Claims 22 – 29 and 21 –
`38 should also be entered and allowed.
`
`20
`
`
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