Filed on Behalf of Valencell, Inc.
`
`By: Sanford E. Warren Jr. (SWarren@wriplaw.com)
`
`R. Scott Rhoades (SRhoades@wriplaw.com)
`
`Warren Rhoades LLP
`
`1212 Corporate Drive, Suite 250
`
`Irving, Texas 75038
`
`Tel: 972-550-2955
`
`Fax: 469-442-0091
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S CONDITIONAL
`MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`TABLE OF CONTENTS
`I. STATEMENT OF RELIEF REQUESTED ..............................................1
`
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`
`THE CLAIMS ...........................................................................................2
`
`III. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS ...............................................................7
`
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE
`
`PRIOR ART ........................................................................................ 14
`
`A. Summary of the Invention ................................................................... 14
`
`B. Claim Construction .............................................................................. 16
`
`C. Level of Ordinary Skill in the Art ....................................................... 16
`
`D. The Claim Amendments Overcome the Asserted Grounds of
`
`Patentability ...................................................................................... 17
`
`1. Closest Prior Art ............................................................................... 17
`
`a. Hong - 2008/0132798 (Ex. 2128) ................................................. 18
`
`b. Amano - 6,081,742 (Ex. 2129) ..................................................... 19
`
`c. Vetter - 2003/0065269 (Ex. 2130) ................................................ 20
`
`d. Verjus - 2003/0233051 (Ex. 2131) ............................................... 20
`
`e. Asada - Mobile Monitoring with Wearable Photoplethysmographic
` Biosensors (Ex. 2132) ................................................................... 21
`
`f. Han - Development of a wearable health monitoring device with
` motion artifact reduced algorithm (Ex. 2133) ............................. 22
`
`g. Comtois - A Comparative Evaluation of Adaptive Noise
` Cancellation Algorithms for Minimizing Motion Artifacts in a
`
`Forehead-Mounted Wearable Pulse Oximeter (Ex. 2134) ........... 23
`
`3. Other Art .......................................................................................... 23
`
`V. CONCLUSION ...................................................................................... 24
`
`APPENDIX A: CLAIM LISTING ............................................................... 27
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) ........... 16
`Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 Decision Motion to
`Amend Claims, Paper 26, June 11, 2013 ......................................................2
`MasterImage 3D, Inc. v. RealD, Inc., Case No. IPR 2015-00040 (Paper No.
`42) .............................................................................................................. 18
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016) ................2
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) ............................................. 16
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) ..................... 16
`
`Statutes
`
`35 U.S.C. § 316(d) ...........................................................................................1
`
`Rules
`
`37 C.F.R. § 42.100(b) ................................................................................... 16
`37 C.F.R. § 42.12 .............................................................................................1
`37 C.F.R. § 42.121 .................................................................................... 1, 24
`37 C.F.R. § 42.121(a)(2)(i) ..............................................................................2
`37 C.F.R. § 42.121(a)-(b) ................................................................................2
`37 C.F.R. § 42.22(a)(2) ....................................................................................1
`
`
`
`
`
`iii
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`TABLE OF EXHIBITS
`
`Description
`
`U.S. Patent No. 8,989,830 to LeBoeuf et al., issued March 24,
`2015
`
`U.S. Patent Application No. 14/484,585, now U.S. Patent No.
`8,989,830, original specification, claims, and figures.
`
`U.S. Patent Application No. 14/184,364, now U.S. Patent No.
`8,886,269, original specification, claims, and figures.
`
`U.S. Patent Application No. 12/691,388, now U.S. Patent No.
`8,700,111, original specification, claims, and figures.
`
`Provisional Application No. 61/274,191, filed on August 14,
`2009, original specification, claims, and figures.
`
`Exhibit
`No.
`
`2105
`
`2106
`
`2107
`
`2108
`
`2109
`
`2110
`
`Declaration of Dr. Albert H. Titus
`
`2128
`
`2129
`
`2130
`
`2131
`
`2133
`
`U.S. Patent Application Publication No. 2008/0132798 to
`Hong et al., published June 5, 2008
`
`U.S. Patent Number 6,081,742 to Amano et al., issued June 27,
`2000
`
`U.S. Patent Application Publication No. 2003/0065269 to
`Vetter et al., published April 3, 2003
`
`U.S. Patent Application Publication No. 2003/0233051 to
`Verjus et al., published December 18, 2003
`
`Hyonyoung Han et al., Development of a wearable health
`monitoring device with motion artifact reduced algorithm,
`International Conference on Control, Automation and Systems,
`IEEE (2007)
`
`
`
`iv
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`2134
`
`G. Comtois & Y. Mendelson, A Comparative Evaluation of
`Adaptive Noise Cancellation Algorithms for Minimizing
`Motion Artifacts in a Forehead-Mounted Wearable Pulse
`Oximeter, IEEE (2007)
`
`
`
`v
`
`

`

`I.
`
`STATEMENT OF RELIEF REQUESTED
`Valencell, Inc. (“Valencell” or “Patent Owner”) moves under 37 C.F.R. §
`
`42.12, to amend the claims of U.S. Patent No. 8,989,830 (the “’830 Patent”) (Ex.
`
`2105) contingent on the outcome of the trial. The Board instituted an inter partes
`
`review of claims 1–6, 8–16, and 18–20 of the ’830 Patent. The Board did not
`
`institute an inter partes review of claims 7 and 17. If original claims 1-6, 8-16, and
`
`18-20 are found unpatentable, the Board is requested to enter the proposed substitute
`
`claims 21-38. See 37 C.F.R. § 42.22(a)(2); 35 U.S.C. § 316(d). The proposed
`
`substitute claims do not broaden the scope of the claims, and the disclosure supports
`
`each proposed amendment. 37 C.F.R. § 42.121.
`
`Moreover, Substitute Claims 21 and 30, which are proposed to replace
`
`original Claims 1 and 11 respectively, incorporate specific limitations that
`
`distinguish the substitute claims over the prior art. Similarly, Substitute Claims 24
`
`and 33, which are proposed to replace Dependent Claims 4 and 14, respectively, also
`
`incorporate specific limitations. Substitute Claims 27 and 36 have been amended
`
`relative to original Dependent Claims 8 and 18, respectively, to replace redundant
`
`subject matter now recited in Independent Claims 21 and 30 respectively, which
`
`does not broaden the claims. Substitute Claims 22-23, 25-26, 28-29, 31-32, 34-35,
`
`and 37-38, which are proposed to replace original Dependent Claims 2-3, 5-6, 9-10,
`
`12-13, 15-16, and 19-20, merely change dependency from original Independent
`
`1
`
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Claims 1 and 11 to Substitute Independent Claims 21 and 30, respectively, and
`
`correct for antecedent basis. Patent Owner’s proposed amendments are responsive
`
`to a ground of unpatentability because trial was instituted on claims 1-6, 8-16, and
`
`18-20, and the proposed amendments are to claims 21, 24, 27, 30, 33 and 36 with
`
`changes to dependency for claims 22-23, 25-26, 28-29, 31-32 34-35, and 37-38. See
`
`37 C.F.R. § 42.121(a)(2)(i).
`
`The references asserted in this Inter Partes Review, and all other references
`
`known to Valencell fail to anticipate or render the substitute claims obvious. See
`
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016). For the reasons
`
`set forth herein, Valencell has met its burden of establishing patentability of the
`
`substitute claims and respectfully requests that this motion to amend be granted. Idle
`
`Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 Decision Motion to Amend
`
`Claims, Paper 26, June 11, 2013.
`
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`
`THE CLAIMS
`
`Patent Owner’s claim listing is attached hereto as Appendix A. See 37 C.F.R.
`
`§ 42.121(a)-(b). Proposed substitute Independent Claim 21 includes all of the
`
`limitations of original Independent Claim 1, as well as several additional elements.
`
`In particular, Substitute Claim 21 retains or narrows all the limitations of Claim 1,
`
`as shown below (proposed amendments underlined):
`
`
`
`2
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`21. (Substitute for original claim 1, if found unpatentable) The
`monitoring device of 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.
`
`Substitute Claim 21 includes a limitation with respect to the base. Specifically,
`
`Claim 21 is amended such that the base comprises of “at least one motion sensor” in
`
`addition to “at least one optical emitter and at least one optical detector.” Claim 21
`
`further requires the base to comprise a “signal processor.” Claim 21 further requires
`
`the signal processor to “also receive and process signals produced by the at least one
`
`
`
`3
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`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.”
`
`Each of Dependent Claims 22-29 incorporates the new limitations by virtue
`
`of their dependence from substitute claim 21. In addition, Claim 24 is amended to
`
`require that “at least one optical detector is a PPG sensor.” Claim 27 has been
`
`amended relative to the original claim 8 to replace redundant subject matter now
`
`recited in Independent Claim 21, with a recitation of specific embodiment,
`
`narrowing the process of “wherein reducing footstep motion artifacts from the at
`
`least one optical detector during running by the subject further comprises pre-
`
`adaptive filtering processes of the signal prior to adaptive filtering of the signal,
`
`wherein pre-adaptive filtering further comprises at least one of band-pass, low-pass,
`
`or high-pass filter.” Thus, the amendments narrow the scope of Claim 24 and Claim
`
`27 beyond their dependence from substitute claim 21.
`
`Substitute Dependent Claims 22-23, 25-26, and 28-29 retain or narrow all of
`
`the limitations of Claims 2-3, 5-6, and 9-10, respectively, and further include the
`
`additional limitations of Independent Claim 1 by virtue of their dependency. Thus,
`
`the scope of Claims 22-23, 25-26, and 28-29 is narrower than the scope of each
`
`corresponding original claim.
`
`
`
`4
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Moreover, proposed Substitute Independent Claim 30 includes all of the
`
`limitations of original Independent Claim 11, as well as several additional elements.
`
`In particular, Substitute Claim 30 retains or narrows all the limitations of Claim 11,
`
`as shown below (proposed amendments underlined):
`
`30. (Substitute for original claim 11, if found unpatentable) The
`monitoring device of 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.
`
`
`
`5
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Substitute claim 30 includes a limitation with respect to the base. Specifically,
`
`Claim 30 is amended such that the base comprises of “at least one motion sensor” in
`
`addition to “at least one optical emitter and at least one optical detector.” In addition,
`
`Claim 30 is also amended such that the base comprises of a “signal processor.”
`
`Claim 30 further requires the signal processor to “also 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.”
`
`Each of Dependent Claims 31-38 incorporates the new limitations by virtue
`
`of their dependence from Substitute Claim 30. In addition, Claim 33 is amended to
`
`require that “at least one optical detector is a PPG sensor.” Claim 36 has been
`
`amended relative to the original claim 18 to replace redundant subject matter now
`
`recited in Independent Claim 30, with a recitation of specific embodiment,
`
`narrowing the process of “wherein reducing footstep motion artifacts from the at
`
`least one optical detector during running by the subject further comprises pre-
`
`adaptive filtering processes of the signal prior to adaptive filtering of the signal,
`
`wherein pre-adaptive filtering further comprises at least one of band-pass, low-pass,
`
`or high-pass filter.” Thus, the amendments narrow the scope of Claim 33 and 36
`
`beyond their dependence from Substitute Claim 30.
`
`
`
`6
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Substitute Dependent Claims 31-32, 34-35, and 37-38 retain or narrow all of
`
`the limitations of Claims 12-13, 15-16, and 19-20, respectively, and further include
`
`the additional limitations of Independent Claim 30, by virtue of their dependency.
`
`Thus, the scope of Claims 31-32, 34-35, and 37-38 is narrower than the scope of
`
`each corresponding original claim.
`
`Because the scope of Substitute Claims 21-38 are narrower than the scope of
`
`each corresponding original claim, the substitute claims do not enlarge the scope of
`
`the patent.
`
`III. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS
`Each of the proposed substitute claims are supported by the original disclosure
`
`of the ’830 Patent (Ex. 2106), the original disclosure of the parent application,
`
`Application No. 14/184,364, now U.S. Patent No. 8,886,269 (filed Feb. 19, 2014,
`
`the “’269 Application”) (Ex. 2107), which is a continuation of Application No.
`
`12/691,388, now Pat. No. 8,700,111 (filed Jan. 21, 2010, the “’111 Application) (Ex.
`
`2108), and the priority application, Application No. 61/274,191 (filed on Aug. 14,
`
`2009, the “191 Prov. Application”) (Ex. 2109). 37 C.F.R. §§ 42.121(b)(1)-(2).
`
`For the Board’s convenience, the changes in proposed substitute claims,
`
`relative to the original claims are shown in the chart below with underling and strike-
`
`through (a full claim list is provided in the appendix). Support for the proposed
`
`substitute claims and each new element is provided below with reference to the
`
`
`
`7
`
`

`

`original ’830 Application, the ’111 Application, and the 191 Provisional
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Application.
`
`Element
`Substitute Claim 21
`
`to be
`A monitoring device configured
`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;
`
`Exemplary Support1
`
`
`‘830 Application 9:57
`
`’269 Application 9:3-6
`
`’111 Application pg. 9, at lines 1-4 of
`the first full paragraph.
`
`191 Prov. Application 2:33-3:3
`‘830 Application 44:29-31
`‘830 Application 45:10-12
`
`’269 Application 44:27-29
`’269 Application 45:8-10
`
`’111 Application pg. 44, at lines 3-5,
`of the third full paragraph.
`’111 Application pg. 45, at lines 1-3
`of the second full paragraph.
`
`‘830 Application 16:13-17
`‘830 Application 41:33-42:1
`‘830 Application 45:7-9
`
`‘269 Application 16:11-15
` ‘269 Application 41:31-33
`‘269 Application 45:3-7
`
`’111 Application pg. 16, at lines 10-
`14, of the continued paragraph from
`pg. 15.
`
`
`
`1 The notation, XX:YY-YY and XX:YY-XX:YY, cites the written description of the
`exemplary support at XX page and YY lines.
`
`
`
`8
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`’111 Application pg. 41, at lines 5-7
`of the second full paragraph.
`’111 Application pg. 45 ¶, at lines 1-5
`of the first full paragraph.
`
`191 Prov. Application 12:26-29
`191 Prov. Application 20:8-12
`191 Prov. Application 30:17-19
`‘830 Application 43:19-22
`
`’269 Application 43:17-18
`
`’111 Application pg. 43, at lines 1-2
`of the third full paragraph.
`
`191 Prov. Application 14:15-16
`‘830 Application 9:8-12
`‘830 Application 45:27-29
`
`’269 Application 9: 6-10
`’269 Application 22:16-18
`’269 Application 45:25-27
`
`’111 Application pg. 9, at lines 4-7 of
`the first full paragraph.
`’111 Application pg. 45, at lines 1-3
`of the fourth full paragraph.
`
`‘830 Application 5:27-30
`‘830 Application 6:1-6
`‘830 Application 9:1-4
`‘830 Application 9:29-32
`
`’269 Application 5:25-28
`’269 Application 5:33-6:4
`’269 Application 8:33-9:2
`
`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;
`
`
`
`9
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`’269 Application 9:27-29
`
`’111 Application pg. 5, at lines 10-13
`of the third full paragraph.
`’111 Application pg. 8, at lines 1-3 of
`the fifth paragraph continuing on to
`pg. 9, at line 1.
`’111 Application pg. 9, at lines 1-3 of
`the fourth full paragraph.
`
`191 Prov. Application 3:6-8
`191 Prov. Application 7:6-8
`191 Prov. Application 7:13-17
`191 Prov. Application 27:16-20
`191 Prov. Application 28:13-14
`
`‘830 Application 5:27-30
`
`’269 Application 18:14-15
`
`’111 Application p. 18, at lines 1-2 of
`the first full paragraph.
`
`191 Prov. Application 7:6-8
`
`‘830 Application 6:4-6
`‘830 Application 39:6-21
`‘830 Application 39:29-30
`‘830 Application Fig. 16
`
`’269 Application 6:2-4
`’269 Application 39:4-19
`’269 Application 39:27-28
`’269 Application Fig. 16
`
`’111 Application pg. 6, at lines 1-2 of
`the continued paragraph from pg. 5
`’111 Application p. 39, at lines 3-18
`of the first full paragraph.
`
`Substitute Claim 24
`
`The monitoring device of claim 1 21, wherein
`the outer layer and/or inner layer comprises
`adhesive in one or more locations that is
`configured to adhesively secure the device to
`the body of the subject at least one optical
`detector is a PPG sensor.
`
`Substitute Claim 27
`
`The monitoring device of claim 1 21, wherein
`the base comprises a signal processor
`configured to receive and process signals
`produced by the at least one optical detector
`wherein reducing footstep motion artifacts
`from the at least one optical detector during
`running by the subject further comprises pre-
`adaptive filtering processes of the signal prior
`to adaptive filtering of the signal, wherein
`pre-adaptive filtering further comprises at
`least one of band-pass, low-pass, or high-pass
`filter.
`
`
`
`10
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`’111 Application p. 39, at lines 8-9 of
`the second full paragraph.
`’111 Application Fig. 16
`
`191 Prov. Application 27:24-28:6
`191 Prov. Application Fig. 14
`
`‘830 Application 9:5-8
`
`’269 Application 9:3-6
`
`’111 Application pg. 9, at lines 1-4 of
`the first full paragraph.
`
`191 Prov. Application 2:33-3:3
`‘830 Application 9:25-28
`
`’269 Application 9:23-26
`
`’111 Application p. 9 ¶
`
`
`‘830 Application 16:13-17
`‘830 Application 41:33-42:1
`‘830 Application 45:7-9
`
`‘269 Application 16:11-15
` ‘269 Application 41:31-33
`‘269 Application 45:3-7
`
`’111 Application pg. 16, at lines 10-
`14, of the continued paragraph from
`pg. 15.
`’111 Application pg. 41, at lines 5-7
`of the second full paragraph.
`’111 Application pg. 45 ¶, at lines 1-5
`of the first full paragraph.
`
`191 Prov. Application 12:26-29
`191 Prov. Application 20:8-12
`
`Substitute Claim 30
`
`to be
`A monitoring device configured
`attached to the body of a subject, comprising:
`
`a first layer comprising light transmissive
`material, the first layer having inner and outer
`surfaces;
`
`layer and
`the first
`to
`a base secured
`comprising at least one optical emitter and at
`least one optical detector and at least one
`motion sensor;
`
`
`
`11
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`191 Prov. Application 30:17-19
`’269 Application 43:17-18
`
`’111 Application pg. 43, at lines 1-2
`of the third full paragraph.
`
`191 Prov. Application 14:15-16
`‘830 Application 9:8-12
`‘830 Application 45:27-29
`
`’269 Application 9: 6-10
`’269 Application 22:16-18
`’269 Application 45:25-27
`
`’111 Application pg. 9, at lines 4-7 of
`the first full paragraph.
`’111 Application pg. 45, at lines 1-3
`of the fourth full paragraph.
`
`‘830 Application 5:27-30
`‘830 Application 6:1-6
`‘830 Application 9:1-4
`‘830 Application 9:29-32
`
`’269 Application 5:25-28
`’269 Application 5:33-6:4
`’269 Application 8:33-9:2
`’269 Application 9:27-29
`
`’111 Application pg. 5, at lines 10-13
`of the third full paragraph.
`’111 Application pg. 8, at lines 1-3 of
`the fifth paragraph continuing on to
`pg. 9, at line 1.
`’111 Application pg. 9, at lines 1-3 of
`the fourth full paragraph.
`
`
`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.
`
`
`
`12
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`191 Prov. Application 3:6-8
`191 Prov. Application 7:6-8
`191 Prov. Application 7:13-17
`191 Prov. Application 27:16-20
`191 Prov. Application 28:13-14
`
`‘830 Application 5:27-30
`
`’269 Application 18:14-15
`
`’111 Application p. 18, at lines 1-2 of
`the first full paragraph.
`
`191 Prov. Application 7:6-8
`
`‘830 Application 6:4-6
`‘830 Application 39:6-21
`‘830 Application 39:29-30
`‘830 Application Fig. 16
`
`’269 Application 6:2-4
`’269 Application 39:4-19
`’269 Application 39:27-28
`’269 Application Fig. 16
`
`’111 Application pg. 6, at lines 1-2 of
`the continued paragraph from pg. 5
`’111 Application p. 39, at lines 3-18
`of the first full paragraph.
`’111 Application p. 39, at lines 8-9 of
`the second full paragraph.
`’111 Application Fig. 16
`
`191 Prov. Application 27:24-28:6
`191 Prov. Application Fig. 14
`
`Substitute Claim 33
`The monitoring device of claim 11 30,
`wherein the first layer comprises adhesive in
`one or more locations that is configured to
`adhesively secure the device to the body of
`the subject at least one optical detector is a
`PPG sensor.
`
`Substitute Claim 36
`The monitoring device of claim 11 30,
`wherein the base comprises a signal processor
`configured to receive and process signals
`produced by the at least one optical detector
`wherein reducing footstep motion artifacts
`from the at least one optical detector during
`running by the subject further comprises pre-
`adaptive filtering processes of the signal prior
`to adaptive filtering of the signal, wherein
`pre-adaptive filtering further comprises at
`least one of band-pass, low-pass, or high-pass
`filters.
`
`
`
`
`
`13
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE
`
`PRIOR ART
`
`Summary of the Invention
`A.
`The ’830 patent discloses that “improved ways of collecting, storing and
`
`analyzing physiological information are needed.” ’830 Patent (Ex. 2105), at Col. 1,
`
`Lns. 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. The ’830 patent
`
`discloses various embodiments of such a monitoring device. As shown in Figures
`
`22A and 22B, the monitoring device “may be configured to be attached to earlobes,
`
`fingers, toes, other digits, etc.” Id., at Col. 27, Lns. 62-63.
`
`The ‘830 Patent also discloses a novel way to process the physiological and
`
`motion-related information gathered by the sensors to reduce motion artifacts. Pre-
`
`processing filtering of these signals is performed by the processor. The pre-
`
`processing filtering includes band-pass type filtering such as low-pass and high-pass
`
`filters. Once this filtering has been completed, the signals are processed using
`
`adaptive filtering. These method steps are disclosed in the ‘830 Patent as follows:
`
`The first block (block 510) represents the pre-adaptive signal
`conditioning stage. This process may utilize a combination of filters to
`remove frequency bands outside the range of interest. For example, a
`combination of band-pass, low-pass, and/or high-pass filters (such as
`digital filters) may be used. The second block (block 520) represents an
`adaptive filtering process such as the process 200 described in FIG. 13.
`This process may utilize the pre-conditioned signals from block 510 as
`inputs into an adaptive filter that reduces motion or environmental
`artifacts and noise in the primary data channel. The third block (block
`530) represents the parameter extraction stage. This process may utilize
`
`
`
`14
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`a combination of signal conditioning filters in addition to peak finding
`(such as beat finding) algorithms to calculate properties of interest (e.g.
`heart rate, blood flow, heart rate variability, respiration rate, blood
`gas/analyte level, and the like). Id., at Col. 25, Lns. 45-61.
`
`After the adaptive filtering has been completed, the processor extracts the
`
`physiological and motion-related information.
`
`The ‘830 Patent also discloses a novel way of addressing the motion-related
`
`artifacts associated with running. “The adaptive noise cancellation scheme 200 for
`
`cancelling motion noise with an optical source (specifically an infrared LED) has
`
`been demonstrated in the laboratory, with a human wearing a light-guiding earbud
`
`while resting, jogging, and running over a treadmill, and various data summaries
`
`300a-300d are presented in FIGS. 14A-14D.” Id., at Col. 24, Lns. 39-44 (Emphasis
`
`added). While certain activities allowed for the removal of motion-related artifacts,
`
`“running” provided unique obstacles. The ‘830 Patent disclosed a novel way to
`
`address this problem:
`
`As shown in FIG. 15, the beat finder was effective at measuring heart
`rate during resting and jogging. However, the beat finder alone was not
`sufficient for monitoring heart rate during running. This is because at
`high motion, the signal 300d (FIG. 14D) associated with footsteps is
`strong enough to overwhelm the smaller signal associated with heart
`rate, and so the motion-related contribution dominated the overall
`signal 300d. Thus, the beat finder cannot distinguish heart beats from
`footsteps. By employing the adaptive filtering process 200 (FIG. 13)
`before the beat finder process, the footstep motion artifacts during
`running were effectively removed from the sensor signal (Channel
`A of FIG. 13) such that the output signal (Channel C of FIG. 13)
`contained blood flow information with minimal motion artifacts.
`
`
`
`15
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Thus, this output signal contained blood flow pulse signals that could
`then be "counted" by the beat finder to generate an accurate heart rate
`assessment. Id., at Col. 25, Lns. 24-40 (Emphasis added).
`
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent in which they
`
`appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`
`2131, 2144–46 (2016). In applying a broadest reasonable i