throbber
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
`
`Telephone: 972-550-2955
`
`Fax: 469-442-0091
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. and FITBIT, INC.
`Petitioners
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-003171
`U.S. Patent No. 8,989,830
`
`
`
`
`
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`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
`
`
`
`1 IPR2017-01553 has been joined to this current proceeding.
`
`
`
`i
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION ...................................................................................... 1
`
`II. PATENT OWNER’S MOTION SATISFIES ALL REQUIREMENTS OF
`
`37 C.F.R. § 42.121 ...................................................................................... 2
`
`A. Patent Owner’s Motion to Amend Should Not Be Denied ..................... 2
`
`B. Patent Owner’s Proposed Substitute Claims Satisfy the Scope
` Requirement of 37 C.F.R. § 42.121 ........................................................ 2
`
`III. THE CLAIM AMENDMENTS ARE PATENTABLE OVER THE
` ASSERTED PRIOR ART .......................................................................... 4
`
`A. No Motivation to Combine Goodman and Han ................................... 4
`
`1. Goodman .............................................................................................. 4
`
`2. Han ....................................................................................................... 5
`
`3. Motivation to Combine Goodman and Han ......................................... 7
`
`B. The Substitute Claims Are Not Obvious In View Of The Cited Prior
` Art. ......................................................................................................... 10
`
`VI. CONCLUSION ........................................................................................ 12
`
`
`
`
`
`
`
`
`
`ii
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Akzo N.V. v. U.S. Int’l Trade Com’n, 808 F.2d 1471, 1481 (Fed. Cir.
`1986) ............................................................................................................ 9
`
`Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017) ........ 1, 2
`
`Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Final
`Written Decision, Paper 26 (P.T.A.B. June 11, 2013) ................................ 3
`
`In re ActiveVideo Networks, Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012 ....... 7
`
`In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ............................................ 9
`
`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ................................ 9
`
`Statutes
`
`35 U.S.C. § 316(e) ............................................................................................ 1
`
`Rules
`
`37 C.F.R. § 42.121 ........................................................................................ 1, 2
`
`37 C.F.R. § 42.121(a)(2) ........................................................................... 2, 3, 4
`
`37 C.F.R. § 42.22 .......................................................................................... 3, 4
`
`
`
`
`
`
`
`iii
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`UPDATED TABLE OF EXHIBITS
`
`Exhibit
`No.
`
`Description
`
`2105
`
`U.S. Patent No. 8,989,830 to LeBoeuf et al., issued March 24, 2015
`
`2106
`
`2107
`
`2108
`
`2109
`
`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.
`
`2110
`
`Declaration of Dr. Albert H. Titus
`
`2128
`
`U.S. Patent Application Publication No. 2008/0132798 to Hong et
`al., published June 5, 2008
`
`2129
`
`U.S. Patent Number 6,081,742 to Amano et al., issued June 27, 2000
`
`2130
`
`2131
`
`2133
`
`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
`
`2150
`
`2151
`
`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)
`
`Transcript of the Deposition of Dr. Brian W. Anthony, December 20,
`2017
`
`Supplemental Declaration of Albert H. Titus in Support of
`Valencell’s Motions to Amend under 37 C.F.R. § 42.121
`
`
`
`v
`
`
`
`
`
`
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`I.
`
`INTRODUCTION
`
`Petitioners, Apple, Inc. (“Apple”) and FitBit, Inc. (“FitBit”) (collectively,
`
`“Petitioners”) have failed to carry their burden of proving the proposed substitute
`
`claims are unpatentable. Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed.
`
`Cir. 2017) (requiring a petitioner to prove propositions of unpatentability for
`
`amended claims under 35 U.S.C. § 316(e)). Petitioners’ Opposition (“Opp.”) not
`
`only fails to cite references that disclose all the limitations of the substitute claims,
`
`but it also fails to establish that a one having ordinary skill in the art would be
`
`motivated to combine the references to arrive at the claimed methods. Instead,
`
`Petitioners attempt to avoid the merits with scattershot technical arguments that
`
`obscure the fundamental issue surrounding its obviousness analysis—namely
`
`whether a person of ordinary skill in the art (“POSITA”) would have had reason to
`
`combine the cited prior art references to arrive at the claimed invention.
`
`Patent Owner moved, under 37 C.F.R. § 42.121, to amend the claims of U.S.
`
`Patent No. 8,989,830 (the “’830 Patent”) (Ex. 1001) contingent on the outcome of
`
`the trial. Contrary to Petitioners’ allegations, the substitute claims are responsive to
`
`a ground of unpatentability because the substitute claims narrow the challenged
`
`claims being replaced and the substitute claims are supported by the specification.
`
`For the reasons set forth below, Valencell’s Motion should be granted.
`
`
`
`1
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`II.
`
`PATENT OWNER’S MOTION SATISFIES ALL REQUIREMENTS
`OF 37 C.F.R. § 42.121
`
`
`
`A.
`
`Patent Owner’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., 872 F.3d. at 1306 (citations omitted). As set forth
`
`in Valencell’s Motion to Amend and reiterated herein, Valencell’s proposed
`
`amendments are responsive to a ground of unpatentability because Substitute Claims
`
`21-38 narrow the challenged claims being replaced. See Motion at pp. 1 - 7.
`
`Moreover, Substitute Claims 21-38 do not enlarge the scope of the patent because
`
`the scope of the substitute claims is narrower than the scope of each corresponding
`
`original claim. Accordingly, Valencell’s Motion should not be denied.
`
`B.
`
`Patent Owner’s Proposed Substitute Claims Satisfy the Scope
`Requirement of 37 C.F.R. § 42.121
`
`Petitioners argue that Valencell’s Motion to Amend should be denied because
`
`it “does not respond to a ground of unpatentability involved in the trial.” Pet.’s Opp
`
`at p. 7 (citing 37 C.F.R. § 42.121(a)(2)). However, 37 C.F.R. § 42.121(a)(2)
`
`explicitly provides “a motion to amend may be denied where the amendment does
`
`not respond to a ground of unpatentability involved in the trial.” The Patent Trial
`
`and Appeal Board in Idle Free clarified this requirement stating, “[a] proposed
`
`
`
`2
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`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). As explained in the
`
`Motion to Amend, the proposed amendments set forth in substitute independent
`
`claims 21 and 30 serve to narrow original claims 1 and 11, respectively. Likewise,
`
`the proposed amendments set forth in substitute claim 24 and 27 narrow their scope
`
`beyond their dependence from substitute claim 21 and the proposed amendments set
`
`forth in substitute claim 33 and 36 narrow their scope beyond their dependence from
`
`substitute claim 30. See Motion at pp. 1 - 7. Accordingly, Valencell’s substitute
`
`claims are responsive to a ground of unpatentability because the substitute claims
`
`narrow the challenged claims being replaced.
`
`In further support of its contention under 37 C.F.R. § 42.121(a)(2), Petitioners
`
`attempt to rely upon the Valencell’s burden of production under 37 C.F.R. § 42.22
`
`by erroneously contending that Valencell failed to include a detailed explanation of
`
`the significance of the amended claims. See Opp. at pgs. 1 - 2. In particular,
`
`Petitioners cherry pick and misrepresent a purported “cursory statement” from the
`
`Introduction of Valencell’s Motion to support its contention; while simply
`
`disregarding the body of the Motion that is contrary to their position, where
`
`Valencell identified in detail the patentably distinct features for its proposed
`
`
`
`3
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`amendments. See Id.; Motion at pp. 14 - 16. As Valencell’s proposed substitute
`
`claims are undoubtedly supported by a showing of responsiveness to an alleged
`
`ground of unpatentability and Valencell’s Motion specifically identified the
`
`patentably distinct features for its proposed amendments, Valencell has satisfied the
`
`requirements of both 37 C.F.R. § 42.121(a)(2) and 37 C.F.R. § 42.22.
`
`III. THE CLAIM AMENDMENTS ARE PATENTABLE OVER THE
`
`ASSERTED PRIOR ART
`
`A. No Motivation to Combine Goodman and Han
`
`Petitioners propose Goodman2 (U.S. Patent No. 4,830,014 (“Goodman”),
`
`APL1007, in view of Han article (“Han”), APL1104, allegedly renders substitute
`
`claims 21 – 24, 27, 28, 30 – 33, 36 and 37 obvious.
`
`Goodman
`1.
`Goodman describes a device that is small and, when “the adhesive fastener is
`
`used, the effect of the light source and photo-detector substrates being integrated
`
`into the adhesive fastener is that they become, in effect, a part of the skin.” APL1007
`
`at Abstract; Titus Declaration, ¶ 9. “This disclosed adhesive fastening conforms the
`
`elements of the apparatus so completely to the patient’s skin that motion artifact is
`
`eliminated. Hence, the light extinction measurement and resulting analysis to
`
`determine oxygen saturation and pulse rate is more accurate and less sensitive to
`
`
`
`2 Patent Owner acknowledges that if the Board is considering the Conditional
`Motion to Amend, the Board must have concluded that the original claims of ‘830
`were invalid. As such, Patent Owner will limit its arguments to the newly added
`elements in its analysis.
`
`
`
`4
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`interference.” APL1007 at Col. 5, lns. 41 – 47; Titus Declaration, ¶ 9. The device’s
`
`tight adhesion to the skin prevents motion artifacts from distorting the signal. Titus
`
`Declaration, ¶ 9. The Goodman device is “directed to providing non-invasive,
`
`reliable, and continuous monitoring of the vital signs of a patient requiring intensive
`
`care to prevent vital organ damage or reduced biopotential,” thus a patient with
`
`limited motion or mobility. APL1007 at Col. 5, lns. 3-6; Titus Declaration, ¶ 9. The
`
`Goodman device “is entirely disposable” and thus low cost. APL1007 at Col. 6, lns.
`
`22-23; Titus Declaration, ¶ 9. Additionally, “the plastic, flexible adhesive strip can
`
`be secured over the end of the fingertip, not circumferentially around the finger. This
`
`prevents restriction of blood flow to the tissue to be illuminated and measured. Only
`
`nominal pressure from this invention to the patient is applied locally to the patient
`
`on the topical skin layer directly holding the light source and the photosensor. This
`
`pressure does not extend across or into the perfused flesh in any way. There is no
`
`localized force exerted upon the flesh to be transilluminated. In sum, the flexible
`
`adhesive strip does not bind the perfused flesh. Consequently, the blood flow being
`
`interrogated is undisturbed.” APL1007 at Col. 5, lns. 56-68; Titus Declaration, ¶ 9.
`
`Thus, Goodman’s device by design minimizes the potential for inertial effects.
`
`Titus Declaration, ¶ 9.
`
`Han
`2.
`Han is a conference paper entitled “Development of a wearable health
`
`monitoring device with motion artifact reduced algorithm.” APL1104 at Title; Titus
`
`
`
`5
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`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Declaration, ¶ 10. Han describes a ring-type electronic device or “finger band
`
`sensor” that has a PPG sensor with a microprocessor that wirelessly communicates
`
`data to a remote computer. APL1104 at 1581-82; Titus Declaration, ¶ 10. The device
`
`is composed of a number of components with a larger mechanical structure to secure
`
`it to the finger, and a battery for power. APL1104 at 1582; Titus Declaration, ¶ 10.
`
`Han discusses a motion-artifact reduction algorithm that includes filtering (including
`
`an adaptive filter). APL1104 at 1582; Titus Declaration, ¶ 10.
`
`Han tests the device using motion to simulate walking. APL1104 at 1583-84;
`
`Titus Declaration, ¶11. Han identifies the hand motion frequency as “Hand Motion,
`
`Run, 3 Hz.” APL1104 at Table 2, 1584; Titus Declaration, ¶ 11. Thus, Han states
`
`that running is equivalent to 3Hz hand motion. Titus Declaration, ¶ 11. Han
`
`provides “[a]s experiments, one directional hand motions which has difference
`
`frequency conditions are given.” APL1104 at 1583; Titus Declaration, ¶ 11.
`
`Additionally, Han states, “PPG signals are measured at not only moving left finger
`
`but also right finger in fixed pose, as a reference signal.” APL1104 at 1583; Titus
`
`Declaration, ¶ 11. The Han device uses a signal from a stationary right finger as a
`
`comparison for the signals generated by the left finger, which is in motion. Titus
`
`Declaration, ¶ 11. Additionally, Han does not disclose that the finger movement is
`
`striking a surface to simulate footsteps. Titus Declaration, ¶ 11. Thus, finger-only
`
`or hand-only motion is used to allegedly simulate actual running. Titus Declaration,
`
`
`
`6
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`¶ 11. Han does not disclose any actual testing upon a running or jogging subject,
`
`Han only discloses this non-running simulation at a slow rate. Titus Declaration, ¶
`
`11. So, the Han device has not demonstrated in theory or practice to be capable of
`
`reducing footstep motion artifacts. Titus Declaration, ¶ 11.
`
`The filtering disclosed by Han appears to be done on the remote computer, as
`
`Han states that “Labview software from National Instrument obtains transmitted data
`
`and display by graph on the host computer. Also, digital filtering and analysis
`
`algorithm are programmed.” APL1104 at 1582; Titus Declaration, ¶ 12. Thus, the
`
`filtering is also programmed in Labview, which is software developed by National
`
`Instruments and runs on a computer (not on the ring). Titus Declaration, ¶ 12. And,
`
`since the Han filtering is done in Labview on the computer, this is not suited to actual
`
`running. Titus Declaration, ¶ 12.
`
`3. Motivation to Combine Goodman and Han
`A person of ordinary skill in the art (“POSITA”) would not be motivated to
`
`combine Han with Goodman. Titus Declaration, ¶ 13. The Federal Circuit Court of
`
`Appeals has warned that an analysis based on expert testimony that “based on the
`
`‘modular’ nature of the claimed components,” a POSITA would have known how
`
`to combine references and would have been motivated to do so is “fraught with
`
`hindsight bias.” In re ActiveVideo Networks, Inc., 694 F.3d 1312, 1327 (Fed. Cir.
`
`2012). Such is the situation set forth by the Petitioners.
`
`
`
`7
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`The device of Han adds significant complexity, size, weight and mass, all of
`
`which defeat Goodman’s intended form and function. Titus Declaration, ¶ 13.
`
`Indeed, Goodman, in his discussion of the background of the invention, lays out the
`
`justification for his invention as follows:
`
`“A sensor with appreciable mass or high aspect ratio is prone to
`developing relative motion between the light source, the photo-sensor
`and the tissue from minor mechanical disturbance. This relative motion
`creates concomitant variations in the light transmission from source to
`sensor and thus grossly distorts the measurement of light extinction.
`When this motion occurs, variances of light transmission are erroneous
`indicators of light extinction. These extinction errors ultimately cause
`corresponding errors in oxygen saturation measurement, all as a result
`of discontinuous contact and other causes of relative motion between
`the light source, the photo-sensor, and tissue. A possible profile of such
`a variant motion is shown in FIG. 1E as component 12.” APL1007 at
`Col. 2, lns. 54-68; Titus Declaration, ¶ 13.
`
`Thus, Goodman recognizes the problem and it is why his device is developed. Titus
`
`Declaration, ¶ 14. Therefore, adding mass and a high aspect ratio creates the
`
`problem that Goodman is trying to solve, so a POSITA would not look to combine
`
`Han and Goodman for this reason. Titus Declaration, ¶ 14. Petitioners arguments
`
`in favor of the combination of Goodman and Han fail to address this key issue.
`
`A POSITA would not look to combine Han and Goodman as Goodman’s
`
`device is flexible and disposable while the Han device is a large, sturdy, solid ring
`
`with several expensive components attached to it. Titus Declaration, ¶ 15. A
`
`POSITA would understand that the size, weight, and costs of the additional
`
`components of Han would defeat the purpose of the flexible and disposable device
`
`
`
`8
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`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`of Goodman. Titus Declaration, ¶ 15. Additionally, the Han device is designed to
`
`“attach to body tightly to reduce noise effect and feel comfortable to wear.”
`
`APL1104 at 1581-82; Titus Declaration, ¶ 15. A POSITA would not look to
`
`combine Han with Goodman as Goodman teaches away from a circumferential
`
`device such as a “tight” ring by specifically stating that “the plastic, flexible adhesive
`
`strip can be secured over the end of the fingertip, not circumferentially around the
`
`finger. This prevents restriction of blood flow to the tissue to be illuminated and
`
`measured. . . . In sum, the flexible adhesive strip does not bind the perfused flesh.
`
`Consequently, the blood flow being interrogated is undisturbed.” APL1007 at Col.
`
`5, lns. 56-68; Titus Declaration, ¶ 15.
`
`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.” Akzo N.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); KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 416 (2007) (when prior art teaches away from a combination, it does not support
`
`a finding of obviousness). Goodman teaches away from a device such as the one
`
`
`
`9
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`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`disclosed in Han. Accordingly, a POSITA would not look to combine Han and
`
`Goodman for the reasons set forth above. Titus Declaration, ¶ 15.
`
`B.
`
`
`The Substitute Claims Are Not Obvious In View Of The Cited
`Prior Art.
`
`
`
`Petitioners have failed to show that the combination of Goodman in view of
`
`Han discloses the claimed invention as set forth in the substitute claims.
`
`Specifically, Goodman in view of 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 claims 21 and 30. Titus Declaration, ¶
`
`16. Petitioners fail to address the reduction in footstep motion artifacts during
`
`running. Id. Petitioners barely mention this claim element when they state that the
`
`active noise cancellation algorithm of the Han filters, when employed, “is capable
`
`of removing artifacts from daily movement, including movements limited to the
`
`finger, all the way up to walking or running.” Opposition at pg. 14. For support for
`
`this statement, Petitioners state “Han’s fourth order adaptive filter and digital filter
`
`would implement Han’s active noise cancellation algorithm to reduce motion
`
`artifacts in the signal measured by Goodman’s optical biosensor. (APL1103 , ¶54.)”
`
`Opposition at pg. 13. This support, however, fails to disclose the new claim elements
`
`in Substitute Claims 21 and 30. Titus Declaration, ¶ 16.
`
`
`
`10
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`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.
`
`Han fails to disclose filtering sufficient to address the footstep-related artifacts
`
`of running. Titus Declaration, ¶ 18. Han never even addresses the footstep-related
`
`artifacts of running. Titus Declaration, ¶ 18. Han only discloses finger and/or hand
`
`waving without either ever contacting a surface. Titus Declaration, ¶ 18. The motion
`
`artifacts of such activity are quite different than the footstep-related artifacts during
`
`running. Titus Declaration, ¶ 18. 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) extract
`
`
`
`11
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`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`physiological and motion parameters.” Han merely discloses waving a hand at 3Hz
`
`for its simulation. Titus Declaration, ¶ 18. 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. Titus
`
`Declaration, ¶ 18. 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.
`
`VI. CONCLUSION
`
`For the foregoing reasons, Valencell respectfully submits that Petitioners have
`
`not met their burden to establish that the substitute claims are unpatentable.
`
`Therefore, in the event the Board concludes that Original Claims 1 - 6, 8 - 16, and
`
`18 - 20 are invalid, Valencell has met its burden and respectfully requests that the
`
`Patent Trial and Appeal Board replace the original claims with Substitute Claims 21
`
`- 38.
`
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`12
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`Date: December 29, 2017
`
`
`
`Respectfully submitted,
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`
`/s/ Sanford E. Warren, Jr.
`Sanford E. Warren, Jr.
`Reg. No. 33,219
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: swarren@wriplaw.com
`Telephone: 972-550-2955
`
`R. Scott Rhoades
`Reg. No. 44,300
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: srhoades@wriplaw.com
`Telephone: 972-550-2997
`
`Attorneys for Patent Owner
`
`
`
`13
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`
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`

`

`CERTIFICATE OF SERVICE
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`I certify that the foregoing PATENT OWNER’S REPLY IN SUPPORT
`
`OF ITS CONDITIONAL MOTION TO AMEND UNDER 37 C.F.R. §
`
`42.121was served on the Petitioner by electronic mail on December 29, 2017:
`
`Michael D. Specht, Reg. No. 54,463 (mspecht-PTAB@skgf.com)
`Michelle K. Holoubek, Reg. No. 54,179 (holoubek-PTAB@skgf.com)
`Jason A. Fitzsimmons, Reg. No. 65,367 (jfitzsimmons-PTAB@skgf.com)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C., (PTAB@skgf.com)
`1100 New York Avenue, N.W.,
`Washington, D.C., 20005
`
`Harper Batts (harper.batts@bakerbotts.com)
`Jeremy Taylor (jeremy.taylor@bakerbotts.com)
`(dlfitbitvalencell@bakerbotts.com)
`BAKER BOTTS L.L.P.
`1001 Page Mill Road, Bldg. One, Suite 200
`Palo Alto, CA 94304
`
`
`
`
`/s/ Sanford E. Warren, Jr.
`Sanford E. Warren, Jr.
`Reg. No. 33,219
`R. Scott Rhoades
`Reg. No. 44,300
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Email: swarren@wriplaw.com
`Telephone: 972-550-2955
`
`Attorneys for Patent Owner
`
`14
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`

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