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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
`
`
`APPLE INC. and FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003171
`U.S. Patent No. 8,989,830
`__________________
`
`DECLARATION OF BRIAN W. ANTHONY, PH.D.
`IN SUPPORT OF PETITIONER APPLE INC.’S SUR-REPLY TO
`PATENT OWNER’S CONDITIONAL MOTION TO AMEND
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2017-01553 has been joined with this proceeding.
`
`
`
`APL1111
`Apple v. Valencell
`IPR2017-00317
`
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
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`I.
`
`Introduction
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`1.
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`This declaration supplements my declaration (APL1103) submitted
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`with Apple’s Opposition to Patent Owner’s Motion to Amend. I maintain my
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`opinions in that declaration and incorporate herein my qualifications and
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`understanding of legal principles. (APL1103, ¶¶1, 6-17.) This declaration more
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`specifically addresses positions in Valencell’s Reply in Support of Its Conditional
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`Motion to Amend (“PO MTA Reply”) and the declaration of Dr. Albert Titus (Ex.
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`2151) submitted therewith.
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`2.
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`In preparing this declaration, I have reviewed and am familiar with all
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`the references cited herein. I have reviewed and am familiar with the ’830 patent
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`and its file history. I confirm that to the best of my knowledge the accompanying
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`exhibit (APL1112) is a true and accurate copy of what it purports to be, and that an
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`expert in the field would reasonably rely on it to formulate opinions such as those
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`set forth in this declaration.
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`3.
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`I am being compensated at my rate of $350 per hour for my work on
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`this case. My compensation is not dependent upon my opinions or testimony or the
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`outcome of this case.
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`Substitute Claims 21-38 are Unpatentable Under 35 U.S.C. § 103
` There Is Ample Motivation to Combine Goodman and Han
`A.
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`4.
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` I understand that Valencell (“PO”) contends that a person of ordinary
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`II.
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`skill in the art (“POSA”) would not be motivated to combine Goodman and Han.
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`(PO MTA Reply, 7.) I disagree.
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`5.
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` Goodman discloses a non-invasive optical biosensor for obtaining a
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`photoplethysmography (PPG) signal. (APL1003, ¶27; APL1103, ¶21; APL1007,
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`1:20-40.) Likewise, Han discloses a non-invasive optical biosensor for obtaining a
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`PPG signal. (APL1103, ¶35; APL1104, 1581.) Both the Goodman and Han devices
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`include finger bands. (APL1104, 1581-1582, FIG. 1; APL1103, ¶36; APL1003,
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`¶52; APL1007, 9:65-68, FIGs. 4, 6A-6B.) Thus, as demonstrated throughout this
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`proceeding, the Goodman and Han sensors are quite similar in structure, function,
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`and design.
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`6.
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`Noise sources and artifacts for non-invasive optical bio-sensors have
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`been known since non-invasive optical biosensors were first used decades ago.
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`(APL1103, ¶43; APL1003, ¶35.) Noise sources corrupt the information measuring
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`human function that is obtained from non-invasive optical biosensors. (Id.) Motion
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`artifacts are one type of noise source. (Id.) Motion artifacts arise from kinematic or
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`mechanical forces, changes in the coupling of the sensor to the human subject,
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`local variation in patient anatomy, optical properties of tissue due to geometric
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`realignment or compression, or combinations of these effects. (Id.) Multiple ways
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`to compensate for these artifacts were well understood before 2009, including
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`coupling techniques and signal processing techniques. (APL1003, ¶36.)
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`Against this background, Goodman focuses on motion artifacts
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`7.
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`attributable to relative motion of a sensor to the human appendage upon which it is
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`attached, referred to as differential-based motion artifacts. (APL1007, 4:30-37.)
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`Goodman recognizes the need to reduce all motion artifacts, including those
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`associated with motion of the human subject, referred to as internal inertial motion
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`artifacts.
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`8.
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`Han does just that–address reduction of internal inertial motion
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`artifacts associated with the motion of a human subject (e.g., movement of the
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`subject, walking, running, etc.)–by using an accelerometer, filters, and an active
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`noise cancellation algorithm. Moreover, using an accelerometer as a motion sensor
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`to measure motion and a signal processor to reduce internal inertial motion
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`artifacts in a PPG signal based on the measured motion was a conventional
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`technique known well prior to the ’830 patent. (APL1006, 4:40-66; APL1103,
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`¶44.) A POSA would have therefore been motivated to modify Goodman’s non-
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`invasive optical biosensor to include Han’s on-board accelerometer and filters for
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`performing the active noise cancellation algorithm capable of reducing internal
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`inertia-based motion artifacts to further reduce overall motion artifacts. (APL1103,
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`¶45.)
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`9.
`
`I understand that PO presents three arguments that a POSA would not
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`be motivated to combine Goodman and Han. First, PO contends that the
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`“significant complexity, size, weight and mass” of Han defeat Goodman’s
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`“intended form and function.” (PO MTA Reply, 8.) I disagree.
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`10.
`
`Including an accelerometer, filters, and processing algorithm would
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`not add appreciable complexity, size, or mass to the Goodman sensor. In fact, a
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`key design criteria of Han that was ignored by PO is that “[t]he wearable sensor
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`should be small and light and attach to [sic] body tightly to reduce noise effect and
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`feel comfortable to wear.” (APL1104, 1581-1582.) Additionally, at the time of the
`
`invention, the size of a microelectromechanical (“MEMs”) based accelerometer
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`was in the range of a millimeter high with a total area in the range of 2.5mm2 and a
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`MEMS area of only 0.22mm2. (APL1112, 64.) Goodman indicates that the
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`substrates upon which the light emitters and detectors are attached are typically 4
`
`by 6 mm, while the adhesive band is significantly larger. (APL1007, 8:61-65.) An
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`accelerometer would easily fit within the existing substrates of Goodman and be
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`comparable in size to the light emitter and detector. Thus, the accelerometer would
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`not add to the aspect ratio, nor appreciably increase the overall sensor weight.
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`Given the limited extent that the addition of an accelerometer would potentially
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`induce differential motion artifacts, a POSA would understand that those
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`impairments would far be exceeded by the improvements in the reduction of
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`motion artifacts associated with human motion (e.g., moving, hand motions,
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`walking, running).
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`11. Furthermore,
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`the additional complexity of
`incorporating an
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`accelerometer, filters, and the noise cancelling algorithm of the Han device would
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`be limited, and easily understood and managed by a POSA. There would be
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`minimal additional complexity as a result of having additional components in
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`Goodman when incorporating an accelerometer. These complexities would also
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`include design considerations on how best to position the additional elements, a
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`slight increase in power consumption, and the need for signal conditioning per the
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`Han signal processing algorithm. Each of these complexity considerations are
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`commonplace, easily managed by a POSA, and would not deter a POSA from
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`combining the Han accelerometer system to the Goodman device given the benefit
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`of motion artifact reduction. A POSA would have recognized and considered these
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`design tradeoffs, and would have been able to integrate the accelerometer, filters,
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`and noise cancellation algorithm into the Goodman device while minimizing the
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`potential drawbacks with predictable results and without undue experimentation.
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`12. PO also contends that a POSA “would not look to combine Han and
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`Goodman as Goodman’s device is flexible and disposable while the Han device is
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`a large, sturdy, solid ring with several expensive components attached to it.” (PO
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`MTA Reply, 8.) I disagree. Asada, which is dated May/June 2003, notes that
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`“MEMS accelerometers are now available at low cost.” (APL1005, p. 33.) This is
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`consistent with my own understanding of the costs of MEMS accelerometers at the
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`U.S. Patent No. 8,989,830
`time of the invention. Furthermore, relative to overall medical costs, the
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`incremental cost of disposing of the accelerometer would not make a sensor that
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`includes an accelerometer cost prohibitive or undesirable.
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`13. Moreover, even if accelerometers were not available at low cost, the
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`accelerometer could be affixed to a portion of the Goodman sensor that would not
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`be disposable without impairing the sanitary characteristics of the Goodman
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`sensor. Thus, the accelerometer could be reusable and thus its cost would not
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`impair the disposability of the Goodman sensor. Finally, the notion presented by
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`PO that the “large, sturdy, solid ring” of Han would need to be integrated into
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`Goodman is not required by the proposed combination. The only aspects of Han to
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`be integrated with Goodman would be the accelerometer, filters, and noise
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`cancellation algorithm. As discussed previously, these elements would not
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`appreciably add to the weight or size of the Goodman sensor.
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`14. Lastly, I understand that PO contends that a POSA “would not look to
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`combine Han with Goodman as Goodman teaches away from a circumferential
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`device such as a ‘tight’ ring by specifically stating that ‘the plastic, flexible
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`adhesive strip can be secured over the end of the fingertip, not circumferentially
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`around the finger.” (PO MTA Reply, 9.) I disagree. Goodman does not disparage
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`circumferential devices. Goodman simply indicates that in an embodiment one of
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`its disclosed devices wraps over the end of the fingertip, which is partially
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`circumferential in any case. As such, it is my opinion that none of PO’s arguments
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`demonstrate that a POSA would not combine Goodman and Han.
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` Goodman in view of Han discloses a signal processor configured
`B.
`to receive and process signals…during running.
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`15.
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`I understand that PO contends that “Goodman in view of Han fails to
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`disclose ‘a signal processor configured to receive and process signals produced by
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`the at least one optical detector and the motion sensor to (i) reduce footstep motion
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`artifacts from the at least one optical detector during running by the subject and (ii)
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`extract physiological and motion parameters’ as set forth is substitute claims 21
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`and 30.” (PO MTA Reply, 10.) I disagree. Specifically, PO alleges that “Petitioners
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`fail to address the reduction in footstep motion artifacts during running.” (Id.
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`(emphasis original).) PO misrepresents Petitioner’s Opposition and ignores the
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`explicit teachings of Han. Han states that “[w]hen employed, the active noise
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`cancellation algorithm is capable of removing artifacts from daily movement,
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`including movements limited to the finger, all the way up to walking or running.”
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`(APL1104, 1584). Thus, a POSA would understand that the combination of
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`Goodman and Han does disclose the “during running” limitation.
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`Case IPR2017-00317
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`US. Patent No. 8,989,830
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`III. Conclusion
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information and belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
`
`Executed this 12‘h day of January, 2018.
`
`fiectfully
`
`bmitt- d,
`
`
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