`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC. and FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003171
`U.S. Patent No. 8,989,830
`__________________
`
`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.
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Description
`U.S. Patent No. 8,989,830 to LeBoeuf et al. titled “Wearable
`Light-Guiding Devices for Physiological Monitoring,” issued
`March 24, 2015
`U.S. Patent No. 8,989,830 File History
`Declaration of Dr. Brian W. Anthony in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,989,830
`Curriculum Vitae of Dr. Brian W. Anthony
`Asada, H. et al. “Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors,” IEEE Engineering in
`Medicine and Biology Magazine, May/June 2003; pp. 28-40
`U.S. Patent No. 5,226,417 to Swedlow et al. titled “Apparatus
`for the Detection of Motion Transients,” issued July 13, 1993
`U.S. Patent No. 4,830,014 to Goodman et al. titled “Sensor
`Having Cutaneous Conformance,” issued May 16, 1989
`U.S. Patent No. 6,745,061 to Hicks et al. titled “Disposable
`Oximetry Sensor,” issued June 1, 2004
`U.S. Patent No. 7,190,986 to Hannula et al. titled “Non-
`Adhesive Oximeter Sensor for Sensitive Skin,” issued March
`13, 2007
`U.S. Patent No. 5,797,841 to Delonzor et al. titled “Shunt
`Barrier in Pulse Oximeter Sensor,” issued August 25, 1998
`U.S. Patent Application Publication No. 2007/0123763 to Al-
`Ali et al. titled “Optical Sensor Including Disposable and
`Reusable Elements,” published May 31, 2007
`Excerpt from Merriam Webster’s Collegiate Dictionary,
`Eleventh Edition, 2008; p. 828
`Mendelson, Y. et al., “Skin Reflectance Pulse Oximetry: In
`Vivo Measurements from the Forearm and Calf,” Journal of
`Clinical Monitoring, Vol. 7, No. 1, January 1991; pp. 7-12
`Konig, V. et al., “Reflectance Pulse Oximetry – Principles and
`Obstetric Application in the Zurich System,” Journal of Clinical
`Monitoring and Computing, Vol. 14, No. 6, August 1998; pp.
`403-412
`
`Exhibit No.
`
`1001
`
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`
`- i -
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Exhibit No.
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`1021
`
`1022
`
`1023-1099
`1100
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`Description
`Mendelson, Y. et al. “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th
`IEEE EMBS Annual International Conference, New York City,
`New York, August 30-September 3, 2006; pp. 912-915
`U.S. Patent No. 6,608,562 to Kimura et al. titled “Vital Signal
`Detecting Apparatus,” issued August 19, 2003
`Tremper, K. et al., “Pulse Oximetry,” Medical Intelligence
`Article, Anesthesiology, Vol. 70, No. 1, January 1989; pp. 98-
`108
`Declaration of Gerard P. Grenier in support of Asada, H. et al.
`“Mobile Monitoring with Wearable Photoplethysmographic
`Biosensors,” IEEE Engineering in Medicine and Biology
`Magazine, May/June 2003; pp. 28-40 (APL1005)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Transcript of teleconference among Board and Parties held on
`October 13, 2017, Apple Inc. v. Valencell, Inc., Case Nos.
`IPR2017-00315, IPR2017-00317, IPR2017-00318, IPR2017-
`00319, and IPR2017-00321.
`Intentionally Left Blank
`Transcript of the Deposition of Dr. Albert Titus, November 9,
`2017, Apple Inc. v. Valencell, Inc., Case No. IPR2017-00318.
`Transcript of the Deposition of Dr. Albert Titus, November 10,
`2017, Apple Inc. v. Valencell, Inc., Case No. IPR2017-00317.
`Declaration of Dr. Brian W. Anthony in Support of Petitioner’s
`Reply to Patent Owner’s Response
`Declaration of Dr. Brian W. Anthony in Support of Petitioner’s
`Opposition to Patent Owner’s Motion to Amend in Inter Partes
`Review of U.S. Patent No. 8,989,830
`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)
`Declaration of Gerard P Grenier in support of 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) (Ex. 1106)
`
`
`
`- ii -
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Description
`Lu X. et al., “A statistical experimental study of the injection
`molding of optical lenses,” Journal of Materials Processing
`Technology, Vol. 113, 2001; pp. 189-195
`Ong N.S. et al., “Microlens array produced using hot embossing
`process,” Microelectric Engineering, Vol. 60, 2002; pp. 365-379
`Rapaport et al., “Control of Blood Flow to the Extremities at
`Low Ambient Temperatures,” Journal of Applied Physiology,
`Vol. 2, 1949; pp. 61-71
`Daanen H.A.M., “Finger cold-induced vasodilation: a review,”
`Springer-Verlag, European Journal of Applied Physiology, Vol.
`89, 2003; pp. 411-426
`Board Teleconference Call Transcript, December 12, 2017
`Declaration of Dr. Brian W. Anthony in Support of Petitioner
`Apple Inc.’s Sur-Reply to Patent Owner’s Conditional Motion
`to Amend
`Wen H. Ko, “Review of Trends and Frontiers of MEMS,”
`Sensors and Actuators A, Vol. 136, 2007; pp. 62-67
`
`Exhibit No.
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`
`
`- iii -
`
`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`I.
`
`Introduction
`
`Petitioner Apple Inc. opposed Valencell’s (“PO”) Conditional Motion to
`
`Amend (“MTA”) because the MTA failed to respond to the grounds of
`
`unpatentability and the proposed substitute claims are unpatentable under 35
`
`U.S.C. § 103. Petitioner also demonstrated that substitute claims 24 and 33
`
`improperly broaden the scope of claims 4 and 14, and that substitute claims 26 and
`
`35 are indefinite under 35 U.S.C. § 112. PO’s Reply in Support of its Conditional
`
`MTA (“PO MTA Reply”) misapplies the law and provides conclusory and
`
`contradictory arguments that fail to rebut these reasons for denying the MTA.
`
`Thus, as demonstrated in Petitioner’s Opposition, the Board should deny the MTA.
`
`II.
`
`Patent Owner Failed to Respond to Any Instituted Ground
`
`PO contends that “Valencell’s substitute claims are responsive to a ground
`
`of unpatentability because the substitute claims narrow the challenged claims being
`
`replaced.” (PO MTA Reply, 3.) Simply narrowing the scope of a claim does not
`
`demonstrate that PO is responding to a ground of unpatentability. Under 37 C.F.R.
`
`§ 42.121(a)(2), “[a] motion to amend may be denied where: (i) The amendment
`
`does not respond to a ground of unpatentability involved in the trial; or (ii) The
`
`amendment seeks to enlarge the scope of the claims of the patent or introduce new
`
`subject matter.” By adding subsection (i), the Board’s rules go beyond the statutory
`
`requirement that an amendment “may not enlarge the scope of the claims of the
`
`
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`patent or introduce new matter.” 35 U.S.C. § 326(d)(3). Thus, PO’s mere
`
`contention that the claims are narrowed is insufficient to meet the requirements of
`
`§ 42.121(a)(2) because it is not responsive to any ground of unpatentability. For at
`
`least this reason, the MTA should be denied. American Megatrends, Inc. v.
`
`Kinglite Holdings Inc., IPR2015-01094, Paper 48, p. 28 (denying a motion to
`
`amend: “[w]e agree that Patent Owner’s proposed amendment is not responsive to
`
`any ground of patentability at issue in this proceeding, and instead addresses
`
`patentability under 35 U.S.C. § 101”); see also Blackberry Corp. v. MobileMedia
`
`Ideas LLC, IPR2013-00016, Paper 32, pp. 15-18 (Feb. 25, 2014) (a patent owner
`
`stating that the amendment “more specifically” defines the invention insufficiently
`
`explains why the amendment is responsive to a ground of unpatentability).
`
`III. Substitute Claims 21-38 are Unpatentable Under 35 U.S.C. § 103
`A. There Is Ample Motivation to Combine Goodman and Han
`PO contends that a person of ordinary skill in the art (“POSA”) would not be
`
`motivated to combine Goodman and Han. (PO MTA Reply, 7.) The evidence
`
`demonstrates otherwise. The Goodman and Han sensors are similar in structure,
`
`function, and design. Bath are non-invasive optical biosensors that obtain a PPG
`
`signal from a sensor affixed to a finger. (APL1003, ¶¶27, 52; APL1103, ¶¶21, 35-
`
`36; APL1007, 1:20-40, 9:65-68, FIGs. 4, 6A-6B; APL1104, 1581-1582, FIG. 1;
`
`Pet’r Oppo., 4.) Furthermore, noise sources and artifacts for non-invasive optical
`
`
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`biosensors have been known since non-invasive optical biosensors were first used
`
`decades ago. (Pet’r Oppo., 7; APL1103, ¶43; APL1003, ¶35.) Multiple ways to
`
`compensate for these artifacts were well understood before 2009, including
`
`coupling techniques and signal processing techniques. (APL1003, ¶36.) Against
`
`this background, Goodman focuses on motion artifacts attributable to relative
`
`motion of a sensor to the human appendage upon which it is attached, referred to
`
`as differential-based motion artifacts. (Pet’r Oppo., 8; APL1007, 4:30-37.)
`
`Goodman recognizes the need to reduce all motion artifacts, including those
`
`associated with the human’s motion, referred to as internal inertial motion artifacts.
`
`Han does just that–address reducing internal inertial motion artifacts
`
`associated with a human subject’s motion (e.g., the subject’s movement, running,
`
`etc.)–by using an accelerometer, filters, and an active noise cancellation algorithm.
`
`Using an accelerometer as a motion sensor to measure motion and a signal
`
`processor to reduce inertial motion artifacts in a PPG signal based on the measured
`
`motion was a conventional technique known well prior to the ’830 patent. (Pet’r
`
`Oppo., 8; see e.g., APL1006, 4:40-66; APL1103, ¶44.) A POSA would have
`
`therefore been motivated to modify Goodman’s non-invasive optical biosensor to
`
`include Han’s on-board accelerometer and filters for performing the active noise
`
`cancellation algorithm capable of reducing internal inertia-based motion artifacts to
`
`further reduce overall motion artifacts. (Pet’r Oppo., 8-9; APL1103, ¶45.)
`
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`Nonetheless, against the overwhelming weight of the evidence, PO presents
`
`three conclusory and non-persuasive arguments that a POSA would not be
`
`motivated to combine Goodman and Han. First, PO contends that the “significant
`
`complexity, size, weight and mass” of Han defeat Goodman’s “intended form and
`
`function.” (PO MTA Reply, 8.) This argument is conclusory and not supported by
`
`evidence. And Dr. Titus’s declaration merely makes the same statement without
`
`any further explanation or corroborating support. (Ex. 2151, ¶13.)
`
`Rather, including an accelerometer, filters, and processing algorithm would
`
`not add appreciable complexity, size, or mass to the Goodman sensor. (APL1111,
`
`¶10.) In fact a key design criteria of Han that was ignored by PO is that “[t]he
`
`wearable sensor should be small and light and attach to [sic] body tightly to reduce
`
`noise effect and feel comfortable to wear.” (APL1104, 1581-1582.) Additionally,
`
`at the time of the invention the size of a microelectromechanical (“MEMs”) based
`
`accelerometer was in the range of a millimeter high with a total area in the range of
`
`2.5mm2 and a MEMS area of only 0.22mm2. (APL1111, ¶10; APL1112, 64.)
`
`Goodman indicates that the light emitters and detectors are attached to substrates
`
`that are typically 4 by 6 mm, while the adhesive band is significantly larger.
`
`(APL1007, 8:61-65.) An accelerometer would easily fit within the existing
`
`substrates of Goodman and be comparable in size to the light emitter and detector.
`
`Thus, the accelerometer would not add to the aspect ratio, nor appreciably increase
`
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`the overall sensor weight. (APL1111, ¶10.) To the limited extent that adding an
`
`accelerometer would potentially induce differential motion artifacts, a POSA
`
`would understand that those impairments would be far exceeded by the
`
`improvements in reducing motion artifacts associated with human motion (e.g.,
`
`moving, hand motions, walking, running). (APL1111, ¶10.)
`
`Further, a POSA would easily understand and manage incorporating Han’s
`
`accelerometer, filters, and noise cancelling algorithm. (APL1111, ¶11.) A POSA
`
`would have considered the limited complexities as design tradeoffs, and been able
`
`to integrate Han’s accelerometer, filters, and noise cancelling algorithm into
`
`Goodman’s device while minimizing potential drawbacks with predictable results
`
`and without undue experimentation. (APL1111, ¶11.)
`
` PO also contends that a POSA “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.” (PO
`
`MTA Reply, 8.) As a
`
`threshold matter, PO’s argument
`
`is conclusory,
`
`contradictory, and without corroborating support except for Dr. Titus’s declaration,
`
`which merely repeats PO’s statements. More critically, PO’s argument is simply
`
`incorrect. Asada, which
`
`is dated May/June 2003, notes
`
`that “MEMS
`
`accelerometers are now available at low cost.” (APL1005, p. 33.) Relative to
`
`overall medical costs, the incremental cost of disposing the accelerometer would
`
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`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`not make the device cost prohibitive or undesirable. (APL1111, ¶12.) Finally, PO’s
`
`argument that Han’s “large, sturdy, solid ring” would need to be integrated into
`
`Goodman is a red herring and is not required by the proposed combination. The
`
`only aspects of Han to be integrated with Goodman would be the accelerometer,
`
`filters, and noise cancellation algorithm. As discussed above, these elements would
`
`not appreciably add to the weight or size of the Goodman sensor. (Id. at ¶13.)
`
`Lastly, PO contends that a POSA “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.” (PO
`
`MTA Reply, 9.) There is no evidence that supports the premise that Goodman
`
`teaches away from a circumferential device. Goodman does not disparage
`
`circumferential devices. (APL1111, ¶14.) Goodman simply indicates that in an
`
`embodiment one of its disclosed devices wraps over the end of the fingertip, which
`
`is partially circumferential in any case. As such, none of PO’s arguments
`
`demonstrate that a POSA would not combine Goodman and Han.
`
`B. Goodman in view of Han discloses a signal processor configured
`to receive and process signals…during running.
`
`PO contends that “Goodman in view of Han fails to disclose ‘a signal
`
`processor configured to … (i) reduce footstep motion artifacts from the at least one
`
`optical detector during running by the subject … as set forth is substitute claims 21
`
`
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`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`and 30.” (PO MTA Reply, 10.) Specifically, PO alleges that “Petitioners fail to
`
`address the reduction in footstep motion artifacts during running.” (Id. (emphasis
`
`original).) PO misrepresents Petitioner’s Opposition and ignores Han’s explicit
`
`teachings. Petitioner stated that “[w]hen employed, the active noise cancellation
`
`algorithm is capable of removing artifacts from daily movement, including
`
`movements limited to the finger, all the way up to walking or running.” (Pet’r
`
`Oppo., pp. 5-6, 14 (citing APL1104, 1584).) The combination of Goodman and
`
`Han thus discloses the “during running” limitation. (APL1111, ¶15.)
`
`IV. Claims 24 and 33 Improperly Broaden the Scope of Claims 4 and 14
` “A patent owner may not seek to broaden a challenged claim in any
`
`respect.” Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26, p. 5
`
`(June 11, 2013) (emphasis added). PO ignores this issue, simply alleging that the
`
`claims are not broadened. This is insufficient. When a patent owner broadens a
`
`claim in some respect and narrows it in another respect–as PO does here–the Board
`
`denies the motion to amend. See, e.g., Square, Inc. v. Protegrity Corp., CBM2014-
`
`00182, Paper 60, pp. 41-42 (Mar. 2, 2016). Since substitute claims 24 and 33 are
`
`broadening in at least one respect, the Board should deny the MTA.
`
`
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
`
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Attorney for Petitioner Apple Inc.
`
`Date: January 12, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
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`

`

`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`CERTIFICATION OF SERVICE (37 C.F.R. §§42.6(e))
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PETITIONER APPLE INC.’S SUR-REPLY TO PATENT
`
`OWNER’S CONDITIONAL MOTION TO AMEND was served electronically
`
`via email in its entirety on January 12, 2018 on the following:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`Date: January 12, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`