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Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com
`T. William Kennedy (bkennedy@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`
`
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`VALENCELL, INC.,
`Patent Owner.
`
`
`Case IPR2017-003171
`U.S. Patent No. 8,989,830
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF REPLY DECLARANT BRIAN W. ANTHONY
`
`
`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.
`
`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`I. OBSERVATIONS
`
`Patent Owner submits the following observations on the December 20, 2017,
`
`cross-examination of Petitioner’s reply declarant, Dr. Brian W. Anthony. The
`
`transcript of Dr. Anthony’s December 20, 2017, deposition filed as Ex. 2150 (“Dec.
`
`20 Tr.”), which includes testimony for both IPR2017-00317 and IPR2017-00318.
`
`Observation 1:
`
`In Dec. 20 Tr., on page 115, line 8 through page 118, line 5, Dr. Anthony
`
`testified as follows:
`
`Q. And Doctor Asada is in the same department with you at MIT;
`
`correct?
`
`A. Correct. He's in the department of mechanical engineering, which is
`
`one of the departments I'm appointed in.
`
`Q. Did you walk down to Doctor Asada's office and ask him why a
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`tethered version of prototype B was required?
`
`A. I did not, and I believe you asked that in my earlier deposition. I
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`didn't feel a person skilled in the art would need to go talk to Doctor
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`Asada to understand his paper here.
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`Q. Well, you're -- you're just guessing at a reason why, and the actual
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`source of the information is a colleague of -- of yours, and you just
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`decided not to go ask him for that information?
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`A. I was asked to form my own opinion. I didn't feel it was necessary.
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`My -- what a person skilled in the art would have understood from this
`
`was as covered in here.
`
`***
`
`
`
`2
`
`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`
`
`
`
`Q. So after your deposition – since September you didn't take the
`
`opportunity to go speak to Doctor Asada about this reference in
`
`figuring out.
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`A. I -- I have not.
`
`Q. And why is that?
`
`A. Didn't feel it was necessary.
`
`Q. And -- and you testified in your prior depositions that you introduced
`
`Apple's counsel to Doctor Asada via email; correct?
`
`A. That was correct.2
`
`This testimony is relevant to Petitioner’s attempt to discredit Patent Owner’s
`
`argument that the wireless device of Asada was prohibited from use in a hospital
`
`environment at page 27 of the -317 Reply and page 28 of the -318 Reply. 3 This
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`testimony is relevant because it shows Dr. Anthony’s willful blindness to the actual
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`facts of Asada, and because it shows that Petitioner’s counsel had access to the facts
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`of Asada and chose not to supply those facts in this proceeding and instead relied on
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`assumptions from Dr. Anthony.
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`
`
`
`2 For brevity and clarity, objections from counsel have been omitted, without
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`notation, from the deposition excerpts in this paper.
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`3 For ease of cross-referencing between the IPR2017-00317 and -00318, Patent
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`Owner has included citations to both matters, where applicable.
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`
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`3
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`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`Observation 2:
`
`In the Dec. 20 Tr., on page 49, line 9 through page 51, line 5, Dr. Anthony
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`testified as follows:
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`Q. Have you ever seen "guiding" defined as allowing to pass?
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`A. (Witness reviews document.) So as I – as I do highlight here, I mean,
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`a person skilled in the art reading these claims would have understood
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`that a -- what is being described as a window that is serving as a light-
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`guiding interface to the body, that it's allowing light to come from --
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`through -- pass through the cladding material into the body. And that's
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`-- window is serving as that light-guiding interface to the body.
`
`Q. (Reviews screen.) So I asked you: "Have you ever seen "guiding"
`
`defined as allowing to pass?" Then you cited to the claim claims. So are
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`the claims here the only situation where you've seen the term "guiding"
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`defined as “allowing to pass"?
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`A. So I was not forming a broad general opinion of what "guiding"
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`means. I was making a statement in my declaration about what guiding
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`means -- the light-guiding interface means in the contexts of these -- of
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`this patent. If you want me to formulate a global definition of "guiding"
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`under all its possible uses, I did not do that before this deposition -- or
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`before my declaration.
`
`This testimony is relevant to Petitioner’s arguments on the construction of the term
`
`“light guiding interface” at pages 5-8 of the -317 and -318 Replies. This testimony
`
`is relevant because it shows the lack of basis for Petitioner’s interpretation that “light
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`guiding” can mean allowing light to pass.
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`
`
`4
`
`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`Observation 3:
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`In the Dec. 20 Tr., on page 55, lines 1-10, Dr. Anthony testified as follows:
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`Q. Do you know if all the layers of Goodman are adhered together in
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`Figure 2C?
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`A. (Witness reviews document.) Without re -- rereading or looking at
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`the -- Goodman's -- the Goodman reference, I don't recall explicitly
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`whether that's stated, but a person skilled in the art would understand
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`that they would likely be adhered together in some way to form a tight
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`construction with adhesive between the layers to hold them together.
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`This testimony is relevant to pages 9-11 of the -317 and -318 Replies, where
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`Petitioner relies on Dr. Anthony to make its argument that the elements of
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`Goodman’s Figure 2C are not adhered together as shown in the modified figure in
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`Patent Owner’s Responses. This testimony is relevant because, prior to this
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`deposition, Dr. Anthony was not aware of whether the elements in Goodman’s
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`Figure 2C were adhered together, and thus Dr. Anthony lacked the required
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`knowledge necessary to interpret Figure 2C.
`
`Observation 4:
`
`In the Dec. 20 Tr., on page 70, line 1 through page 71, line 7, Dr. Anthony
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`testified as follows:
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`Q. We know that light emitter 24 is adhered to element 30; correct?
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`A. Through adhesive surface 32, yup, as described on line 21 or 22.
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`Q. And we know that by "detector 14 is adhered to element 30";
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`correct?
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`5
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`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`A. Yes. Again, through adhesive surface 32.
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`Q. And, then, we also know that element 37 is adhered to element 30
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`through two different kinds of adhesive: Element 32 and 38; correct?
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`A. Yes, 32 and 38 are adhesives.
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`Q. So in your expert opinion, PhD from MIT, how are elements 24 and
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`14 not pushed through apertures 40 and 41, as depicted in Valencell's
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`assembly of the Goodman Figure 2C?
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`A. So as I -- as I highlight -- and as I said -- this is an incomplete
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`construction. So I think it's misleading, because it's incomplete. A
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`person skilled in the art would assemble the entire device and not just a
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`fraction of the device. A person skilled in the art would not -- from both
`
`the description, from the figure, from the arrows -- would understand
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`that the emitter detector may extend all the way through the windows.
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`They're sitting close to it, but not all the way through.
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`Q. Is that your best answer to my question?
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`A. I also highlight that's the answer that Doctor Titus gave in describing
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`a similar device. But yes.
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`This testimony is relevant to Petitioner’s argument regarding Goodman’s Figure 2C
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`at pages 9-11 of the -317 and -318 Replies. This testimony is relevant because it
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`discredits Petitioner’s argument that the elements of Goodman’s Figure 2C are not
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`adhered together such that elements 24 and 14 are pushed through apertures 40 and
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`41, and supports Patent Owner’s position that, with elements 24 and 14 pushed
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`through apertures 40 and 41, “the apertures cannot guide any light to the body and
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`cannot deliver light along a path.” -317 Response at 33; -318 Response at 51.
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`
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`6
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`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`Observation 5:
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`In the Dec. 20 Tr., on page 77, lines 20-23, Dr. Anthony testified as follows:
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`Q. Do all windows, in your opinion, allow light to pass through?
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`A. Unless they're closed with blinds. But yes, windows will allow
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`light to pass through.
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`This testimony is relevant to Petitioner’s arguments on the construction of the term
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`“light-guiding interface” at pages 5-8 of the -317 and -318 Replies. Dr. Anthony’s
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`testimony is relevant because it shows that Petitioner’s inclusion of the phrase
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`“allows the light to pass through” in its construction of window that serves as “light-
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`guiding interface” is superfluous to the claimed “window,” given that, according to
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`Dr. Anthony, all windows allow light to pass through.
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`Observation 6:
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`In the Dec. 20 Tr., on page 77, line 24 through page 78, line 18, Dr. Anthony
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`testified as follows:
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`Q. Is there anything that you know of in -- in Goodman's teachings that
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`describe how the face of a light emitter in Goodman is oriented relative
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`to the face of a light detector in Goodman?
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`A. I'm sorry. Say that -- ask the question again.
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`Q. (Reviews screen.) "Is there anything that you know of in Goodman's
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`teachings that describe how the face of a light emitter in Goodman is
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`oriented relative to the face of a light detector in Goodman?"
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`A. (Witness reviews document.) So it's not using an exact phrasing like
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`that, but as I highlighted in my declaration on page 12, it was not using
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`
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`7
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`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`the exact phrase, sort of, opposite of each other, but it's highlighting
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`that the -- the emitter and transmitter are on opposite sides of the
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`transilluminated flesh. So it's -- a person skilled in the art would
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`understand that is what is being taught in Goodman.
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`This testimony is relevant to Petitioner’s argument that Goodman discloses that its
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`light emitting and receiving surfaces are disposed opposite each other at pages 13-
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`18 of the -317 Reply. This testimony is relevant because Dr. Anthony admitted that
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`Goodman does not disclose how the face of its light emitter is oriented relative to
`
`the face of its light detector.
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`Observation 7:
`
`In the Dec. 20 Tr., on page 79, line 14, through page 80, line 2, Dr. Anthony
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`testified as follows:
`
`Q. How does that comport with the teaching of Asada that describe that
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`light that passes through transilluminated flesh generally takes a
`
`banana-shaped arc?
`
`A. Well, that depends on how you've arranged, I think, in the -- have to
`
`look at the Asada reference again -- but if I recall correctly, the -- the
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`arrangement that was highlighted in one of the Asada embodiments
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`didn't have the emitter and transmitter exactly opposite one another,
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`but, sort of -- certainly in the Goodman we're highlighting it. And the
`
`person skilled in the art would understand that you have options for
`
`how you arrange the emitter and detector.
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`This testimony is relevant to Petitioner’s argument that it would have been obvious
`
`for Goodman’s light emitting and receiving surfaces to be disposed opposite each
`
`
`
`8
`
`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`other at pages 14-15 of the -317 Reply. This testimony is relevant because it shows
`
`that Dr. Anthony actually understood that another transmittal PPG reference’s
`
`(Asada’s) emitter and transmitter were not “exactly opposite one another” because
`
`light passing through transilluminated flesh generally takes a banana-shaped arc.
`
`Observation 8:
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`In the Dec. 20 Tr., on page 85, line 16 through page 86, line 7, Dr. Anthony
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`testified as follows:
`
`Q. There's nothing in that citation from Goodman that describes the
`
`configuration of layer 45; correct?
`
`A. (Witness reviews document.) So in 39 through 50 there -- the -- we
`
`are talking in Goodman about layer 45 at -- at line No. 46, a "layer of
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`clear polyester 45 having double adhesive coatings."
`
`Q. And I specifically asked you the question of whether or not
`
`Goodman discloses the configuration of layer 45, not just that it
`
`mentions layer 45.
`
`A. A person skilled in the art would understand that -- that a light
`
`transmissive layer in front of the emitter in front of the detector, if not
`
`there, if it were not transmissive, light would not pass through.
`
`This testimony is relevant to Petitioner’s argument regarding layer 45 of Goodman
`
`at pages 17-18 of the -317 Reply; -317 Patent Owner Response at 40-41. The
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`testimony is relevant because it shows Petitioner’s lack of support for its position
`
`that layer 45 of Goodman is configured as required by the claims.
`
`
`
`
`
`9
`
`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`Observation 9:
`
`In the Dec. 20 Tr., on page 92, lines 3-14, Dr. Anthony testified as follows:
`
`Q. But you agree with me that Hicks does have a buffer between the
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`components in Figure 6, namely foam layer apertures 88, clear substrate
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`80, and interconnecting layer 82; correct?
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`A. I agree that the -- those materials are forming a thermal buffer. And
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`I think there's a geometrical argument that Valencell was making in
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`arguing against that physical size serving as a geometric or structural
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`buffer, but, indeed, as is highlighted here, the air pocket, the clear
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`substrate, and the interconnecting layer are creating a thermal insulative
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`buffer.
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`This testimony is relevant to Petitioner’s argument that Hicks does not have a buffer
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`as annotated by Patent Owner at pages 19-20 of -317 and -318 Replies. This
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`testimony is relevant because Dr. Anthony nonetheless confirmed that Hicks has a
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`buffer between the components in Figure 6, namely between foam layer apertures
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`88, clear substrate 80, and interconnecting layer 82.
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`Observation 10:
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`In Dec. 20 Tr., on page 162, lines 9-18, Dr. Anthony testified as follows:
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`Q. You understand that a large portion of this declaration deals with
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`overlapping issues that occur in the -318 matter; correct?
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`A. I do.
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`Q. And so we don't have to go over those same issues again, would your
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`answers as you testified earlier today on the -317 matter equally apply
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`
`
`10
`
`

`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
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`to the overlapping parts of your declaration in the -317 in the -318
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`matter?
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`A. Yes, they would.
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`This testimony is relevant to show that Dr. Anthony’s testimony in this deposition
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`applies to both IPR2017-00317 and -00318.
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`11
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
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`Dated: February 9, 2018
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`_____________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`Respectfully submitted,
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that document has been served via electronic
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`mail on February 9, 2018, to Petitioner Apple at following email addresses pursuant
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`to its consent in its Updated Mandatory Notices (Paper 24) at p. 2: mspecht-
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`PTAB@skgf.com, holoubek-PTAB@skgf.com, jfitzsimmons-PTAB@skgf.com,
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`knasabza-PTAB@skgf.com, and PTAB@skgf.com; and to Petitioner Fitbit
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`according
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`Petition
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`at
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`4:
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`harper.batts@bakerbotts.com,
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`jeremy.taylor@bakerbotts.com, and dlfitbit-valencell@bakerbotts.com.
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` ________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`12
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