`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`
`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 RESPONSE TO
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`ON CROSS EXAMINATION
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & 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 Apple Inc. (“Apple”) submits the following Response to Patent
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`Owner Valencell, Inc.’s (“Valencell”) Motion for Observation on Cross-
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`Examination (“Mot. Obs.”) of Apple’s expert, Dr. Brian Anthony.
`
`Response to Observation #1
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 115:8–118:5,
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`as being relevant because it allegedly “shows Dr. Anthony’s willful blindness to
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`the actual facts of Asada….” (Mot. Obs., p. 3.)
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`Valencell’s allegation introduces new argument and is without legal or
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`factual merit. As Dr. Anthony testified, he was asked to provide his opinions as to
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`how a person of ordinary skill in the art would understand the Asada reference (Ex.
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`2150, 116:23-25, 117:13-15), which comports with long established case law,
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`which provides “[w]e evaluate and apply the teachings of all relevant references on
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`the basis of what they reasonably disclose and suggest to one skilled in the art….”
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`In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (emphasis added).
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`Valencell also alleges this testimony is relevant “because it shows that
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`Petitioner’s counsel had access to the facts of Asada and chose not to supply those
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`facts in this proceeding and instead relied on assumptions from Dr. Anthony.”
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`(Mot. Obs., p. 3.)
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`Valencell’s allegation introduces new argument and is without legal or
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`factual merit. Contrary to Valencell’s implication, an introduction to Dr. Asada via
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` 1
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`email does not mean that Apple “had access” to Dr. Asada’s opinions.
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`Furthermore, Valencell’s allegation is irrelevant to how the reference would be
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`understood by a person of ordinary skill in the art.
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`Response to Observation #2
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 49:9–51:5, as
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`being relevant because it allegedly “shows the lack of basis for Petitioner’s
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`interpretation that ‘light guiding’ can mean allowing light to pass.” (Mot. Obs., p.
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`4.) But this testimony fully supports Apple’s interpretation because, as Dr.
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`Anthony testified, “a person skilled in the art reading these claims would have
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`understood 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 -- through --
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`pass through the cladding material into the body.” (Ex. 2150, 49:12-18 (emphasis
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`added).) This is consistent with the testimony of Valencell’s declarant, Dr. Titus:
`
`Q Do you see the part of Claim 1, the top of Line 40 where it states:
`At least one window formed in the cladding material that serves as a
`light-guiding interface to the body of the subject?
`A Yes.
`Q So is it your understanding that for that claim limitation, the win-
`dow is serving a light-guiding function?
`A The win- -- I don't believe the window serves a light-guiding func-
`tion.
`
`
`
` 2
`
`
`
`(APL1100, 186:16-24 (emphasis added); see also APL1100, 88:2-11, 94:23-
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`95:5, 179:4-12.)
`
`Response to Observation #3
`
`
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 55:1–10, as
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`being relevant because it allegedly shows that “prior to this deposition, Dr.
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`Anthony was not aware of whether the elements in Goodman’s Figure 2C were
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`adhered together, and thus Dr. Anthony lacked the required knowledge necessary
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`to interpret Figure 2C.” (Mot. Obs., p. 5.)
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`This mischaracterizes Dr. Anthony’s testimony, which is simply that he did
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`not “recall explicitly whether that’s stated…” (Ex. 2150, 55:5-6) because he had
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`not been provided a copy of the Goodman Exhibit (Ex. 2150, 56:17-19 (“So I’m
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`paraphrasing from the memory of the Goodman. I could look at it in more detail, if
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`provided a copy of it.”)). Dr. Anthony also affirmatively testified that he
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`understood how Goodman’s device was assembled. (Ex. 2150, 54:17-20 (“Q.
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`When you were reading Goodman, did you come to an understanding of how the
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`device in Figure 2C is assembled? A. Yes. Yes.”); see also Ex. 2150, 55:19-22.)
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`Response to Observation #4
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`
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 70:1–71:7, as
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`being relevant because it allegedly “discredits Petitioner’s argument that the
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` 3
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`elements of Goodman’s Figure 2C are not adhered together such that elements 24
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`and 14 are pushed through apertures 40 and 41.” (Mot. Obs., p. 6.)
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`Valencell’s observation mischaracterizes the testimony as it is disingenuous
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`because, after explaining how Valencell’s annotated Figure 2C of Goodman is
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`“misleading, because it’s incomplete,” it is clear from the context that Dr. Anthony
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`misspoke, leaving out the word “not”: “A person skilled in the art would not --
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`from both the description, from the figure, from the arrows -- would [not]
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`understand 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.” (Ex. 2150, 70:18-71:3
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`(emphasis added).) This is apparent from the last sentence of his testimony, which
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`is consistent with Dr. Anthony’s other testimony describing Valencell’s annotated
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`Figure 2C of Goodman. (See e.g., Ex. 2150, 62:17-23 (“So it’s not recognizing that
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`the layers above it, which is layer 46 -- or layer 45, with adhesive coatings 46 and
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`47, would be preventing that -- the emitter and detector -- the light source and the
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`photo sensor to be pushed through, as they are shown here.”) (emphasis added));
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`APL1102, ¶¶12-17.)
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`Response to Observation #5
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`
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 77:20–23, as
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`being relevant because it allegedly “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
`
`
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` 4
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`‘light-guiding interface’ is superfluous to the claimed ‘window’….” (Mot. Obs., p.
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`7.) Dr. Anthony’s testimony is consistent with the claim language itself, which he
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`explains “was conceived in the patent itself, in stating that the window is serving as
`
`the light-guiding interface into the body.” (Ex. 2150, 179:10-12.) This is also
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`consistent with the testimony of Valencell’s declarant, Dr. Titus:
`
`Q Is the “at least one window formed in the cladding material that
`serves as a light-guiding interface” a light-guiding structure?
`A I don’t believe that the window would be a light-guiding structure.
`Q Why not?
`A Because I believe that the window would allow light to pass
`through, but it does not provide any guidance.
`
`(APL1100, 179:4-12 (emphasis added); see also APL1100, 88:2-11, 94:23-
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`95:5, 186:16-24.)
`
`Response to Observation #6
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 77:24–78:18,
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`as being relevant because it allegedly shows that “Dr. Anthony admitted that
`
`Goodman does not disclose how the face of its light emitter is oriented relative to
`
`the face of its light detector.” (Mot. Obs., p. 8.)
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`This mischaracterizes Dr. Anthony’s testimony, which clearly states that
`
`although “not using the exact phrase” a person of ordinary skill in the art would
`
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` 5
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`have understood that Goodman does disclose how the emitter and detector are
`
`oriented relative to each other:
`
`A. (Witness reviews document.) So it’s not using an exact phrasing
`like that, but as I highlighted in my declaration on page 12, it was not
`using the exact phrase, sort of, opposite of each other, but it’s high-
`lighting that the -- the emitter and transmitter are on opposite sides of
`the transilluminated flesh. So it's -- a person skilled in the art would
`understand that is what is being taught in Goodman.
`(Ex. 2150, 78:10-18 (emphasis added).)
`
`Response to Observation #7
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 79:14–80:2, as
`
`being relevant because it allegedly “shows that Dr. Anthony actually understood
`
`that another transmittal PPG reference’s (Asada’s) emitter and transmitter [sic]
`
`were not ‘exactly opposite one another.’” (Mot. Obs., p. 9.) But Dr. Anthony’s
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`testimony about the Asada reference is not inconsistent with his testimony that
`
`Goodman’s emitter and detector are on opposite sides. (Ex. 2150, 78:10-18.) In
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`fact, it is consistent with his testimony that a “person skilled in the art would
`
`understand that you have options for how you arrange the emitter and detector.”
`
`(Ex. 2150, 79:25-80:2 (emphasis added).)
`
`
`
` 6
`
`
`
`Response to Observation #8
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 85:16–86:7, as
`
`being relevant because it allegedly “shows Petitioner’s lack of support for its
`
`position that layer 45 of Goodman is configured as required by the claims.” (Mot.
`
`Obs., p. 9.)
`
`Valencell’s observation again mischaracterizes Dr. Anthony’s testimony by
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`ignoring his testimony that “I don't call out 45, but as I describe Goodman here, the
`
`light transmissive material is allowing light to be collected.” (Ex. 2150, 83:18-21
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`(emphasis added).) It also ignores Dr. Anthony’s Declaration, which expressly
`
`explains how “a POSA would understand that Goodman’s light transmissive
`
`material functions in the same way as the light transmissive material recited in the
`
`’830 Patent claims.” (APL1102, ¶25.)
`
`Response to Observation #9
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 92:3–14, as
`
`being relevant because it allegedly shows that “Dr. Anthony nonetheless confirmed
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`that Hicks has a buffer between the components in Figure 6, namely between foam
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`layer apertures 88, clear substrate 80, and interconnecting layer 82.” (Mot. Obs., p.
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`10.)
`
`Valencell’s observation mischaracterizes the relevance of the testimony by
`
`missing the point–Dr. Anthony acknowledges that Hicks describes a buffer, his
`
`
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` 7
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`
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`testimony relates to Valencell’s misleading red box annotation in Figure 6 of
`
`Hicks:
`
`Q. So given that description of Figure 6, what is your issue with
`Valencell's annotated version of Hicks Figure 6?
`A. Well, as I describe here, the buffer is actually the -- is the air
`pocket in the foam layer. The air pocket is formed by the foam
`layer, which is the -- forming the thermally insulated buffer;
`that this figure is an expanded view in that -- I think it -- I recall
`it being red when it was printed out in color, but that block that
`I point to in -- at the top of page 17, that's -- that buffer is not
`there. It's -- the buffer – is the -- is 92, the window in the foam
`layer – the air pocket in the foam layer.
`(Ex. 2150, 89:20-90:8 (emphasis added); see also APL1102, ¶¶25-26.)
`
`Response to Observation #10
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 162:9–18, as
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`being relevant because it allegedly shows that “Dr. Anthony’s testimony in this
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`deposition applies to both IPR2017-00317 and -00318.” (Mot. Obs., p. 11.) Apple
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`does not dispute that the deposition of Dr. Anthony regarding his Reply
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`Declaration was intended to apply to both IPR2017-00317 and IPR2017-00318.
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` 8
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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: February 16, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
` 9
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PETITIONER APPLE
`
`INC.’S RESPONSE TO PATENT
`
`OWNER’S MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`was served electronically via email in its entirety on February 16, 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
`
`
`
`
`
`
`
`
`
`Date: February 16, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`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.
`
`
`
`
`
`
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