Oral Argument Demonstratives
`
`Petitioner Valencell, Inc.
`IPR2017-00318
`U.S. Patent No. 8,886,269
`
`United States Patent and Trademark Office
`Patent Trial and Appeal Board
`
`Administrative Patent Judges
`McNamara, Arpin, McShane
`Oral Argument – February 27, 2018
`
`
`
`Petitioner Valencell, Inc.
`IPR2017-00318
`U.S. Patent No. 8,886,269
`
`United States Patent and Trademark Office
`Patent Trial and Appeal Board
`
`Administrative Patent Judges
`McNamara, Arpin, McShane
`Oral Argument – February 27, 2018
`
`
`
`Instituted Grounds Instituted Grounds
`
`Asada ‐ 103(a)
`• Asada alone – claims 1, 2, 6, and 7
`• Asada and Hicks – claim 3
`• Asada and Hannula – claims 4 and 5
`• Asada and Delonzor – claim 8
`• Asada and Al‐Ali – claims 9 and 10
`Goodman ‐ 103(a)
`• Goodman alone – claims 1 and 2
`• Goodman and Hicks – claim 3
`• Goodman and Hannula – claim 4
`• Goodman, Hannula, and Asada – claim 5
`• Goodman and Asada – claims 6 and 7
`• Goodman and Delonzor – claim 8
`• Goodman and Al‐Ali – claims 9 and 10
`
`IPR2017‐00317 and ‐ 00318
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`Paper 7 at 2, 5‐6.
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`2
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`’269 Patent – Claims at Issue’269 Patent – Claims at Issue
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`’269 Patent, Ex. 1001 at 30:30‐31:3
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`IPR2017‐00317 and ‐ 00318
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`3
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`’269 Patent – Claims at Issue’269 Patent – Claims at Issue
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`IPR2017‐00317 and ‐ 00318
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`’269 Patent, Ex. 1001 at 31:4‐31:30
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`4
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`Asada Grounds – Argument HighlightsAsada Grounds – Argument Highlights
`
`1. Figure 11 of Asada
`a. Petitioner mislabeled Fig. 11 of Asada to fit its unsupported
`positions
`b. Element 3 of Figure 11 is not “light transmissive material”
`c. Element 7 of Figure 11 is not a “signal processor” – it’s Velcro®
`
`2. Petitioner’s motivation to combine Asada with Hicks is
`flawed
`a. A POSA would not add a lens to the transmittal PPG of Asada,
`which benefits from unfocused light
`b. A lens would focus light on the wrong part of the body, and add
`unwanted heat
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`IPR2017‐00317 and ‐ 00318
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`5
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`Asada Grounds – Argument HighlightsAsada Grounds – Argument Highlights
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`3. Petitioner’s motivation to combine Asada with Hannula
`is flawed
`a. Reflective mask of Hannula won’t direct any additional light to
`the photodetector
`b. Reflective mask would increase shunting
`c. Waveform of Asada is already stable; a POSA would not add
`extra elements to a stable waveform
`
`from many different
`improperly pulls
`4. Petitioner
`embodiments of Asada in an attempt to fill‐in holes
`a. Combining teachings from distinct embodiments requires an
`obviousness analysis,
`including why a POSA would be
`motivated to combine the disparate teachings.
`b. Petitioner’s new reply arguments have no obviousness analysis
`for the combination of different embodiments.
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`IPR2017‐00317 and ‐ 00318
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`6
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`Asada’s Figure 11Asada’s Figure 11
`
`?
`
`?
`
`?
`
`?
`
`Ex. 1005, Fig. 11
`
`Paper No. 22 at 27‐28.
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`7
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`? ?
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`?
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`•
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`•
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`Figure 11 appears in Asada’s discussion
`of “Prototype B,”
`
`•
`
`No identification or discussion of
`the enumerated components
`
`The only discussion of Figure 11 occurs
`in the legend describing Fig. 11 and in
`the following excerpt of Asada:
`
`Ex. 1005 at 35.
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`IPR2017‐00317 and ‐ 00318
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`
`
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`“the inner body portion comprising light “the inner body portion comprising light
`
`transmissive material”transmissive material”
`
`• Petitioner made many faulty
`assumptions to force‐fit Fig. 11
`to the claims
`
`• Asada does not
`teach or
`suggest
`the claimed “inner
`body portion comprising light
`transmissive material”
`
`• Petitioner
`on
`solely
`relies
`purportedly
`as
`3
`element
`meeting this limitation
`
`•
`
`conveniently annotates it as
`“light transmissive material”
`
`Ex. 1005, Fig. 11 (with Petitioner’s
`Annotations)
`Paper No. 22 at 30.
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`IPR2017‐00317 and ‐ 00318
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`8
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`Patent Owner’s Position Better Reflects Asada’s Patent Owner’s Position Better Reflects Asada’s
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`DisclosuresDisclosures
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`•
`
`•
`
`Figure 11 shows all of elements 3,
`4, and 5, as attached to element 6
`
`•
`
`Elements 4 and 5 fit into
`the rectangular apertures
`of element 3.
`
`is required to
`The arrangement
`“better hold the LEDs and PDs,”
`and “optically shield the sensor
`unit,” and comports with Asada’s
`description of Figure 11.
`Ex. 1005 at 35.
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`IPR2017‐00317 and ‐ 00318
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`Ex.. 1005 at Fig. 11 (annotated).
`
`Paper No. 22 at 31‐33.
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`9
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`Figure 11 ‐ Another More Plausible AnnotationFigure 11 ‐ Another More Plausible Annotation
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`•
`
`•
`
`•
`
`11
`Figure
`of
`caption
`The
`references how the redesigned
`band “hides wires from outside
`environment.”
`
`The concept of hiding wires is
`omitted
`from
`Petitioner’s
`suggested annotations.
`
`Identification of element 3 as
`wiring, showing how the device
`“hides wires
`from outside
`environment” is more plausible
`than Petitioner’s annotation.
`
`Velcro (hook)
`
`Upper
`Portion
`
`LED
`
`Lower
`Portion
`
`Apertured Layer
`with Wire
`Connections
`
`PD
`
`Velcro (eye)
`
`Ex. 1005, Fig. 11
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`IPR2017‐00317 and ‐ 00318
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`10
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`Element 3 is Not Light TransmissiveElement 3 is Not Light Transmissive
`
`• Nothing in Asada describes element 3 as light transmissive
`
`• Asada’s components in Figure 11 are designed to “optically shield the
`sensor unit” and “hide wires from outside environment”
`
`Ex. 1005 at 35.
`
`Ex. 1005 at 35.
`
`Paper No. 22 at 30‐31.
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`11
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`IPR2017‐00317 and ‐ 00318
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`If Element 3 Were Light Transmissive, It Would Cause If Element 3 Were Light Transmissive, It Would Cause
`
`Unwanted ShuntingUnwanted Shunting
`• Petitioner argues that element 3 is a light transmissive layer,
`with no apertures, that sits on top of the purported LED and
`photodetector
`See, e.g., Ex. 2010 at 151:2‐152:21.
`
`• That scenario would cause element 3 to shunt light directly
`from the LED to the photodetector
`Ex. 2007, Titus Dec. at ¶ 101.
`
`• Shunting is in direct opposition to Asada’s description that
`the components “optically shield the sensor unit.”
`Ex. 1005 at 35; Ex. 2007, Titus Dec. at ¶ 101.
`
`Paper No. 22 at 31.
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`IPR2017‐00317 and ‐ 00318
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`12
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`Petitioner’s Own Expert Admitted That Shunting Would Petitioner’s Own Expert Admitted That Shunting Would
`
`OccurOccur
`
`***
`
`.
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`Ex. 2010 at 153:11‐154:10.
`Paper No. 22 at 31.
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`IPR2017‐00317 and ‐ 00318
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`13
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`Clear, Unapertured Layers Cause Detrimental ShuntingClear, Unapertured Layers Cause Detrimental Shunting
`
`At least as early as 1998, many years before the Asada reference (2003), it
`was understood that covering the light emitter and detector with a clear,
`unapertured layer caused detrimental shunting.
`
`Delonzor, Ex. 1010 at 1:65‐2:8.
`
`Paper No. 22 at 32.
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`IPR2017‐00317 and ‐ 00318
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`14
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`A POSA Would Have Known to Avoid Shunting A POSA Would Have Known to Avoid Shunting
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`Petitioner’s own reference, Delonzor, repeatedly warns of the problem of
`shunting
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`IPR2017‐00317 and ‐ 00318
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`Delonzor, Ex. 1010 at 1:6‐9; 1:41‐44; and 1:51‐56;
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`Paper No. 22 at 31.
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`15
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`Transmittal PPGs ‐ Unwanted Shunting from LED to Transmittal PPGs ‐ Unwanted Shunting from LED to
`
`Photodetector Photodetector
`
`•
`
`•
`
`In transmittal PPGs (LED and PD on
`opposite sides of flesh), shunting
`can occur via a clear layer overlying
`the LED and photodetector. Titus
`Dec. at ¶ 101; Ex. 2010 at 152:22‐
`154:10.
`
`If element 3 were transmissive as
`Petitioner argues, light would shunt
`through it as shown here
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`IPR2017‐00317 and ‐ 00318
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`Paper No. 22 at 31‐32.
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`16
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`Reflective PPGs ‐ Unwanted Shunting from LED to Reflective PPGs ‐ Unwanted Shunting from LED to
`
`Photodetector Photodetector
`In reflective PPGs (LED and PD on the same side of flesh), shunting can occur
`via an air gap between the LED and PD. Ex. 1005 at 31; Titus Dec. at ¶ 125.
`
`If there is an air gap
`here, light can travel
`through it
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`IPR2017‐00317 and ‐ 00318
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`Paper No. 22 at 42.
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`17
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`Petitioner Confuses Transmittal and Reflective PPGsPetitioner Confuses Transmittal and Reflective PPGs
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`IPR2017‐00317 and ‐ 00318
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`Paper No. 22 at 42.
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`18
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`Petitioner’s Reply Continues to Confuse Transmittal and Petitioner’s Reply Continues to Confuse Transmittal and
`
`Reflective PPGsReflective PPGs
`Petitioner’s reply arguments confuse transmittal versus reflective PPGs, are
`inapposite, and have no support
`
`Wholly unsupported allegation,
`contradicted by Dr. Anthony’s prior
`deposition admission re shunting
`
`This addresses shunting via an air gap
`between the LED and PD in a reflective
`PPG, and is irrelevant to shunting via a
`clear layer in a transmittal PPG
`
`Transmittal PPGs do not have shunting
`via an air gap. Air gap shunting is
`irrelevant to shunting via a clear layer
`overlying a transmittal PPG
`
`Reply, Paper No. 32 at 16.
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`IPR2017‐00317 and ‐ 00318
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`19
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`Petitioner’s Reply Continues to Confuse Transmittal and Petitioner’s Reply Continues to Confuse Transmittal and
`
`Reflective PPGsReflective PPGs
`Petitioner’s reply arguments confuse transmittal versus reflective PPGs, are
`inapposite, and have no support
`This conclusion cannot be made simply
`because transmittal PPGs do not have
`shunting via an air gap; this is in direct
`contradiction to Delonzor, which teaches
`that detrimental shunting does occur via
`a clear layer in a transmittal PPG
`
`Petitioner points to an entirely new
`ground for these claims, adding a new
`element and reference, even though it
`did not present a proper obviousness
`analysis for it in the Petition, and even
`though Petitioner assured the Board it
`had not added new grounds.
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`20
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`Reply, Paper No. 32 at 16.
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`IPR2017‐00317 and ‐ 00318
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`Petitioner’s Reply Argument on Contacting the SkinPetitioner’s Reply Argument on Contacting the Skin
`
`• Petitioner
`that
`argues
`have
`cannot
`3
`element
`apertures because then the
`optical components would be
`exposed and directly contact
`the skin. Paper 32, Reply, at 15.
`
`•
`
`This ignores layers 1 and 2,
`which Petitioner’s own expert
`confirmed would prevent the
`optical
`components
`from
`contacting the skin. Ex. 2150 at
`168:3 through 169:12
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`IPR2017‐00317 and ‐ 00318
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`Paper No. 42 at 6‐7.
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`21
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`The Dashed Rectangles in Element 3The Dashed Rectangles in Element 3
`
`• Alignment is consistently shown in
`Fig. 11 as vertical lines
`
`•
`
`The dashed rectangles do not offer
`any
`additional
`alignment
`information
`
`Paper No. 42 at 5‐6
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`IPR2017‐00317 and ‐ 00318
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`22
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`Ex.. 1005 at Fig. 11
`(annotated).
`
`
`
`
`Petitioner uses the Swedlow reference as a proxy for the Petitioner uses the Swedlow reference as a proxy for the
`
`identification of the elements of Asadaidentification of the elements of Asada
`
`• Petitioner equates element 3 of Asada with layer 12 of Swedlow.
`Petition at 19‐20; Ex. 2007, Titus Dec. at ¶ 105.
`
`• But unlike Figure 11 of Asada, Figure 2 of Swedlow shows its element
`12 without apertures for the light source and photodetector.
`
`•
`
`A POSA would have not have assumed that Asada’s element 3, which was part of
`a “redesigned sensor band” from 2003, would be the same as Swedlow’s
`disclosure of element 12 from 1991. Ex. 2007, Titus Dec. at ¶ 106.
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`IPR2017‐00317 and ‐ 00318
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`Paper No. 22 at 33‐34.
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`23
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`Why Wouldn’t Petitioner Simply Supply the Facts from Why Wouldn’t Petitioner Simply Supply the Facts from
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`Dr. Asada?Dr. Asada?
`
`•
`
`The easiest way to identify the
`elements of Fig. 11 is to ask Dr.
`Asada
`
`• Petitioner and its expert are the
`only parties with access to Dr.
`Asada, and they precluded him
`from speaking with Patent Owner
`
`Paper No. 42 at 3‐5; see also
`Paper 22 at 27‐29.
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`IPR2017‐00317 and ‐ 00318
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`Ex.. 1005 at Fig. 11
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`24
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`Unlike Patent Owner’s Attorneys, Petitioner’s Unlike Patent Owner’s Attorneys, Petitioner’s
`
`Attorneys Had Access to Dr. AsadaAttorneys Had Access to Dr. Asada
`
`Ex. 2010 at 132:12‐15.
`Paper No. 22 at 29.
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`IPR2017‐00317 and ‐ 00318
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`25
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`Petitioner Ignored Facts and Made Petitioner Ignored Facts and Made
`
`Assumptions About Asada’s Figure 11Assumptions About Asada’s Figure 11
`
`• Petitioner’s expert, Dr. Anthony, knows Dr. Asada well.
`Ex. 2010 at 129:6 through 130:10.
`
`• They are both Mechanical Engineering faculty at M.I.T. in
`the same field.
`Ex. 1004 at 1; Ex. 2010 at 130:11‐13.
`
`• Dr. Anthony could have simply walked down to Dr.
`Asada’s office and asked him for the underlying facts of
`Figure 11, but he instead he chose to make assumptions
`about Figure 11.
`Ex. 2010 at 130:11 through 132:11; 144:9‐18.
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`IPR2017‐00317 and ‐ 00318
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`Paper No. 22 at 29.
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`26
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`Dr. Asada Would Not Discuss Dr. Asada Would Not Discuss
`
`Figure 11 with Patent OwnerFigure 11 with Patent Owner
`• Patent Owner’s counsel called Dr. Asada
`
`• Dr. Asada declined to explain Figure 11
`
`• Dr. Asada abruptly ended the call after he learned that Patent
`Owner’s counsel represented Valencell
`Ex. 2014, Kennedy Dec. at ¶¶ 3, 4.
`
`Paper No. 22 at 29.
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`IPR2017‐00317 and ‐ 00318
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`27
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`The Facts of Asada’s Figure 11 The Facts of Asada’s Figure 11
`
`Must Disfavor PetitionerMust Disfavor Petitioner
`
`• Dr. Anthony remained willfully ignorant of the facts of Fig. 11,
`despite knowing Dr. Asada well and having access to the truth
`
`• Petitioner’s attorneys had access to Dr. Asada, yet they chose not to
`supply the actual facts of Fig. 11 in this proceeding
`
`•
`
`The circumstances point to an inference that’s Asada’s explanation
`of Fig. 11 would not favor Petitioner
`
`Paper No. 42 at 5; see also
`Paper 22 at 29.
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`IPR2017‐00317 and ‐ 00318
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`28
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`Asada Does not Meet the Limitation of “wherein the light Asada Does not Meet the Limitation of “wherein the light
`
`transmissive material is in optical communication …” transmissive material is in optical communication …”
`
`Ex. 1001 at claim 1
`• Petitioner’s argument rests on the assumption that “Layer 3 is disposed
`directly over” the light emitter and detector and that “light emitted from the
`LED is delivered through Layer 3.” Petition at 33‐34; Titus Dec. at ¶ 108.
`
`• For the reasons discussed in the preceding slides, that assumption is
`incorrect.
`
`Paper 22 at 35.
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`IPR2017‐00317 and ‐ 00318
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`29
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`Asada Does not Meet the Limitation of “wherein the light Asada Does not Meet the Limitation of “wherein the light
`
`transmissive material is in optical communication …” transmissive material is in optical communication …”
`
`Because [t]he light from the LED does not pass through element 3, it:
`
`(1) is not in optical communication with a light emitter;
`
`(2) is not configured to configured to deliver light from the optical emitter
`to one or more locations of the body;
`
`(3) is not configured to collect light from one or more locations of the body
`of the subject; and
`
`(4) is not configured to deliver collected light to the optical detector.”
`
`Ex. 2007, Titus Dec. at ¶ 111
`
`Paper 22 at 36‐37.
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`Indiscriminate Mixing of Embodiments of AsadaIndiscriminate Mixing of Embodiments of Asada
`
`•
`
`repeatedly mixes one embodiment of Asada with different
`Petitioner
`embodiments without offering any reason that a person of ordinary skill in the
`art would have made those combinations. See Petition at 29‐36 (discussing the
`embodiments of at least Figures 6, 10(b), 9, 11, and 15 without any analysis to support the
`combining of those various embodiments)
`
`Paper 22 at 37.
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`IPR2017‐00317 and ‐ 00318
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`Indiscriminate Mixing of Embodiments of AsadaIndiscriminate Mixing of Embodiments of Asada
`
`•
`
`Petitioner cannot now expand Ground 1 to cover additional embodiments
`beyond Figure 11 of Asada without ever having offered any evidence of why
`those embodiments are combinable or why a POSA would have been motivated
`to combine elements from embodiments, or why the combination would have
`been, on‐balance, desirable and would have produced expected results.
`•
`“When a prior art reference discloses multiple, distinct embodiments,
`combining teachings
`from those distinct embodiments
`requires an
`obviousness analysis, including a demonstration of why one of ordinary skill
`would be motivated to combine those disparate teachings.” Cook Group Inc.
`v. Boston Scientific Scimed, Inc., IPR2017‐00440 (PTAB 2017) (Paper 7) at 14.
`Plas‐Pak Indus., Inc. v. Richard Parks Corrosion Techs., Inc., Appeal 2013‐
`001649, 2013 WL 3804717, at *4 (PTAB June 28, 2013) (rejecting argument
`that embodiments within a single reference would have been obvious to
`combine where no motivation or expectation of reasonable success for
`doing so was provided); In re Stepan Co., No. 2016‐1811, 2017 WL 3648528,
`at *2 (Fed. Cir. Aug. 25, 2017); Winner Int'l Royalty Corp. v. Wang, 202 F.3d
`1340, 1349 (Fed. Cir. 2000); In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
`
`IPR2017‐00317 and ‐ 00318
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`Claim 6 – New Reply Arguments from PetitionerClaim 6 – New Reply Arguments from Petitioner
`
`•
`
`In the Petition, Petitioner relied solely on the ring sensor embodiments of Figures 9 and 10
`of Asada to meet the signal processor limitation. Petition at 35.
`Paper 22 at 38‐39.
`
`’269 Patent at 31:4‐6
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`IPR2017‐00317 and ‐ 00318
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`Ex. 1005 at 34; Figure 9
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`33
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`Claim 6 – New Reply Arguments from PetitionerClaim 6 – New Reply Arguments from Petitioner
`
`• Despite assuring the Board that “[w]e're not changing our use of Asada,” Ex. 1118
`at 11:15, Petitioner now makes three new arguments why the embodiment of
`Figure 11 (not Figures 9 and 10) meets this limitation
`
`•
`
`•
`
`•
`
`(1) Element 7 (the Velcro) in Figure 11 is the claimed “signal processor.”
`Paper No. 32, Reply, at 17‐18.
`
`(2) The portion of Prototype B in Figure 11 is a modified version of Prototype
`A shown in Figures 9 and 10. Id. at 18.
`
`(3) This limitation would have been obvious. Id.
`
`• None of these new arguments should be allowed; regardless they are all flawed.
`Paper 22 at 38‐39.
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`IPR2017‐00317 and ‐ 00318
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`Element 7 in Figure 11 is not the Claimed “Signal Processor”Element 7 in Figure 11 is not the Claimed “Signal Processor”
`
`•
`
`Element 7
`
`• Unlabeled in Asada
`
`• No description in Asada that
`element 7 is a “signal processor
`configured
`to
`receive
`and
`process signals produced by the
`at least one optical detector.”
`
`• Appears
`to be Velcro® that
`mates to element 1. Ex. 2007,
`Titus Dec. at ¶ 116.
`
`Paper 22 at 38‐39.
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`IPR2017‐00317 and ‐ 00318
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`Ex.. 1005 at Fig. 11
`
`35
`
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`
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`The portion of Prototype B in Figure 11 is not a modified The portion of Prototype B in Figure 11 is not a modified
`
`version of Prototype A shown in Figures 9 and 10version of Prototype A shown in Figures 9 and 10
`Petitioner now alleges that a “POSA would have understood that Prototype B
`included the signal processor like the earlier Prototype A.” Paper No. 32, Reply, at 18.
`
`•
`
`• Nothing in Asada shows that Figure 11 is a modified version of the wireless ring
`device of Prototype A of Figures 9 and 10 that includes all the components of
`Prototype A.
`
`•
`
`Figure 11 need not have a “signal processor configured to receive and process
`signals produced by the at least one optical detector” if the signals are sent off‐
`device for processing.
`
`• And Dr. Anthony’s citation to Asada is irrelevant; the portion cited merely
`compares the brightness of the LEDs used in the two different prototypes. Ex.
`1005, p. 35 (“The LED used is 6.7 times brighter than that of Prototype A, while the resultant
`power consumption is 173 times smaller than before.”).
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`IPR2017‐00317 and ‐ 00318
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`Paper 32 at 18.
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`36
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`•
`
`•
`
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`Ground 1 – Cannot Meet Claim 7 without the Extra Ground 1 – Cannot Meet Claim 7 without the Extra
`
`Embodiments of AsadaEmbodiments of Asada
`
`In the Petition, Petitioner relied solely on the ring sensor embodiment of Figure 9 of Asada
`to meet the transmitter limitation. Petition at 35‐36.
`See Paper 22 at 38.
`
`’269 Patent at 31:7‐9.
`
`Despite assuring the Board that “[w]e're not changing our use of Asada,” Ex. 1118 at 11:15,
`Petitioner now makes two new arguments why the embodiment of Figure 11 (not Figures 9
`and 10) meets this limitation
`
`•
`
`•
`
`Figure 11’s Prototype B is a “subsequent iteration” of the Prototype A in Figure 9.
`•
`As discussed above, there is no proof for this position
`
`This limitation would have been obvious
`•
`Petitioner made no such showing besides a conclusory statement above in its
`Reply
`Even if the device had a transmitter, there is no evidence that it is transmitting
`“signals processed by the signal processor”; a signal processor may be off‐
`device.
`
`•
`
`IPR2017‐00317 and ‐ 00318
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`37
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`The Board Invited Patent Owner To Respond to Petitioner’s New The Board Invited Patent Owner To Respond to Petitioner’s New
`
`Reply Arguments at the HearingReply Arguments at the Hearing
`
`• When the Board denied Patent Owner’s request for a sur‐reply and to
`strike Petitioner’s new arguments made in reply, the Board noted that
`“there is the hearing that is still coming up, so any issues that come up …
`we will consider them.”
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`IPR2017‐00317 and ‐ 00318
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`38
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`Ex. 1118 at 21:4‐11.
`
`
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`
`
`Asada in view of Hicks – Claim 3Asada in view of Hicks – Claim 3
`
`•
`
`Petitioner supplements Asada’s lack of a lens with Hicks to meet this limitation:
`
`’269 Patent at 30:56‐59.
`• Adding Hicks’s lens provides no discernable benefit to the Fig. 11 embodiment of
`Asada
`
`• Many problems would accompany this modification
`• making Asada more susceptible to disturbances
`• making the skin uncomfortably warm or damaged by the heat due to focused light
`•
`increasing the chances that more of the light is directed to the wrong part of the body
`
`•
`
`There is insufficient motivation to combine because the problems of the
`proposed combination outweigh any purported benefit, given that there are no
`benefits
`
`IPR2017‐00317 and ‐ 00318
`
`Paper 22 at 40‐41.
`
`39
`
`
`
`
`Adding Hicks’s Lens to Focus Light in Asada’s Figure 11 Adding Hicks’s Lens to Focus Light in Asada’s Figure 11
`
`Device Makes that Device WorseDevice Makes that Device Worse
`
`•
`
`•
`
`•
`
`Asada explains that the transmittal device of Figure 11 uses unfocused light which provides
`the benefit of allowing the device to be “more robust against disturbances”
`
`•
`
`Ex. 1005 at 31 (“this design [transmittal PPG configuration] allows us to use devices
`having a weak polarity, which is, in general, more robust against disturbances”, where
`“polarity” has been defined previously on the same page as “directional property”)
`
`A POSA would not add the claimed lens that “focuses light” and lose the benefit of
`robustness against disturbances gained by unfocused light
`
`Petitioner and Dr. Anthony are confused between Asada’s reflective and transmittal PPGs
`
`•
`
`•
`
`They point to Asada’s discussion of reflective PPGs, arguing that Asada “suggests that
`directing and focusing light is important,” because “to avoid this short circuit, the LED light
`beam must be focused only in the normal direction.” Petition at 36‐37 (citing Ex. 1003 at ¶ 88 and
`quoting Asada, 31)
`
`But Asada clearly states that it is a benefit to have unfocused light in a transmittal PPG (“this
`design allows us to use devices having a weak polarity” Ex. 1005 at 31)
`
`IPR2017‐00317 and ‐ 00318
`
`Paper 22 at 40 and 42.
`
`40
`
`
`
`
`
`Hicks’s Lens is not Needed in AsadaHicks’s Lens is not Needed in Asada
`
`• Hicks explains that its own lens would not be used unless the light is not already
`properly directed or focused.
`
`•
`
`Ex. 1008 at 13:42‐45 (“a separate lens structure may be utilized if the refractive
`properties of the clear substrate 80 are not sufficient to properly direct/focus the light
`emitted/received by the emitters/detector 40, 42 and/or 38.14.”)
`
`•
`
`The light in Asada’s Figure 11 device is already properly directed and focused.
`
`•
`
`See, e.g., Ex. 1005 at Figure 2(b) (below, showing the path of the light in a transmittal
`PPG configuration such as what is used in the device of Figure 11).
`
`IPR2017‐00317 and ‐ 00318
`
`41
`
`Ex. 1005 at Fig. 2B (excerpt)
`
`Paper 22 at 40.
`
`
`
`
`
`Other Detriments of Adding Hicks’s Lens to AsadaOther Detriments of Adding Hicks’s Lens to Asada
`
`•
`
`The skin can become uncomfortably warm or damaged by the heat caused by the
`focused light emitted from the lens. Ex. 2007, Titus Dec. at ¶ 122.
`
`•
`
`Petitioner responds by making even further obviousness changes to Figure
`11 by proposing a high‐frequency, low‐duty rate modulation light source.
`Paper 32, Reply at 22‐23.
`
`•
`
`•
`
`This does not address the heat caused by a lens (only the light source)
`
`This is another new obviousness modification to Figure 11 (requiring a new light
`source) on which Petitioner has not made a prima facie case of obviousness
`
`•
`
`It is well settled law that “[w]hen a prior art reference discloses multiple,
`distinct
`embodiments,
`combining
`teachings
`from those distinct
`embodiments requires an obviousness analysis, including a demonstration
`of why one of ordinary skill would be motivated to combine those
`disparate teachings.” Cook Group Inc. v. Boston Scientific Scimed, Inc.,
`IPR2017‐00440 (PTAB 2017) (Paper 7) at 14.
`
`IPR2017‐00317 and ‐ 00318
`
`Paper 22 at 40‐42.
`
`42
`
`
`
`
`
`Other Detriments of Adding Hicks’s Lens to AsadaOther Detriments of Adding Hicks’s Lens to Asada
`
`• Adding a lens to focus the light in Asada increases the chances that more
`of the light is directed to the wrong part of the body. Ex. 2007, Titus Dec. at
`¶ 123.
`
`• Petitioner responds by simply concluding that a POSA would have
`known how to design a sensor to avoid that issue. Paper 32, Reply at
`22.
`
`•
`
`This is another new obviousness modification to Figure 11
`(requiring additional design changes to direct the light in a
`specific way) on which Petitioner has not made a prima facie
`case of obviousness. Why would a POSA make these
`unnecessary changes to Asada?
`
`IPR2017‐00317 and ‐ 00318
`
`Paper 22 at 40‐42.
`
`43
`
`
`
`
`
`The Detriments of Adding a Lens Outweigh any BenefitsThe Detriments of Adding a Lens Outweigh any Benefits
`
`•
`
`•
`
`•
`
`Petitioner provides an inadequate motivation to combine for adding a lens to
`Goodman in spite of transmittal PPGs benefitting from unfocused light
`
`•
`
`Petitioner now offers only a conclusory new obviousness argument made for the first
`time in its Reply
`
`•
`
`the lens “can help focus light to a certain depth within the body before taking a
`more diffuse path through the body,” which “would facilitate Asada’s goal of
`directing light at the digital artery for good signal quality.” Paper 32, Reply at 22.
`
`But we already know that Asada teaches away from using focused light in a
`transmittal PPG environment in order to keep the device “more robust against
`disturbances” (Ex. 1005 at 31).
`
`Considering all of the detriments of adding Hick’s lens to Goodman, weighed
`against no discernable benefits, one of ordinary skill would not have made this
`combination. Ex. 2007, Titus Dec. at ¶ 126.
`
`IPR2017‐00317 and ‐ 00318
`
`Paper 22 at 42‐43.
`
`44
`
`
`
`
`
`Asada in view of Hannula – Claim 4Asada in view of Hannula – Claim 4
`
`•
`
`•
`
`•
`
`Petitioner argues that the reflective mask layer 111 of Hannula should be added
`to Asada to meet the following limitation:
`
`’269 Patent at 30:60‐61.
`
`The reason that Petitioner offers for making this combination is that “[t]his
`increases the amount of LED light that the photodetector receives from the
`patient’s tissue.” Petition at 59.
`
`There is no indication that adding Hannula’s reflective mask to Asada would have
`increased the amount of light that the photodetector receives
`Paper 22 at 44‐45.
`
`IPR2017‐00317 and ‐ 00318
`
`45
`
`
`
`
`
`Asada in view of Hannula – Claim 4Asada in view of Hannula – Claim 4
`
`•
`
`•
`
`The arrangement that Petitioner
`proposes is illustrated in the
`annotated Figure 11 from Asada
`on the right. Ex. 2007, Titus Dec. at
`¶ 132.
`
`its
`that
`shows
`11
`Figure
`secured
`are
`all
`components
`together with one layer directly
`on top of the other. Id.
`
`Paper 22 at 45.
`
`IPR2017‐00317 and ‐ 00318
`
`46
`
`
`
`
`
`Asada in view of Hannula – Claim 4Asada in view of Hannula – Claim 4
`
`•
`
`•
`
`Sandwiching a reflective mask between those
`layers is unlikely to direct any additional light to
`the photodetector. Ex. 2007, Titus Dec. at ¶ 132.
`
`•
`
`•
`
`the photodetector sits adjacent to or inside the
`aperture in element 2, meaning that the amount
`of light that could even reach the reflective mask
`instead
`of
`the photodetector would
`be
`negligible. Id.
`
`even if a small amount of light might reflect off
`of the reflective mask, elements 4 and 5, which
`sit inside the apertures of layer 2, would block
`any light
`from reflecting back through the
`apertures, which would defeat the purpose of
`adding the reflective elements. Id.
`
`And Dr. Anthony admitted that adding a
`reflective mask to Asada could have increased
`unwanted shunting. Ex. 2010 at 169:5‐23
`
`Paper 22 at 45.
`
`IPR2017‐00317 and ‐ 00318
`
`47
`
`
`
`
`
`Petitioner’s Reply Argument is FlawedPetitioner’s Reply Argument is Flawed
`
`•
`
`Petitioner responds by arguing that, “Valencell’s theory, the reflective mask (117) in Hannula would not
`function.” Paper No. 32, Reply, at 25
`
`•
`
`•
`
`premised on Petitioner’s assertion that in Hannula “the inner side 125 of layer 112 is covered with
`a laminated opaque film,” which presumably would prevent light from impinging on reflective
`mask 117. Id.
`
`But “laminated opaque film” is only used in “one embodiment of the present invention” (never
`described as Fig. 1C’s embodiment”). Ex. 1009 at 4:47‐50
`
`•
`
`•
`
`The inventor is choosing to block light from reaching the reflective mask 117 in that embodiment.
`
`But, in the embodiment of Figure 1C (without “laminated opaque film”), the reflective mask functions
`
`Without an opaque film on
`side 125, the reflective
`mask 117 functions
`
`If an opaque film is added
`to side 125, the reflective
`mask 117 does not function
`
`•
`
`Petitioner’s argument supports Patent Owner’s position by showing an embodiment where no light
`would reach the reflective mask, causing the reflective mask to serve no purpose, as would happen in
`Asada
`IPR2017‐00317 and ‐ 00318
`
`48
`
`
`
`
`
`Claim 5 ‐ Asada in view of HannulaClaim 5 ‐ Asada in view of Hannula
`
`’269 Patent at 30:64‐31:3.
`Petitioner picks and chooses from many of Asada’s embodiments to meet claim 5
`without ever providing any rationale for modifying the device of Figure 11 to
`include those embodiments such that on balance those modifications would have
`been made.
`
`Thus, Petitioner has not made a prima facie case of obviousness.
`
`•
`
`•
`
`Paper 22 at 46‐47.
`
`IPR2017‐00317 and ‐ 00318
`
`49
`
`
`
`
`
`Asada in view of Hannula – Mixing EmbodimentsAsada in view of Hannula – Mixing Embodiments
`
`• Petitioner uses these embodiments from Asada:
`• Asada’s Figures 6 and 15
`•
`“the at least one optical detector comprises first and second optical detectors” limitation of
`claim 5
`• Asada’s Figures 9 and 10
`•
`“signal processor” limitation of claim 5
`• Asada’s Figure 8 and conclusory obviousness allegations
`•
`“wherein at least a portion of light reflected by the light reflective material and detected by
`the second optical detector is processed by the signal processor as a noise reference for
`attenuating motion noise from signals produced by the first optical detector” of claim 5
`• Asada’s Figure 11
`• Claim 1’s limitations (dependent claim 5(/4(/1)))
`
`•
`
`Petitioner makes no attempt to show a motivation to make this multi‐faceted
`combination in the Petition (Paper No. 2 at 41‐43)
`
`• And Petitioner ignores its mixing of embodiments in its Reply (Paper No. 32 at
`25‐26).
`
`Paper 22 at 46‐47.
`
`IPR2017‐00317 and ‐ 00318
`
`50
`
`
`
`
`Asada in view of Hannula (Claim 5)Asada in view of Hannula (Claim 5)
`
`No Motivation to CombineNo Motivation to Combine
`
`• A POSA would not have taken Asada’s device from Figure 11 and added to it a
`reflective mask, a second photodetector, and a signal processor, all to detect and
`remove noise, when the device of Figure 11 was already producing a waveform
`that was “quite stable.” Ex. 2007, Titus Dec. at ¶ 136.
`
`Ex. 1005 at 35.
`• Adding these many components and features to the embodiment of Figure 11 of
`Asada would only add further complexity and cost to the device with no certainty
`of improvement over the “quite stable waveform” Ex. 2007, Titus Dec. at ¶ 136.
`
`IPR2017‐00317 and ‐ 00318
`
`Paper 22 at 47‐48.
`
`51
`
`
`
`
`
`Goodman Grounds – Argument HighlightsGoodman Grounds – Argument Highlights
`
`1.
`
`Insufficient Motivation to Combine Goodman and Asada (and Hannula)
`
`a. Goodman is designed for intensive care hospital use; Asada is specifically for
`“out‐of‐hospital” use, “without direct doctor supervision.”
`
`b. Petitioner’s reason to combine is faulty (Goodman is not concerned with
`reducing motion artifacts because it conforms to the skin and because the
`patient is still and not ambulatory)
`
`c. Addition of three elements (reflective mask, second optical detector, signal
`processor) would create additional problems, including:
`a. Adding mass (introduces motion artifact)
`b. Decreasing cutaneous conformance
`c. Adding unwanted pressure into the skin
`d. Decreasing disposability, which is
`environment
`
`sanitary
`
`critical
`
`to hospital’s
`
`IPR2017‐00317 and ‐ 00318
`
`52
`
`
`
`
`Viewed as a Whole, Goodman, Hannula, and Asada Viewed as a Whole, Goodman, Hannula, and Asada
`
`are not Combinableare not Combinable
`
`Goodman and Asada are Directed at Much Different Devices
`
`Goodman
`Intensive care hospital monitoring
`
`Asada
`Activities of daily living
`
`Wired
`No power concerns
`
`Eliminates motion artifacts by using low‐
`mass device that fully conforms
`to the skin
`Skin‐tight application
`Disposable and Sanitary
`
`Wireless
`Battery‐powered (concerned with power
`consumption and bat
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