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 Jr. (bkennedy@bcpc-law.com)
`Marcus Benavides (mbenavides@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`DECLARATION OF ALBERT H. TITUS IN SUPPORT OF PATENT
`OWNER RESPONSE TO PETITION
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
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`Page 1
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`VALENCELL EXHIBIT 2007
`IPR2017-00317
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`

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`Case IPR2017-00317
`Patent 8,989,830
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`
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`Patent Owner Response to Petition for Inter Partes Review of U.S. Patent
`No. 8,989,830
`Declaration of Dr. Albert H. Titus
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`
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`I, Albert H. Titus, do hereby declare and state, under penalty of perjury under
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`the laws of the United States of America, that all statements made herein of my own
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`knowledge are true and correct and that all statements made on information and
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`belief are believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States Code.
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`Executed on September 22, 2017, from Buffalo, NY
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`_________________________
`Albert H. Titus
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`Case IPR2017-00317
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`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 5
`
`A. Engagement ................................................................................................................... 5
`
`B. Background and Qualifications ................................................................................ 5
`
`C. Compensation and Prior Expert Witness Experience ......................................... 8
`
`D. Information Considered ............................................................................................. 8
`
`
`II. MY UNDERSTANDING OF THE LEGAL PRINCIPLES .............................. 9
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`III. THE ’830 PATENT .......................................................................................... 13
`
`A. Priority Date of the ’830 Patent Claims ............................................................... 13
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`B. Overview of the ’830 Patent ................................................................................... 14
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`1. Background .............................................................................................. 14
`
`2. Discussion of Selected Embodiments ...................................................... 15
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`3. Exemplary Claim ...................................................................................... 23
`
`
`C. Grounds in the Petition ............................................................................................ 24
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`D. Overview of Certain Prior Art Relied-Upon ...................................................... 25
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`1. Goodman .................................................................................................. 25
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`2. Asada ........................................................................................................ 27
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`E. Level of Ordinary Skill in the Art ......................................................................... 30
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`F. Claim Construction ................................................................................................... 30
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`1. “cladding material” .................................................................................. 32
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`2. “light guiding interface” ........................................................................... 38
`
`
`IV. PATENTABILITY ANALYSIS OF THE ’830 PATENT .............................. 39
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`A. GROUND 1 ................................................................................................................ 42
`
`1. A “window formed in the layer of cladding material that serves as a
`light-guiding interface to the body of the subject” ................................. 42
`
`
`2. “The first and second directions are substantially parallel” ..................... 47
`
`3. “Light transmissive material” Configured to Deliver Emitted Light
`“along a first direction” and Deliver Collected Light “in a second
`direction” ................................................................................................. 53
`
`
`B. GROUND 2 ................................................................................................................ 54
`
`C. GROUND 3 ................................................................................................................ 59
`
`1. Goodman as a Whole compared to Asada as a Whole ............................ 60
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`2. Goodman as a Whole compared to Hannula as a Whole ......................... 62
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`3. Apple’s Premise for Combining Goodman and Hannula is Incorrect ..... 65
`
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`4. Apple’s Premises for Combining Goodman and Asada are Incorrect ..... 67
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`5. Claims 6 and 16 – Adding Missing Limitations to Goodman ................. 69
`
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`D. GROUND 4 ................................................................................................................ 72
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`E. GROUND 5 ................................................................................................................ 74
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`I.
`
`INTRODUCTION
`
`A. Engagement
`
`1. My name is Dr. Albert H. Titus, and Valencell, Inc. (“Valencell” or
`
`“Patent Owner”) asked me to submit a declaration in this matter.
`
`2.
`
`I understand that Valencell intends to use my declaration in support of
`
`its Patent Owner’s response (the “Response”) to the petition of Apple Inc. (“Apple”
`
`or “Petitioner”) for inter partes review of U.S. Patent No. 8,989,830 (“the ’830
`
`patent”).
`
`3.
`
`I understand that this matter has a case number of IPR2017-00317 and
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`is pending before the Patent Trial and Appeal Board (“PTAB” or the “Board”) of the
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`United States Patent and Trademark Office (“PTO” or “USPTO).
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`4.
`
`Valencell retained me as a technical expert to provide my opinions on
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`the disclosures of the prior art cited in IPR2017-00317, the understandings of one of
`
`ordinary skill in the art, and how those things relate to the patentability of claims 1-
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`6, 8-16, and 18-20 of the ’830 patent.
`
`B. Background and Qualifications
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`5.
`
`I am a tenured, Full Professor of Biomedical Engineering at the
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`University at Buffalo, The State University of New York. I am also the current
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`Department Chair. My curriculum vitae (CV), has the complete outline of my
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`experience, publications, patents, and related work. In these paragraphs, I highlight
`
`the experiences relevant to the topic at hand.
`
`6.
`
`I earned a Bachelor of Science (BS) in Electrical Engineering and a
`
`Master of Science (MS) in Electrical Engineering from the University at Buffalo in
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`1989 and 1991, respectively. My MS thesis focused on optical pulse compression.
`
`In that work, I studied methods for generating ultra-short optical pulses using a laser
`
`source and optical fibers. I attended the Georgia Institute of Technology for my
`
`Ph.D. (in Electrical Engineering) and completed my degree in 1997. My Ph.D.
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`research was centered around silicon-based vision systems. This work combined
`
`knowledge of biological visual systems, silicon-based transistor integrated
`
`electronics, and silicon-based photodetectors (the precursors to today’s CMOS
`
`cameras). I was able to develop an integrated circuit (“chip”) that combined
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`processing circuitry and CMOS photodetectors to perform depth perception
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`processing mimicking animals’ visual systems.
`
`7.
`
`After completing my Ph.D., I was a faculty member at the Rochester
`
`Institute of Technology where I taught numerous courses in Electrical Engineering.
`
`In 2001, I moved to the University at Buffalo. I continued my research into silicon
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`visual processing and also moved into optical sensing for chemical and biological
`
`applications. In 2008, I was asked to help lead the development of a new department,
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`the Department of Biomedical Engineering. This department was formed and I am
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`currently the Department Chair.
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`8. My research and teaching activity has moved more into the biomedical
`
`field. I have numerous publications focused on sensing, and have six patents
`
`awarded and one additional patent pending. I have consulted with small companies
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`and had sponsored research projects from various industry and federal sources.
`
`9.
`
`I have developed and taught courses in biomedical instrumentation.
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`One particular course I created and have taught one time is “Advanced Biomedical
`
`Electronics.” This course focuses on developing wearable electronic sensing devices
`
`for measuring different biosignals. The primary project of this course requires that
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`student teams develop a wearable, microcontroller-based photoplethysmography
`
`system for measuring pulse rate and oxygen concentration.
`
`10.
`
`I have summarized in this section my educational background, work
`
`experience, and other relevant qualifications. Additional details about my
`
`employment history, fields of expertise, and publications are further described in my
`
`curriculum vitae. A true and accurate copy of my curriculum vitae is attached as
`
`Exhibit 2008.
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`C. Compensation and Prior Expert Witness Experience
`
`11.
`
`I am being compensated at a consulting rate of $325/hr. for non-
`
`testimony time (e.g., time spent reviewing prior art) and $500/hr. for testimony time
`
`(e.g., time spent in depositions). I am also being reimbursed for my expenses. My
`
`compensation does not depend on my opinions rendered, my testimony, or the
`
`outcome of this matter.
`
`D. Information Considered
`
`12.
`
`13.
`
`I have reviewed and analyzed the ’830 patent. Exhibit 1001.
`
`I have reviewed and analyzed the prosecution history of the ’830 patent.
`
`Exhibit 1002.
`
`14.
`
`I have reviewed and analyzed Apple’s Petition for inter partes review.
`
`Paper 2 (the “Petition”).
`
`15.
`
`I have reviewed and analyzed the declaration of Dr. Anthony that Apple
`
`used to support its Petition. Ex. 1003 (“Dr. Anthony’s Declaration” or “Anthony
`
`Dec.”).
`
`16.
`
`I have also reviewed and analyzed the prior art cited in the Petition and
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`Dr. Anthony’s Declaration.
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`17.
`
`I have also reviewed and analyzed Valencell’s Preliminary Response.
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`Paper 6 (“Preliminary Response”).
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`18.
`
`I have also reviewed and analyzed the Board’s Institution Decision.
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`Paper 7, (“Institution Decision”), which instituted review of the ’830 patent.
`
`19.
`
`I have reviewed and analyzed the relevant papers and exhibits
`
`submitted in this proceeding up to the date of this declaration.
`
`20. My opinions rely on my education, research, experience, as well as my
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`review and analysis of the materials in this IPR. I also rely on my knowledge of
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`engineering, physics, and optics. I also rely on the common sense of one of ordinary
`
`skill in the art.
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`21.
`
`I reserve the right to revise my opinions if I receive new information or
`
`insight on the relevant topics or materials.
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`II. MY UNDERSTANDING OF THE LEGAL PRINCIPLES
`
`22. To render my opinions, I rely upon certain basic legal principles
`
`regarding patentability that counsel has explained to me.
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`23.
`
`I understand that evaluating patentability often times involves
`
`analyzing the “prior art,” which generally is technology that existed before the
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`priority date of the invention in question.
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`24.
`
`I understand that, in IPR proceedings, the prior art generally includes
`
`patents and printed publications (e.g., books, journal publications, articles on
`
`websites, product manuals, etc.).
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`25.
`
`I understand that a patent should not issue if its claims are anticipated
`
`by the prior art or if its claims are obvious in light of the prior art. I understand that
`
`anticipation is not at issue in this IPR, so my understandings for this declaration
`
`focus on obviousness.
`
`26.
`
`I understand that the petitioner in IPR proceedings has the burden of
`
`proving obviousness by a preponderance of the evidence. I understand that
`
`“preponderance of the evidence” means that the evidence is sufficient to show that
`
`a fact is more likely true than it is not.
`
`27.
`
`I understand that a patent claim is obvious if the differences between
`
`the subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains. I
`
`understand that when evaluating claims for obviousness, the prior art as a whole
`
`must be considered.
`
`28. To conduct an obviousness analysis, I understand that the scope and
`
`content of the prior art are to be determined; differences between the prior art and
`
`the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent
`
`art resolved. Against this background, the obviousness or nonobviousness of the
`
`subject matter is determined. Such secondary considerations as commercial success,
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`long felt but unsolved needs, failure of others, etc., might be utilized to give light to
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`the circumstances surrounding the origin of the subject matter sought to be patented.
`
`29.
`
`I further understand that, in determining obviousness, one should be
`
`aware of the distortion caused by hindsight bias and must be cautious of arguments
`
`reliant upon ex post reasoning. This includes resisting the temptation to read into the
`
`prior art the teachings of the invention in issue and guarding against slipping into
`
`use of hindsight.
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`30.
`
`I understand that the combination of familiar elements according to
`
`known methods is likely to be obvious when it does no more than yield predictable
`
`results.
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`31.
`
`I understand that when the prior art teaches away from combining
`
`certain known elements, discovery of a successful means of combining them is more
`
`likely to be nonobvious.
`
`32.
`
` I further understand that it can be important to identify a reason that
`
`would have prompted a person of ordinary skill in the relevant field to combine the
`
`elements in the way the claimed new invention does. This is so because inventions
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`in most, if not all, instances rely upon building blocks long since uncovered, and
`
`claimed discoveries almost of necessity will be combinations of what, in some sense,
`
`is already known.
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`33.
`
`I understand that, to determine whether there was an apparent reason to
`
`combine the known elements in the way a patent claims, it will often be necessary
`
`to look to interrelated teachings of multiple patents; to the effects of demands known
`
`to the design community or present in the marketplace; and to the background
`
`knowledge possessed by a person having ordinary skill in the art. I further
`
`understand that, to facilitate review, this analysis should be made explicit.
`
`34.
`
`I understand that when there is a design need or market pressure to solve
`
`a problem and there are a finite number of identified, predictable solutions, a person
`
`of ordinary skill has good reason to pursue the known options within his or her
`
`technical grasp. If this leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense.
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`35.
`
`I understand that an inference of nonobviousness is especially strong
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`where the prior art’s teachings undermine the very reason being proffered as to why
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`a person of ordinary skill would have combined the known elements.
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`36.
`
`I understand that when considering obviousness combinations, trade-
`
`offs must often arise. I understand that that trade-offs often concern what is feasible,
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`not what is, on balance, desirable. I understand that motivation to combine requires
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`the latter.
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`37.
`
`I understand that, when considering an obviousness combination, the
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`fact that the motivating benefit comes at the expense of another benefit, however,
`
`should not nullify its use as a basis to modify the disclosure of one reference with
`
`the teachings of another. Instead, the benefits, both lost and gained, should be
`
`weighed against one another.
`
`38.
`
`I understand that a prior art reference may be said to teach away when
`
`a person of ordinary skill, upon reading the reference, would be discouraged from
`
`following the path set out in the reference, or would be led in a direction divergent
`
`from the path that was taken by the patents-in-suit.
`
`39.
`
`I understand that, in the obviousness analysis, it is impermissible to use
`
`the invention as a roadmap to find prior art components.
`
`40.
`
`I understand that, to rely on two distinct embodiments from a prior art
`
`reference, requires an obviousness-type argument, wherein a case would need to be
`
`made for combining the embodiments.
`
`III. THE ’830 PATENT
`
`A. Priority Date of the ’830 Patent Claims
`
`41. The ’830 patent issued from U.S. Application No. 14/484,585 (the
`
`“’585 application”), filed on September 12, 2014. The ’585 application is a
`
`continuation of application No. 14/184,364, filed on February 19, 2014, now U.S.
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`Patent No. 8,886,269, which is a continuation of application No. 12/691,388, filed
`
`on January 21, 2010, now U.S. Patent No. 8,700,111. The ’585 application further
`
`claims priority to provisional application No. 61/208,567, filed on February 25,
`
`2009, provisional application No. 61/208,574, filed on February 25, 2009,
`
`provisional application No. 61/212,444, filed on April 13, 2009, and provisional
`
`application No. 61/274,191, filed on August 14, 2009. For this declaration, I assume
`
`that the priority date for the ’830 patent is February 25, 2009. I refer to this as the
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`“relevant time frame” or the “time of the invention”
`
`B. Overview of the ’830 Patent
`
`1. Background
`
`42. At the time of the invention, the ’830 patent disclosed that there was a
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`“growing market demand for personal health and environmental monitors, for
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`example, for gauging overall health and metabolism during exercise, athletic
`
`training, dieting, daily life activities, sickness, and physical therapy.” ’830 patent at
`
`column 1, lines 27-30. There was also a “growing interest in generating and
`
`comparing health and environmental exposure statistics of the general public and
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`particular demographic groups.” ’830 patent at column 1, lines 33-36. But “methods
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`of collecting these statistics may be expensive and laborious, often utilizing human-
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`based recording/analysis steps at multiple sites.” ’830 patent at column 1, lines 40-
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`41.
`
`43. The ’830 patent disclosed that “improved ways of collecting, storing
`
`and analyzing physiological information are needed.” ’830 patent at column 1, lines
`
`42-43. Furthermore, “improved ways of seamlessly extracting physiological
`
`information from a person during everyday life activities, especially during high
`
`activity levels, may be important for enhancing fitness training and healthcare
`
`quality, promoting and facilitating prevention, and reducing healthcare costs.” 830
`
`patent at column 1, lines 42-46.
`
`2. Discussion of Selected Embodiments
`
`44.
`
`In response to these issues, the ’830 patent discloses a “monitoring
`
`device configured to be attached to the body of a subject.” ’830 patent at Abstract.
`
`The ’830 patent discusses many embodiments of that device. For example, a “‘light-
`
`guiding’ earbud 30” is depicted in Figure 3, which I provide a copy of below. ’830
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`patent at column 13, line 14.
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`’830 patent at Figure 3.
`
`45. Figures 22A and 22B, which I also provide a copy of below, show an
`
`embodiment of “a monitoring 65 device 70 that is configured to fit over a finger F,
`
`for example, as a finger ring.” ’830 patent at column 27, lines 65-67. The ’830 patent
`
`further explains that the monitoring device “may be configured to be attached to
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`earlobes, fingers, toes, other digits, etc.” ’830 patent at column 27, lines 62-63.
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`
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`’830 patent at Figures 22B and 22A.
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`46. The ’830 patent discusses improving the collection of physiological
`
`information by specifically orienting the optical emitter and the optical detector of
`
`the monitoring device. The ’830 patent explains that the “optical emitter 24 and
`
`optical detector 26 are each oriented such that their respective primary emitting and
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`detecting planes P1, P2 are each facing a respective direction A3, A2 that is
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`substantially parallel with direction A1.” ’830 patent at column 14, lines 52-59. I
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`provide annotated Figure 3 below to illustrate an example of that configuration:
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`’830 patent at Figure 3 (excerpted and annotated).
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`
`
`47. The ’830 patent discusses a light guide (also referred to as cover 18
`
`(see, e.g., column 14, lines 26-27)) designed to deliver light from the optical emitter
`
`along direction A3 to the body. A cover 18, shown in Figure 3, “includes cladding
`
`material 21 on an inner surface 18b thereof and on an outer surface 18a thereof.”
`
`’830 patent at column 14, lines 17-19. “The optical emitter 24 generates inspection
`
`light 111 and the light-guiding region 19 of the light guide 18 directs the inspection
`
`light 111 towards” the body, e.g., the ear. ’830 patent at column 14, lines 40-42.
`
`Importantly, “the cover 18 serves as a light guide that delivers light from the optical
`
`emitter 24 through the end portion 18f and into the ear canal C of a subject at one
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`or more predetermined locations and that collects light external to the earbud
`
`housing 16 and delivers the collected light to the optical detector 26.” ’830 patent
`
`at column 14, lines 20-22 (emphasis added). Thus, the emitted light (highlighted
`
`yellow) is guided through the light-guiding region 19 along direction A3 to exit at
`
`end portion 18f (highlighted blue) as shown in the annotated and excerpted version
`
`of Figure 3, provided below.
`
`’830 patent at Figure 3 (excerpted and annotated).
`
`
`
`48.
`
`In the embodiment of Figure 3, a light guide also directs light back to
`
`the optical detector 26. Inspection light 111 generated by the optical emitter 24
`
`“interrogates the surface of the ear, penetrates the skin of the ear, and generates a
`
`scattered light response 110 which may effectively inspect blood vessels within the
`
`ear region.” ’830 patent at column 14, lines 43-46. The description continues, stating
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`that “[t]he optical detector 26 detects scattered light 110 from an ear region and the
`
`light-guiding region 19 of the light guide 18 guides the light to the optical detector
`
`26 through the light-guiding region 19, as illustrated.” ’830 patent at column 14,
`
`lines 46-49. I have provided a different annotated and excerpted version of Figure 3
`
`below, which shows an example of the path of light discussed in this paragraph.
`
`
`
`’830 patent at Figure 3 (excerpted and annotated).
`
`49.
`
`“The light guiding region 19 of the light guide 18 in the illustrated
`
`embodiment of FIG. 3 is defined by cladding material 21 that helps confine light
`
`within the light guiding region 19.” ’830 patent at column 14, lines 60-63. “An end
`
`portion 18f of the cover outer surface 18a does not have cladding material. As
`
`such, the cover 18 serves as a light guide that delivers light from the optical emitter
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`24 through the end portion 18f and into the ear canal C of a subject at one or more
`
`predetermined locations and that collects light external to the earbud housing 16 and
`
`delivers the collected light to the optical detector 26.” ’830 patent at column 14, lines
`
`19-25 (emphasis added). In the annotations to excerpted Figure 3 provided below, I
`
`highlight in blue the end portions 18f.
`
`
`’830 patent at Figure 3 (excerpted and annotated).
`
`
`
`50. As shown in the annotated Figure 3 below, by using the cladding
`
`material (highlighted red) to confine light within the light-guiding region 19
`
`(highlighted yellow), “the cover 18 serves as a light guide that delivers light from
`
`the optical emitter 24 [highlighted green] through the end portion 18f [highlighted
`
`blue] and into the ear canal [highlighted gray] of a subject at one or more
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`predetermined locations.” ’830 patent at column 14, lines 20-23. The light guide
`
`then “collects light external to the earbud housing 16.” ’830 patent at column 14,
`
`lines 19-25. Collected light returns through the window (i.e. end portion 18f) and the
`
`light guide “delivers the collected light to the optical detector 26.” ’830 patent at
`
`column 14, lines 19-25.
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`
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`’830 patent at Figure 3 (excerpted and annotated).
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`3. Exemplary Claim
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`51. Claim 1 of the ’830 patent is an apparatus claim illustrative of the
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`elements of the other independent claim 11. Claim 1 recites the following elements
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`(which are labeled using Apple’s annotations, see Petition at page ii):
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` 1[.P]. A monitoring device configured to be attached to the body of a
`subject, comprising:
`[1.1] an outer layer and an inner layer secured together,
`[1.2] the inner layer comprising light transmissive material, and
`having inner and outer surfaces;
`[1.3] a base secured to at least one of the outer and inner layers
`and comprising at least one optical emitter and at least one optical
`detector;
`[1.4] a layer of cladding material near the outer surface of the
`inner layer; and
`[1.5] at least one window formed in the layer of cladding material
`that serves as a light-guiding interface to the body of the subject,
`[1.6] wherein the light transmissive material is in optical
`communication with the at least one optical emitter and the at least one
`optical detector, wherein the light transmissive material is configured
`to deliver light from the at least one optical emitter to the body of the
`subject along a first direction and to collect light from the body of the
`subject and deliver the collected light in a second direction to the at
`least one optical detector, wherein the first and second directions are
`substantially parallel.
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`’830 patent at column 30 lines 35-55.
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`C. Grounds in the Petition
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`52. The Petition includes five grounds of alleged unpatentability against the
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`’830 patent. Each of those five grounds rely on Goodman (U.S. Patent No.
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`4,830,014, Apple’s Exhibit 1007) as the primary reference. Ground 1 relies solely
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`on Goodman for allegedly rendering obvious claims 1-4, 11-14 of the ’830 patent
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`under 35 U.S.C. § 103. Ground 2 relies on Goodman and Hicks (U.S. Patent No.
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`6,745,061, Apple’s Exhibit 1008) for allegedly rendering obvious claims 5 and 15.
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`Ground 3 relies on the combination of Goodman, Hannula (U.S. Patent No.
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`7,190,969, Apple’s Exhibit 1009), and the publication Asada (purportedly a copy of
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`“Mobile Monitoring with Wearable Photoplethysmographic Biosensors,” published
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`by IEEE, Exhibit 1005) for allegedly rendering obvious claims 6 and 16. Ground 4
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`relies on the combination of Goodman and Asada for allegedly rendering obvious
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`claims 8, 9, 18, and 19. Ground 5 relies on the combination of Goodman and
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`Delonzor (U.S. Patent No. 5,797,841, Exhibit 1010) for allegedly rendering obvious
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`claims 10 and 20. The table below summarizes the grounds presented on page 6 of
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`the Petition.
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`Ground References Combined
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`1
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`Goodman
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`Independent
`Claims
`1 and 11
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`Dependent
`Claims
`2-4, 12-14
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`Goodman, Hicks
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`Goodman, Hannula, Asada
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`Goodman, Asada
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`Goodman, Delonzor
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`2
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`3
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`4
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`5
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`5, 15
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`6, 16
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`8, 9, 18, 19
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`10, 20
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`D. Overview of Certain Prior Art Relied-Upon
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`1. Goodman
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`53. Goodman’s goal is to provide “a noninvasive, reliable, and continuous
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`monitoring of the vital signs of a patient requiring intensive care to prevent vital
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`organ damage or reduced biopotential.” Goodman at column 5, lines 3-6 (emphasis
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`added). Goodman “satisfies a present need to provide information critical to patient
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`treatment even under the most dire conditions.” Goodman at column 6, lines 34-35.
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`Goodman is aimed at devising a sensor that treats “critically ill and compromised
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`patients.” See, for example, Goodman at column 3, lines 45-50.
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`54. Goodman discusses an embodiment
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`in which “photoelectrical
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`components, a light source and a light sensor, are embedded into a flexible adhesive
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`substrate which is bifurcated into two arms.” Goodman at column 5, lines 9-12.
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`Goodman’s Figure 2A shows “this invention looking towards the photo-sensor,
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`light-emitting-diodes and adhesive surface,” and Figure 2B “is a view of the sensor
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`of FIG. 2A illustrating various layers of this invention peeled back to expose the
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`inner construction.” Goodman at column 8, lines 9-14.
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`Goodman at Figures 2A and 2B.
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`55. As shown in the figures above, the “[flexible adhesive] substrate is
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`provided with signal connections leading to a measuring device.” Goodman at
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`column 5, lines 12-13 (emphasis added). Thus, by itself Goodman’s adhesive device
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`cannot measure things like pulse and heart rate without an external “measuring
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`device.” This conforms with Goodman’s advantage of being “entirely disposable
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`and thus sanitary.” Goodman at column 6, lines 22-23. Throwing out relatively
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`valuable components, such as a processor and a display, with each new patient would
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`counteract Goodman being “entirely disposable and thus sanitary.”
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`56. Goodman states that “when the sensor is adhesively fastened, the effect
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`of the light source and photo-sensor being integrated into the adhesive fastener is
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`that they become, in effect, a part of the skin.” Goodman at column 4, lines 59-62.
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`Goodman further states that “[t]he resulting device is resistant to accidental removal
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`and avoids constriction of blood vessels both internal and external. Most
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`importantly, the low mass of the sensor itself and its conformance to the skin
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`prevents motion, localized force, and the resulting contact interruption among the
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`light source, photo-sensor and flesh.” Goodman at column 4, lines 62-67.
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`2. Asada
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`57. Asada involves “[w]earable biosensors (“WBS”)” such as “a ring
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`sensor for ambulatory, telemetric, [and] continuous health monitoring.” Asada at
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`page 28. In contrast to Goodman, Asada is unsuitable in an intensive care
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`environment, given, for example, its goal of ambulatory monitoring. Instead,
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`Asada’s wearable biosensors are intended for “monitoring environments…out-of-
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`hospital, [and] are to be worn without direct doctor supervision.” Asada at page 28
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`(emphasis added). Under that arrangement, Asada describes a device that “combines
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`miniaturized data acquisition features with advanced photophlethysmographic
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`(PPG) techniques to acquire data related to the patient’s cardiovascular state using a
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`method that is far superior to existing fingertip PPG sensors.” Asada at page 28.
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`58.
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`In Ground 4, Apple cites to Asada’s prototype “A,” which uses wireless
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`functions for “bi-directional RF communication.” See Petition at pages 54-55 (citing
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`Asada at page 34).
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`Asada at Figures. 9 and 10.
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`59.
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`In contrast to Goodman, which is a tethered device, the prototype