throbber
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
`
`
`PATENT OWNER RESPONSE PURSUANT TO
`35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`1
`
`

`

`TABLE OF CONTENTS
`
`
`I. 
`
`Introduction ............................................................................................. 6 
`
`II.  Overview of the ’830 Patent ................................................................... 9 
`
`A. Description of Embodiments ............................................................... 9 
`
`B. Level of Ordinary Skill in the Art ...................................................... 16 
`
`C. Exemplary Claim ............................................................................... 17 
`
`D. Priority Date of the ’830 Patent Claims ............................................. 18 
`
`III.  Summary of Certain Prior Art .............................................................. 19 
`
`A. Goodman ............................................................................................ 19 
`
`B. Asada .................................................................................................. 21 
`
`IV.  Claim Construction ............................................................................... 23 
`
`A. “Cladding Material” ........................................................................... 23 
`
`B. “Near” ................................................................................................ 27 
`
`C. “Light Guiding Interface” .................................................................. 27 
`
`V.  Argument .............................................................................................. 30 
`
`A. Ground 1: Single-reference Obviousness using Goodman – Claims 1-
`
`4 and 11-14 ......................................................................................... 30 
`
`1. Goodman Does Not Teach or Suggest a “window formed in the layer
`
`of cladding material that serves as a light-guiding interface to the
`
`body of the subject” ....................................................................... 31 
`2
`
`
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`

`

`2. Goodman does not disclose that “the first and second directions are
`
`substantially parallel” ..................................................................... 35 
`
`3. Goodman does not teach or suggest that the “light transmissive
`
`material is configured” to meet the “first and second directions”
`
`limitations ....................................................................................... 40 
`
`B. Ground 2: Goodman in view of Hicks – Claims 5 and 15 ................. 41 
`
`C. Grounds 3: Goodman in view of Hannula and further in view of Asada
`
`– Claims 6 and 16 ............................................................................... 48 
`
`1. Considering Goodman, Hannula, and Asada as a Whole, a POSA
`
`Would not Have Combined Them ................................................. 49 
`
`2. Petitioner’s Premise for Combining Goodman and Hannula is Faulty
`
` ........................................................................................................ 54 
`
`3. Petitioner’s Premises for Combining Goodman and Asada are Faulty
`
` ........................................................................................................ 57 
`
`4. Claims 6 and 16 – Missing Limitations from Goodman ................ 60 
`
`D. Ground 4: Goodman in view of Asada – Claims 8, 9, 18, and 19 ..... 64 
`
`E. Ground 5: Goodman in view of Delonzor – Claims 10 and 20 ......... 66 
`
`VI.     The Arguments Apply across the Grounds ........................................... 67 
`
`VII.  Patent Owner Does Not Consent to the PTAB Adjudicating the
`
`Patentability or Validity of the ’830 patent .......................................... 67 
`
`
`
`3
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`

`

`VIII. Conclusion............................................................................................. 67 
`
`VIII. Conclusion ............................................................................................. 67
`
`
`
`
`
`4
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`

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`TABLE OF EXHIBITS
`
`Exhibit No.
`2001
`
`Description
`S. LeBoeuf, et al., Earbud-Based Sensor for the Assessment of
`Energy Expenditure, HR, and VO2max, OFFICIAL J. AM. C.
`SPORTS M., 2014, 1046–1052
`2002 Biometrics Lab: Performance of Leading Optical Heart Rate
`Monitors During Interval Exercise Conditions
`2003 Valencell website (http://valencell.com/customers/)
`
`2004 CTA - It Is Innovation (i3) Magazine 2016 Innovation-
`Entrepreneur Awards
`2005 Webster’s Third New International Dictionary, Unabridged
`(2002) (excerpt)
`2006 Declaration of T. William Kennedy (August 3, 2017)
`
`2007 Declaration of Albert H. Titus in Support of Patent Owner’s
`Response to Petition (September 22, 2017)
`2008 Curriculum Vitae of Albert H. Titus
`
`2009 Deposition Transcript of Dr. Brian W. Anthony (September 13,
`2017)
`2010 Deposition Transcript of Dr. Brian W. Anthony (September 15,
`2017)
`2011 Mendelson, et al., Noninvasive Pulse Oximetry Utilizing Skin
`Reflectance Photoplethysmography, IEEE Transactions on
`Biomedical Engineering, Vol. 35, No. 10, October 1988
`Pujary, et al., Photodetector Size Considerations in the Design
`of a Noninvasive Reflectance Pulse Oximeter for Telemedicine
`Appications, IEEE, 2003
`2013 New Oxford American Dictionary, 2d Ed. (2005) (excerpt)
`
`2012
`
`
`
`
`
`
`
`5
`
`

`

`I. Introduction
`
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, Patent Owner
`
`Valencell, Inc. (“Patent Owner” or “Valencell”) responds to the Petition (Paper 2)
`
`(the “Petition”) filed by Apple Inc. (“Petitioner”) challenging claims 1-6, 8-16, and
`
`18-20 of U.S. Patent No. 8,989,830 (Ex. 1001) (the “’830 patent”) to LeBoeuf et. al,
`
`with respect to Grounds 1-5, on which the Board instituted inter partes review.
`
`The ’830 patent describes “wearable light-guiding devices for physiological
`
`monitoring.” Ex. 1001 at [54]; Titus Dec. at ¶ 87. Consistent with the title of the
`
`invention, the ’830 patent discloses physiological monitors that use light guides to
`
`deliver the available light in the monitoring device to specific, particularized regions
`
`of the wearer. See, e.g., Ex. 1001 at 2:3-5 (“[t]he optical emitter, via the light-guiding
`
`cover, directs optical energy towards a particular region of ear”); see also id. at 13:8-
`
`14; 14:20-25; 18:33-35; 19:9-12; 21:2-4; 28:34-37; and 29:50-54; Titus Dec. at ¶ 87.
`
`As the ’830 patent explains, the integrated light-guiding capabilities of the invention
`
`ensure that each person wearing a monitor will generate the needed blood-flow
`
`signal for the desired physiological monitoring. Ex. 1001 at 11:34-38; Titus Dec. at
`
`¶ 87.
`
`Patent Owner’s approach contradicted the conventional wisdom at the time,
`
`which focused on increasing the amount of light emitted and/or collected by a
`
`monitoring device to improve the performance of the monitoring devices. See, e.g.
`
`
`
`6
`
`

`

`Ex. 2011 at 804 (“As expected, we can see that by using multiple photodetectors a
`
`larger fraction of the backscattered radiation from the skin can be collected and,
`
`therefore, larger photoplethysmograms can be recorded.”); id. (“The selection of
`
`each LED driving current determines the effective penetration depth of the incident
`
`light. For a given LED/photodiode separation, it is clear that with higher levels of
`
`incident light, a larger pulsatile vascular bed will be illuminated. Consequently, the
`
`reflected photoplethysmograms will contain a larger ac component. Practical
`
`considerations, however, limit the driving current of each LED to the manufacturer
`
`specified maximum power dissipation.”); Ex. 2012 at 149 (“The data presented in
`
`this study demonstrate that the driving currents of the LEDs in a reflectance pulse
`
`oximeter can be lowered significantly without compromising the quality of the PPGs
`
`simply by increasing the overall size of the PD in the sensor.”); Titus Dec. at ¶ 85.
`
`But the strategy of increasing emitted and/or detected light results in a specific
`
`problem. If light is delivered to the wrong places (e.g., toward a bone), or if light is
`
`collected from the wrong places, then the monitor will likely receive a less useful
`
`signal that produces a poor physiological measurement. See e.g., Ex. 1007 at 2:36-
`
`52 (explaining that the pulsatile signal comes from light directed away from the bone
`
`and toward the arterial blood flow); see also Ex. 1005 at 31 (explaining that “either
`
`the PD or the LED, should be placed on the lateral face of the finger near the digital
`
`
`
`7
`
`

`

`artery”); Titus Dec. at ¶ 86. In those situations, increasing the amount of light emitted
`
`or detected simply increases the amount of unwanted signal received. Id.
`
`As discussed above, the ’830 patent allows the claimed monitoring device to
`
`direct and receive light in a guided way to specific parts of the body, which
`
`maximizes useful light signals received. Ex. 1001 at 11:34-38 (“[t]hus, an earbud
`
`with integrated light-guiding capabilities, wherein light can be guided to multiple
`
`and/or select regions along the earbud, can assure that each individual wearing the
`
`earbud will generate an optical signal related to blood flow through the blood
`
`vessels”); Titus Dec. at ¶ 87. For example, claim 1 provides the proper direction of
`
`light via its window, cladding material, and light transmissive material that is
`
`configured to deliver and collect light in respective first and second directions that
`
`are substantially parallel. See Ex. 1001 at claim 1 (reciting a “window formed in the
`
`layer of cladding material that serves as a light-guiding interface to the body of the
`
`subject” and “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.”); Titus Dec. at ¶ 88.
`
`
`
`8
`
`

`

`As shown herein, none of the prior art discloses or renders obvious the
`
`particular claimed solution in the ’830 patent; thus, Petitioner has failed to meet its
`
`burden to show unpatentability of claims 1-6, 8-16, and 18-20 of ’830 patent.
`
`II. Overview of the ’830 Patent
`
`A. Description of Embodiments
`
`The ’830 patent states that “improved ways of collecting, storing and
`
`analyzing physiological information are needed.” Ex. 1001 at 1:42-43; Titus Dec. at
`
`¶ 43. To address this need, the ’830 patent discloses a “monitoring device configured
`
`to be attached to the body of a subject.” Id. at Abstract; Titus Dec. at ¶ 44. The ’830
`
`patent discloses various embodiments of that monitoring device. One such
`
`embodiment is disclosed as “‘light-guiding’ earbud 30” (Ex. 1001 at 13:14) as
`
`depicted for example in Figure 3. Titus Dec. at ¶ 44.
`
`
`
`9
`
`

`

`Another such embodiment is shown in Figures 22A and 22B:
`
`
`
`Id., Figs. 22A and 22B (showing monitoring device attached to a finger); Titus Dec.
`
`at ¶ 45. As shown in Figures 22A and 22B, the monitoring device “may be
`
`
`
`
`
`10
`
`

`

`configured to be attached to earlobes, fingers, toes, other digits, etc.” Id. at 27:62-
`
`63; Titus Dec. at ¶ 45.
`
`The ’830 patent improves the collection of physiological information by
`
`specifically orienting the optical emitter and the optical detector of the monitoring
`
`device. Titus Dec. at ¶ 46. The ’830 patent explains that the “optical emitter 24 and
`
`optical detector 26 are each oriented such that their respective primary emitting and
`
`detecting planes P1, P2 are each facing a respective direction A3, A2 that is
`
`substantially parallel with direction A1.” Id. at 14:52-59; Titus Dec. at ¶ 46.
`
`Annotated Figure 3 below illustrates an example of that configuration:
`
`
`
`Ex. 1001 at Fig. 3 (excerpted and with annotations); Titus Dec. at ¶ 46.
`
`
`
`
`
`11
`
`

`

`The ’830 patent further discloses a light guide (also referred to as cover 18
`
`(see, e.g., 14:26-27)) that delivers light emitted by the device along direction A3 to
`
`the body. Titus Dec. at ¶ 47. Figure 3 shows a cover 18 that “includes cladding
`
`material 21 on an inner surface 18b thereof and on an outer surface 18a thereof.” Ex.
`
`1001 at 14:17-19; Titus Dec. at ¶ 47. “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. Ex. 1001 at 14:40-42; Titus Dec. at ¶ 47.
`
`“[T]he 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 or more
`
`predetermined locations and that collects light external to the earbud housing 16 and
`
`delivers the collected light to the optical detector 26.” Ex. 1001 at 14:20-22; Titus
`
`Dec. at ¶ 47. The emitted light is guided through the light-guiding region 19 to exit
`
`the device along direction A3 at end portion 18f as shown in Fig 3. Titus Dec. at ¶
`
`47.
`
`
`
`12
`
`

`

`
`
`Ex. 1001 at Fig. 3 (excerpted and annotated).
`
`A light guide also directs light back to the optical detector 26 in Figure 3. Titus
`
`Dec. at ¶ 48. Light from 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.” Ex. 1001 at 14:43-46;
`
`Titus Dec. at ¶ 48. “The 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.” Id. at 14:46-
`
`49; Titus Dec. at ¶ 48. Excerpted Figure 3 below highlights an example of that path
`
`of light using annotations. Titus Dec. at ¶ 48.
`
`
`
`13
`
`

`

`
`
`’830 patent, Fig. 3 (excerpted and annotated).
`
`The ’830 patent continues, discussing the important function of cladding
`
`material that helps confine light to light guiding region: “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.” Ex. 1001 at
`
`14:60-63; Titus Dec. at ¶ 49. “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 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.”
`
`Ex. 1001 at 14:19-25; Titus Dec. at ¶ 49.
`
`
`
`14
`
`

`

`
`
`Ex. 1001 at Fig. 3 (excerpted and annotated).
`
`
`
`With additional annotations Figure 3 (below), shows that “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 predetermined locations.” Ex. 1001 at 14:19-25;
`
`Titus Dec. at ¶ 50. The light guide (cover 18) then “collects light external to the
`
`earbud housing 16 and delivers the collected light to the optical detector 26.” ’830
`
`patent at column 14:19-25.
`
`
`
`15
`
`

`

`
`
`Ex. 1001 at Figure 3 (excerpted and annotated); Titus Dec. at ¶ 50.
`
`As seen in the foregoing description, the ’830 patent discloses physiological
`
`monitors that use light guides to deliver the available light in the monitoring device
`
`
`
`to specific, particularized regions of the wearer.
`
`B. Level of Ordinary Skill in the Art
`
`For purposes of this response, without agreeing that it is necessarily correct
`
`or complete, Patent Owner does not contest Apple’s position regarding a person of
`
`ordinary skill in the art. According to that position, a person of ordinary skill in the
`
`
`
`16
`
`

`

`art would have had a four-year degree in electrical engineering, mechanical
`
`engineering, biomedical engineering, optical engineering, or related field of study,
`
`or equivalent experience, and at least two years’ experience in academia or industry
`
`studying or developing physiological monitoring devices such as non-invasive
`
`optical biosensors. Such experience and education would have included familiarity
`
`with optical system design and signal processing.
`
`C. Exemplary Claim
`
`Claim 1, which is illustrative of the other independent claim 11, recites the
`
`following elements (labeled using Petitioner’s annotations):
`
`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
`17
`
`
`
`

`

`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.
`Ex. 1001 at 30:35-55.
`
`The Petition attempts to characterize the claims of the ’830 patent as “nothing
`
`more than what was already known in the prior art.” Petition at 2. But this superficial
`
`characterization relies on impermissible hindsight and reads the teachings of the
`
`’830 patent into the prior art. See Graham v. John Deere Co. of Kansas City, 383
`
`U.S. 1, 36, 86 S. Ct. 684, 703, (1966) (discussing the importance of guard[ing]
`
`against slipping into use of hindsight and resist[ing] the temptation to read into the
`
`prior art the teachings of the invention in issue.). As discussed below, when all the
`
`elements of the claims are considered without hindsight bias, and without reading
`
`the teachings of the prior art into the ’830 patent, it remains valid.
`
`D. Priority Date of the ’830 Patent Claims
`
`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. 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
`
`
`
`18
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`

`

`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. The priority date for the ’830 patent is at least
`
`as early as February 25, 2009.
`
`III. Summary of Certain Prior Art
`
`A. Goodman
`
`Goodman seeks to provide “noninvasive, reliable, and continuous monitoring
`
`of the vital signs of a patient requiring intensive care to prevent vital organ damage
`
`or reduced biopotential.” Ex. 1007 at 5:3-6 (emphasis added); Titus Dec. at ¶ 53.
`
`Goodman asserts that its invention “satisfies a present need to provide
`
`information critical to patient treatment even under the most dire conditions.” Ex.
`
`1007 at 6:33-35; Titus Dec. at ¶ 53. Goodman’s focus is on treating “critically ill
`
`and compromised patients.” Ex. 1007 at 3:45-50; Titus Dec. at ¶ 53.
`
` In a particular embodiment of Goodman, “photoelectrical components, a light
`
`source and a light sensor, are embedded into a flexible adhesive substrate which is
`
`bifurcated into two arms.” Ex. 1007 at 5:9-12; Titus Dec. at ¶ 54. Figure 2A depicts
`
`“this invention looking towards the photo-sensor, light-emitting-diodes and adhesive
`
`surface,” and FIG. 2B depicts “a view of the sensor of FIG. 2A illustrating various
`
`
`
`19
`
`

`

`layers of this invention peeled back to expose the inner construction.” Ex. 1007 at
`
`8:9-14; Titus Dec. at ¶ 54.
`
`
`
`
`
`As seen in Figs. 2A and 2B, the “[flexible adhesive] substrate is provided with
`
`signal connections leading to a measuring device.” Ex. 1007 at 5:12-13; Titus Dec.
`
`at ¶ 55. Thus, Goodman’s adhesive device needs an external “measuring device” to
`
`measure things like pulse and heart rate. Titus Dec. at ¶ 55. This conforms with
`
`Goodman’s described advantages of being “entirely disposable and thus sanitary”
`
`(Ex. 1007 at 6:22-23). A disposable device would not include relatively valuable
`
`components, such as a processor and a display, to be discarded with each new
`
`patient. Titus Dec. at ¶ 55.
`
`Goodman touts that “when the sensor is adhesively fastened, the effect of the
`
`light source and photo-sensor being integrated into the adhesive fastener is that they
`
`become, in effect, a part of the skin.” Ex. 1007 at 4:59-62; Titus Dec. at ¶ 56.
`
`Goodman continues, disclosing that “[t]he resulting device is resistant to accidental
`
`
`
`20
`
`

`

`removal and avoids constriction of blood vessels both internal and external. Most
`
`importantly, the low mass of the sensor itself and its conformance to the skin
`
`prevents motion, localized force, and the resulting contact interruption among the
`
`light source, photo-sensor and flesh.” Ex. 1007 at 4:62-67; Titus Dec. at ¶ 56.
`
`B. Asada
`
`Asada pertains to a wearable biosensor (“WBS”) such as “a ring sensor for
`
`ambulatory, telemetric, [and] continuous health monitoring.” Ex. 1005 at 28; Titus
`
`Dec. at ¶ 57. Unlike Goodman, Asada is not suitable for use in an intensive care
`
`environment, considering for example its goal of ambulatory monitoring. See Titus
`
`Dec. at ¶ 57. Instead, Asada discloses examples of wearable biosensors useful in
`
`“monitoring environments…out-of-hospital, [which] are to be worn without direct
`
`doctor supervision.” Ex. 1005 at 28 (emphasis added); Titus Dec. at ¶ 57. It is on
`
`this premise that Asada discloses a WBS that “combines miniaturized data
`
`acquisition features with advanced photophlethysmographic (PPG) techniques to
`
`acquire data related to the patient’s cardiovascular state using a method that is far
`
`superior to existing fingertip PPG sensors.” Ex. 1005 at 28; Titus Dec. at ¶ 57.
`
`In Ground 4, Petitioner relies on Asada’s prototype “A,” which uses wireless
`
`functions for “bi-directional RF communication.” See Petition at 54-55 (citing Ex.
`
`1005 at 34); Titus Dec. at ¶ 58.
`
`
`
`21
`
`

`

`
`
`Ex. 1005 at Figs. 9 and 10. Unlike Goodman, which is a tethered device, this
`
`prototype shown in Figures 9 and 10 (copied above) “contains an…RF
`
`transmitter…encapsulated in a compact body and powered by a tiny cell battery used
`
`for wristwatches.” Ex. 1005 at 34; Titus Dec. at ¶ 59. For this prototype, Asada
`
`recognized that “power consumption of the LEDs and the imbedded CPU clock were
`
`a major bottleneck limiting the design. The distance between the LEDs and PDs had
`
`to be shortened for power saving considerations, and the CPU clock was minimized
`
`in order to extend the battery life to a few weeks.” Ex. 1005 at 34; Titus Dec. at ¶
`
`59.
`
`In Ground 3, Petitioner relies on a second prototype “C” for purportedly
`
`disclosing a “second-photodetector,” shown in Figure 6.
`
`
`
`22
`
`

`

`
`
`“The dual photodetector design shown in Figure 6 provides both main signal and
`
`noise reference that are distinct [which] allows us to implement noise-canceling
`
`filters effectively despite complex motion artifact.” Ex. 1005 at 34. This solution is
`
`unnecessary in the device of Goodman, which fully eliminates motion artifacts by
`
`conforming to the patient’s skin. Ex. 1007 at 5:41-44 (“This disclosed adhesive
`
`fastening conforms the elements of the apparatus so completely to the patient’s skin
`
`that motion artifact is eliminated. Hence, the light extinction measurement and
`
`resulting analysis to determine oxygen saturation and pulse rate is more accurate and
`
`less sensitive to interference.”); Titus Dec. at ¶ 61.
`
`IV. Claim Construction
`
`A. “Cladding Material”
`
`The Board should construe “cladding material” as “a material that confines
`
`light within a region.” That construction is directly supported by the specification,
`
`which states that “[t]he light guiding region 19 of the light guide 18 in the illustrated
`23
`
`
`
`

`

`embodiment of FIG. 3 is defined by cladding material 21 that helps confine light
`
`within the light guiding region 19.” Ex. 1001 at 14:62-64 (emphasis added); see also
`
`id., 29:46-50 (“A layer of cladding material 21 is applied to (or near) the outer
`
`surface 74a of the inner body portion 74 and a layer of cladding material 21 is applied
`
`to (or near) the inner surface 74b of the inner body portion 74, as illustrated, to define
`
`a light-guiding region 19.”); see also id. at 16:16-25; 16:66-17:12; 18:46-48; 18:60-
`
`19:4; 28:30-43; Titus Dec. at ¶ 72. The ’830 patent also includes numerous
`
`illustrations that demonstrate that the “cladding material” is understood to confine
`
`light within a region. For example, in Figure 3, shown below, the cladding material
`
`21 defines the region 19 that confines the light 111 and 110:
`
`
`
`24
`
`
`
`

`

`Ex. 1001 at Fig. 3 (coloring added to highlight relevant features, with cladding 21 in
`
`red and light guiding region 19 in yellow); Titus Dec. at ¶ 72. Similarly, Figure 22B
`
`illustrates that cladding material 21 confines the light in the light-guiding region 19
`
`(highlighted yellow).
`
`Ex. 1001 at Fig. 22B (highlighted); Titus Dec. at ¶ 73.
`
`
`
`
`
`25
`
`

`

`Nevertheless, Petitioner proposes that the “cladding material” be construed as
`
`“a material that blocks or reflects at least some light.” Petition at 13-14. That
`
`construction improperly deprives the term “cladding” of its precise meaning in the
`
`context of the ’830 patent. Titus Dec. at ¶ 74. Nowhere in the intrinsic or extrinsic
`
`evidence is “cladding material” described as only “blocking or reflecting at least
`
`some light.” Titus Dec. at ¶ 74 That construction deviates from the plain reading of
`
`the specification, which describes how the cladding material helps confine light
`
`within a light-guiding region. Titus Dec. at ¶ 74. Under Petitioner’s construction a
`
`material that can block only one photon could qualify as cladding material, even
`
`though it could not be said to be confining light within a light-guiding region. Titus
`
`Dec. at ¶ 74.
`
`Petitioner conflates the specification’s disclosure that many different
`
`materials, including air, can be a cladding material with Petitioner’s notion that the
`
`cladding material must only “block or reflect at least some light.” The amount of
`
`light blocked or reflected by a material is not wholly dependent on a material in
`
`isolation, but is also dependent on the difference in the refractive indices between
`
`two materials at their boundary. See Snell’s Law; Titus Dec. at ¶ 75. The
`
`specification acknowledges this point, noting that the “outer cladding may be air, a
`
`polymer, plastic, or a soft material having a lower index of refraction than silicone.”
`
`Ex. 1001 at 13:52-54; Titus Dec. at ¶ 75. One of ordinary skill would understand
`
`
`
`26
`
`

`

`that the cladding material may consist of those otherwise transparent materials
`
`because total internal reflection can occur inside the silicone light-guiding area if the
`
`outer material has a lower index of refraction than the silicone. See Snell’s Law;
`
`Titus Dec. at ¶¶ 76-78. Thus, one of ordinary skill would further reject Petitioner’s
`
`construction because, with total internal reflection, more than just “some light” is
`
`being reflected.
`
`The Board should reject Petitioner’s construction because it has no basis in
`
`the intrinsic or extrinsic record, and should instead accept Patent’s Owner’s
`
`construction, which comports with the plain language and teachings of the
`
`specification.
`
`B. “Near”
`
`Patent Owner does not contend that the term “near” needs to be construed.
`
`See Prelim. Resp., 30. The Board in its decision did not find it necessary to construe
`
`the term “near.” Decision, 7.
`
`C. “Light Guiding Interface”
`
`The broadest reasonable interpretation of the term “light-guiding interface” is
`
`“an interface that delivers light along a path.” Titus Dec. at ¶ 80. This is supported
`
`by the specification, dictionary definitions, and the testimony of Petitioner’s own
`
`expert.
`
`
`
`27
`
`

`

`The specification repeatedly describes a light guide as delivering light along
`
`a path. See, e.g., Ex. 1001 at 1:66 - 2:3 (“serves as a light guide to deliver light from
`
`the optical emitter into the ear canal of the subject wearing the headset at one or
`
`more predetermined locations … and deliver the collected light to the optical
`
`detector.”) (emphasis added); id. at 11:34-36 (“earbud with integrated light-guiding
`
`capabilities, wherein light can be guided to multiple and/or select regions along the
`
`earbud.”); id. at 14:20-25 (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 or more predetermined locations and that collects light external to the earbud
`
`housing 16 and delivers the collected light to the optical detector 26.”) (emphasis
`
`added); id. at 14:40-42 (“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 an ear region.”) (emphasis added); id. at 16:23-24 (“through which scattered
`
`light 110 passes into the light guide 18 to be directed to the light detector 26”)
`
`(emphasis added); id. at 18:52-57; 19:56-57; 20:67 through 21:2; and 28:34-38;
`
`Titus Dec. at ¶ 81.
`
`The dictionary definitions of “guide” further support Patent Owner’s position
`
`that “light guiding” means “delivering light along a path” by showing that a guide
`
`must direct the positioning of something or direct something in a way. Titus Dec. at
`
`¶ 82. For example, in the New Oxford American Dictionary, to “guide” is defined
`
`
`
`28
`
`

`

`as “to direct the motion or positioning of (something)”. Ex. 2013 at 751. In Webster’s
`
`Third New International Dictionary, to “guide” is defined as “to act as a guide to:
`
`direct in a way”. Ex. 2006 at 751.
`
`The Board agreed to a similar construction to Patent Owner’s proposal in
`
`IPR2017-00315, against U.S. Patent No. 8,929,965, which is related to the ’830
`
`patent. There, the Board construed “light guide” as “a mechanism for delivering light
`
`along a path.” IPR2017-00315, Paper No. 9 at 10.
`
`Petitioner’s argument rests on its tenuous interpretation that a light guiding
`
`interface simply allowing light pass into something, which is broader than the plain
`
`and ordinary meaning. Petition at 29 (“Thus, the window above the LEDs allows
`
`light from the LEDs to enter the patient’s body and thus “serves as a light-guiding
`
`interface to the body of the subject.”); see also Ex. 2009 at 91:14-21. Even
`
`Petitioner’s expert, Dr. Anthony, had trouble toeing the party line, admitting that
`
`“propagate along the axis of the guide would be one possible definition” of a light
`
`guide, thereby supporting Patent Owner’s construction that a light guide must deliver
`
`light along a path. Id. at 75:23-25; see also id. at 76:1-16. When pressed, Dr.
`
`Anthony struggled to provide a reason why “guiding light” would only mean
`
`“allowing light to pass.” See, e.g., id. at 96:1 through 106:12 (highlights include
`
`96:1-8, “Q. But guiding -- the word guiding doesn't just mean ‘pass’; correct? A. I'm
`
`sorry? Q. The word ‘guiding’ doesn't mean ‘pass’

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