`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
`
`
`APPLE INC. and FITBIT, INC.
`Petitioners
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003171
`Patent 8,989,830
`__________________
`
`DECLARATION OF BRIAN W. ANTHONY, PH.D.
`IN SUPPORT OF PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 IPR2017-01553 has been joined to this current proceeding.
`
`
`
`
`
`APL1102
`Apple v. Valencell
`IPR2017-00317
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`
`I. 
`II. 
`
`V. 
`
`Introduction and Overview .............................................................................. 1 
`Valencell’s description of the ’830 Patent focuses on elements that are
`not recited in the claims. .................................................................................. 2 
`III.  Claim Construction .......................................................................................... 2 
`A. 
`“Cladding Material” .............................................................................. 2 
`B. 
`“Light Guiding Interface” ..................................................................... 4 
`IV.  Goodman discloses or suggests every element of independent claims 1
`and 11. .............................................................................................................. 6 
`A.  Valencell’s “assembly” of Goodman’s device contradicts
`Goodman’s express disclosure. ............................................................. 7 
`Goodman discloses a “window formed in the layer of cladding
`material that serves as a light-guiding interface to the body of
`the subject” even under Valencell’s proposed construction. ................ 9 
`Goodman discloses that “the first and second directions are
`substantially parallel.” ......................................................................... 11 
`D.  Goodman’s light transmissive material is configured to meet
`the first and second direction limitations. ........................................... 14 
`Combinations of References .......................................................................... 16 
`A.  Goodman in View of Hicks – Claims 5 and 15 .................................. 16 
`1. 
`Valencell mischaracterizes Figure 6 of Hicks. ......................... 16 
`2. 
`Valencell’s alleged “detriments” would not have deterred
`a person skilled in the art from combining the references. ....... 18 
`Goodman in View of Hannula and Asada – Claims 6 and 16;
`and Goodman in View of Asada – Claims 8, 9, 18, and 19 ................ 21 
`1. 
`Combining Goodman and Hannula .......................................... 21 
`2. 
`Combining Goodman with Asada ............................................. 23 
`
`B. 
`
`C. 
`
`B. 
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`I.
`
`Introduction and Overview
`1.
`
`This declaration supplements my declaration (APL1003) submitted
`
`with Apple’s Petition. I maintain my opinions in that declaration and incorporate
`
`here my qualifications and understanding of legal principles. (APL1003, ¶¶1-24.)
`
`This declaration more specifically addresses positions in Valencell’s Patent Owner
`
`Response (Paper 19) and the declaration of Dr. Albert Titus (Ex. 2007) submitted
`
`therewith.
`
`2.
`
`The ’830 Patent is directed to the “growing market demand for per-
`
`sonal health and environmental monitors” for use “during daily physical activity.”
`
`(APL1001, 1:21-33.) As I explained in my declaration submitted with Apple’s Pe-
`
`tition (APL1003), when “cutting the wire,” artisans designing a wireless system
`
`looked to wired predecessor technology, using solutions and technical innovations
`
`previously embodied in wired devices. (APL1003, ¶37.) As I further explained, ar-
`
`tisans also understood and routinely considered a variety of design tradeoffs for
`
`achieving wireless capability. (Id.; Ex. 2010, 160:23-161:5, 202:9-203:14.) During
`
`the relevant timeframe for the ’830 Patent, the industry was evolving toward wire-
`
`less optical biosensors. Therefore, in my opinion, it is important to consider this
`
`backdrop when analyzing the prior art and not in a vacuum.
`
`3.
`
`In view of Valencell’s arguments, it is still my opinion that all of the
`
`claim elements in the ’830 Patent are taught or suggested by Goodman alone or in
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`combination with the other prior art references presented in the Grounds of the Pe-
`
`tition. In my opinion, Valencell’s arguments rely on overly narrow interpretations
`
`of the claim elements, inaccurate explanations of the prior art references, and un-
`
`founded concerns about the combinations of prior art references that inflate poten-
`
`tial “detriments” and ignore an artisan’s understanding of design tradeoffs.
`
`II. Valencell’s description of the ’830 Patent focuses on elements that are
`not recited in the claims.
`4.
`
`In reviewing Valencell’s summary of the ’830 Patent, I was surprised
`
`to see that it focused largely on terms that are not recited in the claims. For exam-
`
`ple, Valencell refers to “light guide 18” and “light guiding region 19” numerous
`
`times in its description of the ’830 Patent. (See POR, 11-16.) The claims, however,
`
`do not recite a “light guide” or a “light guiding region.”
`
`III. Claim Construction
`A.
`“Cladding Material”
`5.
`
`In my opinion, Valencell’s proposed interpretation of “cladding mate-
`
`rial” as “a material that confines light within a region” is not the broadest reasona-
`
`ble interpretation of this term in light of the ’830 Patent specification. (POR, 23
`
`(emphasis added).) As I mention above, Valencell focuses on the “light guiding re-
`
`gion 19,” which is not recited in the claims, as support for its interpretation of
`
`“cladding material.” (POR, 23-25 (quoting APL1001, 14:62-64 (“[t]he light guid-
`
`ing region 19 of the light guide 18 in the illustrated embodiment of FIG. 3 is de-
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`fined by cladding material 21 that helps confine light within the light guiding re-
`
`gion 19.”)) (emphasis in POR).) In all of Valencell’s examples from the ’830 Pa-
`
`tent, two layers of cladding material are required in order to “help[] confine light.”
`
`(POR, 23-25.) But the claims only recite one layer of cladding material, i.e., “a
`
`layer of cladding material near the inner body portion inner surface.” Thus, in my
`
`opinion, Apple’s proposed construction of “a material that blocks or reflects at
`
`least some light” is more appropriate as the broadest reasonable construction, be-
`
`cause a single layer of cladding material as claimed does not necessarily “confine
`
`light within a (guided) region,” but instead would broadly serve to reflect or con-
`
`strain some of the light on one side of the layer.
`
`6.
`
`The ’830 Patent does not expressly define “cladding material,” but it
`
`does provide numerous examples including “air, a polymer, plastic, or a soft mate-
`
`rial having a lower index of refraction than silicone” (APL1001, 13:52-54) or even
`
`a “transparent or mostly transparent [material] with a lower index of refraction
`
`than the light transmissive material” (id. at 17:1-17:4). A POSA would have under-
`
`stood that air, many polymers and plastics, and transparent or mostly transparent
`
`materials can allow at least some light to pass through them depending the materi-
`
`al’s fabrication technique, surface roughness, layer thickness, material’s optical in-
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`dex as a function of wavelength, orientation of incident light, the properties of the
`
`materials on the other side of the layer, etc. To meet Valencell’s proposed con-
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`struction would require that the cladding material have a lower index of refraction
`
`than the adjacent material and also require total internal reflection (discussed be-
`
`low) to occur within the material adjacent the cladding in order for the cladding to
`
`“confine light.” This is very narrow scope and not the broadest reasonable interpre-
`
`tation of cladding material term in light of the ’830 Patent specification. (See POR,
`
`26.)
`
`7.
`
`Valencell refers to Snell’s Law to support its construction. (POR, 26-
`
`27.) Snell’s Law depends not only on the indices of refraction of the adjacent mate-
`
`rials, but also on the angle of incidence of the light. Total internal reflection occurs
`
`only when the angle of incidence is greater than the critical angle (i.e., the angle of
`
`incidence for which the angle of refraction is 90°). Thus, for Valencell’s proposed
`
`construction to be met, this condition would also need to occur.
`
`B.
`8.
`
`“Light Guiding Interface”
`
`In my opinion, Valencell’s proposed interpretation of “light-guiding
`
`interface” as “an interface that delivers light along a path” is not the broadest rea-
`
`sonable interpretation of this term in light of the ’830 Patent specification. (POR,
`
`27.) The ’830 Patent uses the term “light-guiding interface[]” in two places, refer-
`
`ring to Figures 22A-B and 23, reciting that “windows 74 w are formed in the clad-
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`ding material 21 and serve as light-guiding interfaces to the [finger F / body of a
`
`subject].” (APL1001, 28:44-46, 29:60-62 (emphasis added).) As shown in the ’830
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`Patent, the windows (74W) are gaps in the cladding material that may optionally
`
`include, for example, a filter (74WF) or a lens (74WL).
`
`
`
`
`
`
`
`APL1001, Figures 22B and 23 (Annotated)
`
`9.
`
`The ’830 Patent describes
`
`that “[f]or example,
`
`if
`
`the win-
`
`dows 74 w incorporate IR-pass filters, visible light will not pass through the win-
`
`dows 74 w….” (APL1001, 29:6-7 (emphasis added).) These “windows” that func-
`
`tionally “serve as light-guiding interfaces” are thus simple passive geometrical el-
`
`ements–that is, they are openings in the cladding material that allow rays of light to
`
`pass through them. Adding a lens into the window, for example, can make it a
`
`slightly more complex geometric optical element that alters the direction of light
`
`according to simple geometrical relationships. I agree with Dr. Titus that the win-
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`dow does not change the direction or path of the light (i.e., it is not a “light-guiding
`
`structure”), but simply allows light to pass through so that it can get to the body.
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`(APL1100, 88:2-11, 94:23-95:5, 179:4-12, 186:16-187:7.)
`
`10. The ’830 Patent claims reflect this passive nature, using language
`
`nearly identical to the specification, reciting “at least one window formed in the
`
`layer of cladding material that serves as a light-guiding interface to the body of the
`
`subject.” Thus, in my opinion, Valencell’s focus on portions of the ’830 Patent
`
`specification discussing a “light guide” and dictionary definitions of “guide” is
`
`misplaced. (See POR, 28-29.) The claimed “light-guiding interface” is described in
`
`the ’830 Patent simply as a window formed in the layer of cladding material that
`
`allows light to pass to the body of the subject–it does not do anything to “guide” or
`
`direct the light. Accordingly, it is my opinion that the broadest reasonable interpre-
`
`tation of “light-guiding interface” is “a window that allows the light to pass
`
`through the cladding material into the body.”
`
`IV. Goodman discloses or suggests every element of independent claims 1
`and 11.
`11. Valencell argues that Goodman fails to teach or suggest functional
`
`limitations of a “window formed in the layer of cladding material that serves as a
`
`light-guiding interface to the body of the subject” and that “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
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`subject and deliver the collected light in a second direction to the at least one opti-
`
`cal detector, wherein the first and second directions are substantially parallel.”
`
`(POR, 30-31; APL1100, 140:8-141:9.) I disagree at least because Valencell’s posi-
`
`tion is premised on an inaccurate analysis of the “assembly” of Goodman’s device
`
`that contradicts Goodman’s express disclosure. Furthermore, the aperture serves as
`
`a light-guiding interface to the body even under Valencell’s proposed claim con-
`
`struction. And it is also my opinion that Goodman’s light transmissive material de-
`
`livers light from the optical emitter to the body in a first direction and delivers col-
`
`lected light in a second direction to the optical detector, where the first and second
`
`directions are substantially parallel.
`
`A. Valencell’s “assembly” of Goodman’s device contradicts Good-
`man’s express disclosure.
`12. Figure 2C of Goodman illustrates an exploded side view showing the
`
`layered construction of an embodiment of Goodman’s device. (APL1007, 8:15-
`
`18.) Goodman describes that the cladding layer of “opaque vinyl tape” (37) “is ap-
`
`ertured at respective apertures 40, 41” above the light source (24) and photo-sensor
`
`(14) and that “[t]hese apertures allow light to pass.” (APL1007, 9:33-41 (emphasis
`
`added).) As specified by the arrows in Figure 2C, the light from the light source
`
`(24) passes through the aperture (40). (APL1003, ¶¶ 52, 79, 93.) Likewise, arrows
`
`also show that light returns through aperture (41) to the photo-sensor (14).
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`APL1007, Figure 2C
`
`
`
`13. Valencell’s version of Goodman’s “assembled” device, shown below,
`
`contradicts these express teachings.
`
`Valencell’s “assembly” of Goodman Figure 2C (POR, 32.)
`
`
`
`14. Valencell’s proposed assembly shows the light source (24) and photo-
`
`sensor (14) extending into and beyond the apertures. It also fails to include clear
`
`polyester layer (45) and release tape (50). Another embodiment in Goodman,
`
`shown below in Figure 7A, illustrates the relative arrangement of the layers and
`
`optical components. Figure 7A clearly shows–and a POSA would have under-
`
`stood–that the light source does not extend all the way through the aperture. Nor
`
`would it do so when attached to the body of the subject. In my opinion, a POSA
`
`reading Goodman would have also understood that the light source would not ex-
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`tend all the way through the aperture even absent the coating disposed on top of it.
`
`For example, this would be consistent with Dr. Titus’s description of Asada’s simi-
`
`lar device, where the emitter and detector “may not extend all the way through the
`
`windows, may be just sitting close to the top, but not all the way through…” the
`
`apertures. (APL1100, 114:2-4.)
`
`
`
`APL1007, Figure 7A (highlight added)
`
`B. Goodman discloses a “window formed in the layer of cladding
`material that serves as a light-guiding interface to the body of the sub-
`ject” even under Valencell’s proposed construction.
`15. As I discuss above in Section III.B, all that is required for the “light-
`
`guiding interface” recited by claim 1 is “a window that allows the light to pass
`
`through the cladding material into the body.” In my opinion, a POSA reading
`
`Goodman would have understood that this limitation is disclosed.
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`16.
`
`In view of the proper understanding of Goodman’s assembled device
`
`that I discuss above, Goodman satisfies this limitation even under Valencell’s pro-
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`posed claim interpretation: a “light-guiding interface” as “an interface that delivers
`
`light along a path.” (See POR, 27.) Light from the light source (24) will be emitted
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`in many directions. Because the light source (24) in Goodman does not extend en-
`
`tirely through the aperture (40), there is space between the emitting surface of the
`
`light source and the end of the aperture (see e.g., Figure 7A) and some light will
`
`interact with the aperture itself (i.e., with the internal “sidewalls” of the aperture).
`
`The aperture thus serves as “an interface that delivers light along a path” (i.e.,
`
`through the aperture and to the body). As shown below, light that may reflect off
`
`the interior sidewall of the cladding due to its thickness will be delivered along a
`
`path to the body. The thicker the cladding layer, the more opportunity there is for
`
`the light to interact with the sidewall. In this way, the cladding material also “con-
`
`fines light within a region” (i.e., within the aperture), according to Valencell’s pro-
`
`posed construction.
`
`
`
`APL1007, Figure 7A (annotated)
`
`17. Moreover, Goodman’s apertures function in the same manner as the
`
`windows in the ’830 Patent–they allow light to pass through. The same is true for
`
`the Figure 3 embodiment that Valencell relies upon–the end portion (18f) is merely
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`a portion that “does not have cladding material” such that the light travels “…from
`
`the optical emitter 24 through the end portion 18f and into the ear canal C of a sub-
`
`ject….” (APL1001, 14:19-23 (emphasis added).) Accordingly, it is my opinion that
`
`Goodman discloses a “window formed in the layer of cladding material that serves
`
`as a light-guiding interface to the body of the subject” in the same manner as the
`
`’830 Patent.
`
`C. Goodman discloses that “the first and second directions are sub-
`stantially parallel.”
`18. Valencell also alleges that Goodman does not teach or suggest that
`
`“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 sub-
`
`stantially parallel.” (POR, 35.) Valencell’s arguments are premised largely on its
`
`allegation that Goodman cannot meet this limitation because of the position and
`
`orientation of the LED (emitter) and photodiode (detector). (POR, 35-40.) Howev-
`
`er, in my opinion Goodman’s description of these components is precisely why a
`
`POSA would have understood that Goodman meets this limitation.
`
`19. Valencell’s position is based on its allegation that “Goodman does not
`
`disclose or teach that the LED and photodiode, much less their respective emitting
`
`surface or receiving surface, are disposed ‘approximately opposite each other.’”
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`(POR, 36.) While Goodman may not use the exact phrase “approximately opposite
`
`each other,” a POSA would have understood this is what Goodman teaches. First,
`
`Goodman’s Abstract states “[t]he sensor includes a first end for disposition on one
`
`side of the trans-illuminated flesh and a second end for disposition on the opposite
`
`and opposed side of the trans-illuminated flesh. A light source is mounted to the
`
`first side and a photo-sensor is mounted to the second side.” (APL1007, Abstract
`
`(emphasis added).) Goodman further describes that “the light source and photo-
`
`sensor are separately attached to remote end portions of electrical or other signal
`
`carrying connections sufficiently long for both portions to face one another from
`
`opposite sides of the tissue. …to transilluminate the desired portion of perfused tis-
`
`sue that both the source and the sensor now face.” (APL1007, 5:33-41 (emphasis
`
`added).) Based on Goodman’s description and, for example, Figure 4 showing the
`
`device wrapped around the finger, a POSA would have understood that the light
`
`source and photo-sensor are disposed approximately opposite each other.
`
`(APL1003, ¶¶77-81, 91-95.) Likewise, a POSA would have considered the LED
`
`and photodetectors in Figure 2(b) of the transmittal device in Asada that Valencell
`
`references approximately opposite each other. (See POR, 36-37.)
`
`20.
`
`In my opinion, the annotated drawings that Valencell provides in sup-
`
`port of its position that the “[a]ngle between light emitting surface and light receiv-
`
`ing surface is not ‘substantially parallel’” are arbitrary in nature. (POR, 38-40.) For
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`example, in the “cross-section” view (blue oval) of the finger, by selecting a slight-
`
`ly different location for the detector (bottom left of oval)–for example, further
`
`counter-clockwise–the emitted and detected light becomes “substantially parallel.”
`
`(POR, 38.) However, it is not even required for the emitter and detector to be ex-
`
`actly opposite and facing each other for the emitted and detected light to be “sub-
`
`stantially parallel.” Indeed, the direction of the detecting plane of a detector (or
`
`emitting plane of an emitter) is not necessarily an indication of the directionality of
`
`the light impinging on the photodetector (or the light emitted from the emitter). Ra-
`
`ther, light will impinge on the detector from various angles. Likewise, light is emit-
`
`ting from the emitter in a number of different directions, a function of the construc-
`
`tion of the emitter and any layers or lensing materials placed on or in front of the
`
`emitter. As light travels through tissue (e.g., the finger) it changes directions, often
`
`multiple times. (APL1003, ¶¶80, 94.) Thus, for example, in Figure 3 of the ’830
`
`Patent, some rays of light emitted from the emitter are parallel to some rays of light
`
`that are detected by the detector; but other rays will not be parallel.
`
`21. A POSA would have understood this background and recognized that
`
`Goodman’s device meets the limitation disputed by Valencell. Indeed, as I have
`
`explained before, because light is emitted in many directions, changes directions
`
`multiple times as it passes through the tissue, and impinges on the detector from
`
`many directions, a POSA would have understood that in Goodman’s device the
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`Case IPR2017-00317
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`“first direction” (i.e., from the emitter to the body) and the “second direction” (i.e.,
`
`to the detector) are “substantially parallel.” (APL1003, ¶¶77-81, 91-95.) As I pre-
`
`viously explained, in Goodman’s device:
`
`some light will be emitted approximately orthogonal to
`the LED’s light emitting surface. As the emitted light is
`reflected and refracted within the patient’s body–often
`multiple times–the light changes directions. … Some of
`the emitted light will make its way across the finger and
`be received at the photodiode in a second direction, for
`example, approximately orthogonal to the photodiode’s
`light receiving surface.
`
`(APL1003, ¶¶80, 94.)
`
`22. Moreover, as I also explained “[d]epending on the positioning of the
`
`LED and photodiodes” emitted and received light in Goodman’s device “may be
`
`closer or further from parallel” and that “some light will even be exactly parallel.”
`
`(APL1003, ¶¶80, 94.) Accordingly, it is my opinion that Goodman teaches or sug-
`
`gests that “the first and second directions are substantially parallel.”
`
`D. Goodman’s light transmissive material is configured to meet the
`first and second direction limitations.
`23. Valencell also alleges that the light transmissive material in Goodman
`
`(i.e., clear polyester layer (45)) is not configured to meet the “first and second di-
`
`rections” limitation. (POR, 40-41.) Valencell contends that the light transmissive
`
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`Case IPR2017-00317
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`material “must be configured in a specific manner” to meet three requirements.
`
`(Id.) I disagree.
`
`24. First, in my opinion, the ’830 Patent does not describe the light trans-
`
`missive material in the manner described by Valencell. In the ’830 Patent, the con-
`
`cept of “substantially parallel” directions of light is with respect to the ear bud em-
`
`bodiment of Figure 3: “The optical detector 26 and optical emitter 24 are config-
`
`ured to detect and generate light substantially parallel to the light-guiding region
`
`19 of the light guide 18.” (APL1001, 14:52-55 (emphasis added).) This is achieved
`
`by having emitting and detecting planes (P1, P2) facing directions that are substan-
`
`tially parallel. (APL1001, 14:55-59.) This does not require any specific configura-
`
`tion of the light transmissive material. And I would point out again that the claims
`
`do not recite a “light-guiding region” or “light guide.”
`
`25. Second, in my opinion, a POSA would understand that Goodman’s
`
`light transmissive material functions in the same way as the light transmissive ma-
`
`terial recited in the ’830 Patent claims. (APL1007, 9:45-50, FIGS. 2C, 4;
`
`APL1003, ¶¶77-81 , 91-95.) In Goodman, the light transmissive material on one
`
`side of the finger delivers light from the optical emitter (light source (24)) to the
`
`body. This is facilitated by the aperture (40) in the cladding layer (opaque vinyl
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`tape (37)), which allows light to pass from the device into the body. (APL1007,
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`9:39-50.) And since the light is delivered to the body in many directions, some
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`light is delivered in a first direction (e.g., approximately orthogonal to the face of
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`the light source). After the light travels through the finger–changing directions
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`multiple times due to reflections and refractions and scattering–the light transmis-
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`sive material on the opposite side of the finger (having been wrapped around the
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`finger) delivers light collected at the opposite side to the optical detector (photo-
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`sensor (14)) that faces the light source. (APL1007, 5:30-46.) This is also facilitated
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`by the aperture (41) in the cladding layer, which allows light that has travelled
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`through the finger to enter the device. Since the light is delivered from many direc-
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`tions, some light is delivered in a second direction (e.g., approximately orthogonal
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`to the face of the light source) that is “substantially parallel” to the first direction.
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`V. Combinations of References
`A. Goodman in View of Hicks – Claims 5 and 15
`1.
`Valencell mischaracterizes Figure 6 of Hicks.
`26. Valencell provides an annotation of Hicks’s Figure 6 with a “buffer”
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`highlighted in the drawing that it alleges does not exist in Goodman. Based on this
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`annotated drawings, Valencell alleges that a POSA would not have added Hicks’s
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`lens to Goodman because Goodman allegedly does not have an air pocket buffer.
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`(POR, 46-48.) In my opinion, the annotated drawing is inaccurate; and I disagree
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`with Valencell’s position that a POSA would not have added Hick’s lens to Good-
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`man.
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`Case IPR2017-00317
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`Valencell’s Annotated Version of Hicks Figure 6 (POR, 47)
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`27. First, Figure 6 of Hicks is “an exploded cross sectional view” of the
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`sensor. (APL1008, 8:34-35.) When the layers are assembled, the “buffer” that Va-
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`lencell indicates does not exist because foam layer (86) and clear substrate (80) of
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`the “laminate” are in contact with each other. (APL1008, 8:40-44.) Hicks describes
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`that there is an “air pocket formed by the foam layer apertures 88, the clear sub-
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`strate 80 and the interconnecting layer 82….” (APL1008, 9:64-66 (emphasis add-
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`ed).) Thus, the “air pocket” is actually just the air gap resulting from aperture (88)
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`itself in foam layer (86), disposed between clear substrate (80) and interconnecting
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`layer (82), when the sensor is assembled.
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`APL1008, Figure 6
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`Case IPR2017-00317
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`28. Second, as discussed above by way of the example shown in Figure
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`7A (below), Goodman’s assembled device will actually have a similar “air gap” as
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`Hicks.
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`
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`APL1007, Figure 7A (highlight added)
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`2.
`Valencell’s alleged “detriments” would not have deterred a
`person skilled in the art from combining the references.
`
`29.
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`In arguing against the combination of Hicks with Goodman, Valencell
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`first alleges that Goodman’s device is already properly directed and focused and
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`that its transmittal PPG device benefits from unfocused light. (POR, 42.) Valencell
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`then alleges that adding a lens will make the skin “uncomfortably warm,” increase
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`the chances of focusing light to the wrong place in the body, and make the device
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`more susceptible to disturbances (e.g., motion artifacts). (POR, 43-45.) Valencell
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`further alleges that adding a lens will make the device more expensive (thereby de-
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`crease disposability) and also decrease blood flow by adding pressure to the tissue.
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`(POR, 45-46.) In my opinion, Valencell’s concerns are unfounded and would not
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`have deterred a POSA from adding Hicks’s lens–a standard optical component–to
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`Goodman.
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`30. First, I disagree with Valencell’s conclusion that “Petitioner fails to
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`weigh the purported benefit of adding Hicks’s lens” to Goodman “against the
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`many problems that would accompany that modification.” (POR, 43.) As I previ-
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`ously stated, in forming the opinions for my declaration submitted with the Peti-
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`tion, I was aware of these types of alleged “detriments,” which are actually design
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`tradeoffs and consideration that must be taken into account with a perspective on
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`the total system design, as a POSA likewise would have been. (Ex. 2010, 202:9-
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`203:14.) These are the types of design tradeoffs that a POSA would have naturally
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`considered. (See e.g., APL1003, ¶¶37-38.) Even in view of the concerns Valencell
`
`raises, it is still my opinion that a POSA would have combined the references as
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`explained in the Grounds of the Petition.
`
`31. Regarding Valencell’s argument that Goodman’s device is already
`
`properly directed and focused and actually benefits from unfocused light, a POSA
`
`would have understood that using a lens does not necessarily create a beam of in-
`
`tensely focused light. A lens can help change the direction of light and bring more
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`light to fall into a smaller subtended angle, and help to have more light reach a
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`depth within the body after which the light can take a more diffuse path through
`
`the body. Furthermore, I find Valencell’s concern that light may be directed to the
`
`wrong place in the body to be considerably overstated. A POSA would have
`
`known how to properly design the sensor device to provide light to the proper loca-
`
`tion(s). (See e.g., APL1005, 30; APL1003, ¶99.)
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`Case IPR2017-00317
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`32. Regarding Valencell’s concern of the skin becoming “uncomfortably
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`warm,” Valencell describes this as stemming from the lens, but Hicks actually dis-
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`cusses that the heat comes from the LED itself. (APL1008, 4:7-15.) In any event,
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`as discussed above in Section V.A.1, Goodman has an “air pocket” like the one in
`
`Hicks that would insulate from conductive heat transfer. Moreover, other tech-
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`niques such as using a high-frequency, low-duty rate modulation were known for
`
`preventing these types of injuries. (APL1005, 32.)
`
`33. Furthermore, in my opinion, Valencell’s additional concerns about
`
`combining Hicks with Goodman would not have been troublesome to a POSA ei-
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`ther. Although increased costs may sometimes be a deterrent for modifying a de-
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`vice, an inexpensive injection molded plastic (APL1106, 189-195) or hot em-
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`bossed plastic (APL1107, 365-379) or low-temperature glass lens used in optical
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`sensor applications would have added fractional pennies or pennies in incremental
`
`cost such that a POSA would not have been dissuaded from making the combina-
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`tion of Goodman and Hicks. Also, it would not have been necessary to dispose of
`
`the lens portion of the device with the disposable portion. As Hicks describes, the
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`“LED 40 may be mounted upon the back surface of the lens 200,” so if the lens is
`
`attached to the light source in Goodman, it would not be disposable, just as the
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`light source itself is not disposable. (APL1008, 13:49-50.) Furthermore, the added
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`thickness of a lens would be negligible and only be for a very small portion of the
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`Case IPR2017-00317
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`device above the LED; thus, it would not affect the overall conformance of Good-
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`man’s device to conform to the skin. Indeed a plastic Fresnel lens could be used.
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`The construction of lenses of large aperture and short focal length without the mass
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`and volume of material that would be requir