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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC. and FITBIT, INC.
`Petitioners
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`____________
`
`Case IPR2017-003171
`Patent 8,989,830
`__________________
`
`PETITIONER APPLE INC’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`
`
`
`
`
`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.
`
`
`
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`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`
`Introduction ...................................................................................................... 1 
`I. 
`Patent Owner Failed to Respond to Any Instituted Ground ............................ 1 
`II. 
`III.  Substitute Claims 24 and 33 Improperly Broaden the Scope of Claims
`4 and 14, Respectively ..................................................................................... 2 
`IV.  Substitute Claims 26 and 35 Are Indefinite Under 35 U.S.C. §112 ............... 3 
`V. 
`Substitute Claims 21-38 Are Unpatentable Under 35 U.S.C. §103 ................ 3 
`A.  Argument 1: The Combination of Goodman and Han Renders
`Substitute Claims 21–24, 27, 28, 30–33, 36, and 37 Obvious .............. 3 
`Obviousness analysis .................................................................. 3 
`1.
` 
`2.
`The combination of Goodman and Han renders substitute
` 
`independent claims 21 and 30 obvious. ...................................... 9 
`The combination of Goodman and Han renders substitute
`claims 22, 23, 31, and 32 obvious ............................................. 14 
`The combination of Goodman and Han renders substitute
`claims 24 and 33 obvious .......................................................... 14 
`The combination of Goodman and Han renders substitute
`claims 27 and 36 obvious .......................................................... 16 
`The combination of Goodman and Han renders substitute
`claims 28 and 37 obvious .......................................................... 17 
`B.  Argument 2: The Combination of Goodman, Han, and Hicks
`Renders Substitute Claims 25 and 34 Obvious ................................... 19 
`C.  Argument 3: The Combination of Goodman, Han, Hannula, and
`Asada Renders Substitute Claims 26 and 35 Obvious ........................ 20 
`The combination of Goodman, Han, Hannula, and Asada
`1.
` 
`teaches or suggests “a light reflective material on at least
`a portion of one or both of the inner and outer surfaces of
`the [inner/first] layer” ............................................................... 20 
`The combination of Goodman, Han, Hannula, and Asada
`teaches or suggests that “the at least one optical detector
`comprises first and second optical detectors” ........................... 20 
`The combination of Goodman, Han, Hannula, and Asada
`discloses that “a signal processor, and wherein at least a
`portion of light reflected by the second optical detector is
`
`3.
` 
`
`4.
` 
`
`5.
` 
`
`6.
` 
`
`2.
` 
`
`3.
` 
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`processed by the signal processor as a motion noise
`reference for attenuating motion noise from signals
`produced by the first optical detector” ...................................... 23 
`D.  Argument 4: The Combination of Goodman, Han, and
`Delonzor Renders Substitute Claims 29 and 38 Obvious ................... 24 
`VI.  Conclusion ..................................................................................................... 25 
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`Description
`U.S. Patent No. 8,989,830 to LeBoeuf et al. titled “Wearable
`Light-Guiding Devices for Physiological Monitoring,” issued
`March 24, 2015
`U.S. Patent No. 8,989,830 File History
`Declaration of Dr. Brian W. Anthony in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,989,830
`Curriculum Vitae of Dr. Brian W. Anthony
`Asada, H. et al. “Mobile Monitoring with Wearable Photople-
`thysmographic Biosensors,” IEEE Engineering in Medicine and
`Biology Magazine, May/June 2003; pp. 28-40
`U.S. Patent No. 5,226,417 to Swedlow et al. titled “Apparatus
`for the Detection of Motion Transients,” issued July 13, 1993
`U.S. Patent No. 4,830,014 to Goodman et al. titled “Sensor
`Having Cutaneous Conformance,” issued May 16, 1989
`U.S. Patent No. 6,745,061 to Hicks et al. titled “Disposable Ox-
`imetry Sensor,” issued June 1, 2004
`U.S. Patent No. 7,190,986 to Hannula et al. titled “Non-
`Adhesive Oximeter Sensor for Sensitive Skin,” issued March
`13, 2007
`U.S. Patent No. 5,797,841 to Delonzor et al. titled “Shunt Barri-
`er in Pulse Oximeter Sensor,” issued August 25, 1998
`U.S. Patent Application Publication No. 2007/0123763 to Al-
`Ali et al. titled “Optical Sensor Including Disposable and Reus-
`able Elements,” published May 31, 2007
`Excerpt from Merriam Webster’s Collegiate Dictionary, Elev-
`enth Edition, 2008; p. 828
`Mendelson, Y. et al., “Skin Reflectance Pulse Oximetry: In Vi-
`vo Measurements from the Forearm and Calf,” Journal of Clini-
`cal Monitoring, Vol. 7, No. 1, January 1991; pp. 7-12
`Konig, V. et al., “Reflectance Pulse Oximetry – Principles and
`Obstetric Application in the Zurich System,” Journal of Clinical
`Monitoring and Computing, Vol. 14, No. 6, August 1998; pp.
`403-412
`
`Apple (APL)
`Ex. No.
`1001
`
`1002
`1003
`
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`
`- iii -
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`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`Apple (APL)
`Ex. No.
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`
`1023-1099
`1100
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`Description
`Mendelson, Y. et al. “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th
`IEEE EMBS Annual International Conference, New York City,
`New York, August 30-September 3, 2006; pp. 912-915
`U.S. Patent No. 6,608,562 to Kimura et al. titled “Vital Signal
`Detecting Apparatus,” issued August 19, 2003
`Tremper, K. et al., “Pulse Oximetry,” Medical Intelligence Arti-
`cle, Anesthesiology, Vol. 70, No. 1, January 1989; pp. 98-108
`Declaration of Gerard P. Grenier in support of Asada, H. et al.
`“Mobile Monitoring with Wearable Photoplethysmographic Bi-
`osensors,” IEEE Engineering in Medicine and Biology Maga-
`zine, May/June 2003; pp. 28-40 (APL1005)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Transcript of teleconference among Board and Parties held on
`October 13, 2017, Apple Inc. v. Valencell, Inc., Case Nos.
`IPR2017-00315, IPR2017-00317, IPR2017-00318, IPR2017-
`00319, and IPR2017-00321.
`Intentionally Left Blank
`Transcript of the Deposition of Dr. Albert Titus, November 9,
`2017, Apple Inc. v. Valencell, Inc., Case No. IPR2017-00318.
`Transcript of the Deposition of Dr. Albert Titus, November 10,
`2017, Apple Inc. v. Valencell, Inc., Case No. IPR2017-00317.
`Declaration of Dr. Brian W. Anthony in Support of Reply for
`Inter Partes Review of U.S. Patent No. 8,989,830
`Declaration of Dr. Brian W. Anthony in Support of Petitioner’s
`Opposition to Patent Owner’s Motion to Amend in Inter Partes
`Review of U.S. Patent No. 8,989,830
`Hyonyoung Han et al., Development of a wearable health moni-
`toring device with motion artifact reduced algorithm, Interna-
`tional Conference on Control, Automation and Systems, IEEE
`(2007)
`Declaration of Gerard P Grenier in support of Hyonyoung Han
`et al., Development of a wearable health monitoring device with
`motion artifact reduced algorithm, International Conference on
`Control, Automation and Systems, IEEE (2007)
`
`
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`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`Apple (APL)
`Ex. No.
`1106
`
`1107
`
`1108
`
`1109
`
`Description
`Lu X. et al., “A statistical experimental study of the injection
`molding of optical lenses,” Journal of Materials Processing
`Technology, Vol. 113, 2001; pp. 189-195
`Ong N.S. et al., “Microlens array produced using hot embossing
`process,” Microelectric Engineering, Vol. 60, 2002; pp. 365-379
`Rapaport et al., “Control of Blood Flow to the Extremities at
`Low Ambient Temperatures,” Journal of Applied Physiology,
`Vol. 2, 1949; pp. 61-71
`Daanen H.A.M., “Finger cold-induced vasodilation: a review,”
`Springer-Verlag, European Journal of Applied Physiology, Vol.
`89, 2003; pp. 411-426
`
`
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`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`I.
`
`Introduction
`
`Valencell (“Patent Owner”) asks the Board to substitute claims 21-38 in
`
`place of original claims 1-6, 8-16, and 18-20 of U.S. Patent No. 8,989,830 (the
`
`’830 patent) only if each of these original claims are found unpatentable. The sub-
`
`stitute claims fail because they are procedurally deficient and unpatentable under
`
`35 U.S.C. §§ 112 and 103. For these reasons, as further discussed below, Patent
`
`Owner’s Conditional Motion to Amend Under 37 C.F.R. §42.121 (“Motion to
`
`Amend”) should be denied
`
`II.
`
`Patent Owner Failed to Respond to Any Instituted Ground
`
`The Motion to Amend did not address how the proposed amendments
`
`overcome the instituted grounds and thus “does not respond to a ground of
`
`unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2). “The structure of
`
`an IPR does not allow the patent owner to inject a wholly new proposition of
`
`unpatentability into the IPR by proposing an amended claim.” Aqua Prod., Inc. v.
`
`Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017) (en banc). “[T]he patent owner must
`
`include … a detailed explanation of the significance of the amended claims (e.g., a
`
`statement that clearly points out the patentably distinct features for the proposed
`
`new or amended claims).” Id. at 1341 (Reyna concurring) (quoting 77 Fed. Reg. at
`
`48,626) (emphasis added). Patent Owner’s cursory statement that the “references
`
`asserted…fail to anticipate or render the substitute claims obvious” or that “prior
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`art” in general does not disclose a particular limitation is not a detailed
`
`explanation. Motion to Amend, pp. 1-2, 17-18.
`
`The Patent Owner alleges it provided a discussion of “what the Patent
`
`Owner believes to be the most relevant prior art” (id. at 18-24), yet did not discuss
`
`the Goodman, Hicks, Hannula, and Delonzor references—the actual prior art
`
`references on which trial was instituted. The Motion to Amend addresses several
`
`hand-picked prior art references in some detail (most of which are not involved in
`
`this proceeding), but does not meaningfully address the instituted grounds.
`
`Because it does not address any of the grounds upon which trial was instituted,
`
`Patent Owner fails to demonstrate how the proposed amendments are responsive to
`
`a ground of rejection.
`
`III. Substitute Claims 24 and 33 Improperly Broaden the Scope of Claims 4
`and 14, Respectively
`
`The Board may deny a motion to amend when the amendment seeks to en-
`
`large claim scope. 37 C.F.R. § 42.121(a)(2). “A patent owner may not seek to
`
`broaden a challenged claim in any respect.” Idle Free Sys. Inc. v. Bergstrom,
`
`Inc., Paper 26 at 5 (PTAB June 11, 2013) (emphasis added). Substitute claims 24
`
`and 33 improperly enlarge claim scope by removing the limitation “layer compris-
`
`es adhesive in one or more locations that is configured to adhesively secure the de-
`
`vice to the body of the subject.” Thus, the Board should deny substitute claims 24
`
`and 33.
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`IV. Substitute Claims 26 and 35 Are Indefinite Under 35 U.S.C. §112
`A claim is indefinite “when it contains words or phrases whose meaning is
`
`unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2007); Telebrands Corp.
`
`v. Tinnus Enterprises, LLC, PGR2015-00018, Paper 75 at 18 (PTAB Dec. 30,
`
`2016) (“[w]e determine that the test for definiteness that is applied in patent exam-
`
`ination and reexamination matters, approved in Packard, should be applied in []
`
`post-grant review AIA proceeding[s], rather than the Nautilus requirement”). Here,
`
`substitute claims 26 and 35 are indefinite because they recite “a signal processor”
`
`and it is unclear whether it is the same or a different signal processor than recited
`
`earlier in claims 21 and 30 from which claims 26 and 35, respectively, depend.
`
`(APL1103 , Anthony Declaration in Support of Petitioner’s Opposition to Motion
`
`to Amend, ¶73.)
`
`V.
`
`Substitute Claims 21-38 Are Unpatentable Under 35 U.S.C. §103
`A. Argument 1: The Combination of Goodman and Han Renders
`Substitute Claims 21–24, 27, 28, 30–33, 36, and 37 Obvious
` Obviousness analysis
`1.
`
`a)
`Differences between the claimed subject matter and
`Goodman
`
`Patent Owner proposes to substitute claim 21 for independent claim 1, and
`
`claim 30 for independent claim 11. Substitute claims 21 and 30 include all of the
`
`limitations of original claims 1 and 11, respectively, but modify the claimed “base”
`
`to further comprise “at least one motion sensor” and “a signal processor.” As
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`demonstrated in the Petition, Goodman renders original claims 1 and 11 obvious.
`
`(See Petition, Section VIII.) However, Goodman does not disclose the “at least one
`
`motion sensor” and “signal processor” as recited in substitute claims 21 and 30.
`
`Han discloses these missing limitations.
`
` Overview of Han
`b)
`Han presents a wearable health monitoring device for obtaining a photople-
`
`thysmography (PPG) signal. (APL1104 , 1581; APL1103 , ¶35.) Han recognizes
`
`that movement by the wearer of the device introduces motion artifacts in the ob-
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`tained PPG signal, which distorts a heartbeat or pulsation signal contained therein.
`
`(Id.) According to Han, the most well-known method for reducing motion artifacts
`
`is active noise cancellation with an adaptive filter, but most implementations of
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`this method have a “large program size which is not adequate to wearable and
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`portable device[s].” (Id.) Han proposes an alternative active noise cancellation al-
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`gorithm with a small program size suitable for the presented wearable device. (Id.)
`
`Han’s wearable device includes a finger band with a PPG sensor “located on
`
`the inner layer of the band” and, attached to the finger band, on-board electronics
`
`with a 3-axis accelerometer, microprocessor, and wireless module. (APL1104
`
`, 1581-82, Figure 1; APL1103 , ¶36.) Han’s electronics are configured to first pre-
`
`process a raw PPG signal. (APL1104 , 1582; APL1103 , ¶36.) The raw PPG signal
`
`demands a low pass filter for reducing high frequency noise and a high pass filter
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`for rejecting a DC component of the PPG signal to enhance the AC component.
`
`(Id.) Absent remaining noise, such as motion noise, the AC component corre-
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`sponds to the pulsatile component of the PPG signal. (APL1103 , ¶36.) The pulsa-
`
`tile component of the PPG signal is the signal of interest in Han and is attributed to
`
`changes in blood volume that are synchronous with each heartbeat. (Id.) The high
`
`and low pass filters collectively form a band pass filter to enhance this signal of in-
`
`terest. (Id.)
`
`Han’s on-board electronics are subsequently configured to process the pre-
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`processed PPG signal with the active noise cancellation algorithm to reduce motion
`
`artifacts. (APL1104 , 1582; APL1103 , ¶37.) As shown in FIG. 3 of Han (repro-
`
`duced below), the active noise cancellation algorithm implements a fourth order
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`adaptive filter and a digital filter to reconstruct a raw pulsation signal (sk) from the
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`body motion corrupted PPG signal (dk). (APL1104 , 1582, Figure 3; APL1103 ,
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`¶37.) More specifically, the digital filter processes a measurable noise signal (xk)
`
`from the accelerometer to produce body motion data (nk), which is then subtracted
`
`from the body motion corrupted PPG signal (dk) to produce a reconstructed raw
`
`pulsation signal (ŝk). (APL1104 , 1582; APL1103 , ¶37.) The fourth order adaptive
`
`filter determines the coefficients of the digital filter by processing the measurable
`
`noise signal (xk) from the accelerometer and the reconstructed raw pulsation signal
`
`(ŝk) according to equation (1) in Han. (APL1104 , 1582-83; APL1103 , ¶37.) When
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`employed, the active noise cancellation algorithm is capable of removing artifacts
`
`from daily movement, including movements limited to the finger, all the way up to
`
`walking or running. (APL1104 , 1584; APL1103 , ¶37.) Han’s active noise cancel-
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`lation algorithm is of the same form as Asada’s algorithm and is implemented on a
`
`similar ring device. (APL1005, p. 33; APL1103 , ¶37.) Thus, Han’s active noise
`
`cancellation algorithm is applicable in all types of settings, including for monitor-
`
`ing patients in the hospital as well at home. (APL1104 , 1581; APL1103 ., ¶37.)
`
`
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`Han further discloses that its wireless module is configured to transmit the
`
`sensor data to a host computer after the sensor data has been processed to remove
`
`noise as described above. (APL1104 , 1581-82, Figure 2; APL1103 , ¶38.)
`
`c)
`
` Motivation for the combination of Goodman and Han
`As explained in the Petition, Goodman discloses a non-invasive optical bio-
`
`sensor for measuring vital signals, such as arterial oxygen saturation and the rate
`
`and rhythm of blood pulsations. (APL1007, 1:20-28, 4:30-34, 6:43-50.) The sensor
`
`has a flexible layered substrate structure, including a portion (24) having LEDs
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`(25, 26) and a portion (14) having a photo-sensor (19). (Id., 8:49-56, 8:66-9:2, Fig-
`
`ures 2C (annotated below) and 3A-3C.) The LEDs and photo-sensor are supported
`
`on a flexible tape layer (34) and an opaque vinyl strip (30). (Id., 9:20-25.)
`
`(APL1007, Figure 2C (Annotated); APL1103, ¶41.)
`
`
`
`A POSA would have been motivated to modify the flexible tape layer (34)
`
`(“base”) of Goodman to further comprise “at least one motion sensor” and “a sig-
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`nal processor configured to receive and process signals produced by the at least
`
`one optical detector and the motion sensor to: (i) reduce footstep motion artifacts
`
`from the at least one optical detector during running by the subject; and (ii) extract
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`physiological and motion parameters” as recited in substitute claims 21 and 30.
`
`(APL1103, ¶42.)
`
`Before the ’830 patent, it was well established that PPG signals measured by
`
`wearable devices were susceptible to corruption by several different sources of mo-
`
`tion artifacts. (Id., ¶43.) Goodman explicitly describes one such source “due to dif-
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`ferential motion between the sensor and the patient’s finger,” which “creates a se-
`
`rious impediment to consistent accurate measurement.” (APL1007, 1:44-56, 3:23-
`
`25, 3:57-63.) Goodman seeks to reduce differential-based motion artifacts by hav-
`
`ing a low mass sensor that conforms to the skin. (Id., 4:30-36.) Yet another source
`
`of motion artifacts is “when a patient moves, inertia may cause a slight change in
`
`the venous blood volume at the sensor site” that alters the amount of light transmit-
`
`ted through the blood and ultimately detected by the sensor. (APL1006, 2:17-27.)
`
`A POSA would have understood that Goodman’s technique of a low mass sensor
`
`that conforms to the skin would not have been effective at reducing these inertia-
`
`based motion artifacts. (APL1103 , ¶43.)
`
`Therefore, a POSA would have looked to mechanisms to reduce inertia-
`
`based motion artifacts. (APL1103 , ¶44.) Indeed, Goodman recognizes that motion
`
`artifacts cause distortion in the sensor signal, which then causes a corresponding
`
`error in measured vital signals from the sensor signal. (APL1007, 2:54-66.) Using
`
`a motion sensor to measure motion and a signal processor to reduce inertia-based
`
`motion artifacts in a PPG signal based on the measured motion was a conventional
`
`technique known well prior to the ’830 patent. (See, e.g., APL1006, 4:40-66;
`
`APL1103 ., ¶44.) Han discloses such a technique.
`
`A POSA would have therefore been motivated to modify Goodman’s non-
`
`invasive optical biosensor to include Han’s on-board accelerometer and filters for
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`performing the active noise cancellation algorithm capable of reducing inertia-
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`based motion artifacts. (APL1103 , ¶45.) A POSA would have been further moti-
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`vated to modify Goodman to attach the on-board electronics to the outside surface
`
`of Goodman’s band, which corresponds to the flexible tape layer (34), as taught by
`
`Han given space constraints within the inner layer of the band and to maintain, for
`
`example, comfort and a tight conformance of Goodman’s LEDs and photosensor to
`
`the body. (Id.) Indeed, both Goodman and Han recognize that such tight conform-
`
`ance is an important factor in reducing noise. (APL1007, 4:30-36, 64-67; APL1104
`
`, 1581-82.)
`
`
`2.
`
`The combination of Goodman and Han renders substitute
`independent claims 21 and 30 obvious.2
`
`
`2 As noted in Aqua Products, the entirety of the record is to be considered
`
`when assessing the patentability of the amended claims. Aqua Prod., Inc. v. Matal,
`
`872 F.3d 1290, 1296 (Fed. Cir. 2017). The USPTO has issued similar guidance
`
`indicating that the entirety of the record, including any opposition, will be consid-
`
`ered. See, USPTO Memorandum issued November 21, 2017, “Guidance on Mo-
`
`tions to Amend in view of Aqua Products.” Accordingly, for elements of substitute
`
`independent claims 21 and 30 that are identical to those in original independent
`
`claims 1 and 11, respectively, the same arguments presented in Sections VIII.A-B
`
`of the Petition apply (unless otherwise noted) and are not re-presented here.
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`The combination of Goodman and Han teaches or
`suggests the amended “base” limitations
`
`
`a)
`
`The combination of Goodman and Han teaches or suggests “a base [1] se-
`
`cured to at least one of the outer and inner layers and [2] comprising at least one
`
`optical emitter and at least one optical detector and at least one motion sensor” as
`
`recited in claim 21, and “a base [1] secured to the first layer and [2] comprising at
`
`least one optical emitter and at least one optical detector and at least one motion
`
`sensor” as recited in claim 30.
`
`In the Petition, the claimed “base,” “outer layer,” and “inner/first layer”
`
`were equated to respective layers in Goodman’s sensor. (See Petition, Sections
`
`VIII.A and VIII.B.) In particular, the claimed “base” was equated to Goodman’s
`
`opaque vinyl strip (30), the claimed “outer layer” was equated to Goodman’s flexi-
`
`ble tape layer (34), and the claimed “inner/first layer” was equated to Goodman’s
`
`clear polyester layer (45). (APL1003, ¶¶70, 72, 84-85.) In response to Patent Own-
`
`er’s proposed amendments, Patent Owner swaps the two layers of Goodman corre-
`
`sponding to the claimed “base” and “outer layer,” such that the claimed “base” cor-
`
`responds to Goodman’s flexible tape layer (34) and the claimed “outer layer” cor-
`
`responds to Goodman’s opaque vinyl strip (30). Under this interpretation, the
`
`claimed “outer layer” and “inner layer” are still secured together, as required else-
`
`where in claim 21, by adhesives with an intervening layer there between.
`
`(APL1007, 9:17-51; APL1103 , ¶48.)
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`Goodman’s flexible tape layer (34), which corresponds to the claimed
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`“base,” is secured to both the outer and inner/first layers. (APL1103 , ¶49.) The
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`flexible tape layer (34) is secured to opaque vinyl strip (30)–the “outer layer”–by
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`adhesive (35). (APL1007, 9:24-26.) The flexible tape layer (34) is also secured to
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`clear polyester layer (45)–the “inner/first layer”– by adhesives on the intervening
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`layers, which also meets the claimed elements because the claims do not require
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`that these components be secured directly together. (APL1007, 9:17-51; APL1103
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`, ¶49.) Thus, Goodman discloses “a base secured to at least one of the outer and in-
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`ner layers” and “a base secured to the first layer” as recited by claims 21 and 30,
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`respectively. (APL1103 , ¶49.)
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`Goodman further discloses that the flexible tape layer (34), which corre-
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`sponds to the claimed “base,” “compris[es] at least one optical emitter and at least
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`one optical detector.” Goodman’s sensor device includes light-emitting diodes
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`(LEDs) (25, 26) and a photo-sensor (19). (APL1007, 8:54-9:2, Figures 2C and 3A-
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`3C.) The LEDs (25, 26) and photo-sensor (19) correspond to the claimed “optical
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`emitter” and “optical detector,” respectively. (APL1103 , ¶50.) “[T]he light source
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`and photo-sensor [are] integrated into the adhesive fastener.” (APL1007, 4:60-61.)
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`More specifically, the “photo-active elements of the sensor substrate 14, 24 are fas-
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`tened with the inactive side down to an opaque vinyl strip 30 having an adhesive
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`surface 32.” (Id., 9:19-22, Figure 2C.) And as discussed above, the opaque vinyl
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`strip 30 is adhered by adhesive (35) to the flexible tape layer (34), which is the
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`foundation layer upon which all other layers rest as shown in Figure 2C of Good-
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`man. (APL1103 , ¶50.) So, Goodman describes that the LEDs (25, 26) and photo-
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`sensor (19) are secured and supported by the flexible tape layer (34) and thus com-
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`prised by the “base.” (Id.) Accordingly, Goodman discloses “a base . . . comprising
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`at least one optical emitter and at least one optical detector” as recited by claims 21
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`and 30. (APL1007, 9:19-22; APL1103 , ¶50.)
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`The combination of Goodman and Han teaches or suggests “that the flexible
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`tape layer (34), which corresponds to the claimed “base”, further “compris[es] . . .
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`at least one motion sensor.” Han’s wearable device includes a finger band with a
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`PPG sensor and, attached to the finger band, on-board electronics with an accel-
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`erometer for measuring body motion, a fourth order adaptive filter and digital filter
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`for performing an active noise cancellation algorithm, and a wireless module.
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`(APL1104 , 1581-82, Figure 1; APL1103 , ¶51.) The active noise cancellation al-
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`gorithm reduces artifacts from body motion in a pre-processed PPG signal.
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`(APL1104 , p. 1582, Figure 1; APL1103 , ¶51.) As discussed above in Section
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`V.A.1.(c), a POSA would have been motivated to include Han’s on-board electron-
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`ics as an attachment to Goodman’s flexible tape layer (34) to reduce the impact of
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`motion artifacts in the signal measured by Goodman’s optical biosensor and to
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`maintain tight conformance of Goodman’s LEDs and photo-sensor with the body.
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`In the combined device, Han’s accelerometer corresponds to the claimed “at least
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`one motion sensor,” which is attached to and supported by Goodman’s flexible
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`tape layer (34). (APL1103 , ¶52.) Accordingly, the combination of Goodman and
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`Han discloses that the “base” further comprises “at least one motion sensor” as re-
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`cited by claims 21 and 30. (Id.)
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`b)
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`The combination of Goodman and Han teaches or
`suggests “wherein the base comprises a signal proces-
`sor configured to receive and process signals pro-
`duced by the at least one optical detector and the mo-
`tion sensor to (i) reduce footstep motion artifacts from
`the at least one optical detector during running by the
`subject and (ii) extract physiological and motion pa-
`rameters” recited in claims 21 and 30
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`As discussed above in Section V.A.1.(c), a POSA would have been motivat-
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`ed to include Han’s on-board electronics as an attachment to Goodman’s flexible
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`tape layer (34) to reduce the impact of motion artifacts in the signals measured by
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`Goodman’s optical biosensor and to maintain tight conformance of Goodman’s
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`LEDs and photo-sensor with the body. In the combined device, Han’s fourth order
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`adaptive filter and digital filter would implement Han’s active noise cancellation
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`algorithm to reduce motion artifacts in the signal measured by Goodman’s optical
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`biosensor. (APL1103 , ¶54.) The digital filter processes a measurable noise signal
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`(xk) from the accelerometer to produce body motion data (nk), which is then sub-
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`tracted from the body motion corrupted signal (dk) produced by Goodman’s photo-
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`sensor (19) to produce a reconstructed raw pulsation signal (ŝk). (APL1104 ,
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`p. 1582; APL1103 , ¶54.) The reconstructed raw pulsation signal (ŝk) and the body
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`motion data (nk) respectively correspond to the claimed “physiological and motion
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`parameters.” (APL1103 , ¶54.) The fourth order adaptive filter determines the co-
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`efficients of the digital filter by processing the measurable noise signal (xk) from
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`the accelerometer and the reconstructed raw pulsation signal (ŝk) according to
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`equation (1) in Han. (APL1104 , pp. 1582-83; APL1103 , ¶54.) When employed,
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`the active noise cancellation algorithm is capable of removing artifacts from daily
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`movement, including movements limited to the finger, all the way up to walking or
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`running. (APL1104 , p. 1584; APL1103 , ¶54.) Accordingly, the combination of
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`Goodman and Han teaches or suggests the added “wherein” limitation of substitute
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`claims 21 and 30. (APL1103 , ¶54.)
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`3.
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`The combination of Goodman and Han renders substitute
`claims 22, 23, 31, and 32 obvious
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`Substitute dependent claims 22, 23, 31, and 32 correspond to original de-
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`pendent claims 2, 3, 12, and 13, respectively, and have been amended merely to
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`update their dependencies without any other substantive changes to their features.
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`Accordingly, the same arguments presented in Sections VIII.C-D of the Petition
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`apply to these substitute claims. Thus, those arguments are not re-presented here.
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`4.
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`The combination of Goodman and Han renders substitute
`claims 24 and 33 obvious
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`The combination of Goodman and Han teaches or suggests the “at least one
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`optical detector is a PPG sensor.” Photoplethysmography or PPG is an optical
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`technique used by many non-invasive optical biosensors to detect blood flow char-
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`acteristics. (APL1103 , ¶56.) In one mode of operation, this optical technique is
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`carried out by placing an LED and a photodetector on generally opposite sides of a
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`body part with pulsating vascular tissue. (Id.) Light emitted from the LED is dif-
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`fused by the skin and subcutaneous tissue, which is then detected by the photode-
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`tector as a PPG signal. (Id.) Because the photodetector detects the PPG signal, the
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`photodetector is a PPG sensor. (Id.)
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`Goodman’s non-invasive optical biosensor carries out this optical technique.
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`Goodman’s sensor is shown in Figure 2C (reproduced above) and includes LEDs
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`(25, 26) and a photo-sensor (19). (APL1007, 8:49-56, 8:66-9:2, Figures 2C and
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`3A-3C.) The photo-sensor (19) corresponds to the claimed “at least one optical
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`sensor” as discussed above. Goodman discloses that that the LEDs (25, 26) transil-
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`luminate a desired portion of perfused tissue and the photo-sensor (19) measures
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`light extinction between the LEDs (25, 26) and the photo-sensor (19). (APL1103 ,
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`¶57; see also, (APL1007, 4:30-36, 5:30-47.) The optically measured light extinc-
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`tion reflects blood flow characteristics and corresponds to a PPG signal. (APL1103
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`, ¶57; APL1007, 2:37-53, 5:44-47, 6:18-21.) Because the photo-sensor (19) detects
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`the PPG signal, the photo-sensor (19) is a PPG sensor. (APL1103 , ¶57.) Accord-
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`ingly, the combination of Goodman and Han teaches or suggests the “at least one
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
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`optical detector is a PPG sensor.” (Id.)
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`5.
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`The combination of Goodman and Han renders substitute
`claims 27 and 36 obvious
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`The combination of Goodman and Han teaches or suggests “wherein reduc-
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`ing footstep motion artifacts from the at least one optical detector during running
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`by the subject further comprises pre-adaptive filtering processes [sic] of the signal
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`prior to adaptive filtering, wherein pre-adaptive filtering further comprises at least
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`one of band-pass, low-pass, or high-pass filter.” Goodman does not disclose per-
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`forming a pre-adaptive filtering process. However, Han discloses performing p