`
`
`
`
`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
`REPLY TO PATENT OWNER 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.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`
`I. 
`II. 
`
`V. 
`
`Introduction ...................................................................................................... 1 
`Valencell’s description of the ’830 Patent focuses on elements that are
`not recited in the claims. .................................................................................. 2 
`III.  Claim Construction .......................................................................................... 3 
`A. 
`“Cladding Material” .............................................................................. 3 
`B. 
`“Light Guiding Interface” ..................................................................... 5 
`IV.  Goodman discloses or suggests every element of independent claims 1
`and 11. .............................................................................................................. 8 
`A.  Valencell’s manufactured “assembly” of Goodman’s device
`contradicts Goodman’s express disclosure. .......................................... 9 
`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. .............. 11 
`Goodman discloses that “the first and second directions are
`substantially parallel.” ......................................................................... 13 
`D.  Goodman’s light transmissive material is configured to meet
`the first and second direction limitations. ........................................... 17 
`Combinations of References .......................................................................... 18 
`A.  Goodman in View of Hicks – Claims 5 and 15 .................................. 19 
`1. 
`Valencell mischaracterizes Figure 6 of Hicks. ......................... 19 
`2. 
`Valencell’s alleged “detriments” would not have deterred
`a person skilled in the art from combining the references. ....... 21 
`Goodman in View of Hannula and Asada – Claims 6 and 16;
`and Goodman in View of Asada – Claims 8, 9, 18, and 19 ................ 23 
`1. 
`Combining Goodman and Hannula .......................................... 23 
`1. 
`Combining Goodman with Asada ............................................. 24 
`VI.  Conclusion ..................................................................................................... 28 
`
`
`B. 
`
`C. 
`
`B. 
`
`
`
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`

`

`Apple (APL)
`Ex. No.
`1001
`
`1002
`1003
`
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`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
`
`
`
`- ii -
`
`

`

`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 Petitioner’s
`Reply to Patent Owner’s Response
`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) (Ex. 1106)
`
`
`
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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’s Patent Owner Response (“POR”) takes a myopic view that
`
`ignores the industry’s evolution toward wireless optical and discounts the skilled
`
`artisan’s understanding of design tradeoffs in developing wireless technologies.
`
`The ’830 Patent and Valencell’s declarant, Dr. Titus, recognize the “growing
`
`market demand for personal health and environmental monitors” for use “during
`
`daily physical activity.” (APL1001, 1:27-33; APL1100, 65:4-67:7) Apple’s expert,
`
`Dr. Anthony, explained that when “cutting the wire,” artisans designing a wireless
`
`system
`
`looked
`
`to predecessor
`
`technology, using solutions and
`
`technical
`
`innovations previously embodied in wired devices. (APL1003, ¶37.) Artisans also
`
`routinely considered design tradeoffs for achieving wireless capability. (Id.; Ex.
`
`2010, 160:23-161:5, 202:9-203:14.) Valencell prior art analysis ignores this
`
`backdrop. (APL1102, ¶2.)
`
`Goodman alone or in combination with other prior art renders every
`
`challenged claim of the ’830 Patent obvious. Every structural element was in the
`
`prior art. Thus, Valencell does not dispute this fact. Instead, Valencell’s arguments
`
`rely on: 1) unduly narrow claim constructions that impermissibly read limitations
`
`from the specification into the claims; 2) inaccurate interpretations of the prior art
`
`with annotated figures that are modified in misleading and inappropriate ways; 3)
`
`unfounded concerns about prior art combinations that inflate potential “detriments”
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`while ignoring an artisan’s understanding of design tradeoffs; and 4) Dr. Titus’s
`
`declaration, which is devoid of references supporting his opinions, and whose
`
`testimony contradicts Valencell’s positions on key points. (APL1102, ¶3.)
`
`II. Valencell’s description of the ’830 Patent focuses on elements that are
`not recited in the claims.
`
`Valencell attempts to skew the interpretation of the claimed devices by
`
`liberally describing elements from the ’830 Patent specification that are not recited
`
`in the claims, “light guide 18” and “light guiding region 19.” (Patent Owner
`
`Response, Paper 19 (“POR”), 11-15.) Although Valencell, in view of the asserted
`
`prior art, may now wish to import these unclaimed features into the claims, they
`
`cannot. As Judge Rich famously stated, “the name of the game is the claim.” Giles
`
`S. Rich, The Extent of the Protection and Interpretation of Claims-American
`
`Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L., 497, 499 (1990).
`
`Valencell’s claims are much broader than described in its POR. They do not claim
`
`a “light guide” or a “light guiding region.” (See APL1100, 86:15-25, 87:18-20;
`
`APL1102, ¶4.) Valencell could have claimed these elements and acknowledges
`
`doing so elsewhere. (POR, 29 (stating that the ’965 Patent actually claimed a “light
`
`guide.”) Here, Valencell chose not to claim these features, attempting to capture a
`
`broader scope. As such, the asserted prior art teaches or suggests every element
`
`recited by the claims.
`
`
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`

`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`III. Claim Construction
`Valencell’s claim construction impermissibly imports limitations from the
`
`’830 Patent specification
`
`into
`
`the claims. Without
`
`these unduly narrow
`
`interpretations, Valencell’s arguments unravel. Even under Valencell’s proposed
`
`constructions, the prior art renders the claims obvious.
`
`“Cladding Material”
`
`A.
`Valencell proposes construing “cladding material” as “a material that
`
`confines light within a region.” (POR, 23 (emphasis added).) However, this is not
`
`the broadest reasonable interpretation; it improperly imports limitations from the
`
`specification into the claim. Valencell’s construction actually requires importing
`
`limitations that are not even described in the ’830 Patent. (APL1102, ¶¶5-6.)
`
`Valencell focuses on the unclaimed “light guiding region 19” and the
`
`embodiment of Figure 3 that is not within the scope of the claims as alleged
`
`support for its construction. (POR, 23-24 (quoting APL1001, 14:58-61).)
`
`Valencell’s examples from the ’830 Patent all have two layers of cladding material
`
`to “help[] confine light.” (POR, 23-25.) Dr. Titus confirmed that the claims more
`
`broadly recite only one layer of cladding material, i.e., “a layer of cladding
`
`material near the inner body portion inner surface.” (See APL1100, 89:8-10.) Thus,
`
`Apple’s proposed construction of “a material that blocks or reflects at least some
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`light” is more appropriate because a single layer of cladding material does not
`
`necessarily “confine light within a region,” as Valencell avers. (APL1102, ¶5.)
`
`Many examples of “cladding material” in the ’830 Patent–air, polymer,
`
`plastic, and “transparent or mostly transparent [material] with a lower index of
`
`refraction than the light transmissive material”–allow some light to pass through
`
`them. (APL1001, 13:51-54, 17:1-4; APL1003, ¶47; APL1102, ¶6.) Thus, to
`
`“confine light,” Valencell’s construction requires impermissibly importing from
`
`the specification that the cladding material must have “a lower index of refraction”
`
`than the adjacent material and consequently that “total internal reflection” will
`
`necessarily occur. (POR, 26-27; APL1102, ¶6.) Valencell alleges that Snell’s Law
`
`supports its construction “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.” (POR, 27 (emphasis added).) First, Valencell again relies on an
`
`unclaimed element–a silicone light-guiding area. Second, the ’830 Patent does not
`
`even mention “total internal reflection.” And Valencell’s reliance on Snell’s Law is
`
`misleading. Snell’s Law depends not only on the indices of refraction of the
`
`adjacent materials, but also on the angle of incidence of the light. (APL1102, ¶7.)
`
`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°).
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`(Id.) The ’830 Patent does not describe that this condition is also necessarily true,
`
`which would be required for Valencell’s “confine light” construction. (Id.)
`
`The necessity for all of these variables demonstrates that Valencell’s
`
`construction cannot be the broadest reasonable interpretation of “cladding
`
`material.” Accordingly, the Board should adopt Apple’s construction of “a material
`
`that blocks or reflects at least some light.”
`
`“Light Guiding Interface”
`
`B.
`Valencell proposes construing “light-guiding interface” as “an interface that
`
`delivers light along a path.” (POR, 27.) This is not the broadest reasonable
`
`interpretation; it again improperly imports limitations from the specification into
`
`the claims. (APL1102, ¶¶8-10.) Testimony from Valencell’s own declarant
`
`undermines Valencell’s interpretation.
`
`The ’830 Patent specification recites “light-guiding interface[]” referring
`
`only to Figures 22A-B and 23, stating that “windows 74 w are formed in the
`
`cladding 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 Patent, the windows (74W) are merely gaps in the cladding material that may
`
`optionally include, for example, a filter (74WF) or a lens (74WL). (APL1102, ¶8.)
`
`
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`
`
`
`
`(APL1001, Figures 22B, 23 (Annotated))
`
`The “windows” that functionally “serve as light-guiding interfaces” are
`
`passive elements–holes in the cladding material that allow light to pass through.
`
`(APL1102, ¶9.) Valencell’s declarant repeatedly confirmed that the window 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. (See APL1100, 88:2-11, 94:23-
`
`95:5, 179:4-12.) Even upon redirect from Valencell suggesting that the window
`
`serves a light-guiding function, Valencell’s declarant maintained that “I don’t
`
`believe the window serves a light-guiding function,” but instead simply “the
`
`window ensures that the light can get to the body.” (See APL1100, 186:16-187:7
`
`(emphasis added).)
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`The claims reflect this passive nature, using language nearly identical to the
`
`specification: “at least one window formed in the layer of cladding material that
`
`serves as a light-guiding interface to the body of the subject.” Valencell ignores
`
`the actual disclosure related to this element, instead focusing on “light guide” and
`
`dictionary definitions of “guide” which are not recited in the claims. (POR, 27-29;
`
`see APL1100, 86:15-25; APL1102, ¶10.) Had Valencell wished to claim a “light
`
`guide” it could have done so, as in the related ’965 Patent. (POR, 29.)
`
`Valencell used the same diversionary tactic in deposing Apple’s expert, Dr.
`
`Anthony, belaboring extraneous terms like “light guide,” “light guiding,” and
`
`“guides light” that are not in the ’830 Patent claims. (See Ex. 2010, 93:5-101:25.)
`
`But Dr. Anthony correctly pointed out that here “we’re talking about a light-
`
`guiding interface, a window [formed in] cladding material.” (See Ex. 2010, 96:13-
`
`15 (emphasis added).) As Dr. Anthony explained in his declaration, “[t]he
`
`mechanical and optical elements used to guide and focus the light into and out of
`
`the body ends and begins at the interface, a window, between the device and
`
`body.” (APL1003, ¶¶76, 90 (emphasis added).) Thus, “a light-guiding interface
`
`here is a window. ‘Light guide,’ in a different use, could be, for example, a lens
`
`that guides light along a different path. But that's not what is stated here. What’s
`
`stated here is a window that allows the light to pass through the cladding material
`
`into the body.” (Ex. 2009, 98:11-16 (emphasis added).)
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`Accordingly, the Board should construe “light-guiding interface” as “a
`
`window that allows the light to pass through the cladding material into the body.”
`
`(APL1102, ¶10.)
`
`IV. Goodman discloses or suggests every element of independent claims 1
`and 11.
`
`Valencell argues only that Goodman fails to teach or suggest functional
`
`limitations of (1) a “window formed in the layer of cladding material that serves as
`
`a light-guiding interface to the body of the subject” and (2) 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 substantially
`
`parallel.” (POR, 30; APL1100, 140:8-141:9.) Valencell does not deny that
`
`Goodman discloses windows (apertures 40, 41) formed in the cladding material
`
`(tape layer 37). (POR, 31.) Rather, Valencell merely alleges that the window does
`
`not functionally serve as a light-guiding interface to the body. (POR, 31.) But
`
`Valencell’s position is premised on a manufactured “assembly” of Goodman’s
`
`device that contradicts Goodman’s express disclosure. (APL1102, ¶11.) Under a
`
`proper interpretation of Goodman, the aperture serves as a light-guiding interface
`
`to the body–even under Valencell’s proposed claim construction. (See APL1100,
`
`141:10-143:22; APL1102, ¶11.) And the light transmissive material delivers light
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`from the optical emitter to the body in a first direction and delivers collected light
`
`in a second direction to the optical detector, where the first and second directions
`
`are substantially parallel. (APL1102, ¶11.)
`
`A. Valencell’s manufactured “assembly” of Goodman’s device con-
`tradicts Goodman’s express disclosure.
`
`Figure 2C illustrates an exploded side view showing the layered construction
`
`of an embodiment of Goodman’s device. (APL1007, 8:15-18.) Goodman
`
`unambiguously describes that the cladding layer of “opaque vinyl tape” (37) “is
`
`apertured 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).) The arrows in Figure 2C specify that the light from the light
`
`source (24) passes through the aperture (40). (APL1003, ¶¶53, 76, 79, 90, 93;
`
`APL1102, ¶12; Ex. 2009, 220:4-221:3.) Likewise, arrows also show that light
`
`returns through aperture (41) to the photo-sensor (14). Contrary to Valencell’s
`
`position, Valencell’s declarant, Dr. Titus, agreed with Apple, stating that “my
`
`understanding is that -- that the apertures would allow light to pass through them.”
`
`(See APL1100, 156:5-8 (emphasis added).)
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`
`(APL1007, FIG. 2C.)
`
`
`
`Valencell’s version of Goodman’s “assembled” device, below, contradicts
`
`Goodman’s express teachings. (APL1102, ¶13.)
`
`
`
`Valencell’s “assembly” of Goodman Figure 2C (POR, 32.)
`
`Valencell’s assembly shows the light source (24) and photo-sensor (14)
`
`extending into and beyond the apertures. This is likely why Valencell fails to
`
`include clear polyester layer (45) and release tape (50) in its “assembled” creation–
`
`because it runs contrary to Valencell’s argument that the position of the emitter and
`
`detector helps the layers “conform” the thickness of the strip. (See POR, 32-33;
`
`APL1102, ¶14.) Valencell also ignores another embodiment in Goodman that
`
`illustrates that the light source does not extend all the way through the aperture.
`
`(APL1102, ¶14; see APL1100, 114:2-4.) This comports with Valencell’s
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`declarant’s position that in Asada’s similar device, 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. (See APL1100, 114:2-4; APL1102,
`
`¶14.)
`
`
`
`APL1007, Figure 7A (highlight added)
`
`Rather than assuming the manufactured “assembly” created by Valencell, a
`
`POSA would have gleaned directly from Goodman’s description and drawings that
`
`the light source does not extend all the way through the aperture. (APL1102, ¶14.)
`
`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.
`
`As discussed in Section III.B, the “light-guiding interface” in claim 1 is
`
`simply “a window that allows the light to pass through the cladding material into
`
`the body.” Goodman’s express disclosure, discussed above,
`
`teaches
`
`this.
`
`(APL1102, ¶15.)
`
`In view of the proper understanding of Goodman’s assembled device
`
`provided above, Goodman satisfies this limitation even under Valencell’s proposed
`
`
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`claim interpretation (to which Apple does not concede) for “light-guiding
`
`interface” as “an interface that delivers light along a path.” (POR, 27; APL1102,
`
`¶16.) Because the light source (24) in Goodman does not extend entirely through
`
`the aperture (40), there is space between the emitting surface of the light source
`
`and the end of the aperture (see e.g., FIG. 7A), and light interacts with the aperture
`
`itself, contrary to Valencell’s argument. (APL1102, ¶16; POR, 51.) The aperture
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`thus serves as “an interface that delivers light along a path” (i.e., through the
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`aperture and to the body). (APL1102, ¶16.) As shown below, even light that may
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`reflect off the interior sidewall of the cladding due to its thickness will be delivered
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`along a path to the body. (Id.) In this way, the cladding material also “confines
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`light within a region” (i.e., within the aperture), according to Valencell’s proposed
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`construction. (Id.)
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`
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`APL1007, Figure 7A (annotated)
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`Moreover, Goodman’s apertures function the same as the windows in the
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`’830 Patent–they allow light to pass through. (APL1102, ¶17; see APL1100, 88:2-
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`11, 94:23-95:5, 179:4-12, 186:16-187:7.) The same is true for the Figure 3
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`embodiment that Valencell improperly relies upon–the end portion (18f) merely
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`“does not have cladding material” such that the light travels “…from the optical
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`emitter 24 through the end portion 18 f and into the ear canal C of a subject….”
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`(APL1001, 14:19-23 (emphasis added); POR, 12, 14; APL1102, ¶17; APL1100,
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`88:2-11.)
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`Accordingly, Goodman discloses a “window formed in the layer of cladding
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`material that serves as a light-guiding interface to the body of the subject” just like
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`the ’830 Patent.
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`C. Goodman discloses that “the first and second directions are sub-
`stantially parallel.”
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`Valencell alleges that Goodman does not teach or suggest that “the light
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`transmissive material is configured to deliver light from the at least one optical
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`emitter to the body of the subject along a first direction and to collect light from
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`the body of the subject and deliver the collected light in a second direction to the at
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`least one optical detector, wherein the first and second directions are substantially
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`parallel.” (POR, 35.) According to Valencell’s declarant, Dr. Titus, this element
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`simply requires that: “the light from the emitter and light from the collector
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`directions are substantially parallel.” (APL1101, 35:4-19.) Dr. Titus refused to
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`clarify the bounds of “substantially parallel” beyond asserting that “one would be
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`looking at them and recognize them as being parallel” and stating that a divergence
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`of two degrees “probably that is not substantially parallel.” (APL1101, 49:8-
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`51:22.)
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`Valencell’s arguments are premised on its allegation that Goodman cannot
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`meet this limitation because of the position and orientation of the LED (emitter)
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`and photodiode (detector). (POR, 35-40.) But Goodman’s description of these
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`components is precisely why it does meet the limitation. (APL1102, ¶¶18-19.)
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`Valencell’s argument flows from its allegation that “Goodman does not
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`disclose or teach that the LED and photodiode, much less their respective emitting
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`surface or receiving surface, are disposed ‘approximately opposite each other.’”
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`(POR, 36.) Valencell is in denial on this point. Goodman’s Abstract states that
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`“[t]he sensor includes a first end for disposition on one side of the trans-
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`illuminated flesh and a second end for disposition on the opposite and opposed
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`side of the trans-illuminated flesh. A light source is mounted to the first side and a
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`photo-sensor is mounted to the second side.” (APL1007, Abstract (emphasis
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`added).) Furthermore, “the light source and photo-sensor are separately attached to
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`remote end portions of electrical or other signal carrying connections sufficiently
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`long for both portions to face one another from opposite sides of the tissue. …to
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`transilluminate the desired portion of perfused tissue that both the source and the
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`sensor now face.” (APL1007, 5:33-41 (emphasis added); APL1101, 59:25-60:8.)
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`Based on Goodman’s description and, for example, Figure 4 showing the device
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`wrapped around the finger, a POSA would have understood that the light source
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`and photo-sensor are disposed approximately opposite each other. (APL1102, ¶19.)
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`Valencell provides four arbitrary annotated drawings allegedly illustrating
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`that the “[a]ngle between light emitting surface and light receiving surface is not
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`‘substantially parallel.’” (POR, 38-40.) In Valencell’s creations–the origin of
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`which were unclear to Valencell’s declarant–the locations of the emitter and
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`detector are self-serving and yet another distraction. (APL1101, 74:10-75:14.)
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`Valencell’s declarant admitted that the direction of the detecting plane does not
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`indicate the direction of light impinging on the photodetector. (APL1101, 36:19-
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`22; APL1102, ¶20.) Indeed, Dr. Titus admitted that light “will have various
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`different angles as it impinges on the detector” and, likewise, “the rays of light
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`would be emitting from the emitter and traveling in a number of different
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`directions….” (APL1101, 37:14-38:2, 39:5-13, 68:21-69:25.) As light travels
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`through tissue (e.g., the finger) it changes directions, often multiple times.
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`(APL1101, 66:3-6; APL1003, ¶¶80, 94; APL1102, ¶20.) Thus, in Figure 3 of the
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`’830 Patent, for example, some light emitted from the emitter is parallel to some
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`light detected by the detector. (APL1101, 39:18-23; APL1102, ¶20.)
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`Accordingly, very little is required to satisfy the claim element disputed by
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`Valencell. As Valencell’s declarant stated, all that is required is that “the light from
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`the emitter and light from the collector directions are substantially parallel.”
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`(APL1101, 35:4-19.) Because light is emitted in many directions, changes
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`directions multiple times passing through the tissue, and impinges on the detector
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`from many directions, a POSA would have understood that in Goodman’s device a
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`“first direction” (i.e., from the emitter to the body) and a “second direction” (i.e., to
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`the detector) are “substantially parallel.” (APL1003, ¶¶77-81, 91-95; APL1102,
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`¶21.) Thus, the example in Dr. Anthony’s expert declaration submitted with the
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`Petition makes perfect sense. In Goodman’s device:
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`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.
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`(APL1003, ¶¶80, 94.)
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`Dr. Anthony’s example corresponds with the testimony above from
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`Valencell’s declarant, Dr. Titus. Moreover, Dr. Anthony acknowledged that a
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`POSA would have understood that “[d]epending on the positioning of the LED
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`and photodiodes” emitted and received light in Goodman’s device “may be closer
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`or further from parallel” and that “some light will even be exactly parallel.”
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`(APL1003, ¶¶80, 94.)
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`Case IPR2017-00317
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`Accordingly, Goodman teaches or suggests that “the first and second
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`directions are substantially parallel.” (APL1102, ¶¶18-22.)
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`D. Goodman’s light transmissive material is configured to meet the
`first and second direction limitations.
`Valencell also alleges that the light transmissive material in Goodman (i.e.,
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`clear polyester layer (45)) is not configured to meet the “first and second
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`directions” limitation. (POR, 40-41.) Valencell contends, without providing any
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`support from the ’830 Patent, that the light transmissive material “must be
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`configured in a specific manner” to meet three requirements. (Id.) But Valencell’s
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`contention is misguided.
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`First, the ’830 Patent does not describe the light transmissive material in this
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`manner. (APL1102, ¶¶23-24.) The only discussion of “substantially parallel” light
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`directions is for the Figure 3 ear bud embodiment: “The optical detector 26 and
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`optical emitter 24 are configured to detect and generate light substantially parallel
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`to the light-guiding region 19 of the light guide 18.” (APL1001, 14:52-55
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`(emphasis added).) This is achieved by having emitting and detecting planes (P1,
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`P2) facing directions that are substantially parallel. (APL1001, 14:55-59.) The light
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`transmissive material does not have any special configuration. (APL1102, ¶24.)
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`And, again, the claims do not recite a “light-guiding region” or “light guide.” (Id.)
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`Second, Goodman’s light transmissive material (clear polyester 45)
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`functions the same as the light transmissive material in the ’830 Patent claims–it
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`Case IPR2017-00317
`U.S. Pat. No. 8,989,830
`lets light pass through. (APL1102, ¶25; APL1007, 9:45-50.) The claims do not
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`require nor does the ’830 Patent describe that the light transmissive material
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`changes the direction or path of the light. (See APL1100, 88:2-11, 94:23-95:5,
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`179:4-12.) In Goodman, the light transmissive material on one side of the finger
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`delivers light from the optical emitter (light source 24) to th