Exhibit 2151
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 1
`
`
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 1
`
`
`
`Filed on Behalf of Valencell, Inc.
`
`By: Sanford E. Warren Jr. (SWarren@wriplaw.com)
`
`
`
`
`
`R. Scott Rhoades (SRhoades@wriplaw.com)
`
`Warren Rhoades LLP
`
`1212 Corporate Drive, Suite 250
`
`Irving, Texas 75038
`
`Tel: 972-550-2955
`
`Fax: 469-442-0091
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC. and FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-003171 - U.S. Patent No. 8,989,830
`Case IPR2017-003182 – U.S. Patent No. 8,886,269
`
`
`
`
`
`
`DECLARATION OF ALBERT H. TITUS IN SUPPORT OF
`VALENCELL’S MOTIONS TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`1 IPR2017-01553 has been joined to this current proceeding.
`2 IPR2017-01554 has been joined to this current proceeding.
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 2
`
`
`
`
`I, Albert Titus, declare as follows:
`
`I.
`
`INTRODUCTION
`
`A. Engagement
`
`1. My name is Dr. Albert H. Titus. I have been asked to submit this
`
`declaration on behalf of Valencell, Inc. (“Valencell” or “Patent
`
`Owner”) in connection with Motions to Amend for U.S. Patent Nos
`
`8,989,830 (“the ’830 patent”) and 8,886,269 (“the ’269 patent”).
`
`2.
`
`I have been retained as a technical expert by Warren Rhoades LLP and
`
`Valencell to study and provide my opinions on the prior art related to
`
`the claim amendments for the ’830 patent and the ’269 patent. I have
`
`also been retained by Valencell and Bragalone Conroy PC to study and
`
`provide my opinions related to the Patent Owner’s Response for the
`
`IPRs involving the ’830 patent and the ’269 patent.
`
`3.
`
` I previously submitted declarations in both of these proceedings in
`
`support of Patent Owner’s Responses (Papers 19 and 20) and
`
`Valencell’s Motions to Amend under 37 C.F.R. § 42.121 (Papers 20
`
`and 21) (collectively, “Declarations”). I incorporate all of these
`
`Declarations herein by reference.
`
`4.
`
`As part of my study, I have reviewed and am familiar with the prior art
`
`and specifications of the ’830 patent and the ’269 patent. I have also
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 3
`
`
`
`reviewed Petitioners’ Oppositions to the Motions to Amend and the
`
`supporting Declarations of Dr. Brian W. Anthony for the ’269 patent
`
`(Paper 33 and Exhibit 1103) and ’830 patent (Paper 28 and Exhibit
`
`1103).
`
`5.
`
`It is still my opinion that the substitute claims of the ’269 and ’830
`
`patents are not anticipated by the prior art, including the new prior art
`
`cited in the Oppositions to the Motions to Amend. It is also my opinion
`
`that the substitute claims of the ’269 and ’830 patents are not obvious
`
`in light of the prior art, individually or in combination.
`
`6.
`
`It is still my understanding that Valencell has not disputed Petitioners’
`
`definition of a Person of Ordinary Skill in the Art (“POSITA”).
`
`7. My background qualifications and compensation remain unchanged
`
`from my original Declarations.
`
`8.
`
`In the formation of my opinions, I have relied upon the legal standards
`
`set forth in my prior Declarations.
`
`II. ANALYSIS OF PRIOR ART
`
`A. The Cited Prior Art and the Motivation to Combine for the ’830 Patent.
`
`Goodman
`
`9.
`
`Goodman describes a device that is small and, when “the adhesive
`
`fastener is used, the effect of the light source and photo-detector
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 4
`
`
`
`substrates being integrated into the adhesive fastener is that they
`
`become, in effect, a part of the skin.” APL1007 at Abstract. “This
`
`disclosed adhesive fastening conforms the elements of the apparatus so
`
`completely to the patient's skin that motion artifact is eliminated.
`
`Hence, the light extinction measurement and resulting analysis to
`
`determine oxygen saturation and pulse rate is more accurate and less
`
`sensitive to interference.” APL1007 at Col. 5, lns. 41 – 47. The
`
`device’s tight adhesion to the skin prevents motion artifacts from
`
`distorting the signal. The Goodman device is “directed to providing
`
`non-invasive, reliable, and continuous monitoring of the vital signs of
`
`a patient requiring intensive care to prevent vital organ damage or
`
`reduced biopotential,” thus a patient with limited motion or mobility.
`
`APL1007 at Col. 5, lns. 3-6. The Goodman device “is entirely
`
`disposable and thus sanitary.” APL1007 at Col. 6, lns. 22-23.
`
`Additionally, “the plastic, flexible adhesive strip can be secured over
`
`the end of the fingertip, not circumferentially around the finger. This
`
`prevents restriction of blood flow to the tissue to be illuminated and
`
`measured. Only nominal pressure from this invention to the patient is
`
`applied locally to the patient on the topical skin layer directly holding
`
`the light source and the photosensor. This pressure does not extend
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 5
`
`
`
`across or into the perfused flesh in any way. There is no localized force
`
`exerted upon the flesh to be transilluminated. In sum, the flexible
`
`adhesive strip does not bind the perfused flesh. Consequently, the blood
`
`flow being interrogated is undisturbed.” APL1007 at Col. 5, lns. 56-68.
`
`Thus, Goodman’s device by design minimizes the potential for inertial
`
`effects.
`
`Han
`
`10. Han is a conference paper entitled “Development of a wearable health
`
`monitoring device with motion artifact reduced algorithm.” APL1104
`
`at Title. Han describes a ring-type electronic device or “finger band
`
`sensor” that has a PPG sensor with a microprocessor that wirelessly
`
`communicates data to a remote computer. APL1104 at 1581-82. The
`
`device is composed of a number of components with a larger
`
`mechanical structure to secure it to the finger, and a battery for power.
`
`APL1104 at 1582. Han discusses a motion-artifact reduction algorithm
`
`that includes filtering (including an adaptive filter). APL1104 at 1582.
`
`11. Han tests the device using hand motion to simulate walking. APL1104
`
`at 1583-84. Han identifies the hand motion frequency as “Hand Motion,
`
`Run, 3 Hz.” APL1104 at Table 2, 1584. Thus, Han states that running
`
`is equivalent to 3Hz hand motion. Han provides “[a]s experiments, one
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 6
`
`
`
`directional hand motions which has difference frequency conditions are
`
`given.” APL1104 at 1583. Additionally, Han states, “PPG signals are
`
`measured at not only moving left finger but also right finger in fixed
`
`pose, as a reference signal.” APL1104 at 1583. The Han device uses a
`
`signal from a stationary right finger as a comparison for the signals
`
`generated by the left finger, which is in motion. Additionally, Han does
`
`not disclose that the finger movement is striking a surface to simulate
`
`footsteps. Thus, finger-only or hand-only motion is used to allegedly
`
`simulate actual running. Han does not disclose any actual testing upon
`
`a running or jogging subject, Han only discloses this non-running
`
`simulation at a slow rate. So, the Han device has not demonstrated in
`
`theory or practice to be capable of reducing footstep motion artifacts.
`
`12. The filtering disclosed by Han appears to be done on the remote
`
`computer, as Han states that “Labview software from National
`
`Instrument obtains transmitted data and display by graph on the host
`
`computer. Also, digital
`
`filtering and analysis algorithm are
`
`programmed.” APL1104 at 1582. Thus,
`
`the filtering
`
`is also
`
`programmed in Labview, which is software developed by National
`
`Instruments and runs on a computer (not on the ring). And, since the
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 7
`
`
`
`Han filtering is done in Labview on the computer, this is not suited to
`
`actual running.
`
`Motivation to Combine Goodman and Han
`
`13. A person of ordinary skill in the art (“POSITA”) would not be
`
`motivated to combine Han with Goodman. The device of Han adds
`
`significant complexity, size, weight and mass, all of which defeat
`
`Goodman’s intended form and function. Indeed, Goodman, in his
`
`discussion of the background of the invention, lays out the justification
`
`for his invention as follows:
`
`“A sensor with appreciable mass or high aspect ratio is
`prone to developing relative motion between the light
`source, the photo-sensor and the tissue from minor
`mechanical disturbance. This relative motion creates
`concomitant variations in the light transmission from source
`to sensor and thus grossly distorts the measurement of light
`extinction. When this motion occurs, variances of light
`transmission are erroneous indicators of light extinction.
`These extinction errors ultimately cause corresponding
`errors in oxygen saturation measurement, all as a result of
`discontinuous contact and other causes of relative motion
`between the light source, the photo-sensor, and tissue. A
`possible profile of such a variant motion is shown in FIG.
`1E as component 12.” APL1007 at Col. 2, lns. 54-68.
`
`14. Thus, Goodman recognizes the problem and it is why his device is
`
`developed. Therefore, adding mass and a high aspect ratio creates the
`
`problem that Goodman is trying to solve, so a POSITA would not look
`
`to combine Han and Goodman for this reason.
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 8
`
`
`
`15. A POSITA would not look to combine Han and Goodman as
`
`Goodman’s device is flexible and disposable while the Han device is a
`
`large, sturdy, solid ring with several expenses components attached to
`
`it. A POSITA would understand that the size, weight, and costs of the
`
`additional components of Han would defeat the purpose of the flexible
`
`and disposable device of Goodman. Additionally, the Han device is
`
`designed to “attach to body tightly to reduce noise effect and feel
`
`comfortable to wear.” APL1104 at 1581-82. A POSITA would not
`
`look to combine Han with Goodman as Goodman teaches away from a
`
`circumferential device such as a “tight” ring by specifically stating that
`
`“the plastic, flexible adhesive strip can be secured over the end of the
`
`fingertip, not circumferentially around the finger. This prevents
`
`restriction of blood flow to the tissue to be illuminated and measured. .
`
`. . In sum, the flexible adhesive strip does not bind the perfused flesh.
`
`Consequently, the blood flow being interrogated is undisturbed.”
`
`APL1007 at Col. 5, lns. 56-68. Accordingly, a POSITA would not look
`
`to combine Han and Goodman for the reasons set forth above.
`
`The Substitute Claims of the ’830 Patent Are Not Obvious In View Of
`The Cited Prior Art.
`
`16. Goodman in view of Han fails to disclose “a signal processor
`
`configured to receive and process signals produced by the at least one
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 9
`
`
`
`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 physiological and motion parameters” as set
`
`forth in substitute claims 21 and 30. Petitioners fail to address the
`
`reduction in footstep motion artifacts during running. Dr. Anthony
`
`states “Han’s fourth order adaptive filter and digital filter would
`
`implement Han’s active noise cancellation algorithm to reduce motion
`
`artifacts in the signal measured by Goodman’s optical biosensor.”
`
`APL1103 at ¶54. This, however, fails to disclose the new claim
`
`elements in Substitute Claims 21 and 30.
`
`17. At high motion, such as during running, the noise associated with
`
`footsteps is strong enough to overwhelm the smaller signal associated
`
`with heart rate, and so the footstep-related contribution dominates the
`
`overall signal. Ex. 1001 at Col. 25, lns. 27-31. Running is different
`
`from walking and jogging as the magnitude of footstep-related artifacts
`
`is considerably greater due to the increased frequency and force exerted
`
`on the feet as an individual runs. For example, Dr. Anthony,
`
`Petitioners’ expert, testified that a sprinter can reach speeds of over 20
`
`miles per hour (“mph”) and a marathon runner may reach speeds of
`
`over 10 mph. Ex. 2150, Deposition of Dr. Anthony, 123:4-10 and
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 10
`
`
`
`124:5-10. The footstep-related artifacts, at these speeds, would
`
`overwhelm a heartrate sensor.
`
`18. Han fails to disclose filtering sufficient to address the footstep-related
`
`artifacts of running. Han never even addresses the footstep-related
`
`artifacts of running. Han only discloses finger and/or hand waving
`
`without either ever contacting a surface. The motion artifacts of such
`
`activity are quite different than the footstep-related artifacts during
`
`running. Han merely discloses waving a hand at 3Hz for its simulation.
`
`Therefore, Goodman and Han do not disclose or teach how to “reduce
`
`footstep motion artifacts,” so Substitute Claims 21 and 30 are not
`
`rendered obvious by Goodman in view of Han.
`
`B. The Cited Prior Art and the Motivation to Combine for the ’269 Patent.
`
`Asada
`
`19. Asada involves “[w]earable biosensors (‘WBS’)” such as “a ring sensor
`
`for ambulatory, telemetric, [and] continuous health monitoring.”
`
`APL1005, Asada at p. 28. Asada’s wearable biosensors are intended
`
`for “monitoring environments…out-of-hospital, [and] are to be worn
`
`without direct doctor supervision.” APL1005, Asada at p. 28. Under
`
`that arrangement, Asada describes a device
`
`that “combines
`
`miniaturized
`
`data
`
`acquisition
`
`features with
`
`advanced
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 11
`
`
`
`photophlethysmographic (PPG) techniques to acquire data related to
`
`the patient’s cardiovascular state using a method that is far superior to
`
`existing fingertip PPG sensors.” APL1005, Asada at p. 28. Asada
`
`describes a method for dealing with motion artifacts by using a motion
`
`detection system that is implemented with a second PPG sensor, and a
`
`“pusher” to create motion for the noise signal. APL1005, Asada at pp.
`
`32-33. Asada discusses comfort and reliability as important to wearable
`
`biosensors. APL1005, Asada at pp. 29-30. Asada does not state that
`
`his own designs are uncomfortable. APL1005, Asada at p. 36.
`
`Swedlow
`
`20. Swedlow discloses an apparatus for the detection of motion transients
`
`using a piezoelectric film that indicates motion of the pulse oximeter’s
`
`sensor (photodetector and emitter). APL1006, Col. 4, lns. 40-68. The
`
`components are mounted on the piezeoelectric film or on separate
`
`substrate that is then mounted to the piezoelectric film. APL1006, Col.
`
`5, lns. 48-68. These components are a portion of the entire Swedlow
`
`device which is intended to be a wired device with cables connecting
`
`the sensor which is adhered to the body and the read-out electronics.
`
`21. As stated in Swedlow, “[i]n an alternate embodiment, the lead frame
`
`packages 26 and 29, photodetector 15 and LEDs 13 and 16 are mounted
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 12
`
`
`
`on a flexible substrate 25. In the preferred embodiment, opaque layer
`
`14 and clear layer 12 are peanut-shaped to provide adequate coverage
`
`of the optical components, wires and motion sensor.” APL1006, Col. 5,
`
`lns. 57-62. Further, Swedlow provides “[a]n electrical cable 23
`
`provides the LED driving current and returns photodetector 15 and
`
`motion sensing element 19 signals to the oximeter. In the preferred
`
`embodiment, the cable contains three shielded, twisted pairs of
`
`conductors, one pair each for the detector, the emitters and the motion
`
`sensing element. The cable's
`
`inner shield
`
`is coupled
`
`to
`
`the
`
`photodetector's Faraday shield. Both the outer and inner cable shields
`
`are tied to analog ground. All wires are terminated in the sensor
`
`connector.” APL1006, Col. 6, lns. 19-29. From these descriptions, it is
`
`clear to a POSITA that the Swedlow device, despite using a flexible
`
`substrate, uses wires throughout. APL1006, Col. 5, lns. 57-62.
`
`Combining Asada and Swedlow
`
`22.
`
` Petitioners claim that wires are inherently uncomfortable when
`
`wrapped around a finger and are prone to disconnection, citing to a third
`
`patent, Awazu (APL1107, 1:55-58). Opp. at 3-4. Petitioners then claim
`
`a POSITA “would have looked to more reliable and comfortable means
`
`to transport signals to and from the at least one optical emitter and
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 13
`
`
`
`photodector of Asada. (Anthony Decl., ¶50.)” Opp. at p. 4. Asada does
`
`not discuss problems with disconnection or comfort. Asada specifically
`
`states its ring does not have a comfort problem. APL1005, Asada at p.
`
`36. Additionally, nothing in Asada discloses wires wrapped around a
`
`finger; a ring is disclosed. Petitioners state that a POSITA would
`
`combine Asada and Swedlow “to allow signals to be transmitted to and
`
`from the optical emitter and photodetector via etched wires.” Opp. at
`
`5. However, neither Asada nor Swedlow discuss “etched wires.”
`
`Neither of the references uses this phrase. Accordingly, there is no
`
`motivation to combine Asada and Swedlow for reliability and
`
`comfortableness.
`
`23. Asada describes a method for dealing with motion artifacts by using a
`
`motion detection system that is implemented with a second PPG sensor,
`
`and a “pusher” to create motion for the noise signal. APL1005, Asada
`
`at p. 32-33. Swedlow primarily presents a method for dealing with
`
`motion transients (artifacts). APL1006, Col. 4, lns. 40-68. As Asada
`
`and Swedlow both solve a similar problem, a POSITA would not look
`
`to Swedlow to solve the problem that Asada has already solved.
`
`Therefore, there is insufficient evidence to combine Asada and
`
`Swedlow.
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 14
`
`
`
`Fricke
`
`24. The Fricke patent application describes an optical sensor and signal
`
`processing device that is to be placed on the skin to measure
`
`physiological signals (heart rate, respiration rate and blood pressure).
`
`APL1104, at Abstract. Fricke discloses that it removes motion artifacts
`
`and external vibration noise APL1104 at ¶¶67-68.
`
`Combining Asada, Swedlow and Fricke
`
`25. A POSITA would not look to combine Fricke and Asada because Fricke
`
`presents essentially the same concepts as Asada, except the Asada’s
`
`devices are ring-based, while Fricke presents devices that may be
`
`clamped to an ear or adhered using adhesive.
`
`26. Specifically, a POSITA would not look to Fricke to solve problems
`
`related to motion-generated noise in Asada because Asada deals with
`
`this problem directly. As explained herein, Asada uses a combination
`
`of methods to eliminate noise artifacts such as the second photodetector
`
`and “pusher” device. APL1005, Asada at pp. 32-33. Indeed, as Asada
`
`states,
`
`“As a result, the waveform of this transmittal PPG was quite
`stable. Figure 3 presented earlier is the experiment of
`Prototype B. Note that the transmittal PPG (Prototype B)
`signal did not collapse even when the hand was shaken.
`Additionally, the analog filtering circuit was optimized for
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 15
`
`
`
`quality of signal. These modifications greatly improved the
`ability of the device to measure traditionally difficult
`variables such as heart rate variability (Table 1, Figure 12).”
`APL1005, Asada at p. 35.
`
`27. Thus, with this level of performance, one would not look to Fricke to
`
`solve the problem of vibration or motion since Asada has presented a
`
`solution. This is reinforced where Asada is describing his second
`
`prototype and states, “[t]his allows us to implement noise-canceling
`
`filters effectively despite complex motion artifact.” APL1005, Asada at
`
`p. 34. Accordingly, there is insufficient evidence to combine Asada,
`
`Swedlow, and Fricke.
`
`Gupta
`
`28. The Gupta conference paper presents the design of a system that is worn
`
`as part of a glove to monitor heart rate, but is also described as being
`
`able to detect falls. APL1105, Gupta at Abstract. The Gupta device is
`
`large (see Fig. 7 which shows the multiple circuit boards) and is
`
`powered using a large 9-Volt battery. APL1105, Gupta at p. 5. The
`
`device transmits data wirelessly to a remote computer. APL1105,
`
`Gupta at p. 1. Its sensors include a temperature sensor, a sensor to
`
`measure pulse rate and an impact sensor. APL1105, Gupta at p. 2.
`
`29. The impact sensor is an “ADXL311 accelerometer”. APL1105, Gupta
`
`at p. 2. The ADXL311 accelerometer provides a 2-axis response,
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 16
`
`
`
`measuring accelerations up to +/- 2g and it was fitted into the wrist
`
`strap.” APL1105, Gupta at p. 2. The impact sensor is used to measure
`
`impact only (when the person falls the body part with the attached
`
`sensor hits the floor or other object). APL1105, Gupta at p. 2. All other
`
`motion information is ignored. APL1105, Gupta at p. 2. As stated in
`
`Gupta, “Software algorithms were used to detect sharp impacts, while
`
`allowing slower movements, such as walking, to be ignored. The
`
`purpose of this sensor was to detect sudden impacts that could indicate
`
`the patient had fallen over.” APL1105, Gupta at p. 2. Gupta does not
`
`use the motion information in combination with the pulse information;
`
`indeed, as stated, the motion information is ignored.
`
`30. A true and correct copy of the ADXL311 Rev B Datasheets found on
`
`the Analog Devices website, www.analog.com, is attached hereto as
`
`Exhibit 2153. A true and correct copy of the ADXL311 Rev A
`
`Datasheets found on the www.alldatasheets.com, is attached hereto as
`
`Exhibit 2152. The datasheets for the ADXL311 accelerometer describe
`
`the part as made by Analog Devices. See Exs. 2152 and 2153. The Rev
`
`A Datasheet provides that “[t]he ADXL311 is built using the same
`
`proven iMEMS process used in over 100 million Analog Devices
`
`accelerometers shipped to date…” Ex. 2152 at p. 1. Similarly, the Rev
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 17
`
`
`
`B Datasheet provides that “[t]he ADXL311 is built using the same
`
`proven iMEMS process used in over 180 million Analog Devices
`
`accelerometers shipped to date…”, only updating the number of
`
`devices shipped. Ex. 2153 at p. 1. From this, we can see that both the
`
`Rev A and Rev B of the ADXL311 accelerometer are in fact MEMS
`
`(MicroElectroMechanical Systems) devices. See Exs. 2152 at p. 1 and
`
`2153 at p. 1.
`
`Combining Asada, Swedlow, Fricke and Gupta
`
`31. Petitioners’ position is flawed as there is insufficient motivation to
`
`combine Asada, Swedlow, Fricke and Gupta. A POSITA would not
`
`look to combine Asada and Gupta because Asada expressly teaches
`
`away from a device such as Gupta.
`
`32. Asada expressly states to NOT use a MEMS device, “[t]he motion of
`
`the finger can be measured with an accelerometer attached to the body
`
`of the ring. MEMS accelerometers are now available at low cost, but
`
`they are still too bulky and/or consume too much power to use for the
`
`ring sensor.” APL1005, Asada at pp. 32-33. Both Asada and the
`
`ADXL311 Rev A Datasheet are dated 2003 so this was a known
`
`technology from the same time of Asada. Thus, one would not look to
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 18
`
`
`
`Gupta to add an impact sensor to Asada that Asada specifically says
`
`will not work with the ring.
`
`33. Additionally, a POSITA would not look to combine Gupta with Asada
`
`because Gupta describes a device that is completely incompatible with
`
`Asada’s small ring. Asada has integrated many components onto a ring,
`
`including the battery, while Gupta shows a large device with multiple
`
`circuit boards and a 9-Volt battery that by itself is larger than the Asada
`
`ring. The size of the battery (9-Volt) indicates that the electrical
`
`components in Gupta either require higher voltages to operate than the
`
`Asada device, or require more current (power). The Gupta device with
`
`a larger and more power-hungry components, performs a subset of the
`
`functions that the Asada device does, so one would not look to combine
`
`Gupta and Asada. Accordingly, there is insufficient evidence to
`
`combine Asada, Swedlow, Fricke and Gupta.
`
`Goodman
`
`34. Goodman is described above in paragraph 9.
`
`Combining Goodman and Asada
`
`35. Goodman describes a device that is adhesively attached to the flesh to
`
`deliver an optical signal to the body and detect an optical signal from
`
`the body to eventually obtain pulse and oxygenation information.
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 19
`
`
`
`APL1007 at Col. 5, lns. 41 – 47. “When the adhesive fastener is used,
`
`the effect of the light source and photo-detector substrates being
`
`integrated into the adhesive fastener is that they become, in effect, a
`
`part of the skin.” APL1007 at Abstract. The Goodman device is
`
`effectively a photodetector and emitter sandwiched in adhesive layers,
`
`forming a very thing “band-aid”-like device that is low cost and
`
`disposable. The adhesion and minimal nature of the device eliminates
`
`motion artifacts since it is “part of the skin.” APL1007 at Abstract.
`
`Goodman does not exhibit any problems due to motion. The Asada
`
`device is a ring device that is much larger, heavier and bulkier than the
`
`Goodman band-aid. A POSITA would not look to combine Goodman
`
`with Asada as Goodman’s stated purpose is to prevent motion artifacts.
`
`Additionally, Goodman is intended for use on patients who are
`
`primarily bed-ridden, “[t]he present invention is directed to providing
`
`non-invasive, reliable, and continuous monitoring of the vital signs of
`
`a patient requiring intensive care to prevent vital organ damage or
`
`reduced biopotential.” APL1007 at Col. 5, lns. 3 - 6. Thus, a POSITA
`
`would not look to combine Goodman with Asada to solve motion
`
`problems for a device that is intended to be used on people where there
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 20
`
`
`
`is little motion. Therefore, there is insufficient evidence to combine
`
`Goodman and Asada.
`
`Combining Goodman, Asada, and Fricke:
`
`36. A POSITA would not look to Fricke to solve problems related to
`
`motion-generated noise in Goodman and Asada because Asada deals
`
`with this problem directly. As explained previously, Asada uses a
`
`combination of methods to eliminate noise artifacts such as the second
`
`photodetector and “pusher” device, APL1005, Asada at pp. 32-33,
`
`Goodman does not exhibit motion-related problems as they have been
`
`“eliminated.” APL1007 at Col. 5, lns. 41 – 47. A POSITA would not
`
`look to Fricke for filtering to remove these problems as these problems
`
`do not exist in either Goodman or Asada. Accordingly, there is
`
`insufficient evidence to combine Goodman, Asada, and Fricke.
`
`Combining Goodman, Asada, Fricke, and Gupta
`
`37. As stated previously, a POSITA would not look to combine Asada and
`
`Gupta because Asada expressly teaches away from a device such as
`
`Gupta. Asada expressly states to NOT use a MEMS device. APL1005,
`
`Asada at pp. 32-33. Both Asada and the ADXL311 Rev A Datasheet
`
`are dated 2003 so this was a known technology from the same time of
`
`Asada. Thus, one would not look to Gupta to add a device to Asada
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 21
`
`
`
`that Asada specifically says will not work with the ring. Therefore,
`
`there is insufficient evidence to combine Goodman, Asada, Fricke, and
`
`Gupta.
`
`III. Summary of Opinions
`
`38.
`
`It is my opinion that the amended claims of the ’269 and ’830 patents
`
`are not anticipated by the prior art. It is also my opinion that the
`
`amended claims of the ’269 and ’830 patents are not obvious in light of
`
`the prior art identified by the Petitioners in their Oppositions to Patent
`
`Owner’s Motions to Amend, individually or in combination. It is
`
`further my opinion that a person of ordinary skill in the art would not
`
`be motivated to combine the prior art references as discussed herein.
`
`IV. STATEMENT UNDER U.S.C. SECTION 1001 OF TITLE 18
`
`I declare under penalty of perjury under the law of the United States that all
`
`statements made herein of my own knowledge are true and that all statements made
`
`on information and belief are believed to be true; and further that these statements
`
`were made with the knowledge that willful false statements and the like so made are
`
`punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
`
`United States Code.
`
`
`
`
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 22
`
`
`
`Executed this 28th day of December 2017 in Buffalo, New York.
`
`___________________________________
`Albert H. Titus, PhD.
`
`
`
`IPR2017-00317
`REPLY TO CONDITIONAL MOTION TO AMEND
`
`VALENCELL INC.
`EXHIBIT 2151 - PAGE 23
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
