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.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`
`
`
`PATENT OWNER’S CONDITIONAL
`MOTION 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
`
`i
`
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`TABLE OF CONTENTS
`I. STATEMENT OF RELIEF REQUESTED ……………………...1
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE
` OF THE CLAIMS .......................................................................... 2
`III. THE SPECIFICATION SUPPORTS THE NEW
`
`LIMITATIONS OF THE SUBSTITUTE CLAIMS ................... 5
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER
`
`THE PRIOR ART .................................................................... 10
`A. Summary of the Invention ......................................................... 10
`B. Claim Construction ................................................................... 13
`C. Level of Ordinary Skill in the Art ............................................. 14
`D. The Claim Amendments Overcome the Asserted Grounds of
`Patentability ..................................................................................... 14
`1. Closest Prior Art ..................................................................... 15
`a. Luo – 2008/0200774 (Ex. 2126) and Craw - 2008/0133699
`(Ex. 2127) .................................................................................. 15
`b. Hong - 2008/0132798 (Ex. 2128) ....................................... 17
`c. Amano - 6,081,742 (Ex. 2129) ........................................... 18
`d. Vetter - 2003/0065269 (Ex. 2130) ...................................... 19
`e. Verjus - 2003/0233051 (Ex. 2131) ..................................... 20
`f. Asada - Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors (Ex. 2132) ........................ 21
`g. Han - Development of a wearable health monitoring device
`with motion artifact reduced algorithm (Ex. 2133) .................. 21
`h. Comtois - A Comparative Evaluation . . . (Ex. 2134) ...... 22
`i. Kosuda - 2004/0186387 (Ex. 2135) .................................... 23
`2. Other Art ................................................................................ 24
`V. CONCLUSION ............................................................................ 25
`APPENDIX A: CLAIM LISTING ..................................................... 28
`
`
`
`
`ii
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`TABLE OF AUTHORITIES
`
`Cases
`Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 Decision
`Motion to Amend Claims, Paper 26, June 11, 2013 ......................... 7
`MasterImage 3D, Inc. v. RealD, Inc., Case No. IPR 2015-00040
`(Paper No. 42).................................................................................. 20
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016) ..... 7
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) ................................... 18
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) ........... 18
`Statutes
`35 U.S.C. § 316(d) ................................................................................ 6
`37 C.F.R. § 42.121(a)(2)(i) ................................................................... 7
`Rules
`37 C.F.R. § 42.100(b) ......................................................................... 18
`37 C.F.R. § 42.121 ................................................................................ 6
`37 C.F.R. § 42.121(a)-(b) ..................................................................... 7
`37 C.F.R. § 42.22(a)(2) ......................................................................... 6
`37 C.F.R. §§ 42.121(b)(1)-(2) ............................................................ 11
`
`
`
`
`
`
`
`iii
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`TABLE OF EXHIBITS
`
`Description
`
`U.S. Patent Application No. 14/184,364, now U.S. Patent No.
`8,886,269, original specification, claims, and figures.
`
`U.S. Patent Application No. 12/691,388, now U.S. Patent No.
`8,700,111, original specification, claims, and figures.
`
`Provisional Application No. 61/274,191, filed on August 14,
`2009, original specification, claims, and figures.
`
`Exhibit
`No.
`
`2107
`
`2108
`
`2109
`
`2110
`
`Declaration of Dr. Albert H. Titus
`
`2111
`
`2112
`
`2113
`
`2114
`
`2126
`
`2127
`
`2128
`
`2129
`
`U.S. Patent No. 8,886,269 to LeBoeuf et al., issued November
`11, 2014
`
`Provisional Application No. 61/208,567, filed on February 25,
`2009, original specification, claims, and figures.
`
`Provisional Application No. 61/208,574 filed on February 25,
`2009, original specification, claims, and figures.
`
`Provisional Application No. 61/212,444 filed on April 13,
`2009, original specification, claims, and figures.
`
`U.S. Patent Application Publication No. 2008/0200774 to Luo,
`published August 21, 2008
`
`U.S. Patent Application Publication No. 2008/0133699 to Craw
`et al., published June 5, 2008
`
`U.S. Patent Application Publication No. 2008/0132798 to
`Hong et al., published June 5, 2008
`
`U.S. Patent Number 6,081,742 to Amano et al., issued June 27,
`2000
`
`
`
`iv
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`2130
`
`2131
`
`2132
`
`2133
`
`2134
`
`U.S. Patent Application Publication No. 2003/0065269 to
`Vetter et al., published April 3, 2003
`
`U.S. Patent Application Publication No. 2003/0233051 to
`Verjus et al., published December 18, 2003
`
`Asada, H. et al. “Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors,” IEEE Engineering in
`Medicine and Biology Magazine, May/June 2003; pp. 28-40
`
`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)
`
`G. Comtois & Y. Mendelson, A Comparative Evaluation of
`Adaptive Noise Cancellation Algorithms for Minimizing
`Motion Artifacts in a Forehead-Mounted Wearable Pulse
`Oximeter, IEEE (2007)
`
`2135
`
`U.S. Patent Application Publication No. 2004/0186387 to
`Kosuda et al., published September 23, 2004
`
`
`
`v
`
`

`

`I.
`
`STATEMENT OF RELIEF REQUESTED
`Valencell, Inc. (“Valencell” or “Patent Owner”) moves under 37 C.F.R. §
`
`42.12, to amend the claims of U.S. Patent No. 8,886,269 (the “’269 Patent”) (Ex.
`
`2111) contingent on the outcome of the trial. If original claims 1-11 are found
`
`unpatentable, the Board is requested to cancel claims 1-11 and replace them with
`
`proposed substitute claims 12-22. See 37 C.F.R. § 42.22(a)(2); 35 U.S.C. § 316(d).
`
`The proposed substitute claims do not broaden the scope of the claims, and the
`
`disclosure supports each proposed amendment. 37 C.F.R. § 42.121. Moreover,
`
`Substitute Claim 12, which is proposed to replace original Independent Claim 1
`
`incorporates specific limitations that distinguish the substitute claim over the prior
`
`art. Similarly, substitute claims 14, 16, 20, and 21, which are proposed to replace
`
`Dependent Claims 3, 5, 9, and 10, also incorporate specific limitations. Substitute
`
`Claims 13 and 17 have been amended relative to original Dependent Claims 2 and
`
`6, respectively, to replace redundant subject matter now recited in Independent
`
`Claim 12, which does not broaden the claims. Additionally, Substitute Claims 15,
`
`18, 19, and 22, which are proposed to replace Dependent Claims 4, 7, 8, and 11,
`
`merely change dependency from original Claim 1 to Substitute Claim 12, and correct
`
`for antecedent basis. Patent Owner’s proposed amendments are responsive to a
`
`ground of unpatentability because trial was instituted on claims 1–11, and the
`
`1
`
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`proposed amendments are to claims 1-3, 5-6, and 9-10 with changes to dependency
`
`for claims 4, 7, 8, and 11. See 37 C.F.R. § 42.121(a)(2)(i).
`
`The references asserted in this Inter Partes Review, and all other references
`
`known to Valencell fail to anticipate or render the substitute claims obvious. See
`
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016). For the reasons
`
`set forth herein, Valencell has met its burden of establishing patentability of the
`
`substitute claims and respectfully requests that this motion to amend be granted. Idle
`
`Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 Decision Motion to Amend
`
`Claims, Paper 26, June 11, 2013.
`
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`
`THE CLAIMS
`Patent Owner’s claim listing is attached hereto as Appendix A. See 37 C.F.R.
`
`§ 42.121(a)-(b). Proposed substitute independent claim 12 includes all of the
`
`limitations of original independent claim 1, as well as several additional elements.
`
`In particular, substitute claim 12 retains or narrows all the limitations of claim 1, as
`
`shown below (proposed amendments underlined):
`
`12. (Substitute for original claim 1, if found unpatentable) A monitoring
`device, comprising:
`a band and light-guiding structure configured to at least partially
`
`encircle a portion of the body limb of a subject, the band
`
`and light-guiding structure comprising:
`a generally cylindrical outer body portion and a generally
`cylindrical inner body portion secured together in
`
`
`
`2
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`concentric relationship, the inner body portion comprising
`light transmissive material, and having outer and inner
`surface;
`a layer of cladding material near the inner body portion inner
`surface; and
`at least one window formed in the cladding material that serves
`as a light-guiding interface to the body of the subject; and
`a base comprising at least one optical emitter and at least one
`optical detector attached to the band and light-guiding
`structure;
`a signal processor configured to (i) receive and process signals
`produced by the at least one optical detector and a motion
`sensor
`to extract physiological and motion-related
`information, (ii) reduce motion artifacts by removing
`frequency bands from the signals that are outside of a
`range of interest using at least one band-pass filter to
`produce pre-conditioned signals and (iii) generate parsed
`output data by executing one or more processing methods
`to provide information that is fed into a multiplexed output
`serial data
`string comprising motion-related and
`physiological information;
`in optical
`is
`wherein
`the
`light
`transmissive material
`communication with the at least one optical emitter and
`the at least one optical detector and is configured to deliver
`light from the at least one optical emitter to one or more
`locations of the body of the subject via the at least one
`window and to collect light from one or more locations of
`the body of the subject via the at least one window and
`deliver the collected light to the at least one optical
`detector.
`Substitute claim 12 narrows a band to be limited to a band and light-guiding
`
`structure. In addition, substitute claim 12 is further limited to encircling a “limb,”
`
`
`
`3
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`which narrows the claim from the monitoring device encircling “a portion of the
`
`body” to a specific embodiment. Moreover, claim 12 includes the additional
`
`limitation of “a base” “comprising of at least one optical emitter and at least one
`
`optical detector attached the band and light-guiding structure.” Claim 12 further
`
`requires a “signal processor” “configured to (i) receive and process signals produced
`
`by the at least one optical detector and a motion sensor to extract physiological and
`
`motion-related information, (ii) reduce motion artifacts by removing frequency
`
`bands from the signals that are outside of a range of interest using at least one band-
`
`pass filter to produce pre-conditioned signals and (iii) generate parsed output data
`
`by executing one or more processing methods to provide information that is fed into
`
`a multiplexed output serial data string comprising motion-related and physiological
`
`information.” These limitations collectively narrow the claim as a whole.
`
`Each of dependent claims 13-22 incorporates the new limitations by virtue of
`
`their dependence from substitute claim 12. In addition, dependent Claim 13 has been
`
`amended relative to original claim 2 to replace redundant subject matter now recited
`
`in independent claim 12, with a recitation of specific embodiment, narrowing the
`
`band and light-guiding structure to be limited to a watch. Similarly, claim 17 has
`
`also been amended relative to claim 6 to replace redundant subject matter now
`
`recited in independent claim 12, with a recitation of a specific limitation with respect
`
`to the optical emitters. Specifically, claim 17 requires “the first and second optical
`
`
`
`4
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`emitters [to] emit infra-red light” and “the third and fourth optical emitters [to] emit
`
`visible light.” Moreover, substitute claims 14, 20, and 21 include the specific
`
`limitation of a “light-guiding structure.” Likewise, substitute claim 16 includes the
`
`specific limitation of the monitoring device comprising of a “first, second, third, and
`
`fourth optical emitters.”
`
`Substitute dependent claims 15, 18, 19, and 22 retain or narrow all of the
`
`limitations of original claims 4, 7, 8, and 11, respectively, and further include the
`
`additional limitations of independent claim 12, by virtue of their dependency. Thus,
`
`the scope of claims 15, 18, 19, and 22 is narrower than the scope of each
`
`corresponding original claim.
`
`Because the scope of substitute claims 12-22 are narrower than the scope of
`
`each corresponding original claim, the substitute claims do not enlarge the scope of
`
`the patent.
`
`III. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS
`Each of the proposed substitute claims are supported by the original disclosure
`
`of the ’269 Patent (Exhibit 2107), as well as the original disclosure of the parent
`
`application, Application No. 12/691,388, now U.S. Patent No. 8,700,111 (filed Jan.
`
`21, 2010, the “’111 Application”) (Exhibit 2108), the priority provisional
`
`application, Application No. 61/208,567 (filed on Feb. 25, 2009, the “567 Prov.
`
`Application”) (Exhibit 2112), the priority provisional application, Application No.
`5
`
`
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`61/208,574 (filed on Feb. 25, 2009, the “574 Prov. Application) (Exhibit 2113), the
`
`priority provisional application, Application No. 61/212,444 (filed on Apr. 13,
`
`2009, the “444 Prov. Application”) (Exhibit 2114), and the priority provisional
`
`application, Application No. 61/274,191 (filed on Aug. 14, 2009, the “191 Prov.
`
`Application”) (Exhibit 2109). 37 C.F.R. §§ 42.121(b)(1)-(2).
`
`For the Board’s convenience, the changes in proposed substitute claims,
`
`relative to the original claims are shown in the chart below with underling and strike-
`
`through (a full claim list is provided in the appendix). Support for the proposed
`
`substitute claims and each new element is provided below with reference to the
`
`original ’269 Application, the’111 Application, 567 Provisional Application, 574
`
`Provisional Application, 444 Provisional Application and the 191 Provisional
`
`Application.
`
`Element
`Substitute Claim 12
`A monitoring device, comprising:
`
`structure
`light-guiding
`and
`a band
`configured to at least partially encircle a
`portion of the body limb of a subject, the
`band
`and
`light-guiding
`structure
`comprising:
`
`Exemplary Support1
`
`
`’269 Application 9:3-6
`’111 Application pg. 9, at lines 1-4 of
`the first full paragraph.
`’269 Application 8:12-15
`’269 Application 17:26-29
`’111 Application pg. 8, at lines 1-4 of
`the second full paragraph.
`’111 Application pg. 17, at lines 6-9 of
`the first full paragraph.
`
`
`1 The notation, XX:YY-YY and XX:YY-XX:YY, cites the written description of the
`exemplary support at XX page and YY lines.
`6
`
`
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`567 Provisional Application 59:4-7
`191 Provisional Application 2:33-3:3
`’269 Application 42:27-31
`’269 Application 43:11-13
`’111 Application pg. 42, at lines 5-9 of
`the second full paragraph.
`’111 Application pg. 43, at lines 1-3 of
`the second full paragraph.
`’269 Application 43:17-20
`’111 Application p. 43, at lines 1-4 of
`the third full paragraph.
`’269 Application 43:28-29
`’111 Application p. 43, at lines 1-2 of
`the fourth full paragraph.
`’269 Application 8:12-15
`’269 Application 43:5-10
`’111 Application p. 8, at lines 1-4 of
`the second full paragraph.
`’111 Application p. 43, at lines 1-6 of
`the first full paragraph.
`’269 Application 5:33-6:4
`’269 Application 6:10-16
`’269 Application 9:27-30
`’269 Application 39:4-19
`’269 Application 39:27-40:2
`’269 Application Fig. 16
`’111 Application pg. 5, at lines 1-3 of
`the fifth paragraph continuing on to pg.
`6, at lines 1-4.
`’111 Application pg. 6, at lines 6-13 of
`the first full paragraph.
`’111 Application pg. 9, at lines 1-4 of
`the fourth full paragraph.
`’111 Application pg. 39, at lines 1-18
`of the first full paragraph
`’111 Application pg. 39, at lines 8-13
`of the second full paragraph continuing
`
`a generally cylindrical outer body portion
`and a generally cylindrical inner body
`portion secured
`together
`in concentric
`relationship,
`the
`inner body portion
`comprising light transmissive material, and
`having outer and inner surface;
`a layer of cladding material near the inner
`body portion inner surface; and
`
`at least one window formed in the cladding
`material that serves as a light-guiding
`interface to the body of the subject; and
`a base comprising at least one optical
`emitter and at least one optical detector
`attached to the band and light-guiding
`structure;
`
`a signal processor configured to (i) receive
`and process signals produced by the at least
`one optical detector and a motion sensor to
`extract physiological and motion-related
`information, (ii) reduce motion artifacts by
`removing frequency bands from the signals
`that are outside of a range of interest using
`at least one band-pass filter to produce
`pre-conditioned signals and (iii) generate
`parsed output data by executing one or more
`processing methods to provide information
`that is fed into a multiplexed output serial
`data string comprising motion-related and
`physiological information;
`
`
`
`7
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`at lines 1-3 of the third paragraph of
`pg. 39 and continuing on to pg. 40, at
`line 1.
`’111 Application Fig. 16
`191 Provisional Application 7:13-17
`191 Provisional Application 3:6-8
`191 Provisional Application 27:27-28:6
`191 Provisional Application 28:13-22
`191 Provisional Application 30:14-17
`’269 Application 9:6-10
`’269 Application 24:27-31
`’111 Application pg. 9, at lines 1-8 of
`the first full paragraph.
`’111 Application pg. 24, at lines 5-9 of
`the third full paragraph.
`
`
`
`574 Provisional Application 45:11-15
`
`444 Provisional Application 3:10-13
`
`
`’269 Application 3:31-34
`’269 Application 8:12-15
`’111 Application pg. 3, at lines 1-4 of
`the fourth full paragraph.
`’111 Application p. 8, at lines 1-4 of
`the second full paragraph.
`
`
`wherein the light transmissive material is in
`optical communication with the at least one
`optical emitter and the at least one optical
`detector and is configured to deliver light
`from the at least one optical emitter to one
`or more locations of the body of the subject
`via the at least one window and to collect
`light from one or more locations of the body
`of the subject via the at least one window
`and deliver the collected light to the at least
`one optical detector.
`Substitute Claim 13
`The monitoring device of claim 1, wherein
`the portion of the body comprises a limb, a
`nose, an earlobe, and/or a digit. The
`monitoring device of claim 1 12, wherein
`the band and
`light-guiding
`structure
`comprises a watch.
`Substitute Claim 14
`The monitoring device of claim 1 12,
`wherein the band and light-guiding structure
`comprises a
`lens
`region
`in optical
`communication with the at least one optical
`emitter that focuses light emitted by the at
`least one optical emitter.
`Substitute Claim 16
`
`
`
`8
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`’269 Application Fig. 12B
`’111 Application Fig. 12B
`191 Provisional Application Figs. 4&5
`’269 Application 33:13-14
`’269 Application 44:10
`’269 Application Fig. 8B
`’111 Application pg. 33, at lines 1-2 of
`the second full paragraph.
`’111 Application pg. 44, at lines 1-2 of
`the second full paragraph.
`’111 Application Fig. 8B
`191 Provisional Application Figs. 6&7
`’269 Application 34:19-29
`
`’111 Application p. 34, at lines 8-20 of
`the first full paragraph.
`
`
`’269 Application 44:10-11
`
`’111 Application pg. 44, at lines 1-2 of
`the second full paragraph.
`
`191 Provisional Application 30:5-11
`
`
`’269 Application 2:26-28
`’111 Application pg. 2, at lines 13-15
`of the second full paragraph.
`191 Provisional Application 6:8-10
`
`The monitoring device of claim 4 15,
`wherein the at least one optical detector
`comprises first and second optical detectors;
`wherein the at least one optical emitter
`comprises first, second, third, and fourth
`optical emitters;
`
`and further comprising a signal processor,
`and wherein at least a portion of light
`reflected by the light reflective material and
`detected by the second optical detector is
`processed by the signal processor as a noise
`reference for attenuating motion noise from
`signals produced by
`the first optical
`detector.
`Substitute Claim 17
`The monitoring device of claim 1, further
`comprising a signal processor configured to
`receive and process signals produced by the
`at least one optical detector. The monitoring
`device of claim 5 16, wherein the first and
`second optical emitters emit infra-red light
`and the third and fourth optical emitters emit
`visible light.
`Substitute Claim 20
`The monitoring device of claim 1 12,
`wherein the band and light-guiding structure
`further comprises at least one optical filter
`configured to selectively pass at least one
`optical wavelength
`
`
`
`
`9
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`’269 Application 45:27-33
`
`’111 Application pg. 45, at 2-9 of the
`fourth full paragraph.
`
`Substitute Claim 21
`The monitoring device of claim 1 12,
`wherein the band and light-guiding structure
`further comprises at least one optical filter
`configured to selectively pass at least one
`optical wavelength for transmission into the
`body of the subject.
`
`
`
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE
`
`PRIOR ART
`A.
`Summary of the Invention
`The ’269 Patent, entitled “Wearable Light-Guiding Bands for Physiological
`
`Monitoring,” relates to an apparatus having an improved configuration for
`
`physiological monitoring. Ex. 2111, Field of the Invention, 1:19-21. In particular,
`
`the ’269 Patent discloses a novel monitoring device including a band and light-
`
`guiding structure capable of encircling a portion of the body. Id. at Abstract; Col.
`
`11, lns. 49-54. A light-guiding structure to be used on limb is described below:
`
`
`
`Id. The band includes a particular arrangement of light transmissive material in
`
`optical communication with an attached optical emitter and optical detector, the
`
`light-guiding structure, and is configured to effectively deliver light from the optical
`
`emitter at least one location of the subject’s body and to collect light from at least
`
`
`
`10
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`one location of the subject’s body and deliver the collected light to the optical
`
`detector. Id. at Col. 30, Lns. 30-53. The monitoring device band and light-guiding
`
`structure has a particularly claimed arrangement of a window formed in the cladding
`
`material that serves as a light-guiding interface to the subject’s body. Id.
`
`As shown in Figs. 22A-B, “the base 50 supports an optical emitter 24, an
`
`optical detector 26, and an optical noise detector 26′.” Id., at Col. 28, Lns. 11-17.
`
`The inner body portion 74 includes light transmissive material such as silicone that
`
`can deform when a finger is inserted therethrough. Id., at Col. 28, Lns. 18-25.
`
`A layer of cladding material 21 is applied to (or near) the outer surface 74a of
`
`the inner body portion and a layer of cladding material 21 is applied to (or near) the
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`inner surface 74b of the inner body portion to define a light-guiding region 19. Id.,
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`at Col. 28, Lns. 26-30. As such, the inner body portion serves as a light guide that
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`delivers light from the optical emitter to the subject’s finger F at one or more
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`predetermined locations and that collects light from the finger and delivers the
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`collected light to the optical detectors. Id., at Col. 28, Lns. 30-34.
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`As shown, windows 74w are formed in the cladding material and serve as
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`light-guiding interfaces to the finger. Id., at Col. 28, Lns. 40-42. Though there may
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`be any number of these windows, as may be required for sufficient optical coupling,
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`and the windows may include lenses 74wL to focus light emitted by the optical
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`emitter onto one or more portions of a finger and/or to focus collected light on the
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`light detectors. Id., at Col. 28, Lns. 42-48. Similarly, the windows may include
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`optical filters 74wF to selectively pass one or more optical wavelengths and reflect
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`and/or absorb other optical wavelengths. Id., at Col. 28, Lns. 48-50.
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`The ‘269 Patent also discloses a novel way to process the physiological and
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`motion-related information gathered by the sensors to reduce motion artifacts.
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`Signals are collected from a motion sensor and an optical detector. Pre-processing
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`filtering of these signals is performed by the processor. The pre-processing filtering
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`includes band-pass type filtering such as low-pass and high-pass filters. Once this
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`filtering has been completed, the signals are processed using adaptive filtering.
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`These method steps are disclosed in the ‘269 Patent as follows:
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`The first block (block 510) represents the pre-adaptive signal
`conditioning stage. This process may utilize a combination of filters to
`remove frequency bands outside the range of interest. For example, a
`combination of band-pass, low-pass, and/or high-pass filters (such as
`digital filters) may be used. The second block (block 520) represents an
`adaptive filtering process such as the process 200 described in FIG. 13.
`This process may utilize the pre-conditioned signals from block 510 as
`inputs into an adaptive filter that reduces motion or environmental
`artifacts and noise in the primary data channel. The third block (block
`530) represents the parameter extraction stage. This process may utilize
`a combination of signal conditioning filters in addition to peak finding
`(such as beat finding) algorithms to calculate properties of interest (e.g.
`heart rate, blood flow, heart rate variability, respiration rate, blood
`gas/analyte level, and the like). Id., at Col. 25, Lns. 41-57.
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`After the adaptive filtering has been completed, the processor extracts the
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`physiological and motion-related information. This information is then processed
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`U.S. Patent No. 8,886,269
`into a digital data string. A processor/multiplexor then generates an output data,
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`including serial data output as described below:
`
`a
`the detectors 26 may be processed by
`from
`Data
`processor/multiplexer 602 to generate multiple data outputs 604 in a
`serial format at the output 606 of the processor 602. In some
`embodiments, the processing methods may involve one or more of the
`methods described in FIGS. 13, 14A-14D, 15 and 16. The multiple data
`outputs 604 may be generated by the processor/multiplexer 602 by time
`division multiplexing or the like. The processor 602 may execute one
`or more serial processing methods, wherein the outputs of a plurality of
`processing steps may provide information that is fed into the
`multiplexed data outputs 604. Id., at Col. 25, Ln. 57 – Col. 26, Ln. 10.
`
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
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`reasonable interpretation in light of the specification of the patent in which they
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`appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131,
`
`2144–46 (2016). In applying a broadest reasonable interpretation, claim terms
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`generally are given their ordinary and customary meaning, as would be understood
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`by one of ordinary skill in the art in the context of the entire disclosure. See In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition
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`for a claim term must be set forth in the specification with reasonable clarity,
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
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`Patent Owner contends that no additional claim terms need construction
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`beyond the terms previously construed by the Board in its Decision to Institute
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`Proceeding (Paper 7).
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`U.S. Patent No. 8,886,269
`
`Level of Ordinary Skill in the Art
`C.
`Valencell does not take issue with the level of ordinary skill in the art as set
`
`forth by Petitioner, as explained in the declaration of Brian Anthony (Ex. 1003, ¶
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`25), i.e., a person of ordinary skill in the art (“POSITA”) would have had (i) at least
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`a four-year degree in electrical engineering, mechanical engineering, biomedical
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`engineering, optical engineering, or related field of study, or equivalent experience,
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`and at least two years of experience in academia or industry studying or developing
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`physiological monitoring devices such as non-invasive optical biosensors and (ii)
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`would also be familiar with optical system design and signal processing.
`
`D. The Claim Amendments Overcome the Asserted Grounds of
`Patentability
`
`Patent Owner has reviewed the prior art of which it is aware, including the
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`prior art of record in the ’269 Patent, the prior art cited in this proceeding
`
`(whether forming the basis for institution or not), and in the prosecution of the
`
`application that led to the issuance of the ‘269 Patent. Additionally, Patent Owner
`
`has reviewed the prior art of record in co-pending proceedings for additional Patent
`
`Owner patents, U.S. Patent Nos. 8,989,830 (IPR2017-00317); U.S. Patent Nos.
`
`8,929,965 (IPR2017-00315); and 8,923,941 (IPR2017-00319 and IPR2017-00321)
`
`(whether forming the basis for institution or not); prior art of record in the
`
`prosecutions of the additional Patent Owner patents; prior art identified in patent
`
`applications related to the Patent Owner patents; and prior art identified in the
`
`
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`U.S. Patent No. 8,886,269
`concurrent patent infringement litigation. Provided below is discussion of what
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`Patent Owner believes to be the most relevant prior art.
`
`Closest Prior Art
`1.
`“Prior art of record” refers to “any material art in the prosecution history of
`
`the patent… in the current proceeding… and in any other proceeding before the
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`Office involving the patent.” MasterImage 3D, Inc. v. RealD, Inc., Case No. IPR
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`2015-00040 (Paper No. 42). Patent Owner submits that the prior art does not
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`anticipate or render obvious the Substitute Claims. The prior art does not disclose a
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`signal processor configured to (i) receive and process signals produced by the at least
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`one optical detector and a motion sensor to extract physiological and motion-related
`
`information, (ii) reduce motion artifacts by removing frequency bands from the
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`signals that are outside of a range of interest using at least one band-pass filter to
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`produce pre-conditioned signals and (iii) generate parsed output data by executing
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`one or more processing methods to provide information that is fed into a multiplexed
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`output serial data string comprising motion-related and physiological information.
`
`Without conceding that any prior art approach anticipates or renders obvious the
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`Substitute Claims, the material art of record includes:
`
`Luo – 2008/0200774 (Ex. 2126) and Craw - 2008/0133699
`(Ex. 2127)
`
`a.
`
`
`Lou does not disclose, teach, or