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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC. and FITBIT, INC.
`Petitioner
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`v.
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`VALENCELL, INC.
`Patent Owner
`____________
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`Case IPR2017-003181
`U.S. Patent No. 8,886,269
`__________________
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`PETITIONER APPLE INC.’S SUR-REPLY TO
`PATENT OWNER’S CONDITIONAL MOTION TO AMEND
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1 Case IPR2017-01554 has been joined with this proceeding.
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`
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`I.
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`Introduction
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`Petitioner Apple Inc. opposed Valencell’s (“PO”) Conditional Motion to
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`Amend (“MTA”) because substitute claims 12-21 are unpatentable under 35
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`U.S.C. § 112 and 35 U.S.C. § 103. PO’s Reply in Support of its Conditional MTA
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`(“PO MTA Reply”) provides unpersuasive arguments that misrepresent Asada,
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`Swedlow, Goodman, and Gupta’s teachings to argue that a POSA would not be
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`motivated to combine these references. Thus, as demonstrated in Petitioner’s
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`Opposition (“Pet’r Oppo.”), the Board should deny the MTA.
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`II.
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`Substitute Claims 12-21 Lack Written Description Support
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`Petitioner demonstrated in its Opposition that there was no written
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`description support in the ’269 patent for a band-pass filter that, itself, reduces
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`motion artifacts by removing frequency bands from signals produced by a motion
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`sensor, as recited in substitute claim 12. (Pet’r Oppo., 1-2.) PO argues that
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`Petitioner and its expert misunderstood the claim, and that the claim as properly
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`understood is supported by the specification. (PO MTA Reply, 1.) However, PO’s
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`arguments further muddy the waters, as PO states that “reduction of motion
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`artifacts is done, in part, by the processor producing pre-conditioned signals
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`through the removal of frequency bands outside the range of interest.” (Id., 2.) PO
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`goes on to state that “[p]re-conditioned signals are utilized by the processor to
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`reduce motion artifacts and those pre-conditioned signals are configured by using
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`band-pass filters on the signals.” (Id.) Thus, it is unclear whether PO is arguing that
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`the processor is removing frequency bands outside the range of interest, the band-
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`pass filters are removing frequency bands outside the range of interest, or both are
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`removing frequency bands. In any case, PO’s argument fails because the claim is
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`clear that the band-pass filter is removing frequency bands from a signal, and that
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`signal must be produced by a motion sensor. As Petitioner demonstrated in its
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`Opposition, this is not supported by the ’269 patent and therefore claim 12 and all
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`of its dependent claims are unpatentable under 35 U.S.C. § 112.
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`Furthermore, to the extent that PO now explains how a portion of the ’269
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`patent allegedly provides written description support, this is too little, too late. PO
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`had the burden to demonstrate written description support in its MTA. Indeed,
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`PO’s expert testified that for his declaration supporting PO’s MTA, he was not
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`asked to provide an opinion as to whether this feature–or any feature for that
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`matter–had written description support. (APL1100, 183:17-24 (“I don’t believe I
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`was asked to do that.”).)
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`III. Substitute Claims 12-21 are Indefinite
`PO contends that substitute claim 12 states that the goal of the processor is
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`to extract physiological and motion-related information and that the same
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`information is parsed into the output data. PO therefore alleges that there is no
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`ambiguity as to the meaning of physiological and motion-related information in
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`U.S. Patent No. 8,886,269
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`step (iii) of claim 12. (PO MTA Reply, 2-3.)
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`However, claim 12 does not state that the “same” physiological and motion-
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`related information is used in step (i) and step (iii). The phrase “motion-related and
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`physiological information” in step (iii) is not preceded by any indication, such as
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`“the” or “the same,” that would indicate that the “motion-related and physiological
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`information” of step (iii) is the same as that of step (i). Rather, the “motion-related
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`and physiological information” of step (iii) could be the same as in step (i), or it
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`could be different. For example, the claim includes other types of “motion-related
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`and physiological information,” such as the “signals” of step (i), the “pre-
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`conditioned signals” of step (ii), the “motion artifacts” of step (ii), and
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`“information” of step (iii). Thus, “motion-related and physiological information” in
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`step (iii) could be referring to any of these, or some other form of motion-related
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`and physiological information not even mentioned in the claim. Accordingly, a
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`POSA would not understand the scope of the claim and so the claim is indefinite.
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`IV. A POSA Would Be Motivated to Combine Asada and Swedlow
`PO alleges that there would be no motivation to combine Asada and
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`Swedlow. (PO MTA Reply, 5-7.) PO is wrong. PO’s flawed position is premised
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`on the allegation that “NO WHERE in Asada is a problem with disconnection or
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`comfort discussed.” (PO MTA Reply, 6 (emphasis original).) Yet Asada
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`recognizes that comfort of its ring sensor is an important design consideration.
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`U.S. Patent No. 8,886,269
`(Pet’r Oppo., 4 (citing APL1005, pp. 29-30, 36).) Given this recognition of
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`comfort as a design consideration, a POSA would have been motivated to look for
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`approaches to improve comfort and would have been motivated to combine Asada
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`and Swedlow, as explained in Petitioner’s Opposition. (Pet’r Oppo., 4.) Petitioner
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`also identified that a POSA would combine Asada and Swedlow to increase
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`reliability and decrease cost–motivations that PO’s reply did not address. (Id.)
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`PO also alleges that “NEITHER Asada or Swedlow discuss ‘etched wires’
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`nor use this phrase” to support its view that a POSA would not be motivated to
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`combine Asada and Swedlow. (PO MTA Reply, 6 (emphasis original).) However,
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`the Opposition demonstrated that Swedlow uses a flexible substrate and explained
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`the simplicity of using etched wires to carry electrical signals for the photodetector
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`and LEDs. (Pet’r Oppo., 4.) Whether the specific phrase “etched wires” occurs
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`within Asada or Swedlow is of no import. A POSA would understand that “etched
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`wires” are compatible with the flexible substrate of Swedlow, as corroborated by
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`Awazu. (Id.)
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`V. A POSA Would Be Motivated to Combine Asada and Gupta
`PO argues that a POSA would not combine Asada and Gupta because
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`“Asada expressly teaches away from a device such as Gupta and teaches away
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`from the specific Gupta impact sensor.” (PO MTA Reply, 9 (emphasis original).)
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`PO has the burden of production to prove a teaching away. See RICOH Co. v.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`Quanta Computer Inc., 550 F.3d 1325, 1331-32 (Fed. Cir. 2009); Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). PO
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`has not met this burden.
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`PO provides no evidence that Asada disparages the devices disclosed by
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`Gupta. PO merely offers an unsupported statement by its expert that Asada teaches
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`away. This is not enough to show a teaching away. The Federal Circuit has stated:
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`“The prior art’s mere disclosure of more than one alternative does not constitute a
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`teaching away from any of these alternatives because such disclosure does not
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`criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391
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`F.3d 1195, 1201 (Fed. Cir. 2004).
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`More importantly, the Opposition was not seeking to combine the elements
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`of Gupta with Asada, but rather to process the pulse-signal and motion signal in
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`Asada to detect a patient’s heart rate and impacts indicating that the patient has
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`fallen over, as taught by Gupta. (Pet’r Oppo., 6-7.) Thus, PO’s argument misses the
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`mark, and a POSA would be motivated to combine Asada and Gupta.
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`VI. A POSA Would Be Motivated to Combine Asada and Goodman
`PO alleges that a POSA would not combine Goodman with Asada because
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`Goodman’s stated purpose is to prevent motion artifacts. (PO MTA Reply, 10-11.)
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`PO’s analysis is backwards. It is because Goodman is concerned with preventing
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`motion artifacts that a POSA reviewing Goodman would be led to other references,
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`U.S. Patent No. 8,886,269
`such as Asada, that are also concerned with preventing motion artifacts. (Pet’r
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`Oppo., 14; APL1103, ¶70.) Asada focuses on concerns with motion artifacts and
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`how to reduce those artifacts, including devoting an entire section “Techniques for
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`Reduced Motion Artifacts” that discusses approaches to motion artifact reduction
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`that are applicable to all types of sensors and not constrained by the physical
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`characteristics of the Asada prototypes. (APL1005, 30-31.)
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`PO seeks to bolster its position by arguing that “Goodman does not exhibit
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`any problems due to motion.” (PO MTA Reply, 11.) This statement is incorrect
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`and misleading. There are many forms of motion artifacts, and PO’s statement only
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`addresses one type of artifact associated with a particular embodiment of
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`Goodman. Goodman was primarily focused on one form of motion artifact
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`attributable to relative motion of the sensor to the body part that is affixed to. In
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`one embodiment, where an adhesive is used to fasten the sensor to a body part,
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`Goodman contends that motion artifacts attributable to relative motion of the
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`sensor to the body part that it is affixed to are eliminated. (APL1007, 5:30-47.)
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`However, non-adhesive embodiments are also discussed, including using gauze to
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`hold the sensor to a baby’s hand, that would not remove all motion artifacts
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`attributable to relative motion of the sensor to the body part. (APL1007, 4:55-58,
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`5:48-55.) Even Valencell’s expert reluctantly recognized that there are other types
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`of motion artifacts, such as those caused by patient motion: “if there are other
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`motion artifacts that it [Goodman sensor] is not intended for, we don’t know what
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`its result will be.” (APL1100, 139:19-140:3.) Thus, a POSA reading Goodman
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`would continue to recognize the need to reduce motion artifacts and look to
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`references such as Asada to address this concern.
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`PO attempts to augment its argument by stating that Goodman is intended
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`for patients who are primarily bed-ridden. (PO MTA Reply, 11.) PO contends that
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`a POSA would not combine Goodman with Asada to solve motion problems for a
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`device that is intended for people with little motion. (Id.) By PO’s own admission,
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`the patients would have some movement. PO notes that Goodman’s sensors are for
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`patients who are “primarily bed-ridden,” thus confessing there would be motion
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`when they are not bed-ridden. Additionally, PO acknowledged that there would be
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`“little motion.” (Id.) Thus, some motion and motion artifacts would result.
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` Furthermore, even a bed-ridden patient would have motion of the body part
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`with the Goodman sensor attached, for example, hand movement for eating or
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`therapy. Additionally, patients may be moved for different treatment or tests,
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`which would also result in patient motion. They also may be moved simply to
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`change bedding. Thus, because Goodman is concerned with motion artifacts and
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`not all motion artifacts are eliminated, a POSA would be motivated to apply other
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`motion artifact removal techniques, such as those disclosed by Asada, to the
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`devices of Goodman to improve performance and measurement quality.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
`
`
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`
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Attorney for Petitioner Apple Inc.
`
`Date: January 12, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 8 -
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`CERTIFICATION OF SERVICE (37 C.F.R. §§42.6(e))
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`The undersigned hereby certifies that a true and correct copy of the above-
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`captioned PETITIONER APPLE INC.’S SUR-REPLY TO PATENT
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`OWNER’S CONDITIONAL MOTION TO AMEND was served electronically
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`via email in its entirety on January 12, 2018 on the following:
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`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`Date: January 12, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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