`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com
`T. William Kennedy (bkennedy@bcpc-law.com)
`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
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`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. 8,886,2691
`
`
`PATENT OWNER’S MOTION FOR OBSERVATION ON CROSS-
`EXAMINATION OF REPLY DECLARANT BRIAN W. ANTHONY
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`
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`1 This proceeding is joined with IPR2017-01554.
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`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`I. OBSERVATIONS
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`Patent Owner submits the following observations on the December 20, 2017,
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`cross-examination of Petitioner’s reply declarant, Dr. Brian W. Anthony. The
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`transcript of Dr. Anthony’s December 20, 2017, deposition filed as Ex. 2150 (“Dec.
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`20 Tr.”), which includes testimony for both IPR2017-00317 and IPR2017-00318.
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`Observation 1:
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`
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`In Dec. 20 Tr., on page 173, line 6 through page 174, line 20, Dr. Anthony
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`testified as follows:
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`Q. So in your opinion what is element 7? Is it microcomputer? Is it a
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`CPU? Is it a signal processor? Because you've labeled it as all three of
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`those things.
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`A. It's performing processing. So those are largely interchangeable.
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`Said a processing unit, microprocessor, a signal processor -- a CPU can
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`process signals. A microprocessor can process signals. I was, I guess,
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`maybe a little – using those -- the broader terms of them being able to
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`process signals.
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`Q. And it's still your opinion that that element 7 is not Velcro.
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`A. As I labeled here, it's a microcomputer, CPU, signal processor.
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`Q. What is element 1 in Figure 11?
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`A. Drawing the direct analog I had with Swedlow, could be the
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`adhesive connecting it to the rest of the base, representative of the rest
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`of the base to which the -- the rest of the ring to which this is coming
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`from. 2
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`This testimony is relevant to Dr. Anthony’s credibility relating to his identification
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`of the components of Fig. 11 of Asada at pages 13-16 of the -318 Reply. This
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`testimony is relevant because it shows Dr. Asada’s inconsistent identification of the
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`elements of Fig. 11; moreover, in his prior deposition, Dr. Anthony identified
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`element 1 as “biocompatible elastic material” instead of an “adhesive” as he called
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`it in this deposition. -318 IPR, Ex. 2010 at 133:10-12.
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`Observation 2:
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`In Dec. 20 Tr., on page 163, lines 9-19, Dr. Anthony testified as follows:
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`Q. We talked a lot in your prior deposition about the identification -- or
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`lack thereof -- of the enumerated elements in Figure 11.
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`Do you remember that?
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`A. I do.
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`Q. And then after your deposition, after your two depositions in
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`September, did you communicate with Doctor Asada to try to determine
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`what the components in Figure 11 are?
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`A. I did not. I felt I knew what the components were as I had labeled
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`them here.
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`2 For brevity and clarity, objections from counsel have been omitted, without
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`notation, from the deposition excerpts in this paper.
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`3
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`This testimony is relevant to show Petitioner’s and Dr. Anthony’s credibility relating
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`to their identification of the components of Fig. 11 of Asada at pages 13-16 of the
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`-318 Reply. This testimony is relevant because it shows Dr. Anthony’s willful
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`blindness to the facts of Asada’s Fig. 11, despite having those facts readily available
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`to him.
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`Observation 3:
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`In Dec. 20 Tr., on page 115, line 8 through page 118, line 5, Dr. Anthony
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`testified as follows:
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`Q. And Doctor Asada is in the same department with you at MIT;
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`correct?
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`A. Correct. He's in the department of mechanical engineering, which is
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`one of the departments I'm appointed in.
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`Q. Did you walk down to Doctor Asada's office and ask him why a
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`tethered version of prototype B was required?
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`A. I did not, and I believe you asked that in my earlier deposition. I
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`didn't feel a person skilled in the art would need to go talk to Doctor
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`Asada to understand his paper here.
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`Q. Well, you're -- you're just guessing at a reason why, and the actual
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`source of the information is a colleague of -- of yours, and you just
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`decided not to go ask him for that information?
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`A. I was asked to form my own opinion. I didn't feel it was necessary.
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`My -- what a person skilled in the art would have understood from this
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`was as covered in here.
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`***
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`4
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`Q. So after your deposition – since September you didn't take the
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`opportunity to go speak to Doctor Asada about this reference in
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`figuring out.
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`A. I -- I have not.
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`Q. And why is that?
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`A. Didn't feel it was necessary.
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`Q. And -- and you testified in your prior depositions that you introduced
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`Apple's counsel to Doctor Asada via email; correct?
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`A. That was correct.
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`This testimony is relevant to Petitioner’s attempt to discredit Patent Owner’s
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`argument that the wireless device of Asada was prohibited from use in a hospital
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`environment at page 27 of the -317 Reply and page 28 of the -318 Reply. 3 This
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`testimony is relevant because it shows Dr. Anthony’s willful blindness to the actual
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`facts of Asada, and because it shows that Petitioner’s counsel had access to the facts
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`of Asada and chose not to supply those facts in this proceeding and instead relied on
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`assumptions from Dr. Anthony.
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`Observation 4:
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`In Dec. 20 Tr., on page 164, lines 6-22, Dr. Anthony testified as follows:
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`Q. What relational information is added by the dashed rectangle shown
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`in light transmissive layer 3, in your opinion?
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`3 For ease of cross-referencing between the IPR2017-00317 and -00318, Patent
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`Owner has included citations to both matters, where applicable.
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`5
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`U.S. Pat. No. 8,886,269
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`A. (Witness reviews document.) So the – the dashed rectangles on layer
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`3, the light transmissive material, are showing the projection of how the
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`-- when assembled -- the windows would be -- overtop the light
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`transmissive material.
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`Q. But that relational information is already conveyed by the vertical
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`dashed lines in Figure 11, correct?
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`A. That entire box is showing how they would be assembled and
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`projected down. So -- so I think, as I've stated here, that they're showing
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`the alignment -- the assembly and the alignment of the -- when
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`assembled -- of the windows overtop the light transmissive material.
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`This testimony is relevant to Petitioner’s and Dr. Anthony’s interpretation that the
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`dashed rectangles on layer 3 of Figure 11 of Asada are meant to show alignment at
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`page 15 of the -318 Reply. This testimony is relevant because it shows that Petitioner
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`ignores that the relational information is already conveyed via the vertical lines,
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`which are used for layer 3 and the other components of Figure 11.
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`Observation 5:
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`In Dec. 20 Tr., on page 168, line 3 through page 169, line 12, Dr. Anthony
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`testified as follows:
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`Q. So how do you know that element 1 doesn't provide that function of
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`protecting the optical components from direct contact with the skin?
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`A. (Witness reviews document.) So that if you were to have openings,
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`a window and a hole in that light transmissive material, the components,
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`the LED emitter and detector, could be making contact with the -- with
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`the body -- with the skin.
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`U.S. Pat. No. 8,886,269
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`Q. And how do you know that element 1 doesn't prevent that? It's sitting
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`on top of the -- of the assembly of Figure 11.
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`A. (Witness reviews document.) It could also be serving to help, but,
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`you know, every -- the complete assembly is intended to protect the – I
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`believe that a person skilled in the art would understand -- for multiple
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`reasons -- that – that light transmissive material is showing -- the dashed
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`lines are showing how the windows are -- are there, and, then,
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`furthermore, as I elaborated, I think a person skilled in the art would
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`also understand that they serve to protect the optical components.
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`Q. How do you know that Element 2 of Figure 11 of Asada isn't serving
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`the function of protecting optical components from direct contact with
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`the skin?
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`A. So, in aggregate, the construction of the device is going to meet the
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`design goals. Having very thick cladding material, for example, could
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`serve to help further isolate the optical components. But I'm not relying
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`on, sort of, that notion in isolation to understand that a person skilled in
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`the art would understand that that layer would help to protect. Other
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`layers could also help to protect. And the -- yeah.
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`This testimony is relevant to Petitioner’s and Dr. Anthony’s position that “if the
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`dashed rectangles in light transmissive Layer 3 were apertures, the optical
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`components would be exposed and directly contact the skin” at page 15 of the -318
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`Reply. This testimony is relevant because it shows that elements 1 and 2 of Figure
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`11 of Asada would nonetheless protect the optical components from direct contact
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`with the skin.
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`7
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`Observation 6:
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`In the Dec. 20 Tr., on page 49, line 9 through page 51, line 5, Dr. Anthony
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`testified as follows:
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`Q. Have you ever seen "guiding" defined as allowing to pass?
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`A. (Witness reviews document.) So as I – as I do highlight here, I mean,
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`a person skilled in the art reading these claims would have understood
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`that a -- what is being described as a window that is serving as a light-
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`guiding interface to the body, that it's allowing light to come from --
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`through -- pass through the cladding material into the body. And that's
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`-- window is serving as that light-guiding interface to the body.
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`Q. (Reviews screen.) So I asked you: "Have you ever seen "guiding"
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`defined as allowing to pass?" Then you cited to the claim claims. So are
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`the claims here the only situation where you've seen the term "guiding"
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`defined as “allowing to pass"?
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`A. So I was not forming a broad general opinion of what "guiding"
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`means. I was making a statement in my declaration about what guiding
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`means -- the light-guiding interface means in the contexts of these -- of
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`this patent. If you want me to formulate a global definition of "guiding"
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`under all its possible uses, I did not do that before this deposition -- or
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`before my declaration.
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`This testimony is relevant to Petitioner’s arguments on the construction of the term
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`“light guiding interface” at pages 5-8 of the -317 and -318 Replies. This testimony
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`is relevant because it shows the lack of basis for Petitioner’s interpretation that “light
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`guiding” can mean allowing light to pass.
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`8
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`U.S. Pat. No. 8,886,269
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`Observation 7:
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`In the Dec. 20 Tr., on page 55, lines 1-10, Dr. Anthony testified as follows:
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`Q. Do you know if all the layers of Goodman are adhered together in
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`Figure 2C?
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`A. (Witness reviews document.) Without re -- rereading or looking at
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`the -- Goodman's -- the Goodman reference, I don't recall explicitly
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`whether that's stated, but a person skilled in the art would understand
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`that they would likely be adhered together in some way to form a tight
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`construction with adhesive between the layers to hold them together.
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`This testimony is relevant to pages 9-11 of the -317 and -318 Replies, where
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`Petitioner relies on Dr. Anthony to make its argument that the elements of
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`Goodman’s Figure 2C are not adhered together as shown in the modified figure in
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`Patent Owner’s Responses. This testimony is relevant because, prior to this
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`deposition, Dr. Anthony was not aware of whether the elements in Goodman’s
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`Figure 2C were adhered together, and thus Dr. Anthony lacked the required
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`knowledge necessary to interpret Figure 2C.
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`Observation 8:
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`In the Dec. 20 Tr., on page 70, line 1 through page 71, line 7, Dr. Anthony
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`testified as follows:
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`Q. We know that light emitter 24 is adhered to element 30; correct?
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`A. Through adhesive surface 32, yup, as described on line 21 or 22.
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`Q. And we know that by "detector 14 is adhered to element 30";
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`correct?
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`U.S. Pat. No. 8,886,269
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`A. Yes. Again, through adhesive surface 32.
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`Q. And, then, we also know that element 37 is adhered to element 30
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`through two different kinds of adhesive: Element 32 and 38; correct?
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`A. Yes, 32 and 38 are adhesives.
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`Q. So in your expert opinion, PhD from MIT, how are elements 24 and
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`14 not pushed through apertures 40 and 41, as depicted in Valencell's
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`assembly of the Goodman Figure 2C?
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`A. So as I -- as I highlight -- and as I said -- this is an incomplete
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`construction. So I think it's misleading, because it's incomplete. A
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`person skilled in the art would assemble the entire device and not just a
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`fraction of the device. A person skilled in the art would not -- from both
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`the description, from the figure, from the arrows -- would understand
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`that the emitter detector may extend all the way through the windows.
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`They're sitting close to it, but not all the way through.
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`Q. Is that your best answer to my question?
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`A. I also highlight that's the answer that Doctor Titus gave in describing
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`a similar device. But yes.
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`This testimony is relevant to Petitioner’s argument regarding Goodman’s Figure 2C
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`at pages 9-11 of the -317 and -318 Replies. This testimony is relevant because it
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`discredits Petitioner’s argument that the elements of Goodman’s Figure 2C are not
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`adhered together such that elements 24 and 14 are pushed through apertures 40 and
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`41, and supports Patent Owner’s position that, with elements 24 and 14 pushed
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`through apertures 40 and 41, “the apertures cannot guide any light to the body and
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`cannot deliver light along a path.” -317 Response at 33; -318 Response at 51.
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`10
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`U.S. Pat. No. 8,886,269
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`Observation 9:
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`In the Dec. 20 Tr., on page 77, lines 20-23, Dr. Anthony testified as follows:
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`Q. Do all windows, in your opinion, allow light to pass through?
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`A. Unless they're closed with blinds. But yes, windows will allow
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`light to pass through.
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`This testimony is relevant to Petitioner’s arguments on the construction of the term
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`“light-guiding interface” at pages 5-8 of the -317 and -318 Replies. Dr. Anthony’s
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`testimony is relevant because it shows that Petitioner’s inclusion of the phrase
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`“allows the light to pass through” in its construction of window that serves as “light-
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`guiding interface” is superfluous to the claimed “window,” given that, according to
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`Dr. Anthony, all windows allow light to pass through.
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`Observation 10:
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`In the Dec. 20 Tr., on page 92, lines 3-14, Dr. Anthony testified as follows:
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`Q. But you agree with me that Hicks does have a buffer between the
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`components in Figure 6, namely foam layer apertures 88, clear substrate
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`80, and interconnecting layer 82; correct?
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`A. I agree that the -- those materials are forming a thermal buffer. And
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`I think there's a geometrical argument that Valencell was making in
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`arguing against that physical size serving as a geometric or structural
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`buffer, but, indeed, as is highlighted here, the air pocket, the clear
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`substrate, and the interconnecting layer are creating a thermal insulative
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`buffer.
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`11
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`U.S. Pat. No. 8,886,269
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`This testimony is relevant to Petitioner’s argument that Hicks does not have a buffer
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`as annotated by Patent Owner at pages 19-20 of -317 and -318 Replies. This
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`testimony is relevant because Dr. Anthony nonetheless confirmed that Hicks has a
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`buffer between the components in Figure 6, namely between foam layer apertures
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`88, clear substrate 80, and interconnecting layer 82.
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`Observation 11:
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`In Dec. 20 Tr., on page 162, lines 9-18, Dr. Anthony testified as follows:
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`Q. You understand that a large portion of this declaration deals with
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`overlapping issues that occur in the -318 matter; correct?
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`A. I do.
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`Q. And so we don't have to go over those same issues again, would your
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`answers as you testified earlier today on the -317 matter equally apply
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`to the overlapping parts of your declaration in the -317 in the -318
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`matter?
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`A. Yes, they would.
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`This testimony is relevant to show that Dr. Anthony’s testimony in this deposition
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`applies to both IPR2017-00317 and -00318.
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`Respectfully submitted,
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`Dated: February 9, 2018
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`_____________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that document has been served via electronic
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`mail on February 9, 2018, to Petitioner Apple at following email addresses pursuant
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`to its consent in its Updated Mandatory Notices (Paper 24) at p. 2: mspecht-
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`PTAB@skgf.com, holoubek-PTAB@skgf.com, jfitzsimmons-PTAB@skgf.com,
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`knasabza-PTAB@skgf.com, and PTAB@skgf.com; and to Petitioner Fitbit
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`according
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`Petition
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`at
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`4:
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`harper.batts@bakerbotts.com,
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`jeremy.taylor@bakerbotts.com, and dlfitbit-valencell@bakerbotts.com.
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` ________________________
`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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