`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`
`APPLE INC. and FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`___________________
`
`Case IPR2017-003181
`U.S. Patent No. 8,886,269
`___________________
`
`
`
`
`PETITIONER APPLE INC.’S RESPONSE TO
`PATENT OWNER’S MOTION FOR OBSERVATIONS
`ON CROSS EXAMINATION
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2017-01554 has been joined with this proceeding.
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`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`Petitioner Apple Inc. (“Apple”) submits the following Response to Patent
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`Owner Valencell, Inc.’s (“Valencell”) Motion for Observation on Cross-
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`Examination (“Mot. Obs.”) of Apple’s expert, Dr. Brian Anthony.
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`Response to Observation #1
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 173:6–174:20,
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`as being relevant because it allegedly “shows Dr. Asada’s [sic] inconsistent
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`identification of the elements of Fig. 11” in Asada. (Mot. Obs., p. 3.)
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`First, Valencell omits–without any indication–Dr. Anthony’s testimony at
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`173:21-174:14, which states that he was responding “on the fly here….” (Ex. 2150,
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`174:9-10.) Second, a “biocompatible elastic material” and an “adhesive” are not
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`mutually exclusive as Valencell suggests, and is consistent with Asada, which
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`describes using “bio-compatible elastic materials to better hold the LED’s and
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`PD’s.” (APL1005, p. 35 (emphasis added).)
`
`Response to Observation #2
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 163:9–19, as
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`being relevant because it allegedly “shows Dr. Anthony’s willful blindness to the
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`facts of Asada’s Fig. 11, despite having those facts readily available to him.” (Mot.
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`Obs., p. 4.)
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`Valencell’s observation mischaracterizes Dr. Anthony’s testimony, which
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`states that he did not need to consult Dr. Asada regarding the disclosure of the
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Asada reference because “I felt I knew what the components were as I had labeled
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`them here.” (Ex. 2150, 163:18-19.) This is consistent with Dr. Anthony’s
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`testimony that “I was also asked to form my own opinions, not go ask Doctor
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`Asada his opinions,” and “I don’t want phone calls from the people that are reading
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`my papers. I’d never get any work done.” (Ex. 2150, 116:23-25, 117:13-15.) Dr.
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`Anthony’s testimony is also consistent with the law, which provides that “[w]e
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`evaluate and apply the teachings of all relevant references on the basis of what they
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`reasonably disclose and suggest to one skilled in the art….” In re Aslanian, 590
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`F.2d 911, 914 (CCPA 1979) (emphasis added).
`
`Response to Observation #3
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 115:8–118:5,
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`as being relevant because it allegedly “shows Dr. Anthony’s willful blindness to
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`the actual facts of Asada….” (Mot. Obs., p. 5.)
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`Valencell’s allegation introduces new argument and is without legal or
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`factual merit. As Dr. Anthony testified, he was asked to provide his opinions as to
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`how a person of ordinary skill in the art would understand the Asada reference (Ex.
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`2150, 116:23-25, 117:13-15), which comports with long established case law,
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`which provides “[w]e evaluate and apply the teachings of all relevant references on
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`the basis of what they reasonably disclose and suggest to one skilled in the art….”
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`In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (emphasis added).
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Valencell also alleges this testimony is relevant “because it shows that
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`Petitioner’s counsel had access to the facts of Asada and chose not to supply those
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`facts in this proceeding and instead relied on assumptions from Dr. Anthony.”
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`(Mot. Obs., p. 5.)
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`Valencell’s allegation introduces new argument and is without legal or
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`factual merit. Contrary to Valencell’s implication, an introduction to Dr. Asada via
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`email does not mean that Apple “had access” to Dr. Asada’s opinions.
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`Furthermore, Valencell’s allegation is irrelevant to how the reference would be
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`understood by a person of ordinary skill in the art.
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`Response to Observation #4
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`
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 164:6–22, as
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`being relevant because it allegedly “shows that Petitioner ignores that the relational
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`information is already conveyed via the vertical lines, which are used for layer 3
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`and the other components of Figure 11.” (Mot. Obs., p. 6.) But Dr. Anthony’s
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`testimony cited by Valencell–that “[t]he entire box is showing how they would be
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`assembled and projected down”–directly addresses the “relational information”
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`provided by the dashed rectangles. This testimony is also consistent with Dr.
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`Anthony’s testimony that “[i]t would be unusual, actually, as a -- for a drawing, it
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`would be very weird to have just those four pillars showing the -- the relationship
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`without having the -- the projection of it onto the material itself” and that “I would
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`expect if those were something other than the projections, for those to be solid
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`lines -- if they were intended to be a cutout, for example, of the -- the light
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`transmissive material.” (Ex. 2150, 165:12-16, 166:21-24.)
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`Response to Observation #5
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`
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`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 168:3–169:12,
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`as being relevant because it allegedly “shows that elements 1 and 2 of Figure 11 of
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`Asada would nonetheless protect the optical components from direct contact with
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`the skin.” (Mot. Obs., p. 7.) Dr. Anthony’s testimony that “[o]ther layers could
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`also help to protect” or “could serve to help further isolate the optical components”
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`is entirely consistent with light transmissive Layer 3 of Asada not having apertures.
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`(Ex. 2150, 169:6-12 (emphasis added).)
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`Response to Observation #6
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 49:9–51:5, as
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`being relevant because it allegedly “shows the lack of basis for Petitioner’s
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`interpretation that ‘light guiding’ can mean allowing light to pass.” (Mot. Obs., p.
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`8.) But this testimony fully supports Apple’s interpretation because, as Dr.
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`Anthony testified, “a person skilled in the art reading these claims would have
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`understood that a -- what is being described as a window that is serving as a light-
`
`guiding interface to the body, that it's allowing light to come from -- through --
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` 4
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`pass through the cladding material into the body.” (Ex. 2150, 49:12-18 (emphasis
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`added).) This is consistent with the testimony of Valencell’s declarant, Dr. Titus:
`
`Q Do you see the part of Claim 1, the top of Line 40 where it states:
`At least one window formed in the cladding material that serves as a
`light-guiding interface to the body of the subject?
`A Yes.
`Q So is it your understanding that for that claim limitation, the win-
`dow is serving a light-guiding function?
`A The win- -- I don't believe the window serves a light-guiding func-
`tion.
`
`(APL1100, 186:16-24 (emphasis added); see also APL1100, 88:2-11, 94:23-
`
`95:5, 179:4-12.)
`
`Response to Observation #7
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 55:1–10, as
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`being relevant because it allegedly shows that “prior to this deposition, Dr.
`
`Anthony was not aware of whether the elements in Goodman’s Figure 2C were
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`adhered together, and thus Dr. Anthony lacked the required knowledge necessary
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`to interpret Figure 2C.” (Mot. Obs., p. 9.)
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`This mischaracterizes Dr. Anthony’s testimony, which is simply that he did
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`not “recall explicitly whether that’s stated…” (Ex. 2150, 55:5-6) because he had
`
`not been provided a copy of the Goodman Exhibit (Ex. 2150, 56:17-19 (“So I’m
`
`
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` 5
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`paraphrasing from the memory of the Goodman. I could look at it in more detail, if
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`provided a copy of it.”)). Dr. Anthony also affirmatively testified that he
`
`understood how Goodman’s device was assembled. (Ex. 2150, 54:17-20 (“Q.
`
`When you were reading Goodman, did you come to an understanding of how the
`
`device in Figure 2C is assembled? A. Yes. Yes.”); see also Ex. 2150, 55:19-22.)
`
`Response to Observation #8
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 70:1–71:7, as
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`being relevant because it allegedly “discredits Petitioner’s argument that the
`
`elements of Goodman’s Figure 2C are not adhered together such that elements 24
`
`and 14 are pushed through apertures 40 and 41.” (Mot. Obs., p. 10.)
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`Valencell’s observation mischaracterizes the testimony as it is disingenuous
`
`because, after explaining how Valencell’s annotated Figure 2C of Goodman is
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`“misleading, because it’s incomplete,” it is clear from the context that Dr. Anthony
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`misspoke, leaving out the word “not”: “A person skilled in the art would not --
`
`from both the description, from the figure, from the arrows -- would [not]
`
`understand 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.” (Ex. 2150, 70:18-71:3
`
`(emphasis added).) This is apparent from the last sentence of his testimony, which
`
`is consistent with Dr. Anthony’s other testimony describing Valencell’s annotated
`
`Figure 2C of Goodman. (See e.g., Ex. 2150, 62:17-23 (“So it’s not recognizing that
`
`
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` 6
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`the layers above it, which is layer 46 -- or layer 45, with adhesive coatings 46 and
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`47, would be preventing that -- the emitter and detector -- the light source and the
`
`photo sensor to be pushed through, as they are shown here.”) (emphasis added));
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`APL1102, ¶¶13-17.)
`
`Response to Observation #9
`
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 77:20–23, as
`
`being relevant because it allegedly “shows that Petitioner’s inclusion of the phrase
`
`‘allows the light to pass through’ in its construction of window that serves as
`
`‘light-guiding interface’ is superfluous to the claimed ‘window’….” (Mot. Obs., p.
`
`11.) But Dr. Anthony’s testimony is consistent with the claim language itself,
`
`which he explains “was conceived in the patent itself, in stating that the window is
`
`serving as the light-guiding interface into the body.” (Ex. 2150, 179:10-12.) This is
`
`also consistent with the testimony of Valencell’s declarant, Dr. Titus:
`
`Q Is the “at least one window formed in the cladding material that
`serves as a light-guiding interface” a light-guiding structure?
`A I don’t believe that the window would be a light-guiding structure.
`Q Why not?
`A Because I believe that the window would allow light to pass
`through, but it does not provide any guidance.
`
`(APL1100, 179:4-12 (emphasis added); see also APL1100, 88:2-11, 94:23-
`
`95:5, 186:16-24.)
`
`
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` 7
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`
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`Response to Observation #10
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 92:3–14, as
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`being relevant because it allegedly shows that “Dr. Anthony nonetheless confirmed
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`that Hicks has a buffer between the components in Figure 6, namely between foam
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`layer apertures 88, clear substrate 80, and interconnecting layer 82.” (Mot. Obs., p.
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`12.)
`
`Valencell’s observation mischaracterizes the relevance of the testimony by
`
`missing the point–Dr. Anthony acknowledges that Hicks describes a buffer, his
`
`testimony relates to Valencell’s misleading red box annotation in Figure 6 of
`
`Hicks:
`
`Q. So given that description of Figure 6, what is your issue with Va-
`lencell's annotated version of Hicks Figure 6?
`A. Well, as I describe here, the buffer is actually the -- is the air pock-
`et in the foam layer. The air pocket is formed by the foam layer,
`which is the -- forming the thermally insulated buffer; that this figure
`is an expanded view in that -- I think it -- I recall it being red when it
`was printed out in color, but that block that I point to in -- at the top
`of page 17, that's -- that buffer is not there. It's -- the buffer – is the --
`is 92, the window in the foam layer – the air pocket in the foam layer.
`(Ex. 2150, 89:20-90:8 (emphasis added); see also APL1102, ¶¶25-26.)
`
`
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` 8
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`
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`Response to Observation #11
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`Valencell refers to Dr. Anthony’s testimony in Exhibit 2150, 162:9–18, as
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`being relevant because it allegedly shows that “Dr. Anthony’s testimony in this
`
`deposition applies to both IPR2017-00317 and -00318.” (Mot. Obs., p. 12.) Apple
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`does not dispute that the deposition of Dr. Anthony regarding his Reply
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`Declaration was intended to apply to both IPR2017-00317 and IPR2017-00318.
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`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: February 16, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
` 9
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`
`
`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PETITIONER APPLE
`
`INC.’S RESPONSE TO PATENT
`
`OWNER’S MOTION FOR OBSERVATIONS ON CROSS EXAMINATION
`
`was served electronically via email in its entirety on February 16, 2018 on the
`
`following:
`
`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
`
`
`
`
`
`
`
`
`
`Date: February 16, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`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.
`
`
`
`
`
`
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