Apple Inc. and Fitbit, Inc.
`Petitioners
`
`v.
`Valencell, Inc.
`Patent Owner
`
`Case IPR2017-00318
`
`U.S. Patent No. 8,886,269
`
`Patent Owner’s Demonstrative Exhibits
`
`In support of Its Conditional Motion to Amend
`
`Oral Hearing, February 27, 2018
`
`R. Scott Rhoades
`
`
`Petitioners
`
`v.
`Valencell, Inc.
`Patent Owner
`
`Case IPR2017-00318
`
`U.S. Patent No. 8,886,269
`
`Patent Owner’s Demonstrative Exhibits
`
`In support of Its Conditional Motion to Amend
`
`Oral Hearing, February 27, 2018
`
`R. Scott Rhoades
`
`
`
`U.S. Patent No. 8,886,269
`Substitute Claim 12
`
`Claim 12 – Substitute for Claim 1
`
`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 concentric relationship, the inner body portion
`comprising light transmissive material, and having outer 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 preconditioned 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;
`
`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.
`
`2
`
`
`
`U.S. Patent No. 8,886,269
`
`Petitioners’ Asserted Prior Art Combination
`
`• Petitioners’ propose the combination of Asada + Swedlow +
`
`Fricke + Gupta renders claim 12 obvious
`
`• Petitioners’ propose the combination of Goodman + Asada
`
`+ Fricke + Gupta renders claim 12 obvious
`
`3
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Swedlow
`
`Petitioners contend that a POSITA “would have been motivated to
`
`mount the at least one optical emitter and photodetector of
`Asada on a flexible substrate (“base”) as taught by Swedlow to
`
`allow signals to be transmitted to and from the optical emitter
`and photodetector via etched wires.”
`
`Petitioners’ Opposition, Paper 33 at p. 4-5.
`
`4
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`Asada
`
`• Asada’s discloses a ring sensor for health monitoring
`Patent Owner’s Reply, Paper 37 at p. 4.
`“Asada describes a method for dealing with motion artifacts by using
`
`•
`
`a motion detection system that is implemented with a second PPG
`sensor, and a ‘pusher’ to create motion for the noise signal.”
`
`id.
`
`•
`
`“Asada discusses comfort and reliability as important to wearable
`biosensors” – states that the Asada designs are comfortable
`
`Ex. 1005, Figure 9
`
`id.
`
`5
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`Swedlow
`
`• Swedlow discloses an apparatus for the detection of motion
`
`transients using a piezoelectric film that indicates motion of the
`pulse oximeter’s sensor (photodetector and emitter)
`
`• The components are mounted on the piezeoelectric film or on
`
`separate substrate that is then mounted to the piezoelectric film
`
`•
`
`intended to be a wired device with cables connecting the sensor
`
`which is adhered to the body and the read-out electronics
`
`Ex. 1006, Figure 1
`
`6
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Swedlow
`
`• Petitioners,
`combine, rely upon a third reference—Awazu—as allegedly
`
`in an effort to manufacture a motivation to
`
`identifying an industry
`
`problem with comfort
`
`and
`
`disconnection
`
`• No where in Asada is a problem with comfort or disconnection
`
`discussed
`
`o in fact, Asada expressly says that its device is comfortable
`
`Ex. 1005, at 36.
`
`7
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Swedlow
`
`• Petitioners claim that wires are inherently uncomfortable
`
`when wrapped around a
`
`finger
`
`and are
`
`prone
`
`to
`
`disconnection, citing to Awazu
`
`• To solve this purported “issue”, Petitioner’s claim a POSITA
`would combine Asada with Swedlow “to transmit signals . . . via
`etched wires”
`
`Petitioners’ Opposition, Paper 33 at p. 3-5.
`
`8
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Swedlow
`
`• No where in Asada is a problem with comfort or
`
`disconnection discussed
`
`• Nothing in Asada suggests that it includes wires wrapped
`
`around a finger
`
`• Neither Asada nor Swedlow discuss “etched wires” nor use
`
`this phrase
`
`9
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Swedlow
`
`• Both Asada and Swedlow solve a similar problem of removing
`
`motion artifacts
`
`o Asada addresses motion artifacts by using a motion
`
`detection system that is implemented with a second PPG
`sensor, and a “pusher” to create motion for the noise signal.
`
`o Similarly, Swedlow primarily presents a method for dealing
`with motion transients (artifacts).
`
`• Accordingly, a POSITA would not look to Swedlow to solve
`the problem that Asada has already solved
`
`10
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada, Swedlow, Fricke and Gupta
`
`Petitioners contend that a POSITA “would have been motivated to
`
`further process the pulse-signal and motion signal in Asada to
`detect a patient’s heart rate and impacts indicating that the
`
`patient has fallen over as taught by Gupta.
`
`Petitioners’ Opposition, Paper 33 at p. 6-7.
`
`11
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`GUPTA
`
`• Gupta discloses a glove system that monitors heart rate and detects
`
`falls
`
`• The Gupta device is large and is powered using a 9-v battery
`
`• The Gupta device includes an impact sensor – ADXL311 Accelerometer
`
`Ex. 1105, Figure 7
`
`12
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`GUPTA
`
`• Gupta’s ADXL311 Accelerometer is a MEMS device
`
`ADXL311 Rev. A Datasheet
`
`,
`
` Ex. 2152
`
`,
`
` at 2.
`
`ADXL311 Rev. A Datasheet
`
`,
`
` Ex. 2153,
`
` at 2.
`
`13
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Gupta
`
`• Asada expressly teaches away from a device such as Gupta and
`
`teaches away from the specific Gupta impact sensor
`
`o Asada expressly states to not use a MEMS device:
`
`• Accordingly, the Asada device combined with the Gupta device
`
`would not work for its intended purpose
`
`Ex. 1005, at 33.
`
`14
`
`
`
`U.S. Patent No. 8,886,269
`Asada + Swedlow + Fricke + Gupta
`
`No Motivation to Combine Asada and Gupta
`
`• Gupta describes a device that is completely incompatible with
`Asada’s small ring
`
`o Asada has integrated many components onto a ring,
`
`including a battery
`
`o while Gupta shows a large device with multiple circuit
`
`boards and a 9-Volt battery that by itself is larger than the
`
`Asada ring
`
`• The Gupta device with larger and more power-hungry
`
`components, performs a subset of the Asada functions, so one
`would not look to combine Gupta and Asada
`
`15
`
`
`
`U.S. Patent No. 8,886,269
`Goodman + Asada + Fricke + Gupta
`
`Goodman
`
`• Goodman’s device is a flexible and disposable plastic strip
`
`• The Goodman device is effectively a photodetector and emitter
`sandwiched in adhesive layers, forming a “band-aid”-like device that is
`low cost and disposable.
`
`• The device’s tight adhesion to the skin prevents motion artifacts
`
`from distorting the signal.
`
`o The adhesion and minimal nature of the device eliminates motion
`artifacts since it is “part of the skin.”
`
`Ex. 1007
`
`Ex. 1007
`
`16
`
`
`
`U.S. Patent No. 8,886,269
`Goodman + Asada + Fricke + Gupta
`
`No Motivation to Combine Goodman and Asada
`
`•
`
`“Goodman does not exhibit any problems due to motion.”
`Patent Owner’s Reply, Paper 32 at p. 11.
`• The Asada device “is much larger, heavier and bulkier than the
`Goodman Band-aid.”
`
`id.
`
`•
`
`“A POSITA would not look to combine Goodman with Asada as
`Goodman’s stated purpose is to prevent motion artifacts.”
`
`id.
`
`Goodman Device
`
`Asada Device
`
`17
`
`
`
`U.S. Patent No. 8,886,269
`Goodman + Asada + Fricke + Gupta
`
`No Motivation to Combine Goodman and Asada
`
`• Goodman is intended for use on patients who are primarily
`
`bedridden
`
`• A POSITA would not look to combine Goodman with Asada to
`
`solve motion problems for a device that is intended to be used
`
`on people where there is little motion.
`
`• Petitioners’ “patient’s well-being” motivation is insufficient
`
`• There is insufficient evidence to combine Goodman and Asada.
`
`18
`
`
`
`U.S. Patent No. 8,886,269
`Goodman + Asada + Fricke + Gupta
`
`Combination Does Not Render Substitute Claim 12 Obvious
`
`• Petitioners have failed to show that combination of
`
`Goodman + Asada + Fricke + Gupta discloses the claimed
`
`invention as set forth in claim 12
`
`• As Dependent Claims 12-32 depend from Substitute Claim 12,
`Dependent Claims 13-21 should be allowed
`
`19
`
`
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