Apple Inc. and Fitbit, Inc. v.
`Valencell, Inc.
`
`P.T.A.B. Proceeding No. IPR2017-003181
`U.S. Patent No. 8,886,269
`February 27, 2018
`
`1 Case IPR2017-01554 has been joined with this proceeding.
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`
`Valencell, Inc.
`
`P.T.A.B. Proceeding No. IPR2017-003181
`U.S. Patent No. 8,886,269
`February 27, 2018
`
`1 Case IPR2017-01554 has been joined with this proceeding.
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`
`
`Instituted Grounds (’269 Patent)
`
`Ground
`
`Claims
`
`Type
`
`Primary
`Reference
`
`Secondary Reference(s)
`
`IPR2017-00318 (’269 Patent)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`1, 2, 6, 7
`
`3
`
`4, 5
`
`8
`
`9, 10
`
`1, 2
`
`3
`
`4
`
`5
`
`6, 7
`
`8
`
`9, 10
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Asada
`
`Asada
`
`Asada
`
`Asada
`
`Asada
`
`§ 103 Goodman
`
`§ 103 Goodman
`
`§ 103 Goodman
`
`§ 103 Goodman
`
`§ 103 Goodman
`
`§ 103 Goodman
`
`§ 103 Goodman
`
`--
`
`Hicks
`
`Hannula
`
`Delonzor
`
`Al-Ali
`
`--
`
`Hicks
`
`Hannula
`
`Hannula, Asada
`
`Asada
`
`Delonzor
`
`Al-Ali
`
`Paper 7 (“Inst. Decision”), pp. 25, 26
`
`2
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`Summary of the Proceeding
`“The claims of the ’269 patent recite nothing more than what was
`already known in the prior art.” (Paper 2 (“Petition”), p. 2.)
`
`“For decades prior to the ’269 patent, artisans had developed and
`continued to improve sensor devices commonly known as non-
`invasive optical biosensors ….” (Petition, p. 1.)
`
`“Valencell’s arguments rely on: … 2) inaccurate interpretations of
`the prior art, with annotated figures that are modified in misleading
`and inappropriate ways; …and 5) Dr. Titus’s declaration, which is
`devoid of references supporting his opinions, and whose testimony
`contradicts Valencell’s positions on key points.” (Paper 32 (“Pet.
`Reply”), pp. 1-2.)
`
`“Because the prior art references teach all of the claim elements,
`Valencell’s tactic is to enumerate any possible drawback to the
`combinations, no matter how implausible or insubstantial.” (Pet.
`Reply, p. 19.)
`
`3
`
`
`
`’269 Patent – Independent Claim 1
`
`APL1001, 30:30-53
`
`4
`
`
`
`Petitioner’s Annotated Figures 22B and 23 from ’269 Patent
`
`Petition, p. 10
`
`5
`
`
`
`Petitioner’s Annotated Figure – Goodman Fig. 2C
`
`Goodman Fig. 4
`
`Petition, pp. 22-23, 54
`
`6
`
`
`
`Petitioner's Annotated Figure – Asada Fig. 11
`
`Petition, p. 19; APL1005, Fig. 11
`
`7
`
`
`
`Petitioner’s Annotated Figure – Swedlow Fig. 2
`
`Petition, p. 20; Ex. 1006, FIG. 2
`
`8
`
`
`
`•
`
`Claim Construction: “Light-Guiding Interface”
`“at least one window formed in the cladding material that serves
`as a light-guiding interface to the body of the subject”
`
`APL1001, 30:40-42; Petition, pp. 32, 54; Pet. Reply, pp. 5-8
`
`9
`
`
`
`•
`
`Claim Construction: “Light-Guiding Interface”
`“at least one window formed in the cladding material that serves
`as a light-guiding interface to the body of the subject”
`
`PO’s Declarant’s Admission
`
`APL1001, 30:40-42; Petition, pp. 32, 54; Pet. Reply, pp. 5-8
`
`10
`
`
`
`Petition Ground 6: Goodman Renders Claims 1 and 2 Obvious
`
`• Goodman discloses “at least one window formed in the cladding
`material that serves as a light-guiding interface to the body of the
`subject”
`
`Petition, p. 54; Pet. Reply, pp. 8-12
`
`11
`
`
`
`Petition Ground 6: Goodman Renders Claims 1 and 2 Obvious
`• Goodman discloses “at least one window formed in the cladding
`material that serves as a light-guiding interface to the body of the
`subject”
`Petitioner’s Annotated Figure – Goodman Fig. 2C
`
`Goodman Fig. 4
`
`Petition, p. 23
`
`12
`
`
`
`Petition Ground 6: Goodman Renders Claims 1 and 2 Obvious
`• Goodman discloses “at least one window formed in the cladding
`material that serves as a light-guiding interface to the body of the
`subject”
`
`Petition Evidence
`
`PO’s “assembly” – Goodman Fig. 2C
`
`Petitioner’s Annotated Figure
` Goodman Fig. 7A
`
`Petition, p. 54; POR p. 50; Pet. Reply, p. 12
`
`13
`
`
`
`Petition Ground 6: Goodman Renders Claims 1 and 2 Obvious
`• Goodman discloses “at least one window formed in the cladding
`material that serves as a light-guiding interface to the body of the
`subject”
`
`PO’s Declarant’s Admission
`
`Pet. Reply, p. 9
`
`14
`
`
`
`Petition Ground 1: Asada Renders Claims 1, 2, 6, and 7 Obvious
`
`• Asada discloses an “inner body portion comprising light
`transmissive material” and that “the light transmissive material is in
`optical communication with the at least one optical emitter and the
`at least one optical detector”
`
`
`• Asada’s Prototypes A and B both include a “signal processor” (claim
`6) and a “transmitter” (claim 7)
`
`Petition, pp. 31-34, 35-36; Pet. Reply, pp. 13-17, 17-18
`
`15
`
`
`
`Petition Ground 1: Asada Renders Claims 1, 2, 6, and 7 Obvious
`• Asada discloses an “inner body portion comprising light
`transmissive material” and that “the light transmissive material is in
`optical communication with the at least one optical emitter and the
`at least one optical detector”
`
`Petition Evidence
`
`Petition, p. 19
`
`16
`
`
`
`Petition Ground 1: Asada Renders Claims 1, 2, 6, and 7 Obvious
`• Asada discloses an “inner body portion comprising light
`transmissive material” and that “the light transmissive material is in
`optical communication with the at least one optical emitter and the
`at least one optical detector”
`
`PO’s Declarant’s Admission
`
`Pet. Reply, p. 15
`
`17
`
`
`
`Petition Ground 1: Asada Renders Claims 1, 2, 6, and 7 Obvious
`• Asada’s Prototypes A and B both include a “signal processor” (claim
`6) and a “transmitter” (claim 7)
`
`PO’s Declarant’s Admission
`
`Pet. Reply, p. 18
`
`18
`
`
`
`Petition Ground 1: Asada Renders Claims 1, 2, 6, and 7 Obvious
`• Asada’s Prototypes A and B both include a “signal processor” (claim
`6) and a “transmitter” (claim 7)
`
`PO’s Declarant’s Admission
`
`Pet. Reply, p. 18
`
`19
`
`
`
`Petition Grounds 2, 3, 7, 8, 9, and 10: Patent Owner Argues Against
`Motivations to Combine References
`
`•
`
`•
`
`•
`•
`
`• The Petition provided:
`•
`“Motivation for Combining Asada and Hicks” (Petition, pp. 36-38.)
`•
`“Motivation for Combining Asada and Hannula” (Petition, pp. 39-40.)
`•
`“Motivation for Combining Asada and Delonzor” (Petition, pp. 43-44.)
`•
`“Motivation for Combining Asada and Al-Ali” (Petition, pp. 46-47.)
`•
`“Motivation for the Combination of Goodman and Hicks” (Petition, pp.
`56-57.)
`“Motivation for the Combination of Goodman and Hannula” (Petition,
`pp. 59-60.)
`“Motivation for the Combination of Goodman, Hannula, and Asada”
`(Petition, pp. 61-62.)
`“Motivation for Combining Goodman and Asada” (Petition, pp. 65-66.)
`“Motivation for the Combination of Goodman and Delonzor” (Petition,
`pp. 68-69.)
`“Motivation for Combining Goodman and Al-Ali” (Petition, pp. 71-72.)
`
`•
`
`“Each applied reference is from the field of non-invasive optical
`biosensors.” (Petition, p. 16.)
`
`
`20
`
` •
`
`
`
`Petition Grounds 2 & 7: Asada/Goodman in View of Hicks Renders
`Claim 3 Obvious
`
`PO’s alleged “detriments” (e.g., adding mass, reduced disposability, reduced skin
`conformance, added skin pressure) would NOT have deterred a POSA from
`combining the references
`
`Pet. Reply, pp. 21-22
`
`21
`
`
`
`Petition Grounds 2 & 7: Asada/Goodman in View of Hicks Renders
`Claim 3 Obvious
`Petitioner’s Annotated Figure – Hicks Fig. 6
`
`PO’s Inaccurate Annotated Figure
`
`Petition, p. 24; POR, p. 43; Pet. Reply, pp. 19-20
`
`
`
`22 22
`
`
`
`Petition Grounds 3, 8, 9: Asada/Goodman in View of Hannula
`Renders Claims 4 and 5 Obvious
`
`A POSA Would Have Been Motivated to Combine Hannula with Goodman
`
`PO Ignores Goodman’s “Non-adhesive” Embodiment
`
`Pet. Reply, p. 24
`
`23
`
`
`
`Petition Grounds 3, 8, 9: Asada/Goodman in View of Hannula
`Renders Claims 4 and 5 Obvious
`
`A POSA Would Have Been Motivated to Combine Hannula with Goodman
`
`PO’s Declarant’s Admission
`
`Pet. Reply, p. 24
`
`24
`
`
`
`Petition Grounds 3, 8, 9: Asada/Goodman in View of Hannula
`Renders Claims 4 and 5 Obvious
`
`A POSA Would Have Been Motivated to Combine Hannula with Asada
`
`Pet. Reply, p. 25; Petition, p. 25 (APL1009, Annotated Fig. 1C)
`
`25
`
`
`
`Petition Grounds 9 & 10: Goodman and Asada in View of Hannula
`Renders Claims 5-7 Obvious
`
`A POSA Would Have Been Motivated to Combine Asada with Goodman
`
`Pet. Reply, p. 26
`
`26
`
`
`
`Patent Owner’s Motion to Amend is Deficient Under § 112 and
`the Amended Claims Would Have Been Obvious to a POSA
`
`• Substitute Independent Claim 12 lacks written description support
`and is indefinite
`
`
`• Patent Owner did not argue that the prior art fails to teach any of
`the added limitations
`
`• Petitioner’s Opposition provided significant and extensive rationales
`to combine references, supported by the declaration of Dr. Anthony
`
`Paper 33 (“Opp. to MTA”), pp. 1-2, 2-7, 13-17, 22, 23-24
`
`27
`
`
`
`Substitute Independent Claim 12
`
`12. (Substitute for original 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.
`
`Paper 21, (“MTA”), pp. 2-3, 6-10, 28-29
`
`28
`
`
`
`Substitute Independent Claim 12
`12. (Substitute for original claim 1)
`
` …
`
`
`
` 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;
`
`29
`
` …
`
`
`MTA, pp. 2-3, 6-10, 28-29
`
`
`
`Substitute Claim 12 Lacks Written Description Support
`
`Opp. to MTA, pp. 1-2
`
`30
`
`
`
`Substitute Claim 12 Is Indefinite
`
`Opp. to MTA, p. 2
`
`31
`
`
`
`There Is Ample Motivation to Combine
`Asada and Swedlow
`
`Opp. to MTA, p. 4
`
`32
`
`
`
`There Is Ample Motivation to Combine Asada and Gupta
`
`Opp. to MTA, pp. 6-7; Paper 39 (“Pet. MTA Sur-Reply”), p. 5
`
`33
`
`
`
`There Is Ample Motivation to Combine Asada with Goodman
`
`Opp. to MTA, p. 14; Pet. MTA Sur-Reply, p. 6
`
`34
`
`
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`CERTIFICATION OF SERVICE (37 C.F.R. §§42.6(e))
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PETITIONER APPLE INC.’S DEMONSTRATIVES was served
`
`electronically via email in its entirety on February 26, 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
`
`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 26, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
