`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.
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`
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`Instituted Grounds (’269 Patent)
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`Ground
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`Claims
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`Type
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`Primary
`Reference
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`Secondary Reference(s)
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`IPR2017-00318 (’269 Patent)
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`1, 2, 6, 7
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`3
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`4, 5
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`8
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`9, 10
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`1, 2
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`3
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`4
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`5
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`6, 7
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`8
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`9, 10
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`§ 103
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`Asada
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`Asada
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`Asada
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`Asada
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`Asada
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`§ 103 Goodman
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`§ 103 Goodman
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`§ 103 Goodman
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`§ 103 Goodman
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`§ 103 Goodman
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`§ 103 Goodman
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`§ 103 Goodman
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`--
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`Hicks
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`Hannula
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`Delonzor
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`Al-Ali
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`--
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`Hicks
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`Hannula
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`Hannula, Asada
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`Asada
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`Delonzor
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`Al-Ali
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`Paper 7 (“Inst. Decision”), pp. 25, 26
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`2
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`1.
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`2.
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`3.
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`4.
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`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.)
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`3
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`
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`’269 Patent – Independent Claim 1
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`APL1001, 30:30-53
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`4
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`Petitioner’s Annotated Figures 22B and 23 from ’269 Patent
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`Petition, p. 10
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`5
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`Petitioner’s Annotated Figure – Goodman Fig. 2C
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`Goodman Fig. 4
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`Petition, pp. 22-23, 54
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`6
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`Petitioner's Annotated Figure – Asada Fig. 11
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`Petition, p. 19; APL1005, Fig. 11
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`7
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`Petitioner’s Annotated Figure – Swedlow Fig. 2
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`Petition, p. 20; Ex. 1006, FIG. 2
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`8
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`
`
`•
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`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”
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`APL1001, 30:40-42; Petition, pp. 32, 54; Pet. Reply, pp. 5-8
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`9
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`
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`•
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`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”
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`PO’s Declarant’s Admission
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`APL1001, 30:40-42; Petition, pp. 32, 54; Pet. Reply, pp. 5-8
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`10
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`
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`Petition Ground 6: Goodman Renders Claims 1 and 2 Obvious
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`• Goodman discloses “at least one window formed in the cladding
`material that serves as a light-guiding interface to the body of the
`subject”
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`Petition, p. 54; Pet. Reply, pp. 8-12
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`11
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`
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`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
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`Goodman Fig. 4
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`Petition, p. 23
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`12
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`
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`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”
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`Petition Evidence
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`PO’s “assembly” – Goodman Fig. 2C
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`Petitioner’s Annotated Figure
` Goodman Fig. 7A
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`Petition, p. 54; POR p. 50; Pet. Reply, p. 12
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`13
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`
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`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”
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`PO’s Declarant’s Admission
`
`Pet. Reply, p. 9
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`14
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`
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`Petition Ground 1: Asada Renders Claims 1, 2, 6, and 7 Obvious
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`• 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)
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`Petition, pp. 31-34, 35-36; Pet. Reply, pp. 13-17, 17-18
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`15
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`
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`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”
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`Petition Evidence
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`Petition, p. 19
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`16
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`
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`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”
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`PO’s Declarant’s Admission
`
`Pet. Reply, p. 15
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`17
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`
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`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)
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`PO’s Declarant’s Admission
`
`Pet. Reply, p. 18
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`18
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`
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`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)
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`PO’s Declarant’s Admission
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`Pet. Reply, p. 18
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`19
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`Petition Grounds 2, 3, 7, 8, 9, and 10: Patent Owner Argues Against
`Motivations to Combine References
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`•
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`•
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`•
`•
`
`• 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.)
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`•
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`“Each applied reference is from the field of non-invasive optical
`biosensors.” (Petition, p. 16.)
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`20
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` •
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`
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`Petition Grounds 2 & 7: Asada/Goodman in View of Hicks Renders
`Claim 3 Obvious
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`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
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`Pet. Reply, pp. 21-22
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`21
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`
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`Petition Grounds 2 & 7: Asada/Goodman in View of Hicks Renders
`Claim 3 Obvious
`Petitioner’s Annotated Figure – Hicks Fig. 6
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`PO’s Inaccurate Annotated Figure
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`Petition, p. 24; POR, p. 43; Pet. Reply, pp. 19-20
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`
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`22 22
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`Petition Grounds 3, 8, 9: Asada/Goodman in View of Hannula
`Renders Claims 4 and 5 Obvious
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`A POSA Would Have Been Motivated to Combine Hannula with Goodman
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`PO Ignores Goodman’s “Non-adhesive” Embodiment
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`Pet. Reply, p. 24
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`23
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`Petition Grounds 3, 8, 9: Asada/Goodman in View of Hannula
`Renders Claims 4 and 5 Obvious
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`A POSA Would Have Been Motivated to Combine Hannula with Goodman
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`PO’s Declarant’s Admission
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`Pet. Reply, p. 24
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`24
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`
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`Petition Grounds 3, 8, 9: Asada/Goodman in View of Hannula
`Renders Claims 4 and 5 Obvious
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`A POSA Would Have Been Motivated to Combine Hannula with Asada
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`Pet. Reply, p. 25; Petition, p. 25 (APL1009, Annotated Fig. 1C)
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`25
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`
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`Petition Grounds 9 & 10: Goodman and Asada in View of Hannula
`Renders Claims 5-7 Obvious
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`A POSA Would Have Been Motivated to Combine Asada with Goodman
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`Pet. Reply, p. 26
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`26
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`
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`Patent Owner’s Motion to Amend is Deficient Under § 112 and
`the Amended Claims Would Have Been Obvious to a POSA
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`• Substitute Independent Claim 12 lacks written description support
`and is indefinite
`
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`• Patent Owner did not argue that the prior art fails to teach any of
`the added limitations
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`• 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
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`27
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`
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`Substitute Independent Claim 12
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`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
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`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
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`secured together in concentric relationship, the inner body portion comprising
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`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
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`the body of the subject; and
`a base comprising at least one optical emitter and at least one optical detector attached to the
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`band and light-guiding structure;
`a signal processor configured to (i) receive and process signals produced by the at least one
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`optical detector and a motion sensor to extract physiological and motion-related
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`information, (ii) reduce motion artifacts by removing frequency bands from the
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`signals that are outside of a range of interest using at least one band-pass filter to
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`produce preconditioned signals and (iii) generate parsed output data by
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`executing one or more processing methods to provide information that is fed
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`into a multiplexed output serial data string comprising motion-related and
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`physiological information;
`wherein the light transmissive material is in optical communication with the at least one
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`optical emitter and the at least one optical detector and is configured to deliver
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`light from the at least one optical emitter to one or more locations of the body of
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`the subject via the at least one window and to collect light from one or more
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`locations of the body of the subject via the at least one window and deliver the
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`collected light to the at least one optical detector.
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`Paper 21, (“MTA”), pp. 2-3, 6-10, 28-29
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`28
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`
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`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
`
` …
`
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`MTA, pp. 2-3, 6-10, 28-29
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`
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`Substitute Claim 12 Lacks Written Description Support
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`Opp. to MTA, pp. 1-2
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`30
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`
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`Substitute Claim 12 Is Indefinite
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`Opp. to MTA, p. 2
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`31
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`
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`There Is Ample Motivation to Combine
`Asada and Swedlow
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`Opp. to MTA, p. 4
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`32
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`
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`There Is Ample Motivation to Combine Asada and Gupta
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`Opp. to MTA, pp. 6-7; Paper 39 (“Pet. MTA Sur-Reply”), p. 5
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`33
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`
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`There Is Ample Motivation to Combine Asada with Goodman
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`Opp. to MTA, p. 14; Pet. MTA Sur-Reply, p. 6
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`34
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`
`
`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
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