Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 7
`Entered: June 5, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VALENCELL, INC.
`Patent Owner.
`____________
`
`IPR2017-00318
`Patent 8,989,296 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`IPR2017-00318
`Patent 8,989,269 B2
`
`I. INTRODUCTION
`
`A. Background
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–10 (“the challenged claims”) of U.S. Patent No.
`
`8,989,269 B2 (Ex. 1001, “the ’269 patent”) pursuant to 35 U.S.C. §§ 311–
`
`319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary
`
`Response to the Petition. Paper 6 (“Prelim. Resp.”).
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`We have authority under 35 U.S.C. § 314(a), which provides that an
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`inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . shows that there is a reasonable likelihood that
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`the Petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”
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`We determine that Petitioner has demonstrated that there is a
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`reasonable likelihood that it would prevail with respect to at least one of the
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`challenged claims. For the reasons set forth below, we institute an inter
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`partes review of claims 1–10.
`
`B. Related Proceedings
`
`The parties indicate that the ’269 patent is at issue in Valencell, Inc. v.
`
`Apple Inc., Case No. 5:16-cv-00001 (E.D.N.C), and Valencell, Inc. v. Fitbit,
`
`Inc., Case No. 5:16-cv-00002 (E.D.N.C). Pet. 3; Paper 5, 1. Patent Owner
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`indicates the ’269 patent is also at issue in Valencell, Inc. v. Bragi Store,
`
`LLC, Case No. 5:16-cv-00895 (E.D.N.C.). Paper 5, 1.
`
`
`
`In addition to this Petition, Petitioner indicates that it filed other inter
`
`partes review petitions challenging claims of U.S. Patent No. 8,989,830 B2
`
`(IPR2017-00316 and IPR2017-00317). Pet. 3. U.S. Patent No. 8,989,830
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`B2 is a continuation of the ’269 patent. Id.
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`
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`2
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`IPR2017-00318
`Patent 8,989,269 B2
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`C. The ’269 Patent
`
`
`
`The ’269 patent is entitled “Wearable Light-Guiding Bands For
`
`Physiological Monitoring” and issued on November 11, 2014, from an
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`application filed on February 19, 2014. Ex. 1001, [22], [45], [54]. The ’269
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`patent claims priority to the following applications: (1) U.S. Patent
`
`Application No. 12/691,388, filed on January 21, 2010 (now U.S. Patent No.
`
`8,700,111); (2) U.S. Provisional Patent Application No. 61/208,567, filed on
`
`February 25, 2009; (3) U.S. Provisional Patent Application No. 61/208,574,
`
`filed on February 25, 2009; (4) U.S. Provisional Patent Application No.
`
`61/212,444, filed on April 13, 2009; and (5) U.S. Provisional Patent
`
`Application No. 61/274,191, filed on August 14, 2009. Id. at [63], [60].
`
`
`
`The ’269 patent is directed to monitoring devices capable of
`
`encircling a portion of the body of a subject. Ex. 1001, Abstract. The
`
`monitoring devices may include physiological sensors to measure, for
`
`example, heart rate, pulse rate, breathing rate, and a variety of other physical
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`parameters. Id. at 4:31–65. Monitoring devices may be configured to be
`
`attached to earlobes, fingers, toes, and other digits. Id. at 27:59–61. The
`
`’269 patent discloses various embodiments of the monitoring devices, such
`
`as that depicted in Figures 22A and 22B, reproduced below.
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`3
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`IPR2017-00318
`Patent 8,989,269 B2
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`
`
`Figure 22A is a top plan of an embodiment of monitoring device configured
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`to be attached to the finger of a subject, and Figure 22B is a cross-sectional
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`view of the monitoring device. Ex. 1001, 8:13–17. Monitoring device 70
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`includes a generally circular band that may encircle finger F of a subject,
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`and has cylindrical outer body portion 72 and generally cylindrical inner
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`body portion 74 secured together. Id. at 27:61–28:1. Base 50 supports
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`optical emitter 24, optical detector 26, and optical noise detector 26´. Id. at
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`28:15–17. Layer of cladding material 21 is applied to (or near) outer surface
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`74a of inner body portion 74, as well as inner surface 74b, to serve as a light
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`guide to deliver light from optical emitter 24 to the finger and to collect light
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`from the finger and deliver it to optical detectors 26, 26´. Id. at 28:26–34.
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`“[W]indows 74w are formed in the cladding material 21 and serve as light-
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`guiding interfaces to the finger.” Id. at 28:40–42. Multiple emitters and/or
`
`detectors may assist in detecting motion artifacts. Id. at 28:62–29:11.
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`4
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`IPR2017-00318
`Patent 8,989,269 B2
`
`Claim 1, reproduced below, is illustrative of the challenged claims of
`
`the ’269 patent.
`
`1. A monitoring device, comprising:
`
`a band configured to at least partially encircle a portion of the
`
`body of a subject, the band 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 and inner surfaces;
`
`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
`
`at least one optical emitter and at least one optical detector
`attached to the band;
`
`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.
`
`Ex. 1001, 30:30–53.
`
`D. Asserted Grounds of Unpatentability
`
`
`
`Petitioner asserts the following grounds of unpatentability:
`
`Ground Claim(s)
`
`Reference(s)
`
`§ 103
`
`1, 2, 6, 7
`
`Asada1
`
`§ 103
`
`3
`
`Asada and Hicks2
`
`
`1 H. Harry Asada, Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors, IEEE ENGINEERING IN MEDICINE AND
`BIOLOGY MAGAZINE, Vol. 22, Issue 3, May–June 2003. (Ex. 1005).
`
`
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`5
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`IPR2017-00318
`Patent 8,989,269 B2
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`Ground Claim(s)
`
`Reference(s)
`
`§ 103
`
`4, 5
`
`§ 103
`
`8
`
`§ 103
`
`9, 10
`
`§ 103
`
`1, 2
`
`§ 103
`
`§ 103
`
`§ 103
`
`3
`
`4
`
`5
`
`§ 103
`
`6, 7
`
`§ 103
`
`8
`
`Asada and Hannula3
`
`Asada and Delonzor4
`
`Asada and Al-Ali5
`
`Goodman6
`
`Goodman and Hicks
`
`Goodman and Hannula
`
`Goodman, Hannula, and Asada
`
`Goodman and Asada
`
`Goodman and Delonzor
`
`§ 103
`
`9, 10
`
`Goodman and Al-Ali
`
`Pet. 6.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board interprets claim terms in an
`
`unexpired patent according to the broadest reasonable construction in light
`
`of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016) (upholding the use of the broadest reasonable interpretation
`
`approach). Under that standard, and absent any special definitions, we give
`
`
`2 U.S. Patent No. 6,745,061 B1 (issued June 1, 2004) (Ex. 1008).
`
`3 U.S. Patent No. 7,190,986 B1 (issued March 13, 2007) (Ex. 1009).
`
`4 U.S. Patent No. 5,797,841 (issued August 25, 1998) (Ex. 1010).
`
`5 U.S. Publication No. 2007/0123763 A1, published May 31, 2007 (Ex.
`1011).
`
`6 U.S. Patent No. 4,830,014 (issued May 16, 1989) (Ex. 1007).
`
`
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`6
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`IPR2017-00318
`Patent 8,989,269 B2
`
`claim terms their ordinary and customary meaning, as they would be
`
`understood by one of ordinary skill in the art at the time of the invention.
`
`In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`As to the term “near,” we are not persuaded by Patent Owner’s
`
`argument that we should adopt a more limited interpretation of the term’s
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`meaning (“on or next to”), based on a selected embodiment of the ’269
`
`patent, absent an explicit definition of the term. See Prelim. Resp. 12–14;
`
`Pet. 16. We, therefore, will use the ordinary and customary meaning of the
`
`term “near.” Petitioner’s proposed construction of “near” as “within a short
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`distance” is consistent with the ordinary meaning of the term, as reflected by
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`a dictionary definition of “at, within, or to a short distance.” Pet. 16 (citing
`
`Ex. 1012, 823). We will adopt Petitioner’s proposed ordinary meaning of
`
`the term for the purposes of this Decision.
`
`As discussed further below, infra Sections II.B and II.E, although
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`there is a difference in the parties’ proposed constructions of the term
`
`“generally cylindrical,” under Patent Owner’s proposed construction of the
`
`term, we would nonetheless institute review on the associated claims. See
`
`Prelim. Resp. 9–11; Pet. 13–14. Therefore, we need not construe this term
`
`or any other terms explicitly at this time.
`
`B.
`
`Alleged Obviousness of Claims 1, 2, 6, and 7 over Asada
`
` Petitioner contends that claims 1, 2, 6, and 7 would have been obvious
`
`over Asada. Pet. 28–36. To support its contentions, Petitioner provides
`
`explanations as to how the prior art discloses each claim limitation. Id.
`
`Petitioner also relies upon the Declaration of Brian W. Anthony, Ph.D. (Ex.
`
`1003) (“Anthony Declaration”) to support its positions. Patent Owner
`
`counters that the prior art does not render the claims obvious because the
`
`
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`7
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`Patent 8,989,269 B2
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`prior art fails to teach some claim limitations and the rational to modify the
`
`prior art is insufficient. Prelim. Resp. 20–32.
`
`
`
`On this record, we are persuaded by Petitioner’s explanation and
`
`evidence in support of the obviousness grounds asserted under Asada against
`
`claims 1, 2, 6, and 7. We begin our discussion with a brief summary of
`
`Asada, and then address the evidence, analysis, and arguments presented by
`
`the parties.
`
`1. Asada (Ex. 1005)
`
`
`
`Asada discloses “miniaturized data acquisition features with advanced
`
`photoplethysmographic (PPG) techniques to acquire data related to the
`
`patient’s cardiovascular state.” Ex. 1005, 28. For example, a ring
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`configuration of the sensor may monitor a patient’s heart rate, oxygen
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`saturation, and heart rate variability, accounting for technical issues such as
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`motion artifacts. Id. Asada describes a ring sensor prototype that includes
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`an optical sensor unit with an LED and a photodetector; and an onboard
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`microcomputer for data acquisition, signal processing, data acquisition,
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`filtering, and bi-directional radio-frequency (“RF”) communication. Id. at
`
`30, 34. Asada’s Figure 11 is reproduced below.
`
`
`
`
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`8
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`Patent 8,989,269 B2
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`Figure 11 of Asada depicts a ring sensor band that protects optical
`
`components and hides wires from the outside environment. Ex. 1005, 35.
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`The ring prototype configuration uses bands to hold the sensor unit and
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`secure contact with the skin, as well as shield the unit. Id. at 34.
`
`2.
`
`Analysis
`
`Petitioner contends that Asada discloses a monitoring device as
`
`claimed, and refers to Figure 11 of Asada, as annotated by Petitioner, for
`
`correspondence of the claimed elements to Asada’s structures. See Pet. 18–
`
`20. Annotated Figure 11 of Asada is reproduced below.
`
`Figure 11 is a sensor band of Asada with Petitioner’s annotations shown in
`
`red. Pet. 19. Dr. Anthony testifies that, although Asada does not correlate
`
`its descriptions with the reference numbers shown in Figure 11, this type of
`
`structure was known in the prior art. Ex. 1003 ¶ 61 (citing Ex. 1007, Fig.
`
`2B; Ex. 1008, Fig. 6; Ex. 1009, Fig. 1B; Ex. 1011, Fig. 10; Ex. 1016, 3:42–
`
`
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`9
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`IPR2017-00318
`Patent 8,989,269 B2
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`46, Figs. 1A, 1B). Dr. Anthony alleges that one of ordinary skill in the art
`
`would have recognized the depicted elements and that the layered structure
`
`was known for decades. Id. Swedlow,7 for example, describes a layered
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`adhesive wrap for use around a finger, which discloses LEDs and
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`photodetectors coupled to an outer bandage layer, coupled to a clear
`
`polyethylene layer, with holes for the optical elements. See Pet. 19–20
`
`(citing Ex. 1003 ¶ 61; Ex. 1006, 5:43–49, 5:66–68, Fig. 2). Dr. Anthony
`
`asserts that a person of ordinary skill in the art would have understood that
`
`similar features logically would have been included in Asada’s device.
`
`Ex.1003 ¶ 61.
`
`Patent Owner argues that institution should be denied because the
`
`Petitioner takes a “shotgun” approach to identifying the portions of Asada to
`
`teach the claim 1 limitations and switches among embodiments. Prelim.
`
`Resp. 22–24. Patent Owner further argues that there are variations in cited
`
`Figures 6 and 10 from Figure 11 of Asada, and the Petition does not provide
`
`reasoning why one of ordinary skill in the art would have had reason to
`
`combine these embodiments. Id. at 22–23. Patent Owner also refers to
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`Figure 15 of Asada, asserting that no explanation is provided to support
`
`securing the inner and outer body portions, or why this embodiment would
`
`have been modified. Id. at 24. Patent Owner alleges that Petitioner relies
`
`upon combining different prototype devices of Asada, fails to account for
`
`trade-offs of them in combination, does not provide reasoning for
`
`combining, and employs hindsight reconstruction. Id. at 29–32.
`
`Patent Owner turns to the Petition’s description of the components of
`
`Figure 11 of Asada, arguing that the alleged identification and description of
`
`
`7 U.S. Patent No. 5,226,417 (issued July 13, 1993) (Ex. 1006).
`
`
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`10
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`IPR2017-00318
`Patent 8,989,269 B2
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`the elements, and mapping of the limitations of claim 1 to Asada, is
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`supported only by conclusory statements. Prelim. Resp. 24 (citing Ex. 1003
`
`¶ 76). More specifically, Patent Owner asserts that there is “no explanation
`
`as to why a person having ordinary skill in the art would interpret the
`
`identification and function of each of the components of Figure 11 as
`
`relating to claim elements.” Id. at 25. Patent Owner argues that neither
`
`Asada nor Petitioner provides any explanation as to how the identified
`
`“inner body” and “outer body” portions shown in Figure 11 are “secured
`
`together,” or of the identity of layer 3 (the “claimed ‘inner body portion’”).
`
`Id. at 26. Patent Owner further avers that there is no explanation or
`
`reasoning provided why layer 3 would be considered to be disposed over the
`
`LED and photodetector, or if layer 3 were made of light transmissive
`
`material, that this would serve to scatter light throughout the material with
`
`less light imparted to the skin. Id. at 27. Patent Owner alleges that one of
`
`ordinary skill in the art would more reasonably view component “7” of
`
`annotated Figure 11 to be a complementary piece of Velcro to component
`
`“1,” rather than a “microprocessor/CPU.” Id. Patent Owner further argues
`
`that Petitioner has not demonstrated that spacer “3” is “generally
`
`cylindrical,” nor would it have the predominant shape of a cylinder. Id.
`
`As to the teaching of the claim 1 limitation: “a layer of cladding
`
`material near the inner body portion inner surface,” Patent Owner argues
`
`that Petitioner’s reasoning for contending that layer 2 is cladding is faulty
`
`because “optical shielding” is disclosed only to protect the sensor unit from
`
`ambient light and refers only to the outer ring of Asada. Prelim. Resp. 28
`
`(citing Ex. 1005, 34–35). Patent Owner also asserts that Petitioner provides
`
`no reasoning for the teaching of this claim limitation by Asada. Id. at 29.
`
`
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`11
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`IPR2017-00318
`Patent 8,989,269 B2
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`Patent Owner also refers to its innovations in biometrics wearables,
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`asserting that its sensors are more accurate than competitors’ products, and
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`that it has received industry recognition, numerous awards, and patents for
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`these innovations. Prelim. Resp. 2–4. Patent Owner also refers to its
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`licensing of its patent portfolio program with multiple licensing partners. Id.
`
`at 3–4.
`
`
`
`On this record, we are persuaded that Petitioner has provided
`
`sufficient support that Asada adequately teaches the limitations of claim 1.
`
`Although the elements of Asada’s Figure 11 are not specifically identified
`
`within the reference, the views of Petitioner’s declarant on the correlations
`
`for the elements at issue are supported by known prior art, and “Prototype
`
`B” depicted in Figure 11 is a redesign that uses elastic materials to hold the
`
`components depicted in other prototypes of Asada. See Ex. 1005, 35;
`
`Ex. 1003 ¶ 62. In this light, and with Figure 11 representing an exploded
`
`view of the sensor band, our view is that the Petition sufficiently supports
`
`the teachings of Asada as mapped to the claim elements.
`
`
`
`At this juncture, we are also not persuaded by Patent Owner’s
`
`arguments relating to the alleged “shotgun” approach of Petitioner’s
`
`reference to multiple figures of Asada. Patent Owner overstates the
`
`allegations concerning mixing and matching embodiments. Asada presents
`
`a discussion of technical issues related to ring sensors, and then presents
`
`different prototypes directed to addressing those issues, but there is no
`
`suggestion that aspects of the prototypes are not combinable. See Ex. 1005,
`
`28–39.8 In any event, although different embodiments are identified as
`
`
`8 A rationale for a claim to be obvious is when “a person of ordinary skill
`has good reason to pursue the known options within his or her technical
`grasp. If this leads to the anticipated success, it is likely that product [was]
`
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`IPR2017-00318
`Patent 8,989,269 B2
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`disclosing a “sensor band,” and some aspects of the other embodiments are
`
`used to buttress the teachings of Figure 11, all the limitations of claim 1 are
`
`mapped to corresponding components of Figure 11 of Asada in the Petition.
`
`See Pet. 29–34. Additionally, we do not find Patent Owner’s view that
`
`Petitioner’s mapping of layer 2 of Figure 11 to “cladding material” is
`
`flawed. Patent Owner’s premise is that optical shielding is limited to that
`
`from ambient light, (Ex. 1005, 34), but there is no suggestion in Asada that
`
`the use is so limited, and the reference in Asada is to the outer band, but not
`
`to the portion of the sensor band nearest the skin.
`
`
`
`As to Asada’s disclosure of “generally cylindrical” body portions,
`
`Figure 11 refers to a sensor band, and Asada refers to the use of the band on
`
`a finger, so there is support for the Petition’s contention that a person of
`
`ordinary skill in the art would have recognized that the depicted element
`
`encircles a finger. See Pet. 29–30 (citing Ex. 1003 ¶¶ 75, 76; Ex. 1005, 35
`
`(referring to Prototype B of Fig. 11 as a “transmittal PPG ring sensor” and a
`
`“sensor band.”)). Under Patent Owner’s proposed construction of the claim
`
`term “generally cylindrical” as “having the predominant shape of a cylinder”
`
`(Prelim. Resp. 11), the inner and outer body portions of Asada’s sensor band
`
`of Figure 11 would fall under that construction.
`
`
`
`Further, although Patent Owner generally refers to the commercial
`
`successes of its innovations, there is no evidence presented in the
`
`Preliminary Response of a nexus between the evidence and the merits of the
`
`claimed invention, nor are there any arguments presented on the application
`
`of objective indicia of nonobviousness. As such, at this juncture, we cannot
`
`
`not of innovation but of ordinary skill and common sense.” KSR Int’l. Co. v.
`Teleflex, Inc., 550 U.S. 398, 421 (2007).
`
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`subscribe any weight to potential secondary considerations, to the extent that
`
`Patent Owner intended to assert any.9
`
`
`
`Based on the record before us, we are persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that claim
`
`1 is obvious over Asada. For the dependent claims 2, 6, and 7, we also are
`
`persuaded that Petitioner has presented sufficient evidence to demonstrate a
`
`reasonable likelihood that Asada teaches all of the limitations of the claims
`
`based on the record before us. See Pet. 34–36.
`
`C. Alleged Obviousness of Claim 3 over Asada and Hicks
`
`
`
`Petitioner contends that claim 3 would have been obvious over Asada
`
`and Hicks. Pet. 36–38. To support its contentions, Petitioner provides
`
`explanations as to how the prior art discloses each claim limitation. Id.
`
`Petitioner also relies upon the Anthony Declaration to support its positions.
`
`
`
`On this record, we are persuaded by Petitioner’s explanation and
`
`evidence in support of the obviousness grounds asserted under Asada and
`
`Hicks against claim 3. We begin our discussion with a brief summary of
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`Hicks, and then address the evidence presented.
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`1. Hicks (Ex. 1008)
`
`
`
`Hicks is directed to pulse oximetry sensors that may be used on
`
`fingers. Ex. 1008, 1:5–7, 8:3–8. Hicks discloses “a substantially clear
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`flexible substrate that may be conformed about a portion of a patient’s
`
`tissue, such as a finger . . . allowing for emitting and detecting light signals
`
`through this clear substrate,” and “one or more LED’s 40, 42 are disposed on
`
`a first surface of the finger and a photodetector 38 is disposed on an
`
`
`9 This deficiency also applies to each of the other grounds considered
`below.
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`IPR2017-00318
`Patent 8,989,269 B2
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`opposing surface of the finger.” Id. at 2:4–10, 8:6–8. Hicks discloses “a
`
`compressible material layer may be disposed on the patient side surface”
`
`with “apertures aligned with each light emitter and/or light detector . . .
`
`allowing light to be emitted and/or detected through these apertures free
`
`from interference.” Id. at 2:35–41. Hicks also discloses that a clear
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`substrate can act partially as a lens with drops of clear adhesive used to
`
`provide some focusing function for the LEDs, or a lens, such as a frensel
`
`lens, may be formed integrally into the clear substrate to provide light
`
`focusing. Id. at 9:38–42, 13:42–48.
`
`2. Analysis
`
`
`
`Claim 3 recites the limitation of “a lens region in optical
`
`communication with the at least one optical emitter that focuses light emitted
`
`by the at least one optical emitter.” Ex. 1001, 30:56–59. Petitioner alleges
`
`that Hicks teaches the use of a clear substrate that may act as a lens, or a
`
`separate lens structure that may be used in conjunction with the clear
`
`substrate. Pet. 38 (citing Ex. 1008, 9:38–40, 13:42–51). Petitioner contends
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`that Asada and Hicks are directed to non-invasive optical biosensors and are
`
`from the same field of endeavor. Id. at 36 (citing Ex. 1003 ¶ 88). Petitioner
`
`also alleges that including Hicks’ lens structure with Asada’s clear layer
`
`“would have simply been a combination of prior art elements according to
`
`known methods to yield predictable results,” and would have improved the
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`function of Asada’s device. Id. at 37–38 (citing Ex. 1003 ¶ 90). As such,
`
`Petitioner avers that it would have been obvious to a person of ordinary skill
`
`in the art to combine the teachings of Asada and Hicks. Id.
`
`
`
`On this record, we are persuaded that Petitioner has provided
`
`sufficient evidence and explanations as to how the prior art discloses each
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`IPR2017-00318
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`claim limitation, as well as a sufficiently articulated rationale for combining
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`their teachings. Therefore, we determine that Petitioner has demonstrated a
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`reasonable likelihood that it will prevail on its assertion that claim 3 of the
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`‘269 patent is obvious over Asada and Hicks.
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`D. Alleged Obviousness of Claims 4 and 5 over Asada and Hannula, Claim
`8 over Asada and Delonzor, and Claims 9 and 10 over Asada and Al-Ali
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`Petitioner contends that claims 4 and 5 would have been obvious over
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`Asada and Hannula, claim 8 would have been obvious over Asada and
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`Delonzor, and claims 9 and 10 would have been obvious over Asada and Al-
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`Ali. Pet. 39–48. To support its contentions, Petitioner provides
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`explanations as to how the prior art discloses each claim limitation. Id.
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`Petitioner also relies upon the Anthony Declaration to support its positions.
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`On this record, we are persuaded by Petitioner’s explanation and
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`evidence in support of the obviousness grounds asserted. We begin our
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`discussion with a brief summary of Hannula, Delonzor, and Al-Ali, and then
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`address the evidence, analysis, and arguments presented.
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`1.
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`Hannula (Ex. 1009)
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`Hannula discloses a non-invasive optical biosensor that uses LEDs to
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`emit light into tissue and measures the light passing through the tissue using
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`a photodetector. Ex. 1009, 1:6–16, 2:44–47. Figures 1B and 1C are
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`reproduced below:
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`Figures 1B and 1C depict cross-section and detailed view, respectively, of an
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`embodiment of sensor. Ex. 1009, 2:26–29. As shown in Figures 1B and 1C,
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`Hannula discloses components of the sensors such as LED 111,
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`photodetector 116, transparent window 118, and multiple laminated layers
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`112–114. Id. at 2:44–57, 3:9–13. Hannula also discloses that LED 111 and
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`photodetector 116 may be surrounded by reflective mask 117, which may be
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`made of polyester or polypropylene with a reflective metal surface. Id. at
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`2:58–59, 2:66–3:3, Figs. 1B and 1C. “Reflective mask 117 reflects light
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`from LED 111 (that has passed through patient tissue and exited near the
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`photodetector) back toward photodetector 116 like a mirror.” Id. at 2:58-62.
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`This increases the amount of LED light that the photodetector receives from
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`the patient’s tissue and also may assist in blocking ambient light and LED
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`light that may shunt through the laminated layers. Id. at 2:63–66.
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`2.
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`Delonzor (Ex. 1010)
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`Delonzor discloses pulse oximeter sensors, with elements “preventing
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`the shunting of light between the emitter and detector without passing
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`through blood-perfused tissue.” Ex. 1010, 1:6–9. Delonzor describes
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`problems associated with ambient light which can distort the signal at the
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`photodetector, as well as shunting of light directly from the photoemittor to
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`the photodetector. Id. at 1:39–45. Delonzor describes different types of
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`“shunt barriers” (e.g., fiber material, perforations or air gaps, and opaque
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`material) that may be included in the sensor devices to block light
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`transmission directly from the emitter to the detector. Id. at 3:7–48.
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`3.
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`Al-Ali (Ex. 1011)
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`Al-Ali discloses a non-invasive optical biosensor that detects light
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`attenuated by body tissue. Ex. 1011 ¶ 4. Al-Ali discloses that typical
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`components of such biosensors include “one or more energy emission
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`devices, such as specific wavelength emitting LEDs, and one or more energy
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`detection devices” and that the sensor may be attached around “a patient’s
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`finger, ear, ankle, or the like.” Id. at ¶ 7. Al-Ali also discloses the use of
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`optical filters, where “optical filters or the like could also be housed in
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`window 732” of clip 218. Id. at ¶ 55, Fig. 7. Windows that allow light
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`emitted from the LED to pass through the tape layer into the finger and also
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`to pass through to the detector “may be holes, transparent material, optical
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`filters, or the like.” Id. at ¶ 62, Fig. 10.
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`4. Analysis
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`Claims 4 and 5 recite the limitations of a “light reflective material”
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`and “at least one optical detector comprises a first and second optical
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`detectors, and further comprising a signal processor, and wherein a portion
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`of light reflected in by the light reflective material and detected by the
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`second optical director is processed by the signal processor as a noise
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`reference,” respectively. Ex. 1001, 30:60–61, 30:63–31:1. Petitioner alleges
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`that Asada teaches the need for reduction of noise, with multiple detectors
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`for this use, as well as signal processing. Pet. 41–42. Hannula teaches the
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`use of a light reflective material, and Petitioner contends including
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`Hannula’s reflective mask in Asada is simply the combination of prior art
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`elements according to known methods to yield predictable results. Id. at 39–
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`40. Additionally, Petitioner alleges that modifying Asada with Hannula’s
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`teachings would improve Asada’s function and reduce the amount of light
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`that exits the body without reaching the photodetector. Id. at 40. As such,
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`Petitioner avers that it would have been obvious to a person of ordinary skill
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`in the art to combine the teachings of Asada and Hannula. Id. at 40, 43.
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`Claim 8 recites a monitoring device wherein “at least one window
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`comprises at least two windows,” with “light blocking material positioned
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`between the at least one optical emitter and the at least optical detector such
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`that” the emitter and detector are not in direct optical communication with
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`each other. Ex. 1001, 31:10–16. The Petition asserts that Asada and
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`Delonzor are directed to optical biosensors. Pet. 43. Petitioner also asserts
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`that Asada indicates the undesirability of a direct optical path between the
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`LED and photodetector (Ex. 1005, 30), which would have led a person of
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`ordinary skill in the art to Delonzor, which addresses the problem by the use
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`of shunt barriers. Id. at 43–44 (citing Ex. 1003 ¶¶ 101, 102; Ex. 1010 1:6–
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`9).
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`Claims 9 and 10 recite, respectively, that the band comprises at least
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`one optical filter configured to selectively pass one optical wavelength, and
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`that the wavelength is for transmission into the body of the subject.
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`Ex. 1001, 31:17–23. Petitioner asserts that Asada and Al-Ali are directed to
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`non-invasion optical biosensors and, thus, are from the same field of
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`endeavor. Pet. 46. The Petition also contends that Asada suggests that “the
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`wavelength of the LED should be selected” based upon the LED and
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`photodetector (Ex. 1005, 33), so a person of ordinary skill would have been
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`led to Al-Ali and its optical filters. Id. at 46–47.
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`At this juncture, Patent Owner does not present disputes specific to
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`Grounds 2–5 of the Petition, short of arguing that some of the asserted
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`grounds are redundant. See generally Prelim. Resp. 20–44. We address the
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`issue of redundancy below, but based on the record before us, we are
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`persuaded that Petitioner has demonstrated a reasonable likelihood that it
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`will prevail on its assertion that claims 4 and 5 would be obvious over Asada
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`and Hannula, claim 8 would be obvious over Asada and Delonzor, and
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`claims 9 and 10 would be obvious over Asada and Al-Ali.
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`E. Alleged Obviousness of Claims 1 and 2 over Goodman
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`Petitioner contends that claims 1 and 2 would have been obvious over
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`Goodman. Pet. 48–56. To support its contentions, Petitioner provides
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`explanations as to how the prior art discloses each claim limitation. Id.
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`Petitioner also relies upon the Anthony Declaration to support its positions.
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`Patent Owner counters that the prior art does not render the claims obvious
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`because the prior art fails to teach some of the claim limitations. Prelim.
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`Resp. 32–41.
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`On this record, we are persuaded by Petitioner’s explanation and
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`evidence in support of the obviousness grounds asserted under Goodman
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`against claims 1 and 2. We begin our discussion with a brief summary of
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`Goodman, and then address the evidence, analysis, and arguments presented
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`by the parties.
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`1. Goodman (Ex. 1007)
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`Goodman generally discloses an optical biosensor that measures
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`arterial oxygen saturation. Ex. 1007, 1:11–14. The sensors may be
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`configured for use with fingertips, toes, hands or feet, as well as on the skin
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`of the nasal septum overlying the carotid cavity. Id. at 9:65–6