Filed on behalf of Valencell, Inc.
`By:
`
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
`
`
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`T. William Kennedy, Jr. (bkennedy@bcpc-law.com)
`Marcus Benavides (mbenavides@bcpc-law.com)
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
`Tel: 214.785.6670
`Fax: 214.786.6680
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`PATENT OWNER RESPONSE PURSUANT TO
`35 U.S.C. § 313 and 37 C.F.R. § 42.107
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Introduction ............................................................................................ 6
`
`I.
`
`II. Overview of the ’269 Patent .................................................................. 8
`
`A. Description of Embodiments ................................................................. 8
`
`B. Level of Ordinary Skill in the Art ........................................................ 15
`
`C. Exemplary Claim ................................................................................. 16
`
`
`III. Summary of Certain Prior Art References Asserted ........................... 17
`
`A. Goodman .............................................................................................. 17
`
`B. Asada .................................................................................................... 19
`
`
`IV. Claim Construction .............................................................................. 21
`
`A. “Cladding Material” ............................................................................. 21
`
`B. “Light Guiding Interface” .................................................................... 25
`
`C. “Generally Cylindrical” ....................................................................... 26
`
`
`V. Argument ............................................................................................. 27
`A. Ground 1: Asada - Single Reference Obviousness – Claims 1, 2, 6,
`and 7 .................................................................................................... 27
`
`
`1. “the inner body portion comprising light transmissive material” ... 30
`
`2. “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 ” ...... 35
`
`
`
`
`
`
`

`

`3. Petitioner is Limited to the Embodiment of Figure 11 in Asada ..... 37
`
`
`B. Ground 2: Asada in view of Hicks - Claim 3 ...................................... 40
`
`C. Ground 3: Asada in view of Hannula – Claims 4 and 5 ...................... 44
`
`1. Claim 4 - “a light reflective material on at least a portion of one or
`both of the inner and outer surfaces”............................................... 44
`
`
`2. Claim 5 – Picking and Choosing from Asada’s Embodiments ....... 46
`
`
`D. Ground 4: Asada in view of Delonzor - Claim 8 ................................. 48
`
`E. Ground 5: Asada in view of Al-Ali - Claims 9 and 10 ........................ 48
`
`F. Ground 6: Goodman - Single Reference of Obviousness - Claims 1
`and 2 .................................................................................................... 49
`
`
`1. Goodman Does Not Teach or Suggest a “window formed in the
`cladding material that serves as a light-guiding interface to the body
`of the subject” .................................................................................. 49
`
`
`G. Ground 7: Goodman in View of Hicks – Claim 3 ............................... 53
`
`H. Ground 8 - Goodman in View of Hannula – Claim 4 ......................... 56
`
`1. Considering Goodman and Hannula as a Whole, They Would not be
`Combined ........................................................................................ 57
`
`
`2. Petitioner’s Premise for Combining Goodman and Hannula is
`Faulty ............................................................................................... 59
`
`
`I. Ground 9: Goodman in View of Hannula and further in View of Asada
`– Claim 5 ............................................................................................. 61
`
`
`1. Considering Goodman, Hannula, and Asada as a Whole, a POSA
`Would not Combine Them .............................................................. 62
`
`
`a) Goodman as a Whole compared to Asada as a Whole ................ 62
`
`
`
`
`
`

`

`b) Goodman as a Whole compared to Hannula as a Whole ............ 64
`
`
`2. Petitioner’s Premise for Combining Goodman and Asada Is Faulty
` ......................................................................................................... 64
`
`
`3. Petitioner’s Premise for Combining Goodman and Hannula is
`Faulty ............................................................................................... 66
`
`
`4. Problems with Adding Components to Goodman ........................... 66
`
`
`J. Ground 10: Goodman in view of Asada – Claims 6 and 7 .................. 69
`
`K. Ground 11: Goodman in view of Delonzor – Claim 8 ........................ 72
`
`L. Ground 12: Goodman in view of Al-Ali – Claims 9 and 10 ............... 72
`
`
`VI. The Arguments Apply across the Grounds .......................................... 72
`
`VII. Patent Owner Does Not Consent to the PTAB Adjudicating the
`Patentability or Validity of the ’269 Patent. ........................................ 73
`
`
`VIII. Conclusion ........................................................................................... 73
`
`
`
`
`
`
`
`

`

`TABLE OF EXHIBITS
`
`2002
`
`2003
`2004
`
`2005
`2006
`
`2007
`
`2008
`2009
`2010
`2011
`
`2012
`
`Exhibit No. Description
`2001
`S. LeBoeuf, et al., Earbud-Based Sensor for the Assessment of
`Energy Expenditure, HR, and VO2max, OFFICIAL J. AM. C.
`SPORTS M., 2014, 1046–1052
`Biometrics Lab: Performance of Leading Optical Heart Rate
`Monitors During Interval Exercise Conditions
`Valencell website (http://valencell.com/customers/)
`CTA - It Is Innovation (i3) Magazine 2016 Innovation-
`Entrepreneur Awards
`Declaration of T. William Kennedy (Aug. 3, 2017)
`Webster’s Third New International Dictionary, Unabridged
`(2002) (excerpt)
`Declaration of Albert H. Titus in Support of Patent Owner’s
`Response to Petition (Sep. 22, 2017)
`Curriculum Vitae of Albert H. Titus
`Deposition Transcript of Anthony (Sep. 13, 2017)
`Deposition Transcript of Anthony (Sep. 15, 2017)
`Mendelson, et al., Noninvasive Pulse Oximetry Utilizing Skin
`Reflectance Photoplethysmography, IEEE Transactions on
`Biomedical Engineering, Vol. 35, No. 10, October 1988
`Pujary, et al., Photodetector Size Considerations in the Design
`of a Noninvasive Reflectance Pulse Oximeter for Telemedicine
`Appications, IEEE, 2003
`New Oxford American Dictionary, 2d Ed. (2005) (excerpt)
`Declaration of T. William Kennedy (Sep. 22, 2017)
`
`2013
`2014
`
`
`
`
`
`
`
`
`
`

`

`I. Introduction
`
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, Patent Owner
`
`Valencell, Inc. (“Patent Owner” or “Valencell”) responds to the Petition (Paper 2)
`
`(the “Petition”) filed by Apple Inc. (“Petitioner”) challenging claims 1-10 of U.S.
`
`Patent No. 8,886,269 (Ex. 1001) (the “’269 patent”) to LeBoeuf et. al, with respect
`
`to Grounds 1-12, on which the Board instituted inter partes review.
`
`The ’269 patent describes “wearable light-guiding bands for physiological
`
`monitoring.” Ex. 1001 at [54]; Titus Dec. (Ex. 2007) at ¶ 96. Consistent with the
`
`title of the invention, the ’269 patent discloses physiological bands that use light
`
`guides to direct the available light in the monitoring device to specific, particularized
`
`regions of the wearer. See, e.g., Ex. 1001 at 2:1-3 (“[t]he optical emitter, via the
`
`light-guiding cover, directs optical energy towards a particular region of [the] ear”);
`
`see also id. at 13:5-12; 14:18-23; 18:31-34; 19:7-10; 20:67-21:2; 28:30-34; and
`
`29:42-46; Titus Dec. at ¶ 96. As the ’269 patent explains, the integrated light-guiding
`
`capabilities of the invention ensure that each person wearing a monitor will generate
`
`the needed blood-flow signal for the desired physiological monitoring. Id. at 11:30-
`
`34; Titus Dec. at ¶96.
`
`Patent Owner’s approach contradicted the conventional wisdom, which
`
`focused on increasing the amount of light emitted and/or collected by a monitoring
`
`device to improve the performance of the monitoring devices. See, e.g. Ex. 2011 at
`
`
`
`
`

`

`804 (“As expected, we can see that by using multiple photodetectors a larger fraction
`
`of the backscattered radiation from the skin can be collected and, therefore, larger
`
`photoplethysmograms can be recorded.”); id. (“The selection of each LED driving
`
`current determines the effective penetration depth of the incident light. For a given
`
`LED/photodiode separation, it is clear that with higher levels of incident light, a
`
`larger pulsatile vascular bed will be illuminated. Consequently, the reflected
`
`photoplethysmograms will contain a larger ac component. Practical considerations,
`
`however, limit the driving current of each LED to the manufacturer specified
`
`maximum power dissipation.”); Ex. 2012 at 149 (“The data presented in this study
`
`demonstrate that the driving currents of the LEDs in a reflectance pulse oximeter
`
`can be lowered significantly without compromising the quality of the PPGs simply
`
`by increasing the overall size of the PD in the sensor.”); Titus Dec. at ¶ 94.
`
`But the strategy of increasing emitted and/or detected light results in a specific
`
`problem. If light is delivered to the wrong places (e.g., places that have a lot of
`
`motion noise), or if light is collected from the wrong places (e.g., places that have a
`
`lot of motion noise), then the monitor will likely receive a less useful signal that
`
`produces a poor physiological measurement. See e.g., Ex. 1007 at 2:36-52
`
`(explaining that the pulsatile signal comes from light directed away from the bone
`
`and toward the arterial blood flow); see also Ex. 1005 at 31 (explaining that “either
`
`the PD or the LED, should be placed on the lateral face of the finger near the digital
`
`
`
`
`

`

`artery”); Titus Dec. at ¶ 95. In those situations, increasing the amount of light emitted
`
`or detected simply increases the amount of useless signal received. Titus Dec. at ¶
`
`95.
`
`As discussed above, the ’269 patent allows the claimed monitoring device to
`
`direct and receive light in a guided way to specific parts of the body, which
`
`maximizes useful light signals received. Ex. 1001 at 11:30-34; Titus Dec. at ¶ 96.
`
`For example, claim 1 provides the proper direction of light via its windows, cladding
`
`material, and light transmissive material that is configured to deliver and collect light
`
`to one or more locations of the body. Titus Dec. at ¶ 97.
`
`As shown herein, none of the prior art discloses or renders obvious the
`
`particular claimed solution in the ’269 patent; thus, Petitioner has failed to meet its
`
`burden to show unpatentability of claims 1-10 of the ’269 patent.
`
`II. Overview of the ’269 Patent
`
`A. Description of Embodiments
`
`The ’269 patent states that “improved ways of collecting, storing and
`
`analyzing physiological information are needed.” Ex. 1001 at 1:40-41; Titus Dec. at
`
`¶ 43. To address this need, the ’269 patent discloses “wearable light-guiding bands
`
`for physiological monitoring.” Ex. 1001 at [54]; Titus Dec. at ¶ 96. The ’269 patent
`
`discloses various embodiments of that monitoring device. One such embodiment is
`
`
`
`
`

`

`disclosed as “‘light-guiding’ earbud 30” (Ex. 1001 at 13:11) as depicted for example
`
`in Figure 3. Titus Dec. at ¶ 44.
`
`Ex. 1001, Fig. 3.
`
`Another such embodiment is shown in Figures 22A and 22B:
`
`
`
`
`
`
`

`

`
`
`Id., Figs. 22A and 22B (showing monitoring device attached to a finger); Titus Dec.
`
`at ¶ 45. As shown in Figures 22A and 22B, the monitoring device “may be
`
`configured to be attached to earlobes, fingers, toes, other digits, etc.” Ex. 1001 at
`
`27:58-61; Titus Dec. at ¶ 45.
`
`The ’269 patent discusses improving the collection of physiological
`
`information by specifically orienting the optical emitter and the optical detector of
`
`the monitoring device. Titus Dec. at ¶ 46. The ’269 patent explains that the “optical
`
`emitter 24 and optical detector 26 are each oriented such that their respective primary
`
`emitting and detecting planes P1, P2 are each facing a respective direction A3, A2
`
`that is substantially parallel with direction A1.” Ex. 1001 at 14:48-57; Titus Dec. at
`
`¶ 46. Annotated Figure 3 below illustrates an example of that configuration:
`
`
`
`
`

`

`
`
`
`
`Ex. 1001 at Fig. 3 (excerpted and with annotations).
`
`The ’269 patent further discloses a light guide (also referred to as cover 18
`
`(see, e.g., id. at 14:24-25)) that delivers light emitted by the device along direction
`
`A3 to the body. Titus Dec. at ¶ 47. Figure 3 shows a cover 18 that “includes cladding
`
`material 21 on an inner surface 18b thereof and on an outer surface 18a thereof.” Ex.
`
`1001 at 14:15-17; Titus Dec. at ¶ 47. “The optical emitter 24 generates inspection
`
`light 111 and the light-guiding region 19 of the light guide 18 directs the inspection
`
`light 111 towards an ear region.” Ex. 1001 at 14:38-40; Titus Dec. at ¶ 47. “[T]he
`
`cover 18 serves as a light guide that delivers light from the optical emitter 24 through
`
`the end portion 18f and into the ear canal C of a subject at one or more predetermined
`
`locations and that collects light external to the earbud housing 16 and delivers the
`
`
`
`

`

`collected light to the optical detector 26.” Ex. 1001 at 14:18-23; Titus Dec. at ¶ 47.
`
`The emitted light is guided through the light-guiding region 19 to exit the device
`
`along direction A3 at end portion 18f as shown in Fig 3. Titus Dec. at ¶ 47.
`
`
`
`Ex. 1001, Fig. 3 (excerpted and annotated).
`
`That light guide also directs light back to the optical detector 26. Titus Dec.
`
`at ¶ 48. Referring to Figure 3 (copied and annotated below), inspection light 111
`
`generated by the optical emitter 24 “interrogates the surface of the ear, penetrates
`
`the skin of the ear, and generates a scattered light response 110 which may
`
`effectively inspect blood vessels within the ear region.” Ex. 1001 at 14:40-44; Titus
`
`Dec. at ¶ 48. “The optical detector 26 detects scattered light 110 from an ear region
`
`and the light-guiding region 19 of the light guide 18 guides the light to the optical
`
`detector 26 through the light-guiding region 19, as illustrated.” Id. at 14:44-47; Titus
`
`
`
`
`

`

`Dec. at ¶ 48. Light guide 18 directs the collected light through the light-guiding
`
`region 19 to the optical detector along direction A2 at end portion 18f as shown in
`
`Fig. 3. Titus Dec. at ¶¶ 48-50.
`
`
`
`Ex. 1001, Fig. 3 (excerpted and annotated).
`
`The ’269 patent continues, discussing the important function of cladding
`
`material that helps confine light to light guiding region: “The light guiding region
`
`19 of the light guide 18 in the illustrated embodiment of FIG. 3 is defined by cladding
`
`material 21 that helps confine light within the light guiding region 19.” Id. at 14:58-
`
`60; Titus Dec. at ¶ 49. “An end portion 18f of the cover outer surface 18a does not
`
`have cladding material. As such, the cover 18 serves as a light guide that delivers
`
`light from the optical emitter 24 through the end portion 18f and into the ear canal
`
`C of a subject at one or more predetermined locations and that collects light external
`
`
`
`
`

`

`to the earbud housing 16 and delivers the collected light to the optical detector 26.”
`
`Ex. 1001 at 14:17-23; Titus Dec. at ¶ 49.
`
`
`
`Ex. 1001, Fig. 3 (excerpted and annotated).
`
`With additional annotations, Figure 3 (below) shows that “the cover 18 serves
`
`as a light guide that delivers light from the optical emitter 24 [highlighted green]
`
`through the end portion 18f [highlighted blue] and into the ear canal [highlighted
`
`grey] of a subject at one or more predetermined locations.” Ex. 1001 at 14:18-21;
`
`Titus Dec. at ¶ 50. The light guide (cover 18) then “collects light external to the
`
`earbud housing 16 and delivers the collected light to the optical detector 26.” Ex.
`
`1001 at 14:21-23.
`
`
`
`
`
`
`

`

`
`
`
`
`Ex. 1001, Fig. 3 (excerpted and annotated).
`
`As seen in the foregoing description, the ’269 patent discloses physiological
`
`monitors that use light guides to direct the available light in the monitoring device
`
`to specific, particularized regions of the wearer.
`
`B. Level of Ordinary Skill in the Art
`
`For purposes of this response, without agreeing that it is necessarily correct
`
`or complete, Patent Owner does not contest Apple’s position regarding a person of
`
`ordinary skill in the art.
`
`
`
`
`

`

`C. Exemplary Claim
`
`Claim 1 of the ’269 patent recites the following elements (labeled using Petitioner’s
`
`annotations)
`
`
`
` 1.[P] A monitoring device, comprising:
`
`[1.1] a band configured to at least partially encircle a
`portion of the body of a subject, the band comprising:
`[1.2] a generally cylindrical outer body portion and
`a generally cylindrical inner body portion secured together
`in concentric relationship, [1.3] the inner body portion
`comprising light transmissive material, and having outer
`inner surface;
`[1.4] a layer of cladding material near the inner
`body portion inner surface; and
`[1.5] at least one window formed in the cladding
`material that serves as a light-guiding interface to the body
`of the subject; and
`[1.6] at least one optical emitter and at least one optical
`detector attached to the band;
`[1.7] 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.
`’269 patent at column 30, lines 30-53.
`
` The Petition attempts to characterize the claims of the ’269 patent as “nothing
`
`more than what was already known in the prior art.” Petition at 2. But this superficial
`
`characterization relies on impermissible hindsight and reads the teachings of the
`
`’269 patent into the prior art. See Graham v. John Deere Co. of Kansas City, 383
`
`U.S. 1, 36, 86 S. Ct. 684, 703 (1966). As discussed below, when all the elements of
`
`the claims are considered without hindsight bias, and without reading the teachings
`
`of the prior art into the ’269 patent, it remains valid.
`
`III. Summary of Certain Prior Art References Asserted
`
`A. Goodman
`
`Goodman seeks to provide “a noninvasive, reliable, and continuous
`
`monitoring of the vital signs of a patient requiring intensive care to prevent vital
`
`organ damage or reduced biopotential.” Ex. 1007 at 5:3-6 (emphasis added); Titus
`
`Dec. at ¶ 54.
`
` Goodman asserts that its invention “satisfies a present need to provide
`
`information critical to patient treatment even under the most dire conditions.” Ex.
`
`1007 at 6:33-35; Titus Dec. at ¶ 54.
`
` In Goodman, “photoelectrical components, a light source and a light sensor,
`
`are embedded into a flexible adhesive substrate which is bifurcated into two arms.”
`
`
`
`

`

`Ex. 1007 at 5:9-12; Titus Dec. at ¶ 55. Goodman’s Figure 2A shows “this invention
`
`looking towards the photo-sensor, light-emitting-diodes and adhesive surface,” and
`
`FIG. 2B “is a view of the sensor of FIG. 2A illustrating various layers of this
`
`invention peeled back to expose the inner construction.” Ex. 1007 at 8:9-14; Titus
`
`Dec. at ¶ 55.
`
`
`
`
`
`Ex. 1007, Figs. 2A and 2B.
`
`As seen in Figs. 2A and 2B above, the “[flexible adhesive] substrate is
`
`provided with signal connections leading to a measuring device.” Id. at 5:12-13;
`
`Titus Dec. at ¶ 56. Thus, Goodman’s adhesive device by itself cannot measure things
`
`like pulse and heart rate without an external “measuring device.” Titus Dec. at ¶ 56.
`
`This conforms with Goodman’s described advantages of being “entirely disposable
`
`and thus sanitary” (Ex. 1007 at 6:22-23). A hospital does not want to dispose of
`
`relatively valuable components, such as a processor and a display, with each new
`
`patient. Titus Dec. at ¶ 56.
`
`
`
`
`

`

`Goodman touts that “when the sensor is adhesively fastened, the effect of the
`
`light source and photo-sensor being integrated into the adhesive fastener is that they
`
`become, in effect, a part of the skin.” Ex. 1007 at 4:59-62; Titus Dec. at ¶ 57.
`
`Goodman continues, disclosing that “[t]he resulting device is resistant to accidental
`
`removal and avoids constriction of blood vessels both internal and external. Most
`
`importantly, the low mass of the sensor itself and its conformance to the skin
`
`prevents motion, localized force, and the resulting contact interruption among the
`
`light source, photo-sensor and flesh.” Ex. 1007 at 4:62-67; Titus Dec. at ¶ 57.
`
`B. Asada
`
`Asada pertains to a wearable biosensor (“WBS”) such as “a ring sensor for
`
`ambulatory, telemetric, [and] continuous health monitoring.” Ex. 1005 at 28; Titus
`
`Dec. at ¶ 58. Unlike, Goodman, Asada is not suitable for use in an intensive care
`
`environment, considering for example its goal of ambulatory monitoring. See Titus
`
`Decl. at ¶ 58. Instead, Asada discloses examples of wearable biosensors useful in
`
`“monitoring environments…out-of-hospital, [which] are to be worn without direct
`
`doctor supervision.” Ex. 1005 at 28 (emphasis added); Titus Dec. at ¶ 58. It is on
`
`this premise that Asada discloses a WBS that “combines miniaturized data
`
`acquisition features with advanced photophlethysmographic (PPG) techniques to
`
`acquire data related to the patient’s cardiovascular state using a method that is far
`
`superior to existing fingertip PPG sensors.” Ex. 1005 at 28; Titus Dec. at ¶ 58.
`
`
`
`
`

`

`Petitioner relies on Asada’s prototype “A,” which uses wireless functions for
`
`“bi-directional RF communication.” See Petition at 54-55 (citing Ex. 1005 at 34);
`
`Titus Dec. at ¶¶ 59, 66.
`
`
`
`Ex. 1005, Figs. 9 and 10. Unlike Goodman, which is a tethered device, this prototype
`
`shown
`
`in Figures
`
`9
`
`and
`
`10
`
`(copied
`
`above)
`
`“contains
`
`an…RF
`
`transmitter…encapsulated in a compact body and powered by a tiny cell battery used
`
`for wristwatches.” Ex. 1005 at 34; Titus Dec. at ¶ 67. For this prototype, Asada
`
`recognized that “power consumption of the LEDs and the imbedded CPU clock were
`
`a major bottleneck limiting the design. The distance between the LEDs and PDs had
`
`to be shortened for power saving considerations, and the CPU clock was minimized
`
`in order to extend the battery life to a few weeks.” Ex. 1005 at 34; Titus Dec. at ¶
`
`67.
`
`
`
`
`

`

`Petitioner relies on a second prototype “C” for purportedly disclosing a
`
`“second-photodetector,” shown in Figure 6. Titus Dec. at ¶ 64-65.
`
`
`
`Ex. 1007 at Fig. 6. “The dual photodetector design shown in Figure 6 provides both
`
`main signal and noise reference that are distinct [which] allows us to implement
`
`noise-canceling filters effectively despite complex motion artifact.” Ex. 1005 at 34.
`
`This solution is unnecessary in the device of Goodman, which fully eliminates
`
`motion artifacts by conforming to the patient’s skin. Ex. 1007 at 5:41-44; Titus Dec.
`
`at ¶ 65.
`
`IV. Claim Construction
`
`A. “Cladding Material”
`
`The Board should construe “cladding material” as “a material that confines
`
`light within a region.” That construction is directly supported by the specification,
`
`which states that “[t]he light guiding region 19 of the light guide 18 in the illustrated
`
`embodiment of FIG. 3 is defined by cladding material 21 that helps confine light
`
`
`
`

`

`within the light guiding region 19.” ’269 patent, 14:58-61 (emphasis added); see also
`
`id. at 16:14-22; 16:64-17:10; 18:44-46; 18:58-19:2; 28:26-39; 29:42-46; Titus Dec.
`
`at ¶ 78. The ’269 patent also includes numerous illustrations that demonstrate that
`
`the “cladding material” is understood to confine light within a region. For example,
`
`in Figure 3, shown below, the cladding material 21 defines the region 19 that
`
`confines the light 111 and 110:
`
`
`
`’269 patent, Fig. 3 (coloring added to highlight relevant features, with cladding 21
`
`in red, light guiding region 19 in yellow, and light in blue); Titus Dec. at ¶ 79.
`
`Similarly, Figure 22B illustrates that cladding material 21 confines the light that
`
`defines a light-guiding region 19 (highlighted yellow).
`
`
`
`
`

`

`
`
`’269 patent, Fig. 22B (highlighted); Titus Dec. at ¶ 80.
`
`Nevertheless, Petitioner proposes that the “cladding material” be construed as
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`“a material that blocks or reflects at least some light.” Petition at 15. That
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`construction improperly deprives the term “cladding” of its precise meaning in the
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`context of the ’269 patent. Nowhere in the intrinsic or extrinsic evidence is “cladding
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`material” described as only “blocking or reflecting at least some light.” Titus Dec.
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`at ¶ 81. That construction deviates from the plain reading of the specification, which
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`describes how the cladding material helps confine light within a light-guiding region.
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`Titus Dec. at ¶ 81. Under Petitioner’s construction a material that blocks only one
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`photon out of a million could qualify as cladding material, even though it would not
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`be able to confine light within a light-guiding region. Titus Dec. at ¶ 81.
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`Petitioner conflates the specification’s disclosure that many different
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`materials, including air, can be a cladding material with Petitioner’s notion that the
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`cladding material must only “block or reflect at least some light.” The amount of
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`light blocked or reflected by a material is not wholly dependent on a single material,
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`but also includes the difference in the refractive indices between two materials at
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`their conjunction. Titus Dec. at ¶¶ 82-84 (discussing Snell’s Law). That is why the
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`specification notes the “outer cladding may be air, a polymer, plastic, or a soft
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`material having a lower index of refraction than silicone.” Ex. 1001 at 13:22-26,
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`49-52; Titus Dec. at ¶ 82. One of ordinary skill would understand that the cladding
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`material may consist of those otherwise transparent materials because total internal
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`reflection can occur inside the silicone light-guiding area if the outer material has a
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`lower index of refraction than the silicone. See Snell’s Law; Titus Dec. at ¶¶ 85-86.
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`Thus, one of ordinary skill would further reject Petitioner’s construction because,
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`with total internal reflection, more than just “some light” is being reflected.
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`The Board should reject Petitioner’s construction because it has no basis in
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`the intrinsic or extrinsic record, and should instead accept Patent’s Owner’s
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`construction, which comports with the plain language and teachings of the
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`specification.
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`B. “Light Guiding Interface”
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`The broadest reasonable interpretation of the term “light-guiding interface” is
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`“an interface that delivers light along a path.” Titus Dec. at ¶ 87. This comports with
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`the specification and plain meaning of light guide. Titus Dec. at ¶ 88. The
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`specification repeatedly describes a light guide as delivering light along a path. See,
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`e.g., Ex. 1001 at 1:64 - 2:1 (“serves as a light guide to deliver light from the optical
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`emitter into the ear canal of the subject wearing the headset at one or more
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`predetermined locations and … and deliver the collected light to the optical
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`detector.”) (emphasis added); id. at 11:30-32; 14:18-23; 14:38-40; 16:21-22; 18:50-
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`55; 19:54-55; 20:65-67; 28:26-34; 30:42-50.
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`The dictionary definitions of “guide” further support Patent Owner’s position
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`that “light guiding” means “delivering light along a path” by showing that a guide
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`must direct the positioning of something or direct something in a way. Titus Dec. ¶
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`89. For example, in the New Oxford American Dictionary, to “guide” is defined as
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`“to direct the motion or positioning of (something)”. Ex. 2013 at 751. In the
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`Webster’s Third New International Dictionary, to “guide” is defined as “to act as a
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`guide to: direct in a way.” Ex. 2006 at 1009. Both of these definitions support Patent
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`Owner’s construing “light guiding” as “delivering light along a path.”
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`The Board agreed to a similar construction to Patent Owner’s proposal in
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`IPR2017-00315, against U.S. Patent No. 8,929,965, which is related to the ’269
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`patent. There, the Board construed “light guide” as “a mechanism for delivering light
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`along a path.” IPR2017-00315, Paper No. 9 at 10.
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`Petitioner’s argument rests on the tenuous interpretation of a light guiding
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`interface simply allowing light pass into something, which is broader than the plain
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`and ordinary meaning. Petition at 32. The tenuous nature of Petitioner’s
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`interpretation is revealed by Dr. Anthony’s reluctance and evasiveness when asked
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`what “light guiding” generally means. Ex. 2010 at 95:10 through 101:25. Eventually
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`Dr. Anthony admitted that it means that “light is guided along some direction, some
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`path,” which supports Patent Owner’s construction. Id. at 101:22-25.
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`Petitioner has not offered a construction for this term, but its interpretation is
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`broader than the plain meaning. Patent’s Owner’s construction follows the many
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`examples in the specification as well as the opinion of Petitioner’s own expert.
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`Accordingly, the Board should adopt Patent Owner’s construction.
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`C. “Generally Cylindrical”
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`Petitioner argues that “generally cylindrical” means “having a convex shape.”
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`This construction is unreasonably broad. Under Petitioner’s construction anything
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`with a convex shape qualifies a “generally cylindrical.” For example, a contact lens
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`would be generally cylindrical. There is nothing in the intrinsic or extrinsic record
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`that broadens this term to the degree that Petitioner seeks. Petitioner cites to figures
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`22B and 22A from the ’269 patent, but neither show an embodiment with only a
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`convex shape. Petition at 13-14. The Board should reject Petitioner’s unreasonably
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`broad construction and adopt the plain and ordinary meaning of this term, i.e.,
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`generally shaped like cylinder. See Titus Dec. at ¶ 90.
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`V. Argument
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`A. Ground 1: Asada - Single Reference Obviousness – Claims 1, 2, 6, and 7
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`Petitioner’s Ground 1 rests on many faulty assumptions about Asada’s
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`teachings, specifically regarding Asada’s Figure 11. Figure 11 appears in Asada as
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`follows:
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`Ex. 1005 at 35. Figure 11 appears in Asada’s discussion of “Prototype B,” but, in
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`that discussion, Asada never identifies or specifically discusses the enumerated
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`components in Figure 11. Ex. 1005 at 35-36; Titus Dec. at ¶¶ 61, 99-100. Asada’s
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`only discussion of Figure 11 occurs in the following sentence: “The sensor band was
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`redesigned with the use of bio-compatible elastic materials to better hold the LED’s
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`and PD’s, maintain a proper level of pressure, optically shield the sensor unit, and
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`secure the contact with the skin consistently in the face of finger motion (see Figure
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`11).” Ex. 1005 at 35; Titus Dec. at ¶ 100. Nevertheless, Petitioner heavily and
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`liberally annotated Figure 11 (in red below), making assumptions designed to fit
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`Asada to the claims:
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`Ex. 1005, Fig. 11 (with Petitioner’s annotations).
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`Petitioner did not have to make those assumptions because Petitioner’s expert,
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`Dr. Anthony, knows Dr. Asada well. Ex. 2010 at 129:6 through 130:10. They are
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`both Mechanical Engineering faculty at M.I.T. in the same field. Ex. 1004 at 1; Ex.
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`2010 at 130:11-13. Dr. Anthony could have simply walked down to Dr. Asada’s
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`office and asked him for the underlying details of Figure 11 (e.g., a contemporaneous
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`document that describes the enumerated components), but he instead he chose to
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`make assumptions about Figure 11. Id. at 130:11 through 132:11; 144:9-18 . Patent
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`Owner’s attorney called Dr. Asada and implored him for details about Figure 11. Ex.
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`2014, Kennedy Dec.