`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`
`APPLE INC. and FITBIT, INC.
`Petitioners,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner
`
`__________________
`
`Case IPR2017-003181
`Patent 8,886,269
`__________________
`
`
`
`DECLARATION OF BRIAN W. ANTHONY, PH.D.
`IN SUPPORT OF PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`1 IPR2017-01554 has been joined to this current proceeding.
`
`
`
`
`
`APL1102
`Apple v. Valencell
`IPR2017-00318
`
`

`

`
`
`I. 
`II. 
`III. 
`
`IV. 
`
`V. 
`
`VI. 
`
`TABLE OF CONTENTS
`
`Introduction and Overview .......................................................................... 1 
`The ’269 Patent claims do not cover the embodiment of Figure 3. ............ 2 
`Claim Construction ...................................................................................... 3 
`A.  “Cladding Material” ............................................................................... 3 
`B.  “Light Guiding Interface” ....................................................................... 5 
`Goodman discloses or suggests every element of independent claim 1. ..... 7 
`A.  Valencell’s “assembly” of Goodman’s device contradicts Goodman’s
`express disclosure. .................................................................................. 8 
`B.  Goodman discloses a “window formed in the cladding material that
`serves as a light-guiding interface to the body of the subject” even
`under Valencell’s proposed construction. ............................................ 10 
`Asada discloses or suggests every element of independent claim 1. ........ 12 
`A.  Asada’s Layer 3 is an “inner body portion comprising light
`transmissive material,” as claimed. ...................................................... 12 
`B.  “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 ” ...................................................... 16 
`C.  Combining Asada’s embodiments is not required for showing the
`signal processor and RF transmitter. .................................................... 16 
`Combinations of References ...................................................................... 17 
`A.  Grounds 2 & 7: Asada/Goodman in View of Hicks – Claim 3 ............ 17 
`B.  Grounds 3, 8, 9: Asada/Goodman in View of Hannula – Claims 4-5 .. 23 
`C.  Grounds 9 and 10: Goodman, Hannula, and Asada – Claims 5-7 ....... 26 
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`I.
`
`Introduction and Overview
`
`1.
`
`This declaration supplements my declaration (APL1003) submitted
`
`with Apple’s Petition. I maintain my opinions in that declaration and incorporate
`
`here my qualifications and understanding of legal principles. (APL1003, ¶¶1-24.)
`
`This declaration more specifically addresses positions in Valencell’s Patent Owner
`
`Response (Paper 22) (“POR”) and the declaration of Dr. Albert Titus (Ex. 2007)
`
`submitted therewith.
`
`
`2.
`
`The ’269 Patent is directed to the “growing market demand for
`
`personal health and environmental monitors” for use “during daily physical
`
`activity.” (APL1001, 1:21-33.) As I explained in my declaration submitted with
`
`Apple’s Petition (APL1003), when “cutting the wire,” artisans designing a wireless
`
`system looked to wired predecessor technology, using solutions and technical
`
`innovations previously embodied in wired devices. (APL1003, ¶37.) As I further
`
`explained, artisans also understood and routinely considered a variety of design
`
`tradeoffs for achieving wireless capability. (Id.; Ex. 2010, 160:23-161:5, 202:9-
`
`203:14.) During the relevant timeframe for the ’269 Patent, the industry was
`
`evolving toward wireless optical biosensors. Therefore, in my opinion, it is
`
`important to consider this backdrop when analyzing the prior art and not in a
`
`vacuum.
`
`
`3.
`
`In view of Valencell’s arguments, it is still my opinion that all of the
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`claim elements in the ’269 Patent are taught or suggested by Goodman and Asada
`
`alone or in combination with the other prior art references presented in the
`
`Grounds of the Petition. In my opinion, Valencell’s arguments rely on overly
`
`narrow interpretations of the claim elements, inaccurate explanations of the prior
`
`art references, and unfounded concerns about the combinations of prior art
`
`references that inflate potential “detriments” and ignore an artisan’s understanding
`
`of design tradeoffs.
`
`II. The ’269 Patent claims do not cover the embodiment of Figure 3.
`
`Claim 1 of the ’269 Patent recites, in part, “a band configured to at
`4.
`
`least partially encircle a portion of the body of a subject.” In my opinion, the ear
`
`bud in Figure 3 that Valencell refers to almost exclusively in summarizing the ’269
`
`Patent (see POR, pp. 8-15) does not have a band that at least partially encircles a
`
`portion of the body, as required by claim 1. A POSA would have understood that a
`
`band that “encircles” a portion of the body would “surround” or encompass that
`
`portion of the body. (APL1112, p. 410.) The ear bud of Figure 3, for example, is
`
`disposed in the ear–it does not “encircle” any portion of the ear. In my opinion, Dr.
`
`Titus’s interpretation, where “encircle” could include when a body part (e.g., the
`
`ear) goes around the device, does not make any sense. (APL1100, 75:16-77:20.)
`
`This is essentially the opposite of what the claim element recites–that is, Dr.
`
`Titus’s interpretation is such that the ear bud being “encircled” by the ear would
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`meet the limitation.
`
`
`5.
`
`Furthermore, I notice that Valencell’s summary of the ’269 Patent
`
`focuses on terms that are not recited in the claims. For example, Valencell refers to
`
`“light guide 18” and “light guiding region 19” numerous times in its description of
`
`the ’269 Patent. (See POR, pp. 11-15.) The claims, however, do not recite a “light
`
`guide” or a “light guiding region.”
`
`III. Claim Construction
`A.
` “Cladding Material”
`
`6.
`
`In my opinion, Valencell’s proposed interpretation of “cladding
`
`material” as “a material that confines light within a region” is not the broadest
`
`reasonable interpretation of this term in light of the ’269 Patent specification.
`
`(POR, p. 21 (emphasis added).) As I mention above, Valencell focuses on the
`
`“light guiding region 19,” which is not recited in the claims, and the ear bud
`
`embodiment of Figure 3, which does not fall within the scope of the claims, as
`
`support for its interpretation of “cladding material.” (POR, pp. 21-22 (quoting
`
`APL1001, 14:58-61 (“[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.”)) (emphasis in POR).) In all of
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`Valencell’s examples from the ’269 Patent, two layers of cladding material are
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`required in order to “help[] confine light.” (POR, pp. 21-23.) But the claims only
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`recite one layer of cladding material, i.e., “a layer of cladding material near the
`
`inner body portion inner surface.” Thus, in my opinion, Apple’s proposed
`
`construction of “a material that blocks or reflects at least some light” is more
`
`appropriate as the broadest reasonable construction, because a single layer of
`
`cladding material as claimed does not necessarily “confine light within a (guided)
`
`region,” but instead would broadly serve to reflect or constrain some of the light on
`
`one side of the layer.
`
`
`7.
`
`The ’269 Patent does not expressly define “cladding material,” but it
`
`does provide numerous examples including “air, a polymer, plastic, or a soft
`
`material having a lower index of refraction than silicone” (APL1001, 13:50-52) or
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`even a “transparent or mostly transparent [material] with a lower index of
`
`refraction than the light transmissive material” (id. at 16:66-17:1). A POSA would
`
`have understood that air, many polymers and plastics, and transparent or mostly
`
`transparent materials can allow at least some light to pass through them depending
`
`on the material’s fabrication technique, surface roughness, layer thickness, optical
`
`index as a function of wavelength, orientation of incident light, the properties of
`
`the materials on the other side of the layer, etc. To meet Valencell’s proposed
`
`construction would require that the cladding material have a lower index of
`
`refraction than the adjacent material and also require total internal reflection
`
`(discussed below) to occur within the material adjacent the cladding in order for
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`the cladding to “confine light.” This is very narrow in scope and not the broadest
`
`reasonable interpretation of the term “cladding material” in light of the ’269 Patent
`
`specification. (See POR, p. 24.)
`
`
`8.
`
`Valencell refers to Snell’s Law to support its construction. (POR,
`
`p. 24.) Snell’s Law depends not only on the indices of refraction of the adjacent
`
`materials, but also on the angle of incidence of the light. Total internal reflection
`
`occurs only when the angle of incidence is greater than the critical angle (i.e., the
`
`angle of incidence for which the angle of refraction is 90°). Thus, for Valencell’s
`
`proposed construction to be met, this condition would also need to occur.
`
`B.
`
`9.
`
` “Light Guiding Interface”
`
`In my opinion, Valencell’s proposed interpretation of “light-guiding
`
`interface” as “an interface that delivers light along a path” is not the broadest
`
`reasonable interpretation of this term in light of the ’269 Patent specification.
`
`(POR, p. 25.) The ’269 Patent uses the term “light-guiding interface[]” in two
`
`places, referring to Figures 22B and 23 (annotated and reproduced below), reciting
`
`that “windows 74W are formed in the cladding material 21 and serve as light-
`
`guiding interfaces to the [finger F / body of a subject].” (APL1001, 28:40-42,
`
`29:56-58 (emphasis added).) As shown in the ’269 Patent, the windows (74W) are
`
`gaps in the cladding material that may optionally include, for example, a filter
`
`(74WF) or a lens (74WL).
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`
`
`
`
`APL1001, Figures 22B and 23 (Annotated)
`
`
`
` The 10.
`
`’269 Patent describes
`
`that
`
`“[f]or
`
`example,
`
`if
`
`the
`
`windows 74W incorporate IR-pass filters, visible light will not pass through the
`
`windows 74W….” (APL1001, 29:2-3 (emphasis added).) These “windows” that
`
`functionally “serve as light-guiding interfaces” are thus simple passive geometrical
`
`optics elements–that is, they are openings in the cladding material that allow rays
`
`of light to pass through them. Adding a lens into the window, for example, can
`
`make it a slightly more complex geometric optical element that alters the direction
`
`of light according to simple geometrical relationships. I agree with Dr. Titus that
`
`the window does not change the direction or path of the light (i.e., it is not a “light-
`
`guiding structure”), but simply allows light to pass through so that it can get to the
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`U.S. Patent No. 8,886,269
`body. (APL1100, 88:2-11, 94:23-95:5, 179:4-12, 186:16-187:7.)
`
`
`
` The ’269 Patent claims reflect this passive nature, using language 11.
`
`nearly identical to the specification, reciting “at least one window formed in the
`
`layer of cladding material that serves as a light-guiding interface to the body of the
`
`subject.” Thus, in my opinion, Valencell’s focus on portions of the ’269 Patent
`
`specification discussing a “light guide” and dictionary definitions of “guide” is
`
`misplaced. (See POR, p. 25.) The claimed “light-guiding interface” is described in
`
`the ’269 Patent simply as a window formed in the cladding material that allows
`
`light to pass to the body of the subject–it does not do anything to “guide” or direct
`
`the light. Accordingly, it is my opinion that the broadest reasonable interpretation
`
`of “light-guiding interface” is “a window that allows the light to pass through the
`
`cladding material into the body.”
`
`IV. Goodman discloses or suggests every element of independent claim 1.
` Valencell argues that Goodman fails to teach or suggest a “window
`12.
`
`formed in the cladding material that serves as a light-guiding interface to the body
`
`of the subject” because the window (aperture 40) formed in the cladding material
`
`(tape layer 37) does not functionally serve as a light-guiding interface to the body.
`
`(POR, p. 49.) I disagree at least because Valencell’s position is premised on an
`
`inaccurate analysis of the “assembly” of Goodman’s device that contradicts
`
`Goodman’s express disclosure. Furthermore, the aperture serves as a light-guiding
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`interface to the body even under Valencell’s proposed claim construction.
`
`A. Valencell’s “assembly” of Goodman’s device contradicts
`Goodman’s express disclosure.
` Figure 2C of Goodman illustrates an exploded side view showing the
`13.
`
`layered construction of an embodiment of Goodman’s device. (APL1007, 8:15-
`
`18.) Goodman describes that the cladding layer of “opaque vinyl tape” (37) “is
`
`apertured at respective apertures 40, 41” above the light source (24) and photo-
`
`sensor (14) and that “[t]hese apertures allow light to pass.” (APL1007, 9:33-41
`
`(emphasis added).) As specified by the arrows in Figure 2C reproduced below, the
`
`light from the light source (24) passes through the aperture (40). (APL1003, ¶¶64,
`
`121, 124.) Likewise, arrows also show that light returns through aperture (41) to
`
`the photo-sensor (14).
`
`
`
`APL1007, Figure 2C
`
` Valencell’s version of Goodman’s “assembled” device, shown below,
`14.
`
`
`
`contradicts these express teachings.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`Valencell’s “assembly” of Goodman Figure 2C (POR, p. 50.)
`
`
`
`
`
`
`
` Valencell’s proposed assembly shows the light source (24) and photo-15.
`
`sensor (14) extending into and beyond the apertures. It also fails to include clear
`
`polyester layer (45) and release tape (50). Another embodiment in Goodman,
`
`shown below in Figure 7A, illustrates the relative arrangement of the layers and
`
`optical components. Figure 7A clearly shows–and a POSA would have
`
`understood–that the light source does not extend all the way through the aperture.
`
`Nor would it do so when attached to the body of the subject. In my opinion, a
`
`POSA reading Goodman would have also understood that the light source would
`
`not extend all the way through the aperture even absent the coating disposed on top
`
`of it. For example, this would be consistent with Dr. Titus’s description of Asada’s
`
`similar device, where the emitter and detector “may not extend all the way through
`
`the windows, may be just sitting close to the top, but not all the way through…”
`
`the apertures. (APL1100, 114:2-4.)
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`
`APL1007, Figure 7A (highlight added)
`
`
`
`B. Goodman discloses a “window formed in the cladding material
`that serves as a light-guiding interface to the body of the subject”
`even under Valencell’s proposed construction.
` As I discuss above in Section III.B, all that is required for the “light-
`16.
`
`guiding interface” recited by claim 1 is “a window that allows the light to pass
`
`through the cladding material into the body.” In my opinion, a POSA reading
`
`Goodman would have understood that this limitation is disclosed.
`
`
`17.
`
`In view of the proper understanding of Goodman’s assembled device
`
`that I discuss above, Goodman satisfies this limitation even under Valencell’s
`
`proposed claim interpretation: a “light-guiding interface” as “an interface that
`
`delivers light along a path.” (See POR, p. 25.) Light from the light source (24) will
`
`be emitted in many directions. Because the light source (24) in Goodman does not
`
`extend entirely through the aperture (40), there is space between the emitting
`
`surface of the light source and the end of the aperture (see e.g., Figure 7A) and
`
`some light will interact with the aperture itself (i.e., with the internal “sidewalls” of
`
`the aperture). The aperture thus serves as “an interface that delivers light along a
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`path” (i.e., through the aperture and to the body). As illustrated and shown below,
`
`light that may reflect off the interior sidewall of the cladding due to its thickness
`
`will be delivered along a path to the body. The thicker the cladding layer, the more
`
`opportunity there is for the light to interact with the sidewall. In this way, the
`
`cladding material also “confines light within a region” (i.e., within the aperture),
`
`according to Valencell’s proposed construction.
`
`
`APL1007, Figure 7A (annotated)
`
` Moreover, Goodman’s apertures function in the same manner as the
`18.
`
`windows in the ’269 Patent–they allow light to pass through. The same is true for
`
`the Figure 3 embodiment that Valencell relies upon–the end portion (18f) is merely
`
`a portion that “does not have cladding material” such that the light travels “…from
`
`the optical emitter 24 through the end portion 18 f and into the ear canal C of a
`
`subject….” (APL1001, 14:17-22 (emphasis added).) Accordingly, it is my opinion
`
`that Goodman discloses a “window formed in the cladding material that serves as a
`
`light-guiding interface to the body of the subject” in the same manner as the ’269
`
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
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`Patent.
`
`V. Asada discloses or suggests every element of independent claim 1.
`
`In my opinion, Valencell’s arguments that Asada fails to teach or
`19.
`
`suggest elements of claim 1 are based on incorrect interpretations of Asada’s
`
`disclosure. In my opinion, Valencell is wrong that Layer 3 in Figure 11 of Asada is
`
`a layer of optical shielding with two apertures, rather than a solid layer of light
`
`transmissive material as I explained in my declaration submitted with the Petition.
`
`(POR, pp. 30-32; APL1003, ¶77.)
`
`A. Asada’s Layer 3 is an “inner body portion comprising light
`transmissive material,” as claimed.
` Asada describes in the caption of Figure 11 and the associated text
`20.
`
`that the sensor band was redesigned to “protect[] optical components from direct
`
`contact with skin” using “bio-compatible elastic materials to better hold the LED’s
`
`and PD’s, maintain a proper level of pressure, optically shield the sensor unit, and
`
`secure the contact with the skin consistently in the face of finger motion.”
`
`(APL1005, p. 35.) As shown below with annotations from my declaration
`
`submitted with the Petition, the shaded Layers 2 and 6, the “cladding” and “outer
`
`body portion,” respectively, optically shield the sensor unit. (APL1003, ¶¶60-61,
`
`76, 78.) And the “light transmissive material (inner body portion)” of non-shaded
`
`Layer 3 protects the optical components from direct contact with the skin.
`
`(APL1003, ¶77.)
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`U.S. Patent No. 8,886,269
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`APL1005, Figure 11, Annotated (APL1003, ¶60.)
`
`
`
`
`In my opinion, Valencell’s arguments that Layer 3 of Asada is a layer
`
`
`21.
`
`of optical shielding with two apertures are illogical. (See POR, 30-31.) First,
`
`Valencell’s position is based on the premise that each layer must exhibit every
`
`property described in Asada, i.e., “better hold the LED’s and PD’s, maintain a
`
`proper level of pressure, optically shield the sensor unit, and secure the contact
`
`with the skin consistently in the face of finger motion” (APL1005, p. 35; POR,
`
`pp. 30-31.) But a POSA would have understood that the elements of the sensor
`
`band collectively have these properties, not that each element exhibits all of them.
`
`Furthermore, common understanding provides that the shaded layers block light
`
`and the non-shaded (i.e., transparent) layer is light transmissive.
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`U.S. Patent No. 8,886,269
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` Second, Valencell’s position that the dashed rectangles in light 22.
`
`transmissive Layer 3 suggest apertures contradicts logic and conventional drawing
`
`principles, where solid lines show real physical features that exist and dashed lines
`
`show alignment or projections of the location of the real physical features of one
`
`object onto another, or positioning when assembled. For example, the windows in
`
`cladding Layer 2 are defined by solid lines. Valencell does not reconcile why the
`
`alleged “apertures” in light transmissive Layer 3 are dashed. In my opinion, a
`
`POSA would have understood that, just like the vertical dashed lines in Figure 11,
`
`which are relational–to show spatial alignment and registration, the dashed
`
`rectangles of light transmissive Layer 3 are also not physical, but relational. They
`
`are merely used to show how the elements are disposed relative to each other. In
`
`this case, the LED 4 and photodetector 5 are aligned with the windows in the
`
`cladding Layer 2.
`
` Moreover, if the dashed rectangles in light transmissive Layer 3 were
`23.
`
`apertures, the optical components would be exposed and thus come into direct
`
`contact with the skin when the device is worn. This contradicts Asada’s disclosure,
`
`which states that the sensor band “protects optical components from direct contact
`
`with skin.” (APL1005, p. 35.) Therefore, Asada would not have left them exposed.
`
` Third, in my opinion, Valencell’s concern over shunting of light
`24.
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`directly from the LED to the photodetector through the light transmissive Layer 3
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`Case IPR2017-00318
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`is overstated. Although some negligible shunting could possibly occur, whether
`
`light will shunt depends on the emitted angle of light from the LED and the angle
`
`accepted by the photodetector. Asada recognizes the issue of shunting caused by an
`
`air gap between the skin and optical components in a reflective PPG configuration
`
`and also notes that it can be addressed by emitting and detecting light normal to
`
`(i.e., perpendicular) the surface of the optical components. (APL1005, p. 31.) A
`
`POSA reading Asada would have understood how to direct the light in a manner
`
`that would avoid shunting that would distort the signal received at the
`
`photodetector. Moreover, shunting could easily be eliminated by positioning a light
`
`blocking material between the emitter and detector, as disclosed by Delonzor and
`
`applied in claim 8, which recites this feature. (APL1003, ¶¶101-104.)
`
` Fourth, a POSA would have been informed by their knowledge of
`25.
`
`prior art as to the elements in Asada’s optical device. Swedlow confirms that the
`
`layered arrangement in Asada was known in the prior art, albeit for a wired rather
`
`than wireless device. (APL1003, ¶¶31, 61, 73.) However, a POSA designing a
`
`wireless device would have naturally looked to wireless predecessors. (APL1003,
`
`¶¶37-38.) Thus, Swedlow provides additional support as to how a POSA would
`
`have understood Asada.
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`B.
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`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`transmissive material
`is
`in optical
`light
`the
`“wherein
`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 ”
` Valencell’s basis for alleging this limitation is not disclosed by Asada
`26.
`
`is founded on its incorrect assertion that light transmissive Layer 3 in Figure 11 of
`
`Asada actually has apertures. (POR, pp. 35-37.) For the numerous reasons I discuss
`
`above, Valencell’s interpretation of Asada is wrong and thus this element is
`
`disclosed by Asada. (See also APL1003, ¶¶82-84.)
`
`C. Combining Asada’s embodiments is not required for showing the
`signal processor and RF transmitter.
` Regarding dependent claims 6 and 7 in Ground 1, Valencell alleges
`27.
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`that a combination of embodiments in Asada is required to show that the claimed
`
`features are taught. (POR, 37-38.) First, Figure 11 illustrates the signal processor
`
`(CPU) 7, as recited in claim 6. (See, e.g., APL1003, ¶98.) And second, although
`
`the cross-section of the sensor band shown in Figure 11 does not illustrate the RF
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`transmitter recited in claim 7, Asada expressly discloses this element, which a
`
`POSA would have understood is part of each wireless ring device embodiment.
`
`(APL1003, ¶145.)
`
` A POSA would have understood that the portion of Prototype B
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`shown in Figure 11 is a modified version of the wireless ring device of Prototype A
`
`shown in Figures 9 and 10. (See e.g., APL1005, p. 35 (“The LED used is 6.7 times
`
`brighter than that of Prototype A, while the resultant power consumption is 173
`
`times smaller than before.”).) Thus, a POSA would have understood that Prototype
`
`B also includes the signal processor described in the earlier Prototype A and that
`
`Asada’s description of Prototype B focuses on improvements and modifications
`
`from the prior version of the device.
`
` Furthermore, Asada expressly describes an RF transmitter, shown in
`29.
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`Figure 9, and also Figure 10, for Prototype A. (APL1005, p. 34.) Again, a POSA
`
`would have understood the RF transmitter to also be part of subsequent iteration,
`
`Prototype B. (APL1003, ¶145.)
`
`VI. Combinations of References
` Because Valencell provides similar, or the same, arguments against
`30.
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`the combination of secondary references with the primary references (Goodman
`
`and Asada), I address these arguments together below.
`
`A. Grounds 2 & 7: Asada/Goodman in View of Hicks – Claim 3
`1.
`Valencell’s annotation of Figure 6 of Hicks is incorrect.
` Valencell provides an annotation of Hicks’s Figure 6 with a “buffer”
`31.
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`highlighted in the drawing that it alleges does not exist in Goodman or Asada.
`
`Based on this annotated drawing, Valencell alleges that a POSA would not have
`
`added Hicks’s lens to Goodman or Asada because they allegedly do not have an air
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`pocket buffer. (POR, pp. 43, 56.) In my opinion, the annotated drawing is
`
`inaccurate and I disagree with Valencell’s position that a POSA would not have
`
`added Hick’s lens to the primary references.
`
`
`
`Valencell’s Annotated Version of Hicks Figure 6 (POR, p. 43)
`
` First, Figure 6 of Hicks is “an exploded cross sectional view” of the
`32.
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`sensor. (APL1008, 8:34-35.) When the layers are assembled, the “buffer” that
`
`Valencell indicates does not exist because foam layer (86) and clear substrate (80)
`
`of the “laminate” are in contact with each other. (APL1008, 8:40-44.) Hicks
`
`describes that there is an “air pocket formed by the foam layer apertures 88, the
`
`clear substrate 80 and the interconnecting layer 82….” (APL1008, 9:64-66
`
`(emphasis added).) Thus, the “air pocket” is actually just the air gap resulting from
`
`aperture (88) itself in foam layer (86), disposed between clear substrate (80) and
`
`interconnecting layer (82), when the sensor is assembled.
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`APL1008, Figure 6
`
`
`
` Second, as discussed above by way of the example shown in Figure
`33.
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`7A, Goodman’s assembled device will actually have a similar “air gap” as Hicks.
`
`
`
`APL1007, Figure 7A (highlight added)
`
`2.
`
`Valencell’s alleged “detriments” would not have deterred a
`person skilled in the art from combining the references.
` Valencell provides essentially the same arguments, summarized
`34.
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`below, as to why a POSA allegedly would not have combined Hicks with
`
`Goodman or Asada. (See POR, pp. 40-44, 53-56.) Valencell first argues that
`
`Goodman’s and Asada’s devices are already properly directed and focused and that
`
`these transmittal PPG devices benefit from unfocused light. (POR, pp. 40, 53-54.)
`
`Valencell then alleges that adding a lens to Goodman and Asada will make the skin
`
`“uncomfortably warm,” increase the chances of focusing light to the wrong place
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`in the body, and make the device more susceptible to disturbances (e.g., motion
`
`artifacts). (POR, pp. 41-42, 54-55.) Regarding Goodman, Valencell also alleges
`
`that adding a lens will make the device more expensive (thereby decreasing
`
`disposability) and also decrease blood flow by adding pressure to the tissue. (POR,
`
`pp. 55-56.) In my opinion, Valencell’s concerns are unfounded and would not have
`
`deterred a POSA from adding Hicks’s lens–a standard optical component–to
`
`Goodman or Asada.
`
` First, I disagree with Valencell’s conclusion that “Petitioner fails to
`35.
`
`weigh the purported benefit of adding Hicks’s lens” to Goodman or Asada “against
`
`the many problems that would accompany that modification.” (POR, pp. 41, 54.)
`
`As I previously stated, in forming the opinions for my declaration submitted with
`
`the Petition, I was aware of these types of alleged “detriments,” which are actually
`
`design tradeoffs and consideration that must be taken into account with a
`
`perspective on the total system design, as a POSA likewise would have been. (Ex.
`
`2010, 202:9-203:14.) These are the types of design tradeoffs that a POSA would
`
`have naturally considered. (See e.g., APL1003, ¶¶37-38.) Even in view of the
`
`concerns Valencell raises, it is still my opinion that a POSA would have combined
`
`the references as explained in the Grounds of the Petition.
`
` Regarding Valencell’s argument that the Goodman and Asada devices
`36.
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`are already properly directed and focused and actually benefit from unfocused
`
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`light, a POSA would have understood that using a lens does not necessarily create
`
`a beam of intensely focused light. A lens can help change the direction of light and
`
`bring more light to fall into a smaller subtended angle, and help to have more light
`
`reach a depth within the body after which the light can take a more diffuse path
`
`through the body. This would help achieve Asada’s goal of having light directed at
`
`the digital artery to achieve good signal quality. (APL1005, p. 31; APL1003, ¶88.)
`
`Furthermore, I find Valencell’s concern that light may be directed to the wrong
`
`place in the body to be considerably overstated. A POSA would have known how
`
`to properly design the sensor device to provide light to the proper location(s); for
`
`example, Asada itself describes that the “location of the LEDs and a PD relative to
`
`the finger is an important design issue determining signal quality and robustness
`
`against motion artifact.” (APL1005, p. 30; APL1003, ¶¶29, 34, 88.)
`
` Regarding Valencell’s concern of the skin becoming “uncomfortably
`37.
`
`warm,” Valencell describes this as stemming from the lens, but Hicks actually
`
`discusses that the heat comes from the LED itself. (APL1008, 4:7-15.) In any
`
`event, as discussed above in Section VI.A.1, Goodman has an “air pocket” like the
`
`one in Hicks that would insulate from conductive heat transfer. Asada’s layered
`
`structure would tend to help dissipate heat via conduction. Asada also describes
`
`that “heat created by a powerful LED may incur low-temperature skin burning”
`
`and that a “high-frequency, low-duty rate modulation” is another “effective method
`
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`for preventing these types of injuries.” (APL1005, p. 32.) Thus, Asada provides
`
`another solution that a POSA would have known and been easily able to
`
`implement to avoid excessive heat from the LED damaging the skin.
`
` Furthermore, in my opinion, Valencell’s additional concerns directed
`38.
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`specifically to Goodman would not