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
`OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`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.
`
`
`
`
`
`APL1103
`Apple v. Valencell
`IPR2017-00318
`
`

`

`Case IPR2017-00318
`U.S. Patent No. 8,886,269
`
`TABLE OF CONTENTS
`
`Background .................................................................................................. 3 
`My Understanding of Legal Principles ........................................................ 6 
`Level of Ordinary Skill in the Art ............................................................. 12 
`Substitute Claims 12-21 Lack Written-Description Support..................... 13 
`Substitute Claims 12-21 Lack Reasonable Certainty ................................ 13 
`Overview of the Applied References ......................................................... 14 
`A.  Asada .................................................................................................... 14 
`B.  Goodman ............................................................................................... 19 
`C.  Hicks ..................................................................................................... 21 
`D.  Hannula ................................................................................................. 23 
`E.  Delonzor ............................................................................................... 24 
`F.  Al-Ali .................................................................................................... 25 
`G.  Swedlow ............................................................................................... 27 
`H.  Fricke .................................................................................................... 28 
`I.  Gupta ..................................................................................................... 29 
`J.  Tran ....................................................................................................... 30 
`K.  Fraden ................................................................................................... 30 
`The Combination of Asada, Swedlow, Fricke, and Gupta Render
`Substitute Claim 12 Obvious ..................................................................... 31 
`A.  “a band and light guiding structure configured to at least partially
`encircle a portion of the body limb of a subject” recited in claim 12 .. 37 
`B.  “a base comprising at least one optical emitter and at least one optical
`detector attached to the band and light-guiding structure” recited in
`claim 12 ................................................................................................ 39 
`C.  “a signal processor” limitation recited in claim 12 .............................. 41 
`The Combination of Goodman, Asada, Fricke, and Gupta Render
`Substitute Claim 12 Obvious ..................................................................... 44 
`A.  “a band and light guiding structure configured to at least partially
`encircle a portion of the body limb of a subject” recited in claim 12 .. 48 
`
`- i -
`
`I. 
`II. 
`III. 
`IV. 
`V. 
`VI. 
`
`VII. 
`
`VIII. 
`
`
`
`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`B.  “a base comprising at least one optical emitter and at least one optical
`detector attached to the band and light-guiding structure” recited in
`claim 12 ................................................................................................ 50 
`C.  “a signal processor” limitation recited in claim 12 .............................. 51 
`The Addition of Tran to Either Combination of References Presented
`above with Respect to Claim 12 Renders Substitute Claim 13 ................. 54 
`The Addition of Hannula and Fraden to Either Combination of References
`Presented above with Respect to Claim 12 Renders Substitute Claim 16
`Obvious, and The Addition of Fraden to Either Combination of
`References Presented above with Respect to Claim 12 Renders Substitute
`Claim 17 Obvious ...................................................................................... 55 
`Substitute Claims 14, 15, and 18-21 .......................................................... 57 
`Conclusion ................................................................................................. 57 
`
`IX. 
`
`X. 
`
`XI. 
`XII. 
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`I, Dr. Brian W. Anthony, make this supplemental declaration to support the
`
`opposition to the motion to amend in IPR2017-00318. To that end, I hereby declare
`
`as follows:
`
`I.
`
`Background
`
`1.
`
`I am an expert in the relevant field of U.S. Patent No. 8,886,269
`
`(APL1001, “the ’269 patent”). My qualifications and work experience are set forth
`
`in my original declaration submitted in connection with the petition. (See
`
`APL1003.) A copy of my curriculum vitae was submitted as APL1004.
`
`
`2.
`
`I understand that the Board instituted an inter partes review of the
`
`’269 patent in IPR2017-00318. I have reviewed the Board’s institution decision
`
`and am familiar with all of the prior art supporting those grounds. The instituted
`
`grounds include:
`
`Type
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Instituted Grounds
`
`References
`
`Asada
`
`Asada and Hicks
`
`Asada and Hannula
`
`Asada and Delonzor
`
`Claims
`
`1, 2, 6, and 7
`
`3
`
`4 and 5
`
`8
`
`
`
`- 3 -
`
`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`Instituted Grounds
`
`Asada and Al-Ali
`
`Goodman
`
`Goodman and Hicks
`
`Goodman and Hannula
`
`Goodman, Hannula, and Asada
`
`Goodman and Asada
`
`Goodman and Delonzor
`
`Goodman and Al-Ali
`
`9 and 10
`
`1 and 2
`
`3
`
`4
`
`5
`
`6 and 7
`
`8
`
`9 and 10
`
`I understand that Valencell, Inc. (“Patent Owner”) filed a contingent
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`
`
`
`3.
`
`motion to amend in the inter partes review proceeding on September 22, 2017. In
`
`the motion to amend, Patent Owner proposed to substitute claims 12-22 in place of
`
`original claims 1-11 of the ’269 patent only if each of original claims 1-11 are
`
`found unpatentable. I have been asked to provide my technical review, analysis,
`
`insights, and opinions about the motion to amend.
`
`
`4.
`
`In reaching my opinions, I carefully reviewed the motion to amend,
`
`the petition for inter partes review of the ’269 patent, my original declaration, and
`
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`various exhibits, such as the ’269 patent and prior-art references. Specific to this
`
`declaration, I reviewed and refer to the following exhibits:
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1104
`
`1105
`
`U.S. Patent No. 8,886,269 to LeBoeuf
`
`U.S. Patent No. 8,886,269 File History
`
`Declaration of Dr. Brian W. Anthony in Support of Petition for
`Inter Partes Review of U.S. Patent No. 8,886,269
`
`Asada, H. et al. “Mobile Monitoring with Wearable
`Photoplethysmographic Biosensors,” IEEE Engineering in
`Medicine and Biology Magazine, May/June 2003; pp. 28-40
`
`U.S. Patent No. 5,226,417 to Swedlow
`
`U.S. Patent No. 4,830,014 to Goodman
`
`U.S. Patent No. 6,745,061 to Hicks
`
`U.S. Patent No. 7,190,986 to Hannula
`
`U.S. Patent No. 5,797,841 to Delonzor
`
`U.S. Patent Application Publication No. 2007/0123763 to Al-
`Ali
`
`U.S. Patent Application Publication No. 2009/0105556 to
`Fricke
`
`G. Sen Gupta et al., Design of a Low-cost Physiological
`Parameter Measurement
`and Monitoring
`Device,
`Instrumentation and Measurement Technology Conference,
`IEEE (2007)
`
`
`
`- 5 -
`
`

`

`Exhibit
`
`11107
`
`1108
`
`1109
`
`1110
`
`1111
`
`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`Description
`
`U.S. Patent No. 4,974,591 to Awazu et al. titled “Bio-
`Photosensor,” issued December 4, 1990
`
`Finger, Merriam-Webster’s Collegiate Dictionary (10th ed.
`1998)
`
`U.S. Patent No. 7,558,622 to Tran, titled “Mesh Network
`Stroke Monitoring Appliance,” issued July 7, 2009
`
`U.S. Patent Application Publication No. 2005/0209516 to
`Fraden, titled “Vital Signs Probe,” published September 22,
`2005
`
`U.S. Patent Application Publication No. 2007/0208240 to
`Nordstrom et al., titled “Techniques for Detecting Heart Pulses
`and Reducing Power Consumption in Sensors,” published
`September 6, 2007
`
`
`
`
`5.
`
`I still agree with the contents of my original declaration, and my
`
`opinions about Substitute claims 12-22 are consistent with my opinions and factual
`
`findings in my original declaration.
`
`II. My Understanding of Legal Principles
`
`I understand that my analysis requires an understanding of the scope
`6.
`
`of the ’269 patent claims and that the disclosures of the ’269 patent and the prior
`
`art are judged from the perspective of a person of ordinary skill in the art at the
`
`time of the purported invention. For the purposes of this declaration, I have been
`
`instructed to consider the time of the purported invention of the ’269 patent to be
`
`
`
`- 6 -
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`February 25, 2009, the earliest possible priority date for the ’269 patent. I note,
`
`however, that my opinions would not change even if all the relevant disclosures
`
`were judged from a later time period.
`
`
`7.
`
`I understand that during an inter partes review, claims of an unexpired
`
`patent are to be given their broadest reasonable construction in light of the
`
`specification as would be understood by a person of ordinary skill in the relevant
`
`art. Unless otherwise noted, I have given the claim terms their plain and ordinary
`
`meaning as understood by a person of ordinary skill in the art at the time of
`
`purported invention.
`
`
`8.
`
`I understand that a claim is invalid if it is anticipated or obvious. I
`
`understand that anticipation of a claim requires that every element of a claim is
`
`expressly or inherently disclosed in a single prior art reference. I understand that an
`
`anticipating reference need not use the exact terms of the claims, but must describe
`
`the patented subject matter with sufficient clarity and detail to establish that the
`
`claimed subject matter existed in the prior art and that such existence would be
`
`recognized by persons of ordinary skill in the field of the purported invention. I
`
`also understand that an anticipating reference must enable one of ordinary skill in
`
`the art
`
`to
`
`reduce
`
`the purported
`
`invention
`
`to practice without undue
`
`experimentation.
`
`
`9.
`
`I understand that a patent claim is invalid if the claimed invention
`
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`would have been obvious to a person of ordinary skill in the art at the time of the
`
`purported invention. This means that even if all of the requirements of the claim
`
`cannot be found in a single prior art reference that would anticipate the claim, the
`
`claim can still be invalid.
`
`
`10.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art at the time of the purported
`
`invention in view of the prior art and in light of the general knowledge in the art as
`
`a whole. I also understand that obviousness is ultimately a legal conclusion based
`
`on underlying facts of four general types, all of which must be considered: (1) the
`
`scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the
`
`differences between the claimed invention and the prior art; and (4) any objective
`
`indicia of nonobviousness.
`
`
`11.
`
`I also understand that obviousness may be established by combining
`
`or modifying the teachings of the prior art. Specific teachings, suggestions, or
`
`motivations to combine any first prior art reference with a second prior art
`
`reference can be explicit or implicit, but must have existed before the date of
`
`purported invention. I understand that prior art references themselves may be one
`
`source of a specific teaching or suggestion to combine features of the prior art, but
`
`that such suggestions or motivations to combine art may come from the knowledge
`
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`of a person of ordinary skill in the art. Specifically, a rationale to combine the
`
`teachings of references may include logic or common sense available to a person
`
`of ordinary skill in the art.
`
`
`12.
`
`I understand that a reference may be relied upon for all that it teaches,
`
`including uses beyond its primary purpose. I understand that though a reference
`
`may be said to teach away when a person of ordinary skill, upon reading the
`
`reference, would be discouraged from following the path set out in the reference,
`
`the mere disclosure of alternative designs does not teach away.
`
`
`13.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`analysis. I understand there may be a number of rationales that may support a
`
`conclusion of obviousness, including:
`
` Combining prior art elements according to known methods to yield
`
`predictable results;
`
` Substitution of one known element for another to obtain predictable
`
`results;
`
` Use of a known technique to improve similar devices (methods, or
`
`products) in the same way;
`
` Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`
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`

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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
` “Obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
` Known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary
`
`skill in the art; and
`
` Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
`
`prior art teachings to arrive at the claimed invention.
`
`
`14.
`
`I understand that it is not proper to use hindsight to combine
`
`references or elements of references to reconstruct the invention using the claims
`
`as a guide. My analysis of the prior art is made from the perspective of a person of
`
`ordinary skill in the art at the time of the purported invention.
`
`
`15.
`
`I understand that so-called objective considerations may be relevant to
`
`the determination of whether a claim is obvious should the Patent Owner allege
`
`such evidence. Such objective considerations can include evidence of commercial
`
`success caused by an invention, evidence of a long-felt need that was solved by an
`
`invention, evidence that others copied an invention, or evidence that an invention
`
`achieved a surprising result. I understand that such evidence must have a nexus, or
`
`causal relationship to the elements of a claim, in order to be relevant to the
`
`
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`

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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`obviousness or non-obviousness of the claim. I am unaware of any such objective
`
`considerations having a nexus to the claims at issue in this proceeding.
`
`
`16.
`
`I understand that for a reference to be used to show that a claim is
`
`obvious, the reference must be analogous art to the claimed invention. I understand
`
`that a reference is analogous to the claimed invention if the reference is from the
`
`same field of endeavor as the claimed invention, even if it addresses a different
`
`problem, or if the reference is reasonably pertinent to the problem faced by the
`
`inventor, even if it is not in the same field of endeavor as the claimed invention. I
`
`understand that a reference is reasonably pertinent based on the problem faced by
`
`the inventor as reflected in the specification, either explicitly or implicitly.
`
`
`17.
`
`I understand that for a claim to be patentable, the specification must
`
`contain written description support for all elements of the claim. I also understand
`
`that the written description requirement serves both to satisfy the applicant’s
`
`obligation to disclose the technical knowledge upon which the patent is based and
`
`to demonstrate that the applicant was in possession of the invention that is claimed.
`
`I understand that to satisfy the written description requirement, the specification
`
`must include sufficient detail and explanation of all the elements in the claims.
`
`
`18.
`
`I understand that 35 U.S.C. § 112(b) states that “[t]he specification
`
`shall conclude with one or more claims particularly pointing out and distinctly
`
`claiming the subject matter which the inventor or a joint inventor regards as the
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`invention.” I understand this statute has been interpreted to require that the claims,
`
`when viewed in light of the specification and prosecution history, must inform
`
`those skilled in the art about the scope of the invention with reasonable certainty.
`
`III. Level of Ordinary Skill in the Art
` As I explained in my original declaration, I understand that the person
`19.
`
`of ordinary skill in the art (“POSA”) is viewed at the time of invention. For the
`
`purposes of this declaration, I have evaluated the level of ordinary skill in the art as
`
`of February 25, 2009, the earliest possible priority date for the ’269 patent. Based
`
`on the disclosure of the ’269 patent, it is my opinion that a POSA at the relevant
`
`time would have had at least a four-year degree in electrical engineering,
`
`mechanical engineering, biomedical engineering, optical engineering, or a related
`
`field of study, or equivalent experience, and at least two years’ experience in
`
`academia or industry studying or developing physiological monitoring devices
`
`such as non-invasive optical biosensors. A person of ordinary skill in the art would
`
`have also been familiar with, for example, optical system design and signal
`
`processing. This description is approximate, and a higher level of education or skill
`
`might make up for less experience, and vice-versa.
`
` Based on my knowledge, skill, and experience, I have an
`20.
`
`understanding of the capabilities of a person of ordinary skill in the relevant art.
`
`For example, from my industry experience, I am familiar with what an engineer
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`designing non-invasive optical biosensors would have known and found
`
`predictable in the art. From teaching and supervising my post-graduate students, I
`
`also have an understanding of the knowledge that a person with this academic
`
`experience possesses. Furthermore, I possessed the knowledge of a POSA myself
`
`at least as of February 25, 2009.
`
`IV. Substitute Claims 12-21 Lack Written-Description Support
` Substitute claim 12 recites “reduce motion artifacts by removing
`21.
`
`frequency bands from the signals that are outside of a range of interest using at
`
`least one band-pass filter to produce pre-conditioned signals,” where “the signals”
`
`are “produced by the at least one optical detector and a motion sensor.” There is no
`
`written description support in the ’269 patent for a band-pass filter that, itself,
`
`reduces motion artifacts by removing frequency bands from a signal, let only from
`
`a signal produced specifically by a motion sensor. The’269 patent discloses
`
`nothing more than a band-pass filter that removes frequency bands outside a range
`
`of interest from sensor signals before adaptive filtering is performed to reduce
`
`motion artifacts. (Ex. 2107, 39:4-19.)
`
`V.
`
`Substitute Claims 12-21 Lack Reasonable Certainty
` Claim 12 recites “extract[ing] physiological and motion-related
`22.
`
`information” and then recites “a multiplexed output serial data string comprising
`
`motion-related and physiological information.” Claim 12 leaves ambiguous as to
`
`
`
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`

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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`whether these terms identify the same or different physiological and motion related
`
`information. Ex parte Miyazaki, 89 U.S.P.Q.2d 1207, 1215 (B.P.A.I. 2008)
`
`(precedential). Therefore, it is my opinion that a POSA would not have been
`
`informed of the scope of claims 12-21 with reasonable certainty.
`
` Substitute claim 17 recites “the first and second optical emitters . . .
`23.
`
`and the third and fourth optical emitters” without antecedent basis, leaving it
`
`unclear as to whether these emitters recited in claim 17 are the same or different
`
`than the “at least one optical emitter” recited in claim 12. Therefore, it is my
`
`opinion that a POSA would not have been informed of the scope of claim 17 with
`
`reasonable certainty.
`
` Substitute claim 22 recites “a signal processor” and it is unclear
`24.
`
`whether this signal processor is the same or different than the signal processor
`
`recited earlier in claim 12. Therefore, it is my opinion that a POSA would not have
`
`been informed of the scope of claim 22 with reasonable certainty.
`
`VI. Overview of the Applied References
`A. Asada
` The Asada article discloses a non-invasive optical biosensor for health
`25.
`
`monitoring. (APL1005, p. 28.) More specifically, Asada describes iterations and
`
`advances of the pioneering “MIT Ring Sensor.” I personally became familiar with
`
`the Asada Ring Sensor around the time that I was developing an optical ring at
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Xcitex that would be used to capture user hand motion in order to control the
`
`user’s
`
`interaction with a computer. The Asada Ring Sensor “combines
`
`miniaturized data acquisition features with advanced photoplethysmographic
`
`(PPG) techniques to acquire data related to the patient’s cardiovascular state.” (Id.)
`
`For example, the Ring Sensor can monitor a patient’s heart rate, oxygen saturation,
`
`and heart rate variability, accounting for technical issues such as motion artifacts.
`
`(Id.) It is a “wearable ring pulse-oximeter solution, which measures the PPG as
`
`well as the arterial oxygen saturation.” (APL1005, p. 30.)
`
` The Ring Sensor built upon prior non-invasive optical biosensor
`26.
`
`technologies, for example, adhesive bandage devices and wired oximeters
`
`discussed in Overview of the Applied References sections, adapting them into a
`
`ring form-factor for continuous, wireless monitoring. In my opinion, the ring
`
`embodiment is a natural “cutting the wire” progression of the finger clip sensors
`
`commonly found in hospitals. Asada describes that the ring configuration is a
`
`logical choice for a wearable biosensor because a ring is small and generally worn
`
`without removal and the vasculature of the finger is located near the surface, which
`
`is beneficial for non-invasive optical biosensor sensor devices. (Id.)
`
` An early Ring Sensor prototype included: an optical sensor unit
`27.
`
`having a light-emitting diode (LED) and a photodetector; and an on-board
`
`microcomputer for data acquisition, signal processing, and bi-directional radio-
`
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`frequency (RF) communication. (APL1005, p. 34.) A subsequent iteration used a
`
`double ring configuration with an inner ring holding the sensor unit and an outer
`
`ring shielding the sensor from ambient light and reducing motion artifacts. (Id.)
`
`
`
`
`
`(APL1005, Fig. 10.)
`
` A later iteration included a sensor band that was “redesigned with the
`28.
`
`use of 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 (see Figure 11).” (APL1005,
`
`p. 35.) I have annotated Figure 11, below, which illustrates components of the Ring
`
`Sensor (as they would have been understood by a POSA) using the terminology of
`
`the ’269 patent.
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`(APL1005, Fig. 11, Annotated.)
`
`
`
` Although Asada does not correlate its description with the reference
`29.
`
`numbers illustrated in Figure 11, this type of layered structure had been in the prior
`
`art for decades in similar form-factors. APL1007, FIG. 2B; APL1008, FIG. 6;
`
`APL1009, FIG. 1B; APL1011, FIG. 10; APL1016, 3:42-46, FIGs. 1A-1B, 24. By
`
`way of example, U.S. Patent No. 5,226,417 to Swedlow et al. (APL1006) describes
`
`a layered adhesive wrap to be disposed about a finger, shown below in the
`
`Annotated Figure. Swedlow discloses an outer bandage layer (21) coupled to LEDs
`
`(13, 16); a photodetector (15) (APL1006, 5:48-49, 5:66-68, FIG. 2); a clear
`
`
`
`- 17 -
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`

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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`polyethylene layer (12) disposed over the LEDs and photodetector (id.); and an
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`adhesive, opaque white polypropylene layer (14) coupled to the clear layer, with
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`holes for the optical components (id. at 5:42-51, FIG. 2). A POSA would have
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`understood that these or similar features would have logically been included in
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`Asada’s device. I have provided an annotated version of Figure 2 of Swedlow
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`below.
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`(Id. at FIG. 2, Annotated.)
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` Another iteration of the Ring Sensor included multiple LEDs and
`30.
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`multiple photodetectors–one for the main PPG signal, which would also include
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`noise, and one to serve as a floating-ground noise-only reference, as shown in
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`Figure 15 of Asada. (APL1005, p. 36.) Asada describes that “[b]y using PD-B as a
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`noise reference, a noise cancellation filter can be built to eliminate the noise of PD-
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`A
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`that correlates with
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`the noise reference signal.” (APL1005, p. 33.)
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Representative embodiments of Asada’s Ring Sensor are shown below.
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`(APL1005, Figs. 15, 6, and 8.)
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`B. Goodman
` Goodman discloses a non-invasive optical biosensor that measures
`31.
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`arterial oxygen saturation. (APL1007, 1:11-14.) The sensor “conforms to and with
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`the cutaneous layer of the blood perfused portion of flesh upon which the sensor is
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`placed.” (APL1007, 4:34-36.) For example, the sensors can be used with a finger,
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`hand, toe, foot, or nose. (APL1007, 9:65-68, 10:7-9, FIGs. 4 and 6A-6B.) In its use
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`configuration, for example wrapped around a finger, the component layers assume
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`a generally cylindrical or convex shape, or concave if viewed from the inside.
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`(APL1007, FIGs. 4 and 6B.)
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` As shown in Figure 2C, the sensor has a flexible layered substrate
`32.
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`structure, including a portion (24) having LEDs (25, 26) and a portion (14) having
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`a photosensor (19). (APL1007, 8:49-56, 8:66-9:2, FIGs. 2C and 3A-3B.) The
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`LEDs and photosensor are supported on a flexible tape layer (34) and an opaque
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`vinyl strip (30). (APL1007, 9:20-25.) A second opaque vinyl strip (37) is placed
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`over the photoactive elements with apertures (40, 41) to allow light to pass from
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`the LEDs and to the photosensor. (APL1007, 9:33-40.) A clear polyester layer (45)
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`is disposed on the opaque vinyl layer (37) with an adhesive side (47) to bond to the
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`skin. (APL1007, 9:46-51.) I have provided an annotated version of Figure 2C of
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`Goodman below. A POSA would have understood that many of Goodman’s
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`elements would have remained if configured as a wireless device. (See APL1015,
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`p. 913.) And, indeed, these same components are described and claimed in the ’269
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`patent.
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`(APL1007, FIG. 2C, Annotated.)
`
`C. Hicks
` Hicks is directed to a non-invasive optical biosensor for PPG pulse
`33.
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`oximetry. (APL1008, 1:5-7.) The sensor device can be wrapped around a finger.
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`(APL1008, 8:3-8.) The layer cross-section of Figure 6 shows that Hicks includes
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`many of the same elements as Asada and Goodman. Hicks describes “a
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`substantially clear flexible substrate that may be conformed about a portion of a
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`patient’s tissue, such as a finger…allowing for emitting and detecting light signals
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`through this clear substrate.” (APL1008, 2:4-10.) The sensors include “at least one
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`light emitter, such as a light emitting diode, and/or a light detector, such as a
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`photodiode.” (APL1008, 2:14-15.) Further, “a compressible material layer may be
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`disposed on the patient side surface” with “apertures aligned with each light
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`emitter and/or light detector…allowing light to be emitted and/or detected through
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`these apertures free from interference.” (APL1008, 2:35-41.) Hicks also describes
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`“a light blocking layer applied to the top surface of the clear flexible substrate to
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`minimize the effect of ambient light sources upon the sensor.” (APL1008, 2:42-
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`45.)
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`(APL1008, FIG. 6, Annotated.)
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` Furthermore, Hicks describes that “the clear substrate 80 acts at least
`34.
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`partially as a lens” and that “drops 110 of clear adhesive may also provide some
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`focusing function for the LEDs 40, 42.” (APL1008, 9:36-42.) Or, “a separate lens
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`structure may be utilized if the refractive properties of the clear substrate 80 are not
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`sufficient
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`to properly direct/focus
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`the
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`light emitted/received by
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`the
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`emitters/detector 40, 42 and/or 38.” (APL1008, 13:42-46, FIG. 15.) Lenses are
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`standard optical elements that would have been well-known to a POSA and easily
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`integrated into any optical sensor such as a non-invasive optical biosensor, if not
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`already included.
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`(APL1008, FIG. 15, Annotated.)
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`
`
`D. Hannula
` Hannula discloses another non-invasive optical biosensor that uses
`35.
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`LEDs to emit light into a well-perfused tissue bed, such as a fingertip, and
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`measures the light passing through the tissue using a photodetector. (APL1009,
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`1:6-16.) As shown in Figures 1A-1C, Hannula includes typical components of
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`these sensors also disclosed in Asada and Goodman, such as: LEDs (111); a
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`photodetector (116); a
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`transparent window (118) below
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`the LEDs and
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`photodetector; and multiple laminated layers (112-114). (APL1009, 2:44-57, 3:9-
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`13.)
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`(APL1009, FIGs. 1B and 1C, Annotated.)
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` Hannula also discloses that the LEDs (111) and photodetector (116)
`36.
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`can be surrounded by a reflective mask (117), which can be made of polyester or
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`polypropylene with a reflective metal surface. (APL1009, 2:58-9, 2:66-3:3, FIGs.
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`1B-1C.) “Reflective mask 117 reflects light from LED 111 (that has passed
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`through patient
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`tissue and exited near
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`the photodetector) back
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`toward
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`photodetector 116 like a mirror.” (APL1009, 2:58-62.) This increases the amount
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`of LED light that the photodetector receives from the patient’s tissue and also
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`blocks ambient light and LED light that may leak sideways through the laminated
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`layers. (APL1009, 2:63-3:1.)
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`E. Delonzor
` Delonzor discloses a non-invasive optical biosensor with elements
`37.
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`“preventing the shunting of light between the emitter and detector without passing
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`through blood-perfused tissue.” (APL1010, 1:6-9.) These non-invasive sensors can
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`be secured about a finger or ear, scatter light through the patient’s tissue, and
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`photoelectrically sense the absorption of light in the tissue. (APL1010, 1:15-19,
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`1:34-36.)
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` Delonzor also describes the well-known problems of ambient light
`38.
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`and shunting, or shorting or short-circuiting, of light directly from the emitter to
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`the photodetector, which can distort or saturate the signal at the photodetector,
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`interfering with proper detection of oxygen saturation levels. (APL1010, 1:39-45.)
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`Delonzor describes a number of different types of “shunt barriers” (e.g., fiber
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`material, perforations or air gaps, and opaque material) that can be included in the
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`sensor devices to block light transmission directly from the emitter to the detector.
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`(APL1010, 3:7-48.) Although the examples show “sensors adapted to be wrapped
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`onto a digit, so that light is transmitted through the digit, it will be clear to those
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`skilled in the art that the design principles illustrated may be applied to any
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`‘transmittance’ or ‘