`
`
`
`
`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
`__________________
`
`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO AMEND
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 IPR2017-01554 has been joined to this current proceeding.
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`
`I. 
`II. 
`III. 
`
`B.
`
` 
`
`2.
` 
`
`2.
` 
`
`Introduction ...................................................................................................... 1 
`Substitute Claim 22 Is Improper Under 35 U.S.C. § 316(d)(1)(b) .................. 1 
`Substitute Claims 12-21 Are Unpatentable Under 35 U.S.C. §112 ................ 1 
`Substitute Claims 12-21 Lack Written-Description Support ................ 1 
`A.
` 
`Substitute Claims 12-21 Are Indefinite ................................................. 2 
`B.
` 
`IV.  Substitute Claims 12-21 Are Unpatentable Under 35 U.S.C. §103 ................ 2 
`  Argument 1: The Combination of Asada, Swedlow, Fricke, and
`A.
`Gupta Render Substitute Claim 12 Obvious ......................................... 2 
`  Motivation for the combination of Asada, Swedlow, 1.
`
`Fricke, and Gupta ........................................................................ 2 
`The combination of Asada, Swedlow, Fricke, and Gupta
`renders substitute independent claim 12 obvious ....................... 8 
`Argument 2: The Combination of Goodman, Asada, Fricke, and
`Gupta Render Substitute Claim 12 Obvious ....................................... 13 
`  Motivation for the combination of Goodman, Asada, 1.
`
`Fricke, and Gupta ...................................................................... 13 
`The combination of Goodman, Asada, Fricke, and Gupta
`renders substitute independent claim 12 obvious ..................... 17 
`Argument 3: The Addition of Tran to Either Combination of
`References Presented above with Respect to Claim 12 Renders
`Substitute Claim 13 ............................................................................. 21 
`  Argument 4: 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 ................................................................................ 22 
`E.
`Argument 5: Claims 14, 15, and 18-21 are Obvious .......................... 24 
` 
`Conclusion ..................................................................................................... 25 
`
`
`
`
`
`C.
`
` 
`
`D.
`
`V. 
`
`
`
`- i -
`
`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`Description
`U.S. Patent No. 8,886,269 to LeBoeuf et al. titled “Wearable
`Light-Guiding Devices for Physiological Monitoring,” issued
`March 24, 2015
`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
`Curriculum Vitae of Dr. Brian W. Anthony
`Asada, H. et al. “Mobile Monitoring with Wearable Photople-
`thysmographic Biosensors,” IEEE Engineering in Medicine and
`Biology Magazine, May/June 2003; pp. 28-40
`U.S. Patent No. 5,226,417 to Swedlow et al. titled “Apparatus
`for the Detection of Motion Transients,” issued July 13, 1993
`U.S. Patent No. 4,830,014 to Goodman et al. titled “Sensor Hav-
`ing Cutaneous Conformance,” issued May 16, 1989
`U.S. Patent No. 6,745,061 to Hicks et al. titled “Disposable Ox-
`imetry Sensor,” issued June 1, 2004
`U.S. Patent No. 7,190,986 to Hannula et al. titled “Non-
`Adhesive Oximeter Sensor for Sensitive Skin,” issued March
`13, 2007
`U.S. Patent No. 5,797,841 to Delonzor et al. titled “Shunt Barri-
`er in Pulse Oximeter Sensor,” issued August 25, 1998
`U.S. Patent Application Publication No. 2007/0123763 to Al-Ali
`et al. titled “Optical Sensor Including Disposable and Reusable
`Elements,” published May 31, 2007
`Excerpt from Merriam Webster’s Collegiate Dictionary, Elev-
`enth Edition, 2008; p. 828
`Mendelson, Y. et al., “Skin Reflectance Pulse Oximetry: In Vi-
`vo Measurements from the Forearm and Calf,” Journal of Clini-
`cal Monitoring, Vol. 7, No. 1, January 1991; pp. 7-12
`Konig, V. et al., “Reflectance Pulse Oximetry – Principles and
`Obstetric Application in the Zurich System,” Journal of Clinical
`Monitoring and Computing, Vol. 14, No. 6, August 1998; pp.
`403-412
`
`Apple (APL)
`Ex. No.
`
`1001
`
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`
`- ii -
`
`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`Apple (APL)
`Ex. No.
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`1021
`
`1022
`
`1023-1099
`1100
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`Description
`Mendelson, Y. et al. “A Wearable Reflectance Pulse Oximeter
`for Remote Physiological Monitoring,” Proceedings of the 28th
`IEEE EMBS Annual International Conference, New York City,
`New York, August 30-September 3, 2006; pp. 912-915
`U.S. Patent No. 6,608,562 to Kimura et al. titled “Vital Signal
`Detecting Apparatus,” issued August 19, 2003
`Tremper, K. et al., “Pulse Oximetry,” Medical Intelligence Arti-
`cle, Anesthesiology, Vol. 70, No. 1, January 1989; pp. 98-108
`Declaration of Gerard P. Grenier in support of Asada, H. et al.
`“Mobile Monitoring with Wearable Photoplethysmographic Bi-
`osensors,” IEEE Engineering in Medicine and Biology Maga-
`zine, May/June 2003; pp. 28-40 (APL1005)
`Intentionally Left Blank
`Intentionally Left Blank
`Intentionally Left Blank
`Transcript of teleconference among Board and Parties held on
`October 13, 2017, Apple Inc. v. Valencell, Inc., Case Nos.
`IPR2017-00315, IPR2017-00317, IPR2017-00318, IPR2017-
`00319, and IPR2017-00321.
`Intentionally Left Blank
`Transcript of the Deposition of Dr. Albert Titus, November 9,
`2017, Apple Inc. v. Valencell, Inc., Case No. IPR2017-00318.
`Transcript of the Deposition of Dr. Albert Titus, November 10,
`2017, Apple Inc. v. Valencell, Inc., Case No. IPR2017-00317.
`Declaration of Dr. Brian W. Anthony in Support of Petitioner’s
`Reply to Patent Owner’s Response
`Declaration of Dr. Brian W. Anthony in Support of Petitioner’s
`Opposition to Patent Owner’s Motion to Amend in Inter Partes
`Review of U.S. Patent No. 8,989,830
`U.S. Patent Application Publication No. 2009/0105556 to Fricke
`et al. titled “Measurement of Physiological Signals,” published
`April 23, 2009
`G. Sen Gupta et al., Design of a Low-cost Physiological Param-
`eter Measurement and Monitoring Device, Instrumentation and
`Measurement Technology Conference, IEEE (2007)
`
`
`
`- iii -
`
`

`

`Apple (APL)
`Ex. No.
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`1113
`
`1114
`
`1115
`
`1116
`
`1117
`
`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`Description
`Declaration of Gerard P Grenier in support of G. Sen Gupta et
`al., Design of a Low-cost Physiological Parameter Measurement
`and Monitoring Device, Instrumentation and Measurement
`Technology Conference, IEEE (2007)
`U.S. Patent No. 4,974,591 to Awazu et al. titled “Bio-
`Photosensor,” issued December 4, 1990
`Definition of “finger”, Merriam-Webster’s Collegiate Diction-
`ary (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 Sep-
`tember 6, 2007
`Definition of “encircle”, Merriam-Webster’s Collegiate Diction-
`ary (11th ed. 2009)
`Intentionally Left Blank
`Lu et al., “A statistical experimental study of the injection mold-
`ing of optical lenses,” Journal of Materials Processing Technol-
`ogy, 113 (2001); pp. 189-195.
`Ong et al., “Microlens array produced using hot embossing pro-
`cess,” Microelectronic Engineering, 60 (2002); pp. 695-379.
`Rapaport et al., “Control of Blood Flow to the Extremities at
`Low Ambient Temperatures,” Journal of Applied Physiology, 2
`(1949); pp. 61-71.
`Daanen, H.A.M., “Finger cold-induced vasodilation: a review,”
`European Journal of Applid Physiology, 89 (2003); pp. 411-426.
`
`
`
`
`
`
`- iv -
`
`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`I.
`
`Introduction
`
`Valencell (“Patent Owner”) asks the Board to substitute claims 12-22 in
`
`place of original claims 1-11 of U.S. Patent No. 8,886,269 (the ’269 patent) only if
`
`each of these original claims are found unpatentable. The substitute claims fail be-
`
`cause they are procedurally deficient and unpatentable under 35 U.S.C. §§ 112 and
`
`103. For these reasons, as further discussed below, Patent Owner’s Motion to
`
`Amend should be denied.
`
`II.
`
`Substitute Claim 22 Is Improper Under 35 U.S.C. § 316(d)(1)(b)
`
`35 U.S.C. §316(d)(1)(b) states that “For each challenged claim, propose a
`
`reasonable number of substitute claims.” Patent Owner proposes to substitute claim
`
`22 for original claim 11. (Paper 21, p. 31.) Because original claim 11 was not chal-
`
`lenged in this IPR, substitute claim 22 is improper.
`
`III. Substitute Claims 12-21 Are Unpatentable Under 35 U.S.C. §112
`
`Substitute Claims 12-21 Lack Written-Description Support
`A.
`Substitute claim 12 recites “reduce motion artifacts by removing frequency
`
`bands from the signals that are outside of a range of interest using at least one
`
`band-pass filter to produce pre-conditioned signals,” where “the signals” are “pro-
`
`duced 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 mo-
`
`tion 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
`
`
`
`- 1 -
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`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 arti-
`
`facts. (’269 Application, Ex. 2107, 39:4-19; Anthony Decl., ¶21.)
`
`B.
`
`Substitute Claims 12-21 Are Indefinite
`
`
`Substitute claim 12-21 are indefinite because claim 12 recites “extract[ing]
`
`physiological and motion-related information” and then recites a “string compris-
`
`ing motion-related and physiological information.” The claims are indefinite be-
`
`cause they leave ambiguous as to whether these terms identify the same or differ-
`
`ent physiological and motion related information. Ex parte Miyazaki, 89
`
`U.S.P.Q.2d 1207, 1215 (B.P.A.I. 2008) (precedential). (Anthony Decl., ¶22.) Sub-
`
`stitute claims 17 and 22 are also indefinite. Substitute claim 17 is indefinite be-
`
`cause it recites “the first and second optical emitters . . . 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 claim12. (Id. ¶23.) Substitute claim 22 is indefinite because it
`
`recites “a signal processor” and it is unclear whether this signal processor is the
`
`same or different than the signal processor recited earlier in claim 12. (Id. ¶24.)
`
`IV. Substitute Claims 12-21 Are Unpatentable Under 35 U.S.C. §103
` Argument 1: The Combination of Asada, Swedlow, Fricke, and
`A.
`Gupta Render Substitute Claim 12 Obvious
` Motivation for the combination of Asada, Swedlow, Fricke,
`1.
`and Gupta
`
`
`
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`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Patent Owner proposes to substitute claim 12 for independent claim 1. Sub-
`
`stitute claim 12 includes all of the limitations of original claim 1 but modifies the
`
`claimed “band” to be a “band and light-guiding structure” and adds the limitations
`
`of a “base” and “signal processor.” As demonstrated in the Petition, Asada renders
`
`original claim 1 obvious and discloses a “signal processor.” (See Petition, Sections
`
`VII and IX.C.2.) However, Asada does not disclose the newly recited “base” or
`
`that its signal processor is configured to “reduce motion artifacts by removing fre-
`
`quency bands from the signals that are outside of a range of interest using at least
`
`one band-pass filter” or “generate parsed output data by executing one or more
`
`processing methods to provide information that is fed into a multiplexed output se-
`
`rial data string comprising motion-related and physiological information” as recit-
`
`ed in claim 12. Swedlow, Fricke, and Gupta cure these deficiencies.
`
`As discussed in Section VII.A.7 of the Petition, Asada discloses a ring sen-
`
`sor with at least one optical emitter and photodetector. A POSA would recognize
`
`that the signals transmitted to and from the at least one optical emitter and photo-
`
`dector of Asada have to be transported by electrically conductive wires or lines,
`
`called traces. (Anthony Decl., 49.) Conventional cable wires have a certain thick-
`
`ness and rigidity that make them uncomfortable to have wrapped around a finger
`
`for a long or even short period of time. (Awazu, APL1107, 1:55-58.) And because
`
`of their bulk and weak connection points, cable wires are prone to being accidently
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`pulled out and disconnected from optical emitters and photodetectors fixed to a
`
`finger. (Id. at 1:59-62; Anthony Decl., ¶49.)
`
`Because of these issues, a POSA would have looked to more reliable and
`
`comfortable means to transport signals to and from the at least one optical emitter
`
`and photodector of Asada. (Anthony Decl., ¶50.) Swedlow discloses a layered ad-
`
`hesive wrap for performing finger based pulse oximetry. (Swedlow, APL1006,
`
`4:40-63.) The layered adhesive wrap includes, among other components, LEDs
`
`(13, 16) and a photodetector (15). (Id. at 5:48-49, 5:66-68, FIG. 2.) Swedlow fur-
`
`ther discloses that the “photodetector 15 and LEDs 13 and 16 are mounted on a
`
`flexible substrate 25” in one embodiment. (Id. at 5:57-59.) A flexible substrate al-
`
`lows the metal conductors that carry the signals of the photodetector and LEDs to
`
`be etched on the substrate with a planar profile as opposed to being implemented
`
`with thicker cable wires. (APL1107, 3:46-50, FIGs. 2A-B; APL1006, FIG. 2; An-
`
`thony Decl., ¶51.) The etched wires increase the reliability and comfort of wearing
`
`a photodetector and LEDs around a finger. (APL1107, 4:16-26; Anthony Decl.,
`
`¶51.) Asada recognizes both reliability and comfort of its ring sensor as important
`
`design considerations. (Asada, APL1005, pp. 29-30, 36.) Moreover, the use of a
`
`flexible substrate can reduce production costs associated with photodetectors to be
`
`worn around a finger. (APL1107, 1:50-54, 4:24-26; Anthony Decl., ¶51.) There-
`
`fore, a POSA would have been motivated to mount the at least one optical emitter
`
`
`
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`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`and photodetector of Asada on a flexible substrate (“base”) as taught by Swedlow
`
`to allow signals to be transmitted to and from the optical emitter and photodetector
`
`via etched wires. (Anthony Decl., ¶51.)
`
`Fricke discloses a PPG device 100 that includes an infrared light source 106
`
`for illuminating the person’s tissue, a photodetector 110 for detecting light
`
`backscattered from the illuminated tissue (referred to as a PPG signal), and a signal
`
`processing unit 114 to extract one or more of the physiological signals from the
`
`PPG signal. (Fricke, APL1104, ¶¶41-42.) Fricke further discloses that “the PPG
`
`signal is generally robust to motion artifacts [but] in some circumstances external
`
`vibration contaminates the signal” by adding noise to the PPG signal. (Id. ¶¶67-
`
`68.) Fricke discloses that “[a]melioration of vibrational noise effects is handled
`
`through deterministic . . . processing,” such as band-pass filtering as shown in Fig-
`
`ure 3 of Fricke. (Id. ¶68.) The band-pass filtering removes frequency bands, out-
`
`side the range of interest containing a desired physiological signal, where vibra-
`
`tional noise exists. (Anthony Decl., ¶52.) One example source of vibrational noise
`
`described by Fricke comes from the rotor of a MEDEVAC helicopter transporting
`
`a patient wearing the PPG device. (APL1104, ¶67.)
`
`Because Asada’s ring sensor has applications to monitoring patients
`
`(APL1005, p. 29), a POSA would have been motivated to modify Asada’s signal
`
`processor to implement a band-pass filter, as taught by Fricke, to reduce vibration-
`
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`al noise (“motion artifact”) and other sources of out-of-band noise in the PPG sig-
`
`nals measured by Asada’s ring sensor. (Anthony Decl., ¶53.) Indeed, Asada recog-
`
`nizes the importance of reducing noise from a measured PPG signal in order to
`
`properly recover and monitor a desired physiological signal, like a patient’s pulse.
`
`(APL1005, p. 33.)
`
`Gupta discloses a system with sensors to measure a patient’s heart rate and
`
`detect impacts that indicate the patient has fallen over. (Gupta, APL1105, Ab-
`
`stract.) The system specifically includes a sensor with a phototransistor and an in-
`
`frared emitting diode to non-invasively measure a pulse signal and also includes an
`
`accelerometer. (Id. at 2.) Gupta’s system samples and digitizes the measured pulse
`
`signal and accelerometer data from the sensors in a time-multiplexed manner and
`
`respectively processes the digitized samples to provide heart rate and impact in-
`
`formation. (Id. at 2-4; Anthony Decl., ¶54.)
`
`Asada discloses that it is beneficial for wearable biosensors to acquire data
`
`related to a patient’s cardiovascular state, such as heart rate, to improve the diagno-
`
`sis and treatment of a number of major diseases as well as to increase surveillance
`
`for cardiovascular catastrophe in high-risk subjects. (APL1005, p. 28.) Asada fur-
`
`ther discloses that wearable biosensors like its ring sensor provide more physical
`
`freedom to patients that “may impact the not insignificant problem of dangerous
`
`inpatient falls in the elderly.” (Id. at 37.) Therefore, a POSA would have been mo-
`
`
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`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`tivated to further process the pulse-signal and motion signal in Asada to detect a
`
`patient’s heart rate and impacts indicating that the patient has fallen over as taught
`
`by Gupta. (Anthony Decl., ¶55.)
`
`Gupta’s system further multiplexes the heart rate and impact information to-
`
`gether into a serial string of parsed physiological and motion-related information
`
`that forms a packet as shown in Figure 5 of Gupta. (APL1105, p. 4.) The packets
`
`are sent to a PC that decodes the packet, displays the information from the packet,
`
`and raises an alarm when the readings from the patient move outside a set range.
`
`(Id.) Because the heart rate and impact information are both separately useful piec-
`
`es of information as disclosed by Asada (see APL1005, pp. 28, 37), a POSA would
`
`have been motivated to modify Asada’s signal processor to multiplex these two
`
`pieces of information together into a serial string as taught by Gupta to allow each
`
`piece of information to be separately recovered and monitored after being received.
`
`(Anthony Decl., ¶57.) In addition, Asada and Gupta describe similar physiological
`
`monitoring devices in the same field for similar purposes of communicating physi-
`
`ological parameters and other related parameters. (Id.) Therefore, implementing
`
`Gupta’s technique to output Asada’s data would have amounted to the obvious use
`
`of a known signal processing technique to improve a similar physiological moni-
`
`toring device. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). (Anthony
`
`Decl., ¶57.)
`
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`The combination of Asada, Swedlow, Fricke, and Gupta
`2.
`renders substitute independent claim 12 obvious2
` “a band and light guiding structure configured to at least
`a)
`partially encircle a portion of the body limb of a subject” recited
`in claim 12
`
`As discussed in Section VII.A.2 of the Petition, Figures 6, 11, and 15 of
`
`Asada disclose a “sensor band.” The sensor band is made from “bio-compatible
`
`elastic materials” to secure the band in “contact with the skin consistently in the
`
`face of finger motion (see Figure 11).” (APL1005, p. 35.) Figure 6 shows that the
`
`sensor band encircles the finger. A finger is a body limb and is also a part of the
`
`forelimb. (See Merriam-Webster’s 1998, APL1108, p. 436; Anthony Decl., ¶59.)
`
`Asada’s sensor band is also a “light guiding structure.” As pointed out by
`
`
`2 As noted in Aqua Products, the entirety of the record is to be considered
`
`when assessing the patentability of the amended claims. Aqua Prod., Inc. v. Matal,
`
`872 F.3d 1290, 1296 (Fed. Cir. 2017) (en banc). The USPTO has issued similar
`
`guidance indicating that the entirety of the record, including any opposition, will
`
`be considered. See, USPTO Memorandum issued November 21, 2017, “Guidance
`
`on Motions to Amend in view of Aqua Products.” Accordingly, for elements of
`
`substitute independent claim 12 that are identical to those in original independent
`
`claim 1, the same arguments presented in the Petition with respect to Asada (and
`
`Goodman below) apply (unless otherwise noted) and are not re-presented here.
`
`
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`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Patent Owner, in IPR2017-00315 against U.S. Patent No. 8,929,965, which is re-
`
`lated to the ’269 patent, the Board construed “light guide” as a mechanism for de-
`
`livering light along a path.” IPR2017-00315, Paper No. 9 at 10. Figure 11 of Asada
`
`illustrates two windows in Asada’s sensor band—one for the LED/emitter (4) and
`
`one for the photodetector (5). The window above Asada’s LED/emitter allows light
`
`from the LED to enter the finger. Because the LED/emitter does not extend entire-
`
`ly through the window, there is space between the emitting surface of the
`
`LED/emitter and the end of the window, which allows the emitted light to interact
`
`with the window itself. The window serves to deliver light along a path (i.e.,
`
`through the window and to the finger). (Anthony Decl., ¶60.) Thus, the window in
`
`Asada’s sensor band above the LED/emitter serves as a light-guiding structure to
`
`the body of the subject. Thus, Asada discloses a band and light guiding structure as
`
`recited in substitute claim 12. (Id.)
`
` “a base comprising at least one optical emitter and at least
`b)
`one optical detector attached to the band and light-guiding struc-
`ture” recited in claim 12
`
`As discussed in Section VII.A.7 of the Petition, Asada discloses an optical
`
`emitter and an optical detector—standard components of non-invasive optical bio-
`
`sensors, which use a light source and a detector to measure attenuated light. Figure
`
`6 of Asada illustrates two LEDs (optical emitters) and two photodetectors (optical
`
`detectors) and “shows a desirable location for the photodetector detecting the fin-
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`ger motion.” (APL1005, p. 33.) Figures 9 and 11 also show that the “optical sensor
`
`unit” includes an LED and photodetector. (Id. at 34.) These components are “at-
`
`tached to the band”: “[t]he sensor band was redesigned with the use of bio-
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`compatible elastic materials to better hold the LED’s and PD’s [i.e., photodetec-
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`tors]…and secure the contact with the skin consistently in the face of finger mo-
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`tion.” (Id. at 35 (emphasis added).)
`
`Although Asada discloses an optical emitter and photodetector attached to
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`the sensor band with a light-guiding structure, Asada does not disclose that the op-
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`tical emitter and photodetector are comprised by a “base.” Swedlow discloses that
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`its photodetector 15 and LEDs 13 and 16 are mounted on a flexible substrate 25.
`
`(APL1006, 5:57-59.) As discussed above in Section IV.A.1, a POSA would have
`
`been motivated to mount the at least one optical emitter and photodetector of Asa-
`
`da on a flexible substrate (“base”) as taught by Swedlow to allow signals to be
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`transmitted to and from the optical emitter and photodetector via etched wires. Ac-
`
`cordingly, Asada as modified by Swedlow discloses a base comprising at least one
`
`optical emitter and at least one optical detector as recited in substitute claim 12.
`
`(Anthony Decl., ¶63.)
`
`c)
`
` “a signal processor” limitation recited in claim 12
`Asada discloses that movement by the wearer of its ring sensor results in a
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`motion artifact that “often overlaps with the true pulse signal at a frequency of ap-
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`proximately 1 Hz,” which cannot be eliminated using a filter based on frequency
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`separation. (APL1005, p. 30.) Therefore, Asada discloses “measur[ing] the finger
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`motion with another sensor or a second [photodetector] and us[ing] it as a noise
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`reference for verifying the signal as well as for canceling the disturbance and
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`noise.” (Id.) Figure 8 illustrates “adaptive noise cancellation using [the] second
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`PPG sensor as [a] noise reference” to extract the true pulse signal. (Id. at 33.) The
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`signal from the second PPG sensor is specifically filtered by an adaptive filter to
`
`extract the noise reference (“motion-related information”), which is then subtracted
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`from the main signal produced by Asada’s first PPG sensor to extract the true pul-
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`satile signal (“physiological information”). (Id. 33, Fig. 8.) Accordingly, Asada
`
`discloses a signal processor configured to “receive and process signals produced by
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`the at least one optical detector and a motion sensor to extract physiological and
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`motion-related information” as recited in claim 12. (Anthony Decl., ¶65.)
`
`Asada does not disclose that its signal processor is configured to “reduce
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`motion artifacts by removing frequency bands from the signals that are outside of a
`
`range of interest using at least one band-pass filter to produce pre-conditioned sig-
`
`nals.” Fricke discloses using a band-pass filter to remove frequency bands from a
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`signal measured by an infrared PPG device that are outside a range of interest con-
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`taining a desired physiological signal. (APL1104, ¶¶53, 67-68, Fig. 3.) According
`
`to Fricke, such a band-pass filter can remove vibrational and other sources of out-
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`of-band noise that contaminate the desired physiological signal. (Id.) As discussed
`
`above in Section IV.A.1, a POSA would have been motivated to modify Asada’s
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`signal processor to implement a band-pass filter, as taught by Fricke, to reduce vi-
`
`brational noise (a type of “motion artifact”) in the signals measured by Asada’s
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`ring sensor. (Anthony Decl., ¶66.) Accordingly, Asada as further modified by
`
`Fricke discloses a signal processor configured to “reduce motion artifacts by re-
`
`moving frequency bands from the signals that are outside of a range of interest us-
`
`ing at least one band-pass filter to produce pre-conditioned signals” as recited in
`
`claim 12. (Id.)
`
`Asada does not disclose that its signal processor is configured to “generate
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`parsed output data by executing one or more processing methods to provide infor-
`
`mation that is fed into a multiplexed output serial data string comprising motion-
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`related and physiological information” as recited in claim 12. Gupta discloses pro-
`
`cessing an optically measured pulse signal and a measured motion signal to detect
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`a patient’s heart rate and impacts indicating that the patient has fallen over.
`
`(APL1105, p. 4.) Gupta further discloses multiplexing the heart rate and impact in-
`
`formation together into a serial string of parsed information that forms a packet for
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`transmission over a carrier signal. (Id. at 4, Fig. 5.) As discussed above in Section
`
`IV.A.1, a POSA would have been motivated to further process the pulse and mo-
`
`tion signals in Asada to detect a patient’s heart rate and impacts as taught by Gup-
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`ta. (Anthony Decl., ¶67.) As further discussed above in Section IV.A.1, a POSA
`
`would have been motivated to modify Asada’s signal processor to multiplex these
`
`two pieces of information together into a serial string as taught by Gupta to allow
`
`each piece of information to be separately recovered and monitored. (Id.) Accord-
`
`ingly, Asada as further modified by Gupta discloses a signal processor configured
`
`to “generate parsed output data by executing one or more processing methods to
`
`provide information that is fed into a multiplexed output serial data string compris-
`
`ing motion-related and physiological information” as recited in claim 12. (Id.)
`
` Argument 2: The Combination of Goodman, Asada, Fricke, and
`B.
`Gupta Render Substitute Claim 12 Obvious
` Motivation for the combination of Goodman, Asada, Fricke,
`1.
`and Gupta
`
`As discussed above, substitute claim 12 includes all of the limitations of
`
`original claim 1 but modifies the claimed “band” to be a “band and light-guiding
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`structure” and adds the limitations of a “base” and “signal processor.” Goodman
`
`renders original claim 1 obvious as demonstrated in the Petition. See Petition, Sec-
`
`tion XII. Goodman further discloses the newly added limitations in claim 12 with
`
`the exception of the “signal processor.” Asada, Fricke, and Gupta cure this defi-
`
`ciency.
`
`Goodman discloses that “motion artifacts” are a “common problem” with
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`non-invasive optical biosensor devices “due to differential motion between the
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`sensor and the patient’s finger,” which “creates a serious impediment to consistent
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`accurate measurement.” (Goodman, APL1007, 1:44-53, 3:23-25, 3:57-63.) Good-
`
`man seeks to reduce motion artifacts by having a low mass sensor that conforms to
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`the skin. (APL1007, 4:30-36.) Goodman’s concern about reducing motion artifacts
`
`would have logically led a POSA to Asada, which discloses a similar device and
`
`addresses a similar motion artifacts problem to the one identified in Goodman by
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`“measur[ing] the finger motion with another sensor or a second PD and us[ing] it
`
`as a noise reference for verifying the signal as well as for canceling the disturbance
`
`and noise.” (APL1005, p. 30; Anthony Decl., ¶70.) For example, Figures 6 and 15
`
`of Asada show a first Photodetector A on an opposite side of the finger from the
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`light source (LED) for transmittal measurements similar to Goodman, and a second
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`Photodetector B on the same side as the light source for reflective measurements.
`
`(APL1005, pp. 32-33, 36.) Figure 8 illustrates “adaptive noise cancellation using
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`second PPG sensor as noise reference.” (Id. at 33.) “By using PD-B as a noise ref-
`
`erence, a noise cancellation filter can be built to eliminate the noise of PD-A that
`
`correlates with the noise reference signal.” (Id.) Including a second photodetector
`
`and an adaptive noise cancellation filter as disclosed by Asada as part of Good-
`
`man’s device would have simply been a combination of prior art elements accord-
`
`ing to known methods to yield predictable results. Doing so would have improved
`
`the function of Goodman’s similar device in the same way by reducing the impact
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`Case IPR2017-00318
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`
`of motion artifacts. (Anthony Decl., ¶70.)
`
`As discussed above in Section IV.A.1, Fricke discloses using a band-pass
`
`filter to remove frequency bands from a signal measured by an infrared PPG de-
`
`vice that are outside a range of interest containing a desired physiological signal.
`
`(APL1104, ¶¶53, 67-68, Fig. 3.) Because Goodman’s device has applications to
`
`monitoring patients (APL1007, 5:3-6), a POSA would have been motivated to
`
`modify Goodman’s device to further implement a band-pass filter, as taught by
`
`Fricke, to reduce the potential for vibrational noise (“motion artifact”) contaminat-
`
`ing the signals measured by Goodman’s device. (Anthony Decl., ¶71.)
`
`As further discussed above in Section IV.A.1, Gupta discloses processing an
`
`optically measured pulse signal and measured motion signal to respectively detect
`
`a patient’s hea