`
`
`
`
`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
`REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`
`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. 
`Introduction ...................................................................................................... 1 
`The ’269 Patent claims do not cover the Figure 3 embodiment. ..................... 2 
`II. 
`III.  Claim Construction .......................................................................................... 3 
`A. 
`“Cladding Material” .............................................................................. 3 
`B. 
`“Light Guiding Interface” ..................................................................... 5 
`IV.  Goodman discloses or suggests every element of claim 1. ............................. 8 
`A.  Valencell’s manufactured “assembly” of Goodman’s device
`contradicts Goodman’s disclosure. ....................................................... 9 
`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. .................... 11 
`V.  Asada discloses or suggests every element of claim 1. ................................. 12 
`A.  Asada’s Layer 3 is an “inner body portion comprising light
`transmissive material.” ........................................................................ 13 
`“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 ” .................................................................. 17 
`Valencell mischaracterizes the correlation of the claim elements
`with Asada’s disclosure as a combination of embodiments. .............. 17 
`VI.  Combinations of References .......................................................................... 19 
`A.  Grounds 2 & 7: Asada/Goodman in View of Hicks – Claim 3 .......... 19 
`1. 
`Valencell mischaracterizes Hick’s Figure 6. ............................ 19 
`2. 
`Valencell’s alleged “detriments” would not have deterred
`a person skilled in the art from combining the references. ....... 21 
`Grounds 3, 8, 9: Asada/Goodman in View of Hannula – Claims
`4-5 ........................................................................................................ 23 
`1. 
`Goodman and Hannula ............................................................. 23 
`
`B. 
`
`B. 
`
`C. 
`
`B. 
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Asada and Hannula ................................................................... 25 
`2. 
`Grounds 9 and 10: Goodman, (Hannula), and Asada – Claims
`5-7 ........................................................................................................ 26 
`VII.  Conclusion ..................................................................................................... 29 
`
`
`C. 
`
`
`
`- ii -
`
`

`

`Apple (APL)
`Ex. No.
`1001
`
`1002
`1003
`
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`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
`
`
`
`- iii -
`
`

`

`Apple (APL)
`Ex. No.
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`
`1023-1099
`1100
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`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. 8,886,269
`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)
`
`
`
`- iv -
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`

`

`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.
`
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`
`I.
`
`Introduction
`
`Valencell’s Patent Owner Response (“POR”) takes a myopic view that
`
`ignores the industry’s evolution toward wireless optical biosensors and discounts
`
`the skilled artisan’s understanding of design tradeoffs. The ’269 Patent and
`
`Valencell’s declarant, Dr. Titus, recognize the “growing market demand for
`
`personal health and environmental monitors” for use “during daily physical
`
`activity.” (APL1001, 1:19-31; APL1100, 65:4-67:7.) Apple’s expert, Dr. Anthony,
`
`explained that when “cutting the wire,” artisans looked to predecessor technology,
`
`using solutions and technical innovations previously in wired devices. (APL1003,
`
`¶37.) Artisans also routinely considered design tradeoffs for achieving wireless
`
`capability. (Id.; Ex. 2010, 160:23-161:5, 202:9-203:14.) Valencell’s prior art
`
`analysis ignores this backdrop. (APL1102, ¶2.)
`
`Goodman and Asada, alone or in combination with other prior art, render
`
`every challenged claim of the ’269 Patent obvious. Every structural element was in
`
`the prior art. Thus, Valencell’s arguments rely on: 1) unduly narrow claim
`
`constructions that impermissibly read limitations from the specification into the
`
`claims; 2) inaccurate interpretations of the prior art, with annotated figures that are
`
`modified in misleading and inappropriate ways; 3) unfounded concerns about prior
`
`art combinations that inflate potential “detriments” while ignoring an artisan’s
`
`understanding of design tradeoffs; 4) the Figure 3 embodiment, which is not within
`
`
`
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`

`

`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`the scope of the claims; and 5) Dr. Titus’s declaration, which is devoid of
`
`references supporting his opinions, and whose testimony contradicts Valencell’s
`
`positions on key points. (APL1102, ¶3.)
`
`II. The ’269 Patent claims do not cover the Figure 3 embodiment.
`Claim 1 recites “a band configured to at least partially encircle a portion of
`
`the body of a subject.” When adding these limitations, Valencell indicated that
`
`Figure 22B illustrated the claimed device and argued that an ear bud similar to
`
`Figure 3 did not disclose the elements of claim 1. (APL1002, 178, 188, 191-192.)
`
`The ear bud in Figure 3 does not have a band that at least partially encircles a
`
`portion of the body. (APL1102, ¶4.) Valencell’s declarant, Dr. Titus, admits: “my
`
`dilemma is understanding -- whether or not I have a good understanding of what
`
`encircling would mean for -- in this case.” (APL1100, 73:5-8.) This is evident from
`
`his implausible interpretation where the band encircling a portion of the body
`
`includes the converse–a body part (e.g., the ear) going around the band. (APL1100,
`
`75:16-77:20; APL1102, ¶4.) Moreover, Dr. Titus’s position is based on his
`
`incorrect belief that the claims refer to every embodiment in the patent. (APL1100,
`
`78:9-79:22.)
`
`Valencell relies almost exclusively on Figure 3 in summarizing the ’269
`
`Patent. (POR, Paper 22, 8-15.) This attempt to skew the interpretation of the
`
`claimed devices liberally describes elements that are not recited in the claims, for
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`example, “light guide 18” and “light guiding region 19.” (POR, 11-15.) Although
`
`Valencell, in view of the asserted prior art, may now wish to import these
`
`unclaimed features into the claims, they cannot. As Judge Rich famously stated,
`
`“the name of the game is the claim.” Giles S. Rich, The Extent of the Protection
`
`and Interpretation of Claims-American Perspectives, 21 Int’l Rev. Indus. Prop. &
`
`Copyright L., 497, 499 (1990). Valencell’s claims are much broader than described
`
`in its POR. They do not claim a “light guide” or a “light guiding region.”
`
`(APL1100, 86:15-20, 87:18-20; APL1102, ¶5.) Valencell could have claimed these
`
`elements and acknowledges doing so elsewhere. (POR, 26 (stating that the ’965
`
`Patent actually claimed a “light guide”).) Here, Valencell chose not to claim these
`
`features, attempting to capture a broader scope. As such, the asserted prior art
`
`teaches or suggests every element of the claims.
`
`III. Claim Construction
`Valencell’s claim construction impermissibly imports limitations from the
`
`’269 Patent specification
`
`into
`
`the claims. Without
`
`these unduly narrow
`
`interpretations, Valencell’s arguments unravel. Even under Valencell’s proposed
`
`constructions, the prior art renders the claims obvious.
`
`“Cladding Material”
`
`A.
`Valencell proposes construing “cladding material” as “a material that
`
`confines light within a region.” (POR, 21 (emphasis added).) However, this is not
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`the broadest reasonable interpretation; it improperly imports limitations from the
`
`specification into the claims. Valencell’s construction actually requires importing
`
`limitations that are not even described in the ’269 Patent. (APL1102, ¶¶6-7.)
`
`Valencell focuses on the unclaimed “light guiding region 19” and the Figure
`
`3 embodiment that is not within the scope of the claims as alleged support for its
`
`construction. (POR, 21-22 (quoting APL1001, 14:58-61).) Valencell’s examples
`
`from the ’269 Patent all have two layers of cladding material to “help[] confine
`
`light.” (POR, 21-23.) Dr. Titus confirmed that the claims more broadly recite only
`
`one layer of cladding material, i.e., “a layer of cladding material near the inner
`
`body portion inner surface.” (APL1100, 89:8-10.) Thus, Apple’s proposed
`
`construction, “a material that blocks or reflects at least some light,” is appropriate
`
`because a single layer of cladding material does not necessarily “confine light
`
`within a region,” as Valencell avers. (APL1102, ¶6.)
`
`Many examples of “cladding material” in the ’269 Patent–air, polymer,
`
`plastic, and “transparent or mostly transparent [material] with a lower index of
`
`refraction than the light transmissive material”–allow some light to pass through.
`
`(APL1001, 13:50-52, 16:66-17:1; APL1003, ¶¶52-53; APL1102, ¶7.) Thus, to
`
`“confine light,” Valencell’s construction requires impermissibly importing from
`
`the specification that the cladding material must have “a lower index of refraction”
`
`than the adjacent material and consequently that “total internal reflection” will
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`necessarily occur. (POR, 24; APL1102, ¶7.) Valencell alleges that Snell’s Law
`
`supports its construction “because total internal reflection can occur inside the
`
`silicone light-guiding area if the outer material has a lower index of refraction than
`
`the silicone.” (POR, 24 (emphasis added).) First, Valencell again relies on an
`
`unclaimed element–a silicone light-guiding area. Second, the ’269 Patent does not
`
`even mention “total internal reflection.” And Valencell’s reliance on Snell’s Law is
`
`misleading. 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. (APL1102, ¶8.)
`
`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°).
`
`(Id.) The ’269 Patent does not describe that this condition is also necessarily true,
`
`which would be required for Valencell’s “confine light” construction. (Id.)
`
`The necessity for all of these variables demonstrates that Valencell’s
`
`construction cannot be the broadest reasonable interpretation of “cladding
`
`material.” Accordingly, the Board should adopt Apple’s construction of “a material
`
`that blocks or reflects at least some light.”
`
`“Light Guiding Interface”
`
`B.
`Valencell proposes construing “light-guiding interface” as “an interface that
`
`delivers light along a path.” (POR, 25.) This is not the broadest reasonable
`
`interpretation; it again improperly imports limitations from the specification into
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`the claims. (APL1102, ¶¶9-11.) Testimony from Valencell’s own declarant
`
`undermines Valencell’s interpretation.
`
`The ’269 Patent specification recites “light-guiding interface[]” referring
`
`only to Figures 22A-B and 23, stating that “windows 74 w 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).) In the ’269 Patent,
`
`the windows (74W) are merely gaps in the cladding material that may optionally
`
`include, for example, a filter (74WF) or lens (74WL). (APL1102, ¶9.)
`
`
`
`
`
`
`
`APL1001, Figures 22B and 23 (Annotated)
`
`The “windows” that functionally “serve as light-guiding interfaces” are
`
`passive elements–openings in the cladding material that allow light to pass
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`through. (APL1102, ¶10.) Valencell’s declarant repeatedly confirmed 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. (APL1100, 88:2-11,
`
`94:23-95:5, 179:4-12.) Upon redirect from Valencell suggesting that the window
`
`serves a light-guiding function, Valencell’s declarant maintained that “I don’t
`
`believe the window serves a light-guiding function,” but instead simply “the
`
`window ensures that the light can get to the body.” (APL1100, 186:16-187:7
`
`(emphasis added).)
`
`The claims reflect this passive nature, using language nearly identical to the
`
`specification: “at least one window formed in the layer of cladding material that
`
`serves as a light-guiding interface to the body of the subject.” Valencell ignores
`
`the actual disclosure regarding this element, instead focusing on a “light guide”
`
`and dictionary definitions of “guide,” which is not recited in the claims. (POR, 25;
`
`APL1100, 86:15-20; APL1102, ¶11.) Had Valencell wished to claim a “light
`
`guide,” it could have, as in the related ’965 Patent. (POR, 26.)
`
`Valencell used the same diversionary tactic in deposing Apple’s expert, Dr.
`
`Anthony, belaboring extraneous terms like “light guide,” “light guiding,” and
`
`“guides light” that are not in the claims. (Ex. 2010, 93:5-101:25.) Dr. Anthony
`
`correctly pointed out that here “we’re talking about a light-guiding interface, a
`
`window [formed in] cladding material.” (Ex. 2010, 96:13-15 (emphasis added).) As
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Dr. Anthony explained in his declaration, “[t]he mechanical and optical elements
`
`used to guide and focus the light into and out of the body ends and begins at the
`
`interface, a window, between the device and body.” (APL1003, ¶¶79, 121
`
`(emphasis added).) Thus, “a light-guiding interface here is a window. ‘Light
`
`guide,’ in a different use, could be, for example, a lens that guides light along a
`
`different path. But that’s not what is stated here. What’s stated here is a window
`
`that allows the light to pass through the cladding material into the body.” (Ex.
`
`2009, 98:11-16 (emphasis added).)
`
`Accordingly, the Board should construe “light-guiding interface” as “a
`
`window that allows the light to pass through the cladding material into the body.”
`
`(APL1102, ¶11.)
`
`IV. Goodman discloses or suggests every element of claim 1.
`Valencell alleges only that Goodman fails to teach or suggest a “window
`
`formed in the cladding material that serves as a light-guiding interface to the body
`
`of the subject.” (POR, 49; APL1100, 140:8-141:9.) Valencell acknowledges that
`
`Goodman discloses windows (apertures 40, 41) in the cladding material (tape layer
`
`37), alleging only that the window does not functionally serve as a light-guiding
`
`interface to the body. (POR, 49.) Valencell relies on a manufactured “assembly” of
`
`Goodman’s device that contradicts Goodman’s disclosure. (APL1100, 141:10-
`
`143:22.) As properly interpreted, Goodman’s aperture serves as a light-guiding
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`interface to the body–even under Valencell’s proposed construction. (APL1102,
`
`¶12.)
`
`A. Valencell’s manufactured “assembly” of Goodman’s device con-
`tradicts Goodman’s disclosure.
`
`Figure 2C illustrates an exploded side view showing Goodman’s layered
`
`construction. (APL1007, 8:15-18.) Goodman unambiguously describes that the
`
`cladding layer (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, 9:33-40 (emphasis added).) The arrows in Figure 2C
`
`specify that the light from the light source passes through the aperture (40).
`
`(APL1003, ¶¶64, 121, 124; APL1102, ¶13; Ex. 2009, 220:4-221:3.) Likewise,
`
`arrows also show that light returns through aperture (41) to the photo-sensor.
`
`Contrary to Valencell’s position, Valencell’s declarant agreed with Apple: “my
`
`understanding is that -- that the apertures would allow light to pass through them.”
`
`(APL1100, 156:5-8 (emphasis added).)
`
`
`
`(APL1007, Figure 2C.)
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Valencell’s version of Goodman’s “assembled” device, below, contradicts
`
`Goodman’s teachings. (APL1102, ¶14.)
`
`
`
`Valencell’s “assembly” of Goodman Figure 2C (POR, 50.)
`
`Valencell has the light source (24) and photo-sensor (14) extending into and
`
`beyond the apertures and omits clear polyester layer (45) and release tape (50) in
`
`its “assembled” creation because including them contradicts Valencell’s argument
`
`that the layers “conform” the thickness of the strip. (See POR, 50-51; APL1102,
`
`¶15.) Valencell ignores another embodiment in Goodman illustrating that the light
`
`source does not extend through the aperture. (APL1102, ¶15; see APL1100, 114:2-
`
`4.)
`
`
`
`APL1007, Figure 7A (highlight added)
`
`
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`Rather than assuming Valencell’s manufactured “assembly”, a POSA would
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`have gleaned directly from Goodman’s description and drawings that the light
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`source does not extend through the aperture. (APL1102, ¶15.)
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`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.
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`As discussed in Section III.B, the “light-guiding interface” in claim 1 is
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`simply “a window that allows the light to pass through the cladding material into
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`the body.” But Goodman satisfies this limitation even under Valencell’s claim
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`interpretation (to which Apple does not concede) for “light-guiding interface” as
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`“an interface that delivers light along a path.” (POR, 25; APL1102, ¶¶16-17.)
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`Because the light source (24) in Goodman does not extend entirely through the
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`aperture (40), there is space between the emitting surface of the light source and
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`the end of the aperture (see Figure 7A) and light interacts with the aperture itself.
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`(APL1102, ¶17; POR, 51.) The aperture thus serves as “an interface that delivers
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`light along a path” (i.e., through the aperture and to the body). (APL1102, ¶17.) As
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`shown below, even light that reflects off the interior "sidewall of the cladding’s
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`thickness will be delivered along a path to the body. (Id.) Thus, the “cladding
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`material” also “confines light within a region” (i.e., within the aperture), according
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`to Valencell’s proposed construction for that term. (Id.)
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
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`APL1007, Figure 7A (annotated)
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` Goodman’s apertures function the same as the windows the ’269 Patent–
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`they allow light to pass through. (APL1102, ¶18; APL1100, 88:2-11, 94:23-95:5,
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`179:4-12, 186:16-187:7.) The same is true for the Figure 3 embodiment that
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`Valencell improperly relies upon–the end portion (18f) (i.e., “window”) merely
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`“does not have cladding material” so that light travels “…from the optical
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`emitter 24 through the end portion 18 f and into the ear canal C of a subject….”
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`(APL1001, 14:17-22 (emphasis added); POR, 14; APL1102, ¶18; APL1100, 88:2-
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`11.)
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`Accordingly, Goodman discloses a “window formed in the cladding material
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`that serves as a light-guiding interface to the body of the subject.”.
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`V. Asada discloses or suggests every element of claim 1.
`Based on erroneous interpretations of Asada, Valencell argues that Asada
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`fails to teach or suggest two elements of claim 1. (APL1102, ¶19.) Valencell
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`hypothesizes that Layer 3 in Asada’s Figure 11 is a layer of optical shielding with
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`two apertures, rather than a solid layer of light transmissive material. (POR, 30-
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`32.) Based on this incorrect conjecture, Valencell alleges that Asada does not
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`disclose “the inner body portion comprising light transmissive material” and thus
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`cannot teach “the light transmissive material is in optical communication with the
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`at least one optical emitter and the at least one optical detector and is configured to
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`deliver light from the at least one optical emitter to one or more locations of the
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`body of the subject via the at least one window and to collect light from one or
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`more locations of the body of the subject via the at least one window and deliver
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`the collected light to the at least one optical detector.” Valencell is wrong on all
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`accounts.
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`A. Asada’s Layer 3 is an “inner body portion comprising light
`transmissive material.”
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`The caption of Figure 11 and associated text describe that the redesigned
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`sensor band “protects optical components from direct contact with skin” using
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`“bio-compatible elastic materials to better hold the LED’s and PD’s, maintain a
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`proper level of pressure, optically shield the sensor unit, and secure the contact
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`with the skin consistently in the face of finger motion.” (APL1005, 35.) As Dr.
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`Anthony explained, the shaded Layers 2 and 6, the “cladding” and “outer body
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`portion,” respectively, optically shield the sensor unit. (APL1003, ¶¶60-61, 76, 78.)
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`The “light transmissive material (inner body portion)” of non-shaded Layer 3
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`protects the optical components from direct contact with the skin. (APL1003, ¶77;
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`APL1102, ¶20.)
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`APL1005, Figure 11, Annotated (APL1003, ¶60)
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`Valencell’s arguments that Layer 3 is a layer of optical shielding with two
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`apertures defy common sense. First, Valencell’s position hinges on
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`the
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`unreasonable premise that each layer exhibits every property described regarding
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`Figure 11. (POR, 30-31; APL1005, 35.) Valencell’s declarant even acknowledged
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`when asked whether every layer optically shielded the sensor unit, that “they may
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`not all have to do that.” (APL1100, 98:12-99:5.) Indeed, a POSA would have
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`understood that the sensor band elements collectively have these properties.
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`(APL1102, ¶21.) And common understanding provides that the shaded layers
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`block light and the non-shaded (i.e., transparent) layer is light transmissive. (Id.)
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`Second, Valencell’s position that the dashed rectangles in light transmissive
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`Layer 3 designate apertures contradicts logic and conventional drawing principles,
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`where solid lines show features that exist. (POR, 32; APL1102, ¶22.) For example,
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`solid lines define the windows in cladding Layer 2. Valencell’s declarant admits
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`that the vertical dashed lines in Figure 11 are not present in the device. (APL1100,
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`102:19-24.) Valencell cannot reconcile why the alleged “apertures” in light
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`transmissive Layer 3 are dashed. That is because, like the other dashed lines in
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`Figure 11, the dashed rectangles of light transmissive Layer 3 are imaginary–they
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`show the alignment of LED 4 and photodetector 5 with the windows in the
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`cladding Layer 2. (APL1102, ¶22; Ex. 2010, 150:3-25.)
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`Importantly, Valencell’s declarant confirmed that if the dashed rectangles in
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`light transmissive Layer 3 were apertures, the optical components would be
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`exposed and directly contact the skin. (APL1100, 114:17-20.) This contradicts
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`Asada’s disclosure that the sensor band “protects optical components from direct
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`contact with skin.” (APL1005, 35; APL1102, ¶23.)
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`Third, Valencell’s concern over light shunting from the LED to the
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`photodetector through light transmissive Layer 3 is unfounded. (APL1102, ¶24.)
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`Although negligible shunting could occur, shunting depends on the emitted angle
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`of light from the LED and the angle accepted by the photodetector. (Id.) Asada
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`recognizes shunting caused by gaps between the skin and optical components,
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`which can be addressed by emitting and detecting light normal to the surface of the
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`optical components. (APL1005, 31; APL1102, ¶24.) Valencell acknowledges that
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`Asada’s “transmittal PPG configurations do not have the short circuit problems,
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`since the LED and PD are placed on opposite sides of the finger; no direct path
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`through the air can be created.” (POR, 42 (quoting APL1005, 31) (emphasis
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`Valencell’s).) Thus, a POSA reading Asada would have understood how to direct
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`light to avoid shunting. (APL1102, ¶24.) As Dr. Anthony explained, shunting is
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`easily eliminated by light blocking material between the emitter and detector, as
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`disclosed by Delonzor. (Ex. 2010, 172:3-20; APL1003, ¶¶101-104) Notably,
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`Valencell does not address the combination of Asada with Delonzor. (POR, 48.)
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`Fourth, Valencell alleges that Swedlow is used as a “proxy” for identifying
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`the elements of Asada. (POR, 33.) Swedlow confirms that the prior art taught the
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`layered arrangement in Asada and claimed in the ’269 Patent. (APL1102, ¶25;
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`APL1003, ¶¶31, 61, 73.) Swedlow supports Dr. Anthony’s positions about Asada,
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`in contrast to Valencell’s attorney argument and unsupported statements from its
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`declarant.
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`Accordingly, Asada discloses the claimed “inner body portion comprising
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`light transmissive material.”
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`Case IPR2017-00318
`U.S. Pat. No. 8,886,269
`B.
`“wherein the light transmissive material is in optical communica-
`tion with the at least one optical emitter and the at least one optical de-
`tector 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 ”
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`Valencell’s sole basis for alleging that Asada does not disclose this
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`limitation is its incorrect assumption that light transmissive Layer 3 has apertures.
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`(POR, 35-37.) The numerous reasons discussed above, in the Petition, and in Dr.
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`Anthony’s declarations demonstrate Valencell is wrong; its argument thus
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`collapses. (Paper 2, Petition, 33-34; APL1003, ¶¶82-84; APL1102, ¶26.)
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`C. Valencell mischaracterizes the correlation of the claim elements
`with Asada’s disclosure as a combination of embodiments.
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`Regarding claims 6 and 7, Valencell alleges that Apple combines
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`embodiments
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`in Asada. (POR, 37-38.) But combining em