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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`APPLE INC.
`Petitioner
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`v.
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`VALENCELL, INC.
`Patent Owner
`
`___________________
`
`Case IPR2017-003191
`Patent 8,923,941
`___________________
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`
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`PETITIONER APPLE INC.’S
`ADDITIONAL BRIEFING REGARDING CLAIMS
`PREVIOUSLY DENIED INSTITUTION
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
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`
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`Case IPR2017-00319
`Patent 8,923,941
`The Board authorized in its May 23, 2018 Order Petitioner (Apple, Inc.) to
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`submit this briefing to address recently instituted claims 3-5.2 (Paper 39, 6-7.)
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`I. Claim 3 would have been obvious over (1) Luo in view of Craw and (2)
`Mault in view of Al-Ali in further view of Lee.
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`Apple proved in the Petition that claim 3 would have been obvious over two
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`independent grounds despite an apparent typographical error in claim 3’s term
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`“application specific interface (API).” (Paper 2, (“Pet.”), 8, 27, 55-59.) Apple ad-
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`dresses the typographical error first, followed by the merits of claim 3.
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`A. Claim 3’s term “application specific interface (API)” appears to
`contain a typographical error.
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`The term “application specific interface (API)” appears to have a typograph-
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`ical error because “API” was the well-known acronym for “application program-
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`ming interface.” (Pet., 14-15; Ex. 1003, ¶62-63.) The term “application specific in-
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`terface,” however, was not common in the art. (Id.) Apple’s position is supported
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`by noted expert, Dr. Majid Sarrafzadeh, who opined that a person of ordinary skill
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`in the art (“POSA”) would have assessed that claim 3 and the specification con-
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`tained a typographical error. (Ex. 1003, ¶62). Dr. Sarrafzadeh evaluated the speci-
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`2 Petitioner was denied the relief requested in its May 8, 2018 email, particularly
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`the right to conduct discovery on the newly instituted claims or present additional
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`evidence, and thus hereby preserves its rights to challenge this lack of due process
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`in any appeal that may be filed from a final written decision on claims 3-5.
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`Case IPR2017-00319
`Patent 8,923,941
`fication, finding that the specification was not helpful in construing the term. (Id.,
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`¶63.) Indeed, the specification merely repeats verbatim the claim language.
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`Contrary to the Board’s assertion that “the Specification explains that the
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`‘application-specific interface (API)’ is directed to a ‘particular application,’ rather
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`than broadly to different applications” (Paper 10 (“DI”), 12), the specification
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`merely indicates that the data is parsed such that an API can use the data for a par-
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`ticular application. (Ex. 1001, 26:15-23.) It does not say that the API itself is “di-
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`rected to” a particular application. This is evidenced by the specification itself, and
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`Dr. Sarrafzadeh’s analysis based on his reading of the specification from the per-
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`spective of a POSA. Patent Owner (“Valencell”) did not dispute that this term had
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`a typographical error, instead arguing that the term did not need to be construed.
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`Further, claim construction determinations made in the Institution Decision
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`are preliminary.3 Had claim 3 been instituted, as the SAS decision now tells us it
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`should have been, then discovery would have shown that Apple’s original analysis
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`was correct. Valencell’s expert testified that the disputed term contains an error:
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`[M]y interpretation of this section essentially refers to an API, even if
`it’s used as application-specific interface…there is kind of a mis-
`match between the spelled-out, like, terminology and – and the acro-
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`3 While the Board did not provide an explicit construction, the decision that Ap-
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`ple’s proposed construction was incorrect was a claim construction determination.
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`Case IPR2017-00319
`Patent 8,923,941
`nym for it. It – I cannot – I don’t know how exactly why the P or the
`programming word has been left out specifically, but it is – in my in-
`terpretation it is definitely reasonable to assume they offer here, the
`inventor is referring to the API as I described above.
`(Ex. 1069, 127:13-24 (emphasis added).) He further testified that the “API as I de-
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`scribed above” is the well-understood “application programming interface” that “in
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`general is a software method, not necessarily implemented, it can just be a descrip-
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`tion like in a user manual form that allows programmers that have a specific, you
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`know, application in mind to interface their own implementation …with another
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`source of data.” (Id., 126:6-16.) And when asked whether the term “application-
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`specific interface” as used in the specification “is the same as the commonly-
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`understood application programming interface that’s used in the art,” Valencell’s
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`expert said, “[i]t could be application-specific programming interface, if you want
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`to, you know, match those two, but, yes, it’s basically the same.” (Id., 128:4-12.)
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`Accordingly, Valencell’s own expert agreed and confirmed that the phrasing
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`as written in the specification (and thus the claim) appeared to be in error, and
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`would have been understood instead to refer to the well-known “application pro-
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`gramming interface.” Apple submits that this answers in the positive the Board’s
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`threshold question regarding whether the claim term includes a typographical error.
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`B.
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`Even if not a typographical error, the claim term is ambiguous,
`warranting construction; Valencell’s own expert corroborates Pe-
`titioner’s proposed construction.
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`Case IPR2017-00319
`Patent 8,923,941
`The Board said that when the intrinsic evidence is clear, there is no need to
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`look to extrinsic evidence. (DI, 10-11.) But the intrinsic evidence is not clear.
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`While the specification gave a use case, it did not define the term any more clearly.
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`Again, the intrinsic evidence indicates that an API is “utilize[d]” for a particular
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`application, not that the API itself is “directed to” a particular application. Apple
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`did not choose extrinsic evidence over the intrinsic evidence, as alleged. (Id., 11.)
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`Apple consulted extrinsic evidence because the intrinsic evidence was just as am-
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`biguous – indeed, verbatim – as the claim language in question. (Pet., 14.) Thus,
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`the use of extrinsic evidence (Dr. Sarrafzadeh’s declaration) was appropriate, and
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`should not be discredited. Teva Pharma. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
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`840 (2015). Likewise, Valencell’s expert’s testimony should be considered.
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`C. The grounds presented provide an API that is “utilized” for a
`particular application.
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`Even if the Board maintains – contrary to the opinions of both Apple’s and
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`Valencell’s respective experts – that no typographical error existed in the claims,
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`the Board should still consider the merits of Apple’s grounds using the Board’s de-
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`termined construction. Or, in the absence of a specific construction (as the Board
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`maintains is the case here), the Board should evaluate the grounds using what the
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`Board considers to be the plain and ordinary meaning of the term.
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`If it had done so, the Board would have seen that the Petition includes a suf-
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`ficient challenge to claim 3, even if the Board disagreed with Apple’s claim con-
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`Case IPR2017-00319
`Patent 8,923,941
`struction. While APIs were generally well-known means of allowing different
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`technologies to work together, different APIs were designed for specific uses.
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`(Pet., 56.) In each of the combinations presented by Apple, a specific API is ap-
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`plied for a specific application, thus satisfying the purported intent in the ’941 pa-
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`tent specification that the interface “can utilize the data as required for a particular
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`application.” (See, Pet., 27-28 (Luo in view of Craw) and 55-59 (Mault in view of
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`Al-Ali, in further view of Lee); see also, Pet’rs Request for Reh’g, 2-4.) Accord-
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`ingly, the Petition not only presented a reasonable likelihood that claim 3 would
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`have been obvious, but the Petition and supporting evidence also proved by a pre-
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`ponderance of the evidence that claim 3 would have been obvious. The Board
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`should find claim 3 obvious for the reasons set forth in Apple’s Petition.
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`II. Claims 4 and 5 would have been obvious over Luo, Craw, and Wolf.
`Apple proved in the Petition that claims 4 and 5 would have been obvious
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`over Luo, Craw, and Wolf despite an apparent typographical error in claim 4. (Pet.,
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`8, 29-32; Ex. 1003, ¶¶99-104.) The ’941 file history indicates that claim 4 should
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`depend on claim 3 – not on claim 1. (Pet., 15; Ex. 1003, ¶64.) This error results in
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`claim 4 lacking antecedent basis for the term “the application.”
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`A. The file history indicates that claim 4 should depend on claim 3.
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`Claim 4 depends on claim 1 and recites the term “the application.” This term
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`lacks antecedent basis in claim 1. (Ex. 1001, claims 1, 4.) The ’941 file history in-
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`Case IPR2017-00319
`Patent 8,923,941
`dicates that claim 4 should depend on claim 3, which recites “an application,” and
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`thus claim 4 appears to contain a typographical error. (Pet., 15; Ex. 1003, ¶64.)
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`Patent claim 4 was originally filed as claim 5. (Ex. 1002, 55-56 (originally
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`filed claim 5), 245 (examiner renumbering original claim 5 as patent claim 4).)
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`Original claim 5 was not amended during prosecution. (Id., 96, 133, 136, 176 (list-
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`ing claim 5’s status as “Original”), 179 (not identifying claim 5 in the list of
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`amended claims). But, in the applicant’s August 26, 2015 office action response,
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`original claim 5’s dependency appears to have been inadvertently changed from
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`original claim 4 (patent claim 3) to claim 1. (Compare id., 133 with id., 176, 179.)
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`Apple believes the change was inadvertent for two reasons: First, original
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`claim 5’s status in the August 26, 2015 response is “Original,” indicating that the
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`applicant did not amend original claim 5. (Id., 176.) Second, the applicant provided
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`a list of amended claims in the Remarks in the August 26, 2015 response, but
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`failed to list original claim 5—again indicating that applicant did not amend origi-
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`nal claim 5 to change its dependency from original claim 4 to claim 1. (Id., 179.)
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`Original claims 4 and 5 were renumbered as patent claims 3 and 4. (Id., 245.)
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`These facts indicate that patent claim 4’s dependence on claim 1 is a typo-
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`graphical error and that patent claim 4 should depend on patent claim 3, which re-
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`cites “an application.” This error results in patent claim 4 lacking antecedent basis
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`for the term “the application.” Should the Board nevertheless reach the merits of
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`Case IPR2017-00319
`Patent 8,923,941
`patent claim 4, it should interpret “the application” as “an application.” (Pet., 15.)
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`B.
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`Should the Board should reach the merits of claims 4 and 5, it
`should find them obvious.
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`Apple’s Petition, supported by Dr. Sarrafzadeh’s declaration, demonstrates
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`by a preponderance of the evidence that claims 4 and 5 would have been obvious
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`over Luo in view of Craw and Wolf (Pet., 15-27, 29-32), explaining that although
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`the combination of Luo and Craw does not expressly disclose an application that
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`“‘is configured to generate statistical relationships’ as recited in claim 4, applica-
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`tions that generated statistical relationships between physical activity and physio-
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`logical parameters were known in the art as evidenced by Wolf.” (Id., 29.) The Pe-
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`tition then resolves the Graham factual inquiries, explaining what Wolf teaches
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`and why a POSA would have combined Luo, Craw, and Wolf, concluding that
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`claims 4-5 would have been obvious. (Id., 30-32.)
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`Apple’s showing with respect to claims 4-5 stands unrebutted. Valencell
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`presents no evidence or arguments to contradict Apple’s showing, expressly “in-
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`dicat[ing] that it will not avail itself of the opportunity to supplement its Patent
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`Owner Response to address the challenges to claims 3-5.” (Paper 39, 5.) Accord-
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`ingly, the weight of the evidence is with Apple, and the Board should find claims
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`4-5 obvious for the reasons set forth in Apple’s Petition.
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`Date: May 31, 2018
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`
`
`/Michelle K. Holoubek, Reg. # 54,179/
`Michelle K. Holoubek, Reg. # 54,179
` Attorney for Petitioner Apple Inc.
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`Case IPR2017-00319
`Patent 8,923,941
`
`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing PETITIONER APPLE
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`
`
`INC.’S ADDITIONAL BRIEFING REGARDING CLAIMS PREVIOUSLY
`
`DENIED INSTITUTION was served electronically via e-mail on May 31, 2018,
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`in its entirety on the following counsel of record for Patent Owner:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`Jkimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner
`
`Date: May 31, 2018
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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