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`Filed on behalf of Valencell, Inc.
`By:
`Justin B. Kimble (JKimble-IPR@bcpc-law.com)
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`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
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`T. William Kennedy (bkennedy@bcpc-law.com)
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`Jonathan H. Rastegar (jrastegar@bcpc-law.com)
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`Bragalone Conroy PC
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`2200 Ross Ave.
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`Suite 4500 – West
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`Dallas, TX 75201
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`Tel: 214.785.6670
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`Fax: 214.786.6680
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
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`v.
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`VALENCELL, INC.,
`Patent Owner.
`
`Case IPR2017-003191
`U.S. Patent No. 8,923,941
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`PATENT OWNER’S RESPONSE TO APPLE’S ADDITIONAL BRIEFING
`REGARDING CLAIMS PREVIOUSLY DENIED INSTITUTION
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`
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`1 Case IPR2017-01555 has been joined with this proceeding.
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Patent Owner Valencell, Inc. submits this responsive brief under the Board’s
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`Order of May 23, 2018 (Paper 39) regarding previously non-instituted claims 3-5.2
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`I.
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`“Application-Specific Interface” in Claim 3 Is Not a Typographical Error
`and Petitioner’s Proposed Construction Is Incorrect.
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`Three times3 the Board correctly rejected Petitioner’s argument—which
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`underpins its entire case against claim 3—that “application-specific interface (API)”
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`is a typographical error. Paper 10 (“DI”) at 9-12; Paper 15 (“Dec.”), passim.
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`Petitioner’s argument is contradicted by the unwavering use of the term “specific”
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`in the claim language, specification, and prosecution history of U.S. Patent No.
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`8,923,941 (“the ’941 patent”). See Ex. 1001 at Abstract, 26:15-19, and 30:62-65; see
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`also Ex. 1002 at 47-48, 55, 95, 132, and 157. Petitioner disregards this intrinsic
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`evidence and relies only on speculation and extrinsic evidence; but it is well settled
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`that extrinsic evidence contrary to the meaning mandated by the intrinsic record is
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`discounted. See Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (citing
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`Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)).
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`2 For the reasons set forth in its May 8, 2018 email to the Board, Patent Owner
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`respectfully preserves the right to challenge this post-SAS procedure.
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`3 The Board re-confirmed this decision in IPR2017-00321, Paper 44 at 61-62.
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`1
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Further, the Board rightly concluded that the context of the use of
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`“application-specific interface (API)” in the specification of the ’941 patent
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`demonstrates that Petitioner is wrong to conclude that the term should be read as
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`being equivalent to an “application programming interface.” DI at 11. The
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`specification teaches that “[t]he multiplexed data outputs 604 may be a serial data
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`string of activity and physiological information 700 (FIG. 18) parsed out specifically
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`such that an application-specific interface (API) can utilize the data as required for
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`a particular application.” Ex. 1001 at 26:15-18 (emphasis added). This explicit
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`teaching from the ’941 patent contradicts Petitioner’s argument that “application-
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`specific interface (API)” is equivalent to an “application programming interface”
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`and can include any “application interface that specifies how some software
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`components should interact with each other.” Paper 2 (“Pet.”) at 14-15. Instead, this
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`teaching further supports the Board’s rejection of Petitioner’s unsupported
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`construction, because it shows that the “serial data output” is created to be used with
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`a specific, not merely a generic, application.
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`Petitioner invites the Board to err by blatantly reading the term specific out of
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`the claimed “application-specific interface.” Petitioner demands that the Board
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`deviate from established claim construction standards, assume that “application-
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`specific interface (API)” contains a typographical error, and then jump directly to
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`extrinsic evidence. Petitioner is explicit in asking the Board to read the limitation
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`2
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`“application-specific interface” out of the claim, overlook the consistent use of the
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`term in the ’941 patent and file history, and the contextual explanation of the term,
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`and to instead accept Petitioner’s expert’s opinion about what the term allegedly
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`means. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582
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`(Fed. Cir. 1996) (“Ethicon . . . invites us to read its … limitation out of the claim.
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`This we cannot do.”) (emphasis added). Such a backwards analysis is precisely what
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`the Federal Circuit rejected in Phillips. Further, even assuming an error, the Board
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`correctly noted that it could not speculate as to whether the error is in the words of
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`the phrase, or in the letters of the abbreviation. DI at 9-10. Given the use of the word
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`“specific” throughout the intrinsic record, and the explanation that it is “as required
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`for a particular application,” it is much more plausible that any error is in the
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`abbreviation, not in the explicit words of the preceding phrase.
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`Having failed to convince the Board to adopt its construction of “application-
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`specific interface (API),” Petitioner suggests that additional extrinsic evidence, in
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`the form of deposition testimony from Patent Owner’s expert Dr. Pollonini, should
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`overcome all of the intrinsic evidence that the Board has rightly relied upon. But Dr.
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`Pollonini never construed the term “application-specific interface (API),” nor did
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`Dr. Pollonini agree that there is a typographical error in claim 3. And contrary to
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`Petitioner’s argument, Dr. Pollonini confirmed the importance of the term “specific”
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`in the phrase, saying “[i]t could be application-specific programming interface, if
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`3
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`you want to, you know match those two….” Ex. 1069 at 128:9-11 (emphasis added).
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`He also testified that “the serial data output allows clearly the respiration rate to be
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`extracted, for instance, as cited in claim 3 by an application-specific interface.” Id.
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`at 64:23-65:3 (emphasis added). Thus, the testimony on which Petitioner now hangs
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`its hat is, at best, taken out of context. More importantly, Dr. Pollonini’s testimony
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`is no more than the same type of extrinsic evidence that the Board has already
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`rejected.
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`II. Claim 3 Is Patentable Even Under Petitioner’s Incorrect Construction.
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`While Petitioner’s attempt to subvert the intrinsic record and read the phrase
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`“application-specific interface” out of the ’941 patent is legally incorrect, the prior
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`art does not invalidate claim 3 even under that improper construction. Patent Owner
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`has already demonstrated that Ground 1 fails at least because the proposed
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`combination of Luo and Craw does not disclose a PPG sensor that captures signals
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`that are processed into a serial data output from which a respiration rate can be
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`extracted, or a serial data output created from the signals obtained by the sensors.
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`See Paper 22 (“POR”) at 1-2 and 13-26. Similarly, Patent Owner has already shown
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`that Ground 6 (claim 1), and therefore Ground 7 (claim 3), fail at least because
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`neither Mault nor Al-Ali disclose a single monitoring device capable of sensing
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`physiological information comprising both heart rate and respiration rate, a PPG
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`sensor from which respiration rate can be extracted after processing the PPG sensor’s
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`4
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`signals, or a serial data output of physiological and motion-related information. See
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`id. at 2-3 and 26-37.
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`Thus, under either construction, Petitioner fails to carry its burden to prove
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`that claim 3 of the ’941 patent is unpatentable.
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`III. The Board Was Justified in Declining to Speculate About an Alleged
`Issue Under Section 112 in Claims 4 and 5.
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`As the Board has recognized, Section 112 is not proper subject matter for an
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`inter partes review. DI at 13 (citing 35 U.S.C. § 311(b)); see also Cuozzo Speed
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`Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (canceling a patent claim for
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`indefiniteness under §112 in inter partes review would be impermissible
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`“shenanigans”). Based on the arguments presented in the Petition, the Board was
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`correct to decline to speculate about the meaning of the term “the application” in
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`claim 4. Patent Owner submits that the Board may properly reach the same
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`conclusion at this juncture and decline to find that claims 4 and 5 are unpatentable
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`under the asserted grounds, given that resolution of Section 112 issues is not
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`permitted in an IPR. See 35 U.S.C. § 311(b).
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`III. Alternatively, the Prosecution History Demonstrates that Claims 4 and 5
`Should Depend from Claim 3.
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`Because the Board’s Order requires Patent Owner to address the question of
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`“what the precise typographical error is in claim 4,” Patent Owner submits this
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`alternative argument. The prosecution history demonstrates that the dependency of
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`5
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`claim 4 (originally filed as claim 5) was inadvertently changed during prosecution
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`from claim 3 (originally claim 4) to claim 1. In an amendment, Patent Owner
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`amended the claims in certain respects, represented that claim 5 was submitted as
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`“original,” but inadvertently submitted claim 5 with the erroneous statement that it
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`depends from claim 1 instead of claim 4. See Ex. 1002 at 175-176. The claims were
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`then allowed. Thus, it is clear that, but for an obvious drafting error, claim 4 should
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`depend from claim 3. Petitioner agrees. Paper 40 (“Add. Br.”) at 6.
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`
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`A district court can correct an obvious drafting error in a patent where the
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`correction is not subject to reasonable debate in view of the claim language, and the
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`specification and the prosecution history does not suggest a different interpretation.
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`See CBT Flint Partners, LLC v. Return Path, Inc., 654 F.3d 1353, 1358 (Fed. Cir.
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`2011) (citing Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed.
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`Cir. 2003)). While Patent Owner is not aware of a Federal Circuit decision applying
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`that reasoning to an inter partes review proceeding, there are two instances in which
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`the PTAB has construed a claim to correct a mere typographical error. See Apple
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`Inc. v. FastVDO LLC, IPR2016-01203, 2017 WL 6345416 at *4 (P.T.A.B. Dec. 11,
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`2017); K/S HIMPP v. III Holdings 4, LLC, IPR2017-00782, 2017 WL 3209159, *10
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`(P.T.A.B. July 27, 2017). Thus, the Board may construe claim 4 to correct the
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`typographical error such that it depends from claim 3, instead of claim 1.
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`6
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`If the Board reaches that result, it should then find that Petitioner has not met
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`its burden to demonstrate that claims 4 or 5 are unpatentable, because Petitioner has
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`submitted no arguments in this proceeding that those claims, as depending from
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`claim 3, are unpatentable. Instead, Petitioner’s only contention has been that claims
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`4 and 5 were unpatentable if “the application” in claim 4 is construed to be “an
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`application,” and if the Board then determines that claim 4 should depend from claim
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`1. See Pet. at 15, 29, and 59; see also Add. Br.at 7.
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`Petitioner’s agreement that claim 4 should depend from claim 3 cannot be
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`squared with its request that the Board instead analyze claim 4 as depending from
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`claim 1. Petitioner cites to no case in which a party argued that a claim should
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`properly depend from one claim, but then be construed to depend from another claim
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`altogether. In fact, Petitioner explicitly asks the Board to depart from what Petitioner
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`itself contends is the meaning of claim 4, as supported by the intrinsic record. The
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`Board should reject that invitation. Instead, the Board should either (1) decline to
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`address a Section 112 issue or (2) construe claim 4 to depend from claim 3. In either
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`case, the Board should find that Petitioner has failed to meet its burden to
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`demonstrate unpatentability with respect to claims 4 and 5.
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`7
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`Dated: June 6, 2018
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`Respectfully submitted,
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`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,5 91
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`8
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`Case IPR2017-00319
`U.S. Pat. No. 8,923,941
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that this document was served via electronic
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`mail on June 6, 2018, to Petitioner via counsel, Michelle K. Holoubek, Michael D.
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`Specht, and Mark J. Consilvio at the email addresses: mspecht-PTAB@skgf.com,
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`holoubek-PTAB@skgf.com, mconsilvio-PTAB@skgf.com, and PTAB@skgf.com,
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`pursuant to Petitioner’s consent in its Petition at page 71.
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`Justin B. Kimble
`Attorney for Patent Owner
`Registration No. 58,591
`Bragalone Conroy PC
`2200 Ross Ave.
`Suite 4500 – West
`Dallas, TX 75201
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`9
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