Paper 43
`
`
`Trials@uspto.gov
`571-272-7822 Entered: August 6, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC. and FITBIT, INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00319
`Patent 8,923,941 B21
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`1 Case IPR2017-01555 has been joined with this proceeding.
`
`
`
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`
`I. INTRODUCTION
`
` Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–13 (“the challenged claims”) of U.S. Patent
`
`No. 8,923,941 B2 (Ex. 1001, “the ’941 patent”) under 35 U.S.C. §§ 311–
`
`319. Paper 2 (“Pet.”). Valencell, Inc. (“Patent Owner”) filed a Preliminary
`
`Response. Paper 6 (“Prelim. Resp.”). We instituted the instant inter partes
`
`review as to claims 1, 2, and 6–13. Paper 10 (“Inst. Dec.”). Petitioner filed
`
`a Request for Rehearing (Paper 13) of our Decision on Institution with
`
`respect to our denial of institution of Petitioner’s challenges to claim 3, and
`
`we entered a decision (Paper 15) denying Petitioner’s Request for
`
`Rehearing. Fitbit, Inc. (also “Petitioner”) filed a corresponding Petition
`
`(IPR2017-01555, Paper 2), accompanied by a Motion for Joinder (IPR2017-
`
`01555, Paper 3), challenging claims 1, 2, and 6–13 of the ’941 patent, and
`
`we granted the Motion for Joinder and instituted review of the challenged
`
`claims (IPR2017-01555, Paper 9) based on the corresponding Petition.
`
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`
`(Paper 22 (“PO Resp.”)), and Petitioner filed a Reply (Paper 27 (“Reply”)).
`
`A transcript of the oral hearing held on February 27, 2018, has been entered
`
`into the record as Paper 34 (“Tr.”).2
`
`On April 24, 2018, the U.S. Supreme Court held that a decision to
`
`institute under 35 U.S.C. § 314 may not institute on fewer than all of the
`
`claims challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348,
`
`1354 (2018). In view of the Court’s decision, we issued an Order (Paper 39)
`
`
`2 This was a consolidated hearing with the following related case: Case
`IPR2017-00321. See Tr. 3:2–5.
`
`2
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`modifying our Decision on Institution to institute on all of the challenged
`
`claims and on all of the grounds asserted in the Petition. In particular, the
`
`additional grounds upon which we instituted review are: (1) claim 3 as
`
`obvious over the combined teachings of Luo and Craw (Ground 1) or over
`
`Mault, Al-Ali, and Lee (Ground 7); and (2) claims 4 and 5 as obvious over
`
`the combined teachings of Luo, Craw, and Wolf (Ground 2) or over Mault,
`
`Al-Ali, and Behar (Ground 8).3 Paper 39, 4; see infra Sections I.D. and I.E.
`
`Chief Administrative Patent Judge Ruschke granted a good cause extension
`
`of the one-year period for issuing a final written decision in this case
`
`(Paper 37), and the panel extended the deadline to issue a final written
`
`decision until August 6, 2018 (Paper 38). Pursuant to our authorization
`
`(Paper 39, 5–6), Petitioner filed additional briefing regarding the newly-
`
`instituted grounds and associated claims, (Paper 40 (“Add’l Br.”)), and
`
`Patent Owner filed a response to Petitioner’s additional briefing (Paper 41
`
`(“Add’l Resp.”)).
`
`Although Patent Owner filed objections to evidence submitted with the
`
`Petition (Paper 14) and Petitioner filed objections to evidence submitted
`
`with Patent Owner’s Preliminary Response (Paper 12) and to evidence
`
`submitted with the Patent Owner Response (Paper 23), neither party filed a
`
`Motion to Exclude. Consequently, these objections are deemed waived.
`
`37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to
`
`preserve any objection.”). Petitioner also filed a list of alleged
`
`
`3 Petitioner Fitbit did not request joinder with respect to claims 3–5, and our
`institution of review based on Petitioner Fitbit’s Petition concerned claims 1,
`2, and 6–13 of the ’941 patent, but we granted Petitioner Fitbit’s request to
`join as a party. See IPR2017-01555, Paper 9, 1. This Decision addressing
`the status of each challenged claim in this proceeding applies to all parties.
`
`3
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`misrepresentations of fact and inconsistent statements made by Patent
`
`Owner in its Preliminary Response. Paper 9. We considered these listed
`
`items in preparation of our Decision on Institution (see Inst. Dec. 24 n.7),
`
`and Petitioner does not raise the listed, alleged misrepresentations of fact
`
`and inconsistent statements in its post-institution filings. Consequently,
`
`Petitioner also does not preserve these objections, and we do not consider
`
`them further here.
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`For the reasons that follow, we determine that Petitioner has demonstrated
`
`by a preponderance of the evidence that claims 1, 2, and 6–13 of the
`
`’941 patent are unpatentable, but that Petitioner fails to demonstrate by a
`
`preponderance of the evidence that claims 3–5 of the ’941 patent are
`
`unpatentable.
`
`A. Related Proceedings
`
`According to the parties, the ’941 patent is involved in the following
`
`civil actions: Valencell, Inc. v. Apple Inc., Case No. 5-16-cv-00010
`
`(E.D.N.C. 2016); Valencell, Inc. v. Bragi Store, LLC et al., Case No. 5-16-
`
`cv-00895 (E.D.N.C. 2016); and Valencell, Inc. v. Fitbit, Inc., Case No. 5-16-
`
`cv-00002 (E.D.N.C. 2016). Pet. 52; Paper 5, 1. Further, the ’941 patent is
`
`involved in a related petition for inter partes review, Case IPR2017-00321,
`
`filed by Petitioner on the same day as the instant Petition. We also instituted
`
`review of a related Petition by Fitbit, Inc. with the same grounds, and
`
`granted a Motion for Joinder of that case with Case IPR2017-00321.
`
`IPR2017-01556, Paper 9. The Board issued a Final Written Decision,
`
`finding all challenged claims unpatentable and denying a Motion to Amend
`
`in Case IPR2017-00321. IPR2017-00321, Paper 44, 76.
`
`4
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`
`B. The ’941 Patent
`
`The ’941 patent is entitled “Methods and Apparatus for Generating
`
`Data Output Containing Physiological and Motion-Related Information,”
`
`and was filed February 19, 2014, and issued December 30, 2014. Ex. 1001,
`
`(22), (45), (54). The ’941 patent is a continuation of U.S. Patent Application
`
`No. 12/691,388, filed January 21, 2010, now issued as U.S. Patent
`
`No. 8,700,111 B2 (id. at (63)), and claims priority to four provisional patent
`
`applications: U.S. Provisional Patent Application Nos. 61/208,567, filed
`
`February 25, 2009; 61/208,574, filed February 25, 2009; 61/212,444, filed
`
`April 13, 2009; and 61/274,191, filed August 14, 2009 (id. at (60)). For
`
`purposes of this Decision, we accept February 25, 2009, as the earliest
`
`effective filing date of the ’941 patent. See Pet. 9.
`
`The ’941 patent relates generally to physiological monitoring
`
`apparatus. Ex. 1001, 1:21–23. Figure 5 of the ’941 patent depicts an
`
`exemplary embodiment and is reproduced below.
`
`
`
`5
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`Figure 5 depicts a side section view of light-guiding earbud 30 for a headset.
`
`In particular, earbud 30 includes light guiding cover 18 that serves the
`
`function of a housing. Id. at 16:16–19. Cover 18 includes a plurality of
`
`windows 18w formed in cladding material 21 on outer surface 18a of cover
`
`18. Id. at 16:19–21. Light 111 emitted from light emitter 24 passes through
`
`windows 18w and into the wearer’s body, and scattered light 110 returning
`
`from the wearer’s body passes into light guiding cover 18 through
`
`windows 18w and is directed to light detector 26. Id. at 16:21–24. In other
`
`embodiments, earbud housing and cover 18 may be separate components,
`
`for example, as shown in Figures 3 and 4, which depicts cover 18
`
`surrounding housing 16. Id. at 14:6–10. In addition, cover 18 of Figure 5 is
`
`surrounded by layer 29 of light transmissive material. Id. at 16:30–31. One
`
`or more lenses 29L are formed in layer 29 and are in optical communication
`
`with respective windows 18w in cover 18, and lenses 29L are configured to
`
`collect returning, scattered light 110 and to direct scattered light 110 into
`
`light guiding region 19 and to light detector 26. Id. at 16:31–41. An earbud,
`
`such as earbud 30, may integrate a sensor module containing a plurality of
`
`sensor elements for measuring physiological information and at least one
`
`noise source for measuring noise information and may include a
`
`microprocessor that is in electrical communication with the sensor module
`
`or modules. Id. at 3:46–55, 4:21–25.
`
`In the apparatus described in the ’941 patent, photoplethysmography
`
`(“PPG”) signals may be pre-conditioned by the microprocessor to reduce
`
`motion artifacts and signal noise. Id. at 4:11–17, 4:25–32, 30:44–48; see id.
`
`at 32:1–15, 3:47–55. In particular, the physiological information may be
`
`filtered to remove signal noise by using various, known signal processing
`
`6
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`techniques. See id. at 3:56–67. Thus, the ’941 patent discloses apparatus for
`
`removing motion-related noise artifacts, such as subject footstep noise. See
`
`id. at 3:65–4:5; 31:18–19.
`
`C. Illustrative Claim
`
`Claim 1 is the sole, challenged independent claim of the ’941 patent.
`
`Each of claims 2–13 depends directly or indirectly from claim 1. Claim 1 is
`
`illustrative and is reproduced below, with disputed limitations emphasized.
`
`1.
`A method of generating data output containing
`physiological and motion-related information, the method
`comprising:
`sensing physical activity and physiological
`information from a subject via a single monitoring device
`attached to the subject, wherein the monitoring device
`comprises at least one motion sensor for sensing the
`physical activity and at least one photoplethysmography
`(PPG) sensor for sensing the physiological information;
`and
`
`processing signals from the at least one motion
`sensor and signals from at least one PPG sensor via a
`processor of the monitoring device into a serial data
`output of physiological information and motion-related
`information, wherein the serial data output is configured
`such that a plurality of subject physiological parameters
`comprising subject heart rate and subject respiration rate
`can be extracted from the physiological information and
`such that a plurality of subject physical activity parameters
`can be extracted from the motion-related information.
`
`Id. at 30:35–54 (emphases added).
`
`D. Applied References and Declaration
`
`Petitioner relies on the following references and declaration in support
`
`of its asserted grounds of unpatentability.
`
`7
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`
`Exhibit
`
`References and Declaration
`
`1003
`1004
`1009
`
`1010
`
`1016
`
`1025
`
`1031
`
`1032
`
`1042
`
`1055
`
`1056
`
`1057
`
`1058
`
`1061
`
`1064
`
`Declaration of Dr. Majid Sarrafzadeh
`Curriculum Vitae of Dr. Majid Sarrafzadeh
`Japanese Patent Application Publication No. 2005/040261 A
`to Numaga et al., published February 17, 2005
`Certified English-language translation of Numaga4
`(“Numaga”)
`U.S. Patent Application Publication No. 2009/0105556 A1 to
`Fricke et al., filed September 29, 2008, published
`April 23, 2009 (“Fricke”)
`Hyonyoung Han et al., Development of a wearable health
`monitoring device with motion artifact reduced algorithm,
`International Conference on Control, Automation and
`Systems, IEEE (2007) (“Han”)
`U.S. Patent Application Publication No. 2005/0059870 A1 to
`Aceti, published March 17, 2005
`G. Comtois & Y. Mendelson, A Comparative Evaluation of
`Adaptive Noise Cancellation Algorithms for Minimizing
`Motion Artifacts in a Forehead-Mounted Wearable Pulse
`Oximeter, IEEE (2007) (“Comtois”)
`U.S. Patent Application Publication No. 2007/0197881 A1 to
`Wolf et al., published August 23, 2007 (“Wolf”)
`U.S. Patent Application Publication No. 2008/0200774 A1 to
`Luo, filed February 16, 2007; published August 21, 2008
`U.S. Patent Application Publication No. 2008/0133699 A1 to
`Craw et al., filed October 4, 2007, published June 5, 2008
`(“Craw”)
`U.S. Patent No. 6,513,532 B2 to Mault et al., issued February
`4, 2003 (“Mault”)
`U.S. Patent Application Publication No. 2003/0181798 A1 to
`Al-Ali, published September 25, 2003 (“Al-Ali”)
`International Patent Application Publication No. WO
`2006/009830 to Behar et al., published January 26, 2006
`(“Behar”)
`U.S. Patent No. 6,996,427 to Ali et al., issued
`February 7, 2006 (“Ali”)
`
`
`4 Citations to Numaga are to this English-language translation.
`
`8
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`Pet. vii–x.
`
`
`
`As noted above, the ’941 patent issued claiming benefit from
`
`U.S. provisional patent applications having filing dates as early as February
`
`25, 2009. Ex. 1001, (60). Each of the applied references has an effective
`
`filing date prior to February 25, 2009. See Pet. 8–9.
`
`E. Asserted Grounds of Unpatentability
`
`Petitioner asserted the following grounds of unpatentability:
`
`References
`
`Basis
`
`Challenged Claim(s)
`
`Luo and Craw
`
`35 U.S.C. § 103(a) 1–3, 9, and 11–13
`
`Luo, Craw, and Wolf
`
`35 U.S.C. § 103(a) 4 and 5
`
`Luo, Craw, and Fricke
`Luo, Craw, Fricke, and
`Comtois
`Luo, Craw, and Aceti
`
`35 U.S.C. § 103(a) 6 and 8
`
`35 U.S.C. § 103(a) 7
`
`35 U.S.C. § 103(a) 10
`
`Mault and Al-Ali
`
`35 U.S.C. § 103(a) 1, 2, 9, 11, and 12
`
`Mault, Al-Ali, and Lee
`
`35 U.S.C. § 103(a) 3
`
`Mault, Al-Ali, and Behar
`
`35 U.S.C. § 103(a) 4 and 5
`
`Mault, Al-Ali, and Han
`
`35 U.S.C. § 103(a) 6–8
`
`Mault, Al-Ali, and Numaga 35 U.S.C. § 103(a) 10
`
`Mault, Al-Ali, and Ali
`
`35 U.S.C. § 103(a) 13
`
`Pet. 8–9. We instituted inter partes review of all of the challenged claims
`
`and on all of these asserted grounds. Paper 39, 6; see supra Section I.A.
`
`II. DISCUSSION
`
`A. Claim Interpretation
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b). Under the broadest
`
`9
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`reasonable interpretation standard, claim terms are given their ordinary and
`
`customary meaning, as they would have been understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. See In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for
`
`a claim term must be set forth with reasonable clarity, deliberateness, and
`
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`1. “physiological information” (Claims 1–13)
`
`Petitioner argues that the Specification of the ’941 patent provides an
`
`express definition of the term “physiological.” Pet. 13–14. In particular, the
`
`Specification states that:
`
`The term “physiological” refers to matter or energy of or from
`the body of a creature (e.g., humans, animals, etc.). In
`embodiments of the present invention, the term “physiological”
`is intended to be used broadly, covering both physical and
`psychological matter and energy of or from the body of a
`creature. However, in some cases, the term “psychological” is
`called-out separately to emphasize aspects of physiology that are
`more closely tied to conscious or subconscious brain activity
`rather than the activity of other organs, tissues, or cells.
`
`Ex. 1001, 10:9–18 (emphasis added). Therefore, Petitioner argues that the
`
`broadest reasonable interpretation of the term “physiological information” is
`
`“information about physical and/or psychological matter and energy of or
`
`from the body of a creature.” Pet. 14; see Ex. 1003 ¶ 61.
`
` Patent Owner did not address construction of this term in its Patent
`
`Owner Response. See PO Resp. 7–9. Thus, Patent Owner waived
`
`challenges to Petitioner’s construction of this term. See Paper 11, 3 (“The
`
`patent owner is cautioned that any arguments for patentability not raised in
`
`the response will be deemed waived.”).
`
`10
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
` On this record, we are persuaded that Petitioner’s proposed
`
`construction of the term “physiological information” as “information about
`
`physical and/or psychological matter and energy of or from the body of a
`
`creature” is the broadest reasonable interpretation of that term.
`
`2. “application-specific interface (API)” (Claim 3)
`
`
`
`Petitioner argues that the term “application-specific interface (API)”
`
`of claim 3 should be construed as “application programming interface” and
`
`“to include at least an application interface that specifies how some software
`
`components should interact with each other.” Pet. 14–15. Petitioner
`
`explains that the claim term refers to the term “application programming
`
`interface” and, as such, is characterized by “broad applicability to different
`
`applications—and not ‘application specific’ as such.” Id. at 14. In
`
`particular, Petitioner argues that the recitation in claim 3 of an “application-
`
`specific interface (API)” contains a typographical error. Id.; Add’l Br. 1–3.
`
`Further, Petitioner argues that this typographical error also appears in the
`
`Specification of the ’941 patent, which describes an “application-specific
`
`interface (API).” Pet. 14 (citing Ex. 1001, 26:15–19); see Add’l Br. 1 (“the
`
`specification contained a typographical error”; citing Ex. 1003 ¶ 62).
`
`Petitioner argues that “[application programming interface] was a well-
`
`known term in common usage at the time of the alleged invention. By
`
`contrast, ‘application-specific interface’ did not have a common meaning in
`
`the art.” Pet. 14 (citing Ex. 1003 ¶ 62); see Add’l Br. 2–3. Thus, because
`
`API was a well-known abbreviation, Petitioner concludes that “application-
`
`specific interface” in the claim and the Specification should have been
`
`“application programming interface,” so that the recitations would have
`
`been consistent with the known abbreviation. Pet. 14. Patent Owner does
`
`11
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`not propose a construction for this term in this case, but only opposes
`
`Petitioner’s proposed construction. Add’l Resp. 1–5.
`
`
`
`We are unpersuaded by Petitioner’s proposed construction of this term
`
`as the broadest reasonable interpretation for at least three reasons. First,
`
`because the term appears in the identical form, namely, “application-specific
`
`interface (API),” in both claim 3 and in the Specification, the evidence
`
`argued does not provide sufficient support that this term contains a
`
`typographical error. The similarity of the abbreviation “API” selected by the
`
`patentee to a well-known abbreviation may be no more than a coincidence.
`
`We find nothing persuasive in the intrinsic evidence to demonstrate a
`
`typographical error. Further, even assuming that Petitioner is correct and
`
`that this term contains a typographical error, on this record, we cannot be
`
`certain whether the error is in the words of the term (i.e., “application
`
`programming interface,” rather than “application-specific interface”) or the
`
`letters of the abbreviation (i.e., “ASI,” rather than “API”). The specific error
`
`is essential to Petitioner’s proposed claim construction and, on this record,
`
`even were we to determine that an error is likely, we could not say with any
`
`certainty what that error is.
`
`
`
`Second, when construing a claim term under the broadest reasonable
`
`interpretation standard, we begin with the words of the term as it appears in
`
`the claims and, if the ordinary and customary meaning is not plain, we look
`
`to the specification to discern the meaning of the term. In re Morris, 127
`
`F.3d 1048, 1054 (Fed. Cir. 1997); see Trivascular, Inc. v. Samuels, 812 F.3d
`
`1056, 1062 (Fed. Cir. 2016) (“While the broadest reasonable interpretation
`
`standard is broad, it does not give the Board an unfettered license to interpret
`
`12
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`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`the words in a claim without regard for the full claim language and the
`
`written description.”; internal citations omitted).
`
`
`
`We also may look to the prosecution history to try to discern a claim
`
`term’s meaning. We note here that the prosecution history consistently uses
`
`the term “application-specific interface (API).” Ex. 1002, 47–48, 55, 95,
`
`132, 157. Thus, we also find no evidence of a typographical error in the
`
`prosecution history. We note, however, that because prosecution history
`
`represents an ongoing negotiation between the Office and the inventor, it
`
`may lack the clarity of the specification and, thus, may be less useful for
`
`claim construction purposes. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595
`
`F.3d 1340, 1352 (Fed. Cir. 2010) (citing Netcraft Corp. v. eBay, Inc., 549
`
`F.3d 1394, 1401 (Fed. Cir. 2008)).
`
`
`
`“A patent’s specification, together with its prosecution history,
`
`constitutes intrinsic evidence to which the [the Board] gives priority when it
`
`construes claims.” Knowles Elecs. LLC v. Cirrus Logic, Inc., 883 F.3d
`
`1358, 1361 (Fed. Cir. 2018). When the intrinsic evidence is not definitive,
`
`we consult extrinsic evidence to construe the claims. Knowles, 883 F.3d at
`
`1363; see Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 840 (2015)
`
`(“In some cases, however, the district court will need to look beyond the
`
`patent’s intrinsic evidence and to consult extrinsic evidence in order to
`
`understand, for example, the background science or the meaning of a term in
`
`the relevant art during the relevant time period.”). As Petitioner notes, “[t]he
`
`Board said that when the intrinsic evidence is clear, there is no need to look
`
`to extrinsic evidence. (DI, 10-11.)” Add’l Br. 4. Petitioner, however, would
`
`have us assume a particular typographical error in the term “application-
`
`specific interface (API)” and then favor extrinsic evidence, over the
`
`13
`
`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`consistent intrinsic evidence, to construe the term as rewritten by Petitioner.
`
`We decline to presume error in the claim language and then to rely on
`
`extrinsic evidence over intrinsic evidence as to the claim term’s meaning.
`
`
`
`Petitioner relies upon the testimony of its declarant, Dr. Sarrafzadeh,
`
`and Patent Owner’s declarant’s, Dr. Pollonini’s, deposition testimony to
`
`support its contention that the term contains a typographical error. Pet. 14
`
`(citing Ex. 1003 ¶ 62 (Dr. Sarrafzadeh’s declaration)); Add’l Br. 3–4 (citing
`
`Ex. 1069, 127:13–24, 126:6–16, 128:4–12 (Dr. Pollonini’s deposition)); see
`
`Tr. 18:19–26; but see Add’l Resp. 3–4 (citing Ex. 1069, 64:23–65:3, 128:9–
`
`11); Tr. 34:4–25.5 We find no evidentiary support for either declarant’s
`
`testimony and, thus, we afford less weight to unsupported opinion testimony
`
`when considering the construction of this disputed term. See 37 C.F.R.
`
`§ 42.65(a) (“Expert testimony that does not disclose the underlying facts or
`
`data on which the opinion is based is entitled to little or no weight.”).
`
`Consequently, although we consider the declarants’ testimony, we do not
`
`find that the unsupported declarant testimony outweighs the intrinsic
`
`evidence present in this record.
`
`
`
`Third, we decline to adopt Petitioner’s proposed construction for the
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`term “application-specific interface (API)” because we find that construction
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`is inconsistent with the explanation of the meaning of the term in the
`
`
`5 Despite any suggestion that we expressly construed the term in the
`Decision on Institution, we did not. We noted the Specification’s
`description of an “application-specific interface (API)” and rejected
`Petitioner’s proposed construction, but we did not provide our own
`construction of that term. Inst. Dec. 8–12; see Add’l Br. 2 n.3 (“While the
`Board did not provide an explicit construction, the decision that
`[Petitioner’s] proposed construction was incorrect was a claim construction
`determination.”).
`
`14
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`IPR2017-00319
`Patent 8,923,941 B2
`
`Specification of the ’941 patent. In particular, Petitioner argues that
`
`“[application programming interfaces] are thus characterized by their broad
`
`applicability to different applications—and not “application specific” as
`
`such.” Pet. 14 (emphasis added, citing Ex. 1003 ¶ 62). Therefore, Petitioner
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`argues that “‘application-specific interface (API)’ should be [construed]
`
`broadly to include at least an application interface that specifies how some
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`software components should interact with each other.” Id. at 14–15 (citing
`
`Ex. 1003 ¶ 63).
`
`
`
`Nevertheless, the Specification of the ’941 patent states that:
`
` The multiplexed data outputs 604 may be a serial data
`string of activity and physiological information 700 (FIG. 18)
`parsed out specifically such that an application-specific interface
`(API) can utilize the data as required for a particular application.
`The applications may use this data to generate high-level
`assessments, such as overall fitness or overall health.
`Furthermore, the individual data elements of the data string can
`be used to facilitate better assessments of other individual data
`elements of the data string.
`
`Ex. 1001, 26:15–23 (emphasis added). Thus, contrary to Petitioner’s
`
`arguments, the Specification explains that the “application-specific interface
`
`(API)” is directed to a “particular application,” rather than broadly to
`
`different applications.
`
`
`
`Petitioner further argues that:
`
`While the specification gave a use case, it did not define the term
`any more clearly. Again, the intrinsic evidence indicates that an
`API is “utilize[d]” for a particular application, not that the API
`itself is “directed to” a particular application. Apple did not
`choose extrinsic evidence over the intrinsic evidence, as alleged.
`([Inst. Dec.] 11.) Apple consulted extrinsic evidence because the
`intrinsic evidence was just as ambiguous – indeed, verbatim – as
`the claim language in question. (Pet., 14.) Thus, the use of
`
`15
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`

`

`IPR2017-00319
`Patent 8,923,941 B2
`
`
`(Dr. Sarrafzadeh’s declaration) was
`extrinsic evidence
`appropriate, and should not be discredited.
`
`Add’l Br. 4. Petitioner did not raise this argument in its Petition and fails to
`
`provide evidence to support this proposition in either the Petition or its
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`additional briefing. Pet. 14; Add’l Br. 4. Nevertheless, as noted above,
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`Petitioner states that “[application programming interfaces] are thus
`
`characterized by their broad applicability to different applications—and not
`
`‘application specific’ as such.” Pet. 14 (emphasis added). Consequently, in
`
`its Petition, Petitioner argues that application programming interfaces have
`
`broad “applicability” or utility to different applications, while its new
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`argument attempts to distinguish between whether an application
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`programming interface may be utilized for a particular application and
`
`whether it has broad applicability to a different applications. Pet. 14; Add’l
`
`Br. 4. We find this new argument is not consistent with Petitioner’s earlier
`
`arguments nor with the disclosure of the ’941 patent.6 See Ex. 1001, 26:15–
`
`19 (“such that an application-specific interface (API) can utilize the data as
`
`required for a particular application”). We are not persuaded by Petitioner’s
`
`new argument.
`
`
`
`In the related case, Case IPR2017-00321, also directed to the ’941
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`patent, Patent Owner filed a Motion to Amend (IPR2017-00321, Paper 24),
`
`in which Patent Owner proposed substitute claims including the term
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`“application-specific interface (API).” IPR2017-00321, Paper 44, 58–62.
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`After considering the parties’ arguments and the cited evidence in that case,
`
`
`6 Although we have considered Petitioner’s new argument, Petitioner did not
`request authorization to raise a new argument. Paper 39, 6 (“The parties
`may not raise new arguments or submit new evidence without our
`authorization.”).
`
`16
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`

`

`IPR2017-00319
`Patent 8,923,941 B2
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`especially the Specification of the ’941 patent and the ordinary meaning of
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`the word “interface” in this field,7 in the context of the substitute claims, we
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`construed the term “application-specific interface (API)” to mean “an
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`interface which enables a particular application to utilize data obtained from
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`hardware, such as the at least one motion sensor and the at least one PPG
`
`sensor.” Id. at 62. Although the Final Written Decision in Case IPR2017-
`
`00321, including this claim construction, was mailed on June 5, 2018, after
`
`Petitioner filed its Additional Briefing in this case, Petitioner did not seek
`
`authorization to supplement its briefing to address any potential implications
`
`of this construction on this proceeding. See Add’l Br. 2 n.3. Patent Owner
`
`also did not seek to apply the construction of the term “application specific
`
`interface (API)” from Case IPR2017-00321 in this case. See Add’l Resp. 1–
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`5 (response filed June 6, 2018). Thus, neither party seeks to rely here on the
`
`construction of the disputed term that we applied to the substitute claims in
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`Case IPR2017-00321.
`
`
`
`Consequently, we decline to accept Petitioner’s overly broad
`
`construction of the term “application-specific interface (API).” Because
`
`Petitioner’s assertions challenging claim 3 are based on the rejected
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`construction of this term, and the evidentiary support relied upon is
`
`predicated upon the same, we are not persuaded that Petitioner has shown by
`
`a preponderance of the evidence that claim 3 is rendered obvious over Luo
`
`
`7 A relevant definition of “interface” is “[s]oftware that enables a program to
`work with the user (the user interface, which can be a command-line
`interface, menu-driven interface, or a graphical user interface), with another
`program such as the operating system, or with the computer’s hardware.”
`MICROSOFT COMPUTER DICTIONARY, 279–80 (5th ed. 2002) (Ex. 3003).
`
`17
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`IPR2017-00319
`Patent 8,923,941 B2
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`and Craw (Pet. 27) or over Mault, Al-Ali, and Lee (id. at. 55–59).8 We do
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`not address this claim further in this Decision.
`
`3. “the application” (Claims 4 and 5)
`
`
`
`In the Petition, Petitioner argues that the term “the application” in
`
`claim 4 contains a typographical error. Pet. 15. In particular, Petitioner
`
`argues that, because claim 4 depends from claim 1 and because “an
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`application” does not appear in claim 1, the term “the application” in claim 4
`
`lacks antecedent basis. Id. Petitioner alleges that, in view of this lack of
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`antecedent basis, one of two possible errors exists in claim 4. First,
`
`Petitioner suggests that the dependency of claim 4 is incorrect and that,
`
`because claim 3 recites “an application,” “claim 4 should have depended on
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`claim 3.” Id.; Add’l Br. 5–6. Second, Petitioner argues that, alternatively
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`and for purposes of this Petition only, the term “the application” should be
`
`read as “an application.” Pet. 15.
`
`
`
`Petitioner argues that “for purposes of this petition only, Petitioner
`
`construes the term ‘the application’ to mean ‘an application,’ where under
`
`
`8 Petitioner argues that “[h]ad claim 3 been instituted, as the SAS decision
`now tells us it should have been, then discovery would have shown that
`Apple’s original analysis was correct.” Add’l Br. 2. Even though initial
`institution did not include claim 3, Petitioner’s deposition of Patent Owner’s
`declarant addressed issues related to the disputed claim term of claim 3 and
`Petitioner introduced argument based on that deposition testimony into the
`record. Id. at 2–3 (citing Ex. 1069, 126:6–16, 127:13–24, 128:4–12); see
`Ex. 1072, 6:12–7:13. Additionally, absent action by Patent Owner,
`Petitioner was not entitled to additional discovery, and Petitioner did not
`request additional discovery in view of Patent Owner’s response to
`Petitioner’s additional briefing or in view of our Final Written Decision in
`Case IPR2017-00321. See Pap